Ex Parte Klare et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10255043 (B.P.A.I. Jun. 4, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT JOHN KLARE and GREG STRUGALSKI
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Appeal 2009-001914
Application 10/255,043
Technology Center 1700
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Decided:1 June 4, 2009
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 87-98 and 103-109. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Claims 87, 92, 96, and 103 are representative of the subject matter on
appeal and are set forth below:
87. Sheet material that is waterproof, moisture vapor transmissive and air
permeable, said sheet material comprising:
a polymeric membrane having an open pore structure including
surfaces defining a plurality of interconnecting pores extending through said
membrane and between major sides of said membrane in which the pores
have an average pore size, said membrane being made from a material
tending to absorb oils and contaminating agents; and
a precipitated uniform coating of a fluorinated polymeric material on
at least portions of the surfaces of nodes and fibrils defining the pores in said
membrane;
said precipitated material provides oil and contaminating agent
resistance of at least a number 6 by AATCC 118 testing and said sheet
material having an air permeability of at least 0.20 CFM per square foot by
ASTM D737 testing.
92. An apparatus comprising:

sheet material comprising a polymeric membrane having fibrils
defining at least a portion of a plurality of pores extending through said sheet
material and between major sides of said sheet material; and

a substantially uniform coating deposited on surfaces of said sheet
material without completely blocking the pores in said sheet material, said
coating to modify oleophobicity of said sheet material, said coating material
comprising a fluorinated polymer material;

said coating applied from a low surface tension solution comprising a
solvent, the solution being capable of entering the pores in said sheet
material;

said coating precipitated on surfaces of said fibrils upon rendering the
coating insoluble in the solvent.
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96. A modified membrane comprising:

a polymeric membrane having fibrils in which surfaces of said fibrils
define at least a portion of a plurality of interconnecting pores extending
through said membrane and between major sides of said membrane, said
membrane being moisture vapor transmissive, air permeable, wind and
liquid penetration resistant and made from a material tending to absorb oil
and contaminating agent; and
a material substantially uniformly deposited on surfaces of said nodes
and fibrils of said membrane that provides oil and contaminating agent
resistance to said membrane without completely blocking the pores in said
membrane;
said material applied from a low surface tension solution comprising a
solvent, the solution being capable of entering the pores in said membrane,
said material precipitated on surfaces of said nodes and fibrils upon
rendering the material insoluble in the solvent.

103. A modified membrane comprising:

a polymeric membrane having a structure of fibrils in which surfaces
of fibrils define at least a portion of a plurality of interconnecting pores
extending through said membrane and between major sides of said
membrane; and

a material substantially uniformly deposited on surfaces of said fibrils
of said membrane; said material applied from a low surface tension solution
comprising a solvent, the solution being capable of entering the pores in said
membrane, said material precipitated on surfaces of said fibrils upon
rendering the material insoluble in the solvent.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mallouk 4,954,388 Sep. 4, 1990
Klare 6,228,477 B1 May 8, 2001
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SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS

Claims 87-98 and 103-109 stand rejected as being anticipated under
35 U.S.C. § 102 or obvious under 35 U.S.C., § 103 in view of Klare.
Claims 92, 93, 95-98, 103-104, and 107-109 stand rejected as being
anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103 in view
of Mallouk.
Claims 87, 89-98, and 103-109 are rejected under the judicially
created doctrine of obviousness type double patenting over claims 1-9 of
Klare.
ISSUE
Have Appellants shown that the Examiner erred in rejecting the
claims by showing that Klare and Mallouk each do not teach or suggest
claimed aspects of their invention of 1) the precipitation of a coating
solution and 2) a uniform coating?2

PRINCIPLES OF LAW
[T]he lack of physical description in a product-by-process
claim makes determination of the patentability of the claim
more difficult, since in spite of the fact that the claim may
recite only process limitations, it is the patentability of
the product claimed and not of the recited process steps
which must be established. We are therefore of the opinion
that when the prior art discloses a product which reasonably
appears to be either identical with or only slightly different

2 These claimed aspects are set forth in claims 87, 92, 96, and 103.
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than a product claimed in a product-by-process claim, a
rejection based alternatively on either section 102 or section
103 of the statute is eminently fair and acceptable. As a
practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before
it and then obtain prior art products and make physical
comparisons therewith.

