Ex Parte Kreiter et al

Patent Trials and Appeals Board

Feb 12, 2019

13698262 - (D) (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/698,262 02/04/2013 Robert Kreiter
22428 7590 02/14/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
069818-7475 2601
EXAMINER
ORME, PATRICK JAMES
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
02/14/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT KREITER, GOULVEN GILDAS PARADIS,
JAAP FERDINAND VENTE, HESSEL LENNART CASTRICUM,
and JOHAN EVERT TEN ELSHOF
Appeal2017-004924
Application 13/698,262
Technology Center 1700
Before DONNA M. PRAISS, MICHAEL G. McMANUS, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 18-3 8 and 41 of Application
13/698,262 under 35 U.S.C. §§ 102 and 103 and for nonstatutory
obviousness-type double patenting. Final Act. (Oct. 28, 2015) 5-20.
Appellants 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
An oral hearing was held February 5, 2019.
For the reasons set forth below, we AFFIRM.
1 The real party in interest is identified as STICHTING
ENERGIEONDERZOEK CENTRUM NEDERLAND. Appeal Br. 3.
Appeal2017-004924
Application 13/698,262
BACKGROUND
The present application generally relates to hydrophobic, microporous
hybrid membranes based on silica. Spec., Abstract. The described
membranes include both monovalent and divalent organic substituents.
Spec. ,r 13. The subject membranes exhibit "preference for permeation of
organic or the more hydrophobic components of a mixture." Id. ,r 2. Such
membranes are indicated to be useful in solvent-resistant nanofiltration and
organophilic pervaporation. Id.
Claim 18 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
18. A hydrophobic membrane comprising a layer based on
silica, wherein
(a) at least 25% of the silicon atoms have a bridging C1-
C12 divalent hydrocarbylene group as a substituent, and
optionally further silicon atoms having a saturated and acyclic
monovalent C1-C30 organic group as a substituent;
(b) either (i) at least 50% of the silicon atoms have
said divalent hydrocarbylene group and the divalent
hydrocarbylene group has a minimum length of 8 carbon atoms,
and/or (ii) at least 25% of the silicon atoms have said
monovalent organic group and the monovalent organic group
has a minimum length of 6 carbon atoms; and
( c) the average number of carbon atoms in the
monovalent organic groups and the divalent
hydrocarbylene groups taken together is at least 3.5; and
wherein the membrane retains hydrophilic molecules
from a mixture of hydrophobic and hydrophilic molecules.
Appeal Br. (Apr. 28, 2016) 13 (Claims App.).
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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 18-28, 32, 38, and 41 2 are rejected under 35 U.S.C. §
I02(b) (pre-AIA) as anticipated by Sah et al. 3 Final Act. 5-8.
2. Claims 29-31 are rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Sah in view of Linder et al. 4 Id. at 8-9.
3. Claims 33, 34, and 37 are rejected under 35 U.S.C. § I03(a) (pre-
AIA) as obvious over Sah in view of Sommer et al. 5 Id. at 9-10.
4. Claim 35 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Sah in view of Sommer and further in view of
Livingston. 6 Id. at 10-11.
5. Claim 36 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Sah in view of Sommer and further in view of
Boddeker. 7 Id. at 11-13.
6. Claims 18-38 and 41 are provisionally rejected on the ground of
nonstatutory obviousness type double patenting over claims 1, 3-5,
2 The rejection states that claims 39 and 40 are rejected as anticipated;
however, these claims were canceled by amendment dated Sept. 1, 2015