In re Brown, 459 F.2d 531, 535 (CCPA 1972).

Once the Examiner provides a rationale tending to show that the
claimed product appears to be the same or similar to that of the prior art,
although produced by a different process, the burden shifts to applicant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product. In re Marosi, 710 F.2d 799,
802 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922, 1925 (BPAI 1989).
If a prima facie case of obviousness is established, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
Rebuttal evidence and arguments can be presented in the Specification, In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292,
299 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37
C.F.R. § 1.132, e.g., Soni, 54 F.3d 746, 750; In re Piasecki, 745 F.2d 1468,
1474 (Fed. Cir. 1984). However, arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
During examination, “the PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
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as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). It is,
however, improper to read limitations from preferred embodiments in the
specification into the claims. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004).

FINDINGS OF FACT
With regard to the Klare patent, the Examiner makes findings on
pages 4-6 of the Answer in support of his position that the product of Klare
reasonably appears to be the same or similar to Appellants’ claimed product.
Appellants argue that the precipitation process used in making their product
is different from the process used in Klare. Appellants argue that their
precipitation process results in a different product than the product of Klare.
Br. 14-19. Reply Br. 7-11.
With regard to the Mallouk patent, the Examiner makes findings on
pages 7-8 of the Answer in support of his position that the product of
Mallouk reasonably appears to be the same or similar to Appellants’ claimed
product. Appellants argue that the precipitation process used in making their
product is different from the process used in Mallouk. Appellants argue that
their precipitation process results in a different product than the product of
Mallouk. Br. 22-26. Reply Br. 7-11.
Appellants state that the term “uniform” refers to a coating that is
“always the same, as in character or degree; unvarying.” See e.g.,
www.dictionary.com. App. Br. 10: Reply Br. 4.
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Appellants’ Specification describes the coating as “a relatively thin
and even coating”. Spec. 10, l. 14.
Appellants refer to FIG. 7 of their Specification for illustrating an
exemplary SEM showing how the coating of the present invention is
uniformly applied to the nodes and fibrils of a porous ePTFE membrane.
This figure is reproduced on page 10 of the Appeal Brief.

ANALYSIS
As an initial matter, Appellants have not separately argued the
dependent claims with any reasonable specificity, and accordingly the
dependent claims stand or fall with independent claims 87, 92, 96, and 103,
which are therefore under our consideration herein.3
1. The Klare Rejections
The Examiner recognizes that Klare does not teach the coating
material of Klare is precipitated onto the membrane according the method

3 Appellants belatedly discuss claims 90, 91, and 94 on pages 9-10 of their
Reply Brief. These claims stand rejected in view of the Klare patent. These
claims were not specifically addressed by Appellants in their Brief.
Appellants state that these claims recite an additional feature of the
precipitation process, namely that the precipitation process allows the
coating to be “absorbed” and the precipitated material “exudes” from the
membrane. Claim 90 recites that “at least a portion of said precipitated
material is absorbed”. Claim 91 recites that “at least a portion of said
precipitated material exudes from said membrane”. Claim 94 recites
“wherein at least a portion of said coating material is absorbed”. The
Examiner’s finding (which Appellants do not dispute) that Klare teaches that
the pores are not completely blocked reasonably supports the Examiner’s
position that at least a portion of the solids are absorbed/exuded. Ans. 5.
Absent objective evidence to the contrary, we agree with the Examiner’s
position regarding these claims.
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used by Appellants as described in Appellants’ Specification on pages 14-
17. Ans. 6. The Examiner states that this aspect of Appellants’ claimed
subject matter is a product-by-process limitation, and unless Appellants can
show that the resultant product is different/unobvious over Klare, the claims
are unpatentable. Ans. 6. We agree, and refer to the Examiner’s
findings/rationale made on pages 4-6 of the Answer in support of the
Examiner’s conclusion that the product of Klare reasonably appears to be the
same or similar to Appellants’ claimed product. In re Marosi, 710 F.2d at
802; Ex parte Gray, 10 USPQ2d at 1927 (BPAI 1989). In re Brown,
459 F.2d at 535.
Appellants argue that the fact that the coating is precipitated is the
reason why their claimed product is different. That is, Appellants argue that
their precipitated coating results in a uniform coating, whereas the coating of
Klare is not uniform. App. Br. 12-13; Reply Br. 3-4 and 7-11. Appellants
argue that the coating of Klare cannot be inherently uniform because their
process is not performed in Klare. Reply Br. 7.
As indicated by the Examiner in the February 9, 2006 Examiner
Interview Summary and at page 10 of the Answer, the term “uniform” is a
relative term. Appellants state that this term refers to a coating that is
“always the same, as in character or degree; unvarying.” See e.g.,
www.dictionary.com. App. Br. 10: Reply Br. 4. Appellants’ Specification
describes the coating as “a relatively thin and even coating”. Spec. 10, l. 14.
Appellants refer to FIG. 7 of their Specification for illustrating an exemplary
SEM showing how the coating of the present invention is uniformly applied
to the nodes and fibrils of a porous ePTFE membrane. This figure is
reproduced on page 10 of the Appeal Brief.
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As is made evident from the above-mentioned characterizations of the
term “uniform”, this term encompasses a range of varying descriptions.
The Examiner recognizes that Klare does not recite the specific term
“uniform” in the disclosure of the patent, but finds that the disclosure of
Klare supports the position that the coating is uniform, and makes findings
in support thereof, particularly on pages 5-6 of the Answer. In view of the
breadth of the word “uniform”, in combination with the Examiner’s
findings, the Examiner’s position is a reasonable one. In re Morris, 127
F.3d at 1054; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1369; In re
Marosi, 710 F.2d at 802; Ex parte Gray, 10 USPQ2d 1922, 1927 (Bd. Pat.
App. & Inter. 1989). In re Brown, 459 F.2d at 535.
Appellants attempt to show that their product is different from Klare’s
product. Appellants submitted comparative SEMS in the Declaration of Dr.
Nelson Borys. Appellants state that the Borys Declaration shows SEMS of
an ePTFE membrane coated in accordance with the Klare and in accordance
with Appellants’ Example 9, respectively. These SEMs are reproduced on
page 11 of the Appeal Brief.
Appellants argue that the SEM of the membrane made in accordance
with Klare is unevenly coated and contains polymer aggregates. Appellants
argue that, in contrast, the SEM made in accordance to their Example 9
depicts a uniform coating. Br. 12.
As observed by the Examiner, the SEM of Appellants’ Example 9 is
not commensurate in scope with the claims. Ans. 10. In addition to the
Examiner’s findings in this regard, we add that, for example, claim 96
recites “a material substantially uniformly deposited on surfaces”. Yet, the
SEM representative of Appellants’ Example 9 is narrower than the subject
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matter claimed in claim 96 because a specific type of material is deposited,
yet that particular type is not claimed.4
Moreover, “substantially” as recited in claims 92 and 103, as well as
claim 96, encompasses a level of non-uniformity that Appellants have not
demonstrated is outside any alleged non-uniformity of the Klare coating.
Also, claim 87 recites “on at least portions of the surfaces”. Therefore, only
small portions of the Klare coating need be “uniform” within the meaning of
claim 87. Appellants have not convincingly demonstrated that the Klare
coating does not have any portions that are uniform. For at least these
reasons, we agree with the Examiner’s conclusion that Appellants’ rebuttal
evidence is not convincing.
Appellants reiterate at length that their resulting structure is different
from the structure of Klare because the process used is different in that the
coating is precipitated. App. Br. 14-20. However, Appellants have
insufficiently recited subject matter that is different. In the instant case, the
word “precipitated” is insufficient to distinguish from Klare. While we
appreciate Appellants’ comparison made on pages 16-19 of the Brief, the
differences discussed therein are not addressed by the word “precipitated”.
Also, the claims are not limited to a structure, resulting from Appellants’
process, that is different from the structure of Klare. The claimed aspect of a
“uniform” coating that is “precipitated” falls short of reciting distinguishing
subject matter.

4 Beginning on page 20 of the Appeal Brief, Appellants argue that Dr.
Bansal’s Declaration shows that the kind/type of membrane need not be
limited in the claims to a particular kind/type. This declaration evidence is
also unconvincing because, as pointed out herein, several aspects of the
rebuttal evidence are not commensurate in scope with the claims.
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In view of the above, we affirm the rejection of claims 87-98 and 103-
109 stand rejected as being anticipated under 35 U.S.C. § 102 or obvious
under 35 U.S.C. § 103 in view of Klare. Further Appellants have not
established that the Examiner erred in rejecting of claims 87, 89-98, and
103-109 under the judicially created doctrine of obviousness type double
patenting over claims 1-9 of Klare.5 Therefore, we affirm this rejection as
well.

2. The Mallouk Rejection
Appellants again argue that the applied art does not teach the aspects
of their invention directed to 1) the precipitation of the coating solution and
2) a uniform coating. Br. 21.
The Examiner recognizes that Mallouk does not teach the coating
material is precipitated onto the membrane according the method used by
Appellants as described in Appellants’ Specification on pages 14-17. Ans.
7-8. The Examiner states that this aspect of Appellants’ claimed subject
matter is a product-by-process limitation, and unless Appellants can show
that the resultant product is different/unobvious over Mallouk, the claims are
unpatentable. Ans. 8. We agree, and refer to the Examiner’s
findings/rationale made on pages 7-8 of the Answer in support of the
Examiner’s conclusion that the product of Mallouk appears to be the same or
similar to Appellants’ claimed product. In re Marosi, 710 F.2d at 802; Ex
parte Gray, 10 USPQ2d 1922, 1927 (BPAI 1989). In re Brown, 459 F.2d at
535.

5 Appellants set forth identical arguments for this rejection on page 27 of
the Appeal Brief.
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Appellants argue that their precipitation process results in a product
that is uniformly coated in contrast to the “evaporation” process of Mallouk
that results in uneven deposition of the particles. App. Br. 25. Appellants
state that this is demonstrated by the comparative SEMS. App. Br. 25.
As stated in our analysis made regarding the Klare rejection, supra,
Appellants have insufficiently recited subject matter that is different. While
we appreciate Appellants’ comparison made on pages 22-24 of the Brief, the
differences discussed therein are not addressed by the word “precipitated”.
Also, the claims do not recite a structure, resulting from Appellants’ process,
that is different from the structure of Mallouk. The claimed aspect of a
“uniform” coating that is “precipitated” falls short of reciting distinguishing
subject matter.
Appellants discuss rebuttal evidence on page 24 of the Brief.
Appellants repeat that the SEMs of the Borys Declaration is evidence of the
uniform coating achieved according to their invention. We refer to our
previous analysis regarding the SEMs of this declaration, supra.
In view of the above, we affirm the rejection of claims 92, 93, 95-98,
103-104, and 107-109 as being anticipated under 35 U.S.C. § 102 or obvious
under 35 U.S.C. § 103 in view of Mallouk.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner reversibly erred in
rejecting the claims by showing that Klare and Mallouk each do not teach or
suggest claimed aspects of their invention of 1) the precipitation of the
coating solution and 2) a uniform coating.

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DECISION
Each of the rejections is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

PL Initial:
sld

GREG STRUGALSKI
BHA TECHNOLOGIES, INC.
8800 EAST 63RD STREET
KANSAS CITY, MO 64133-4883

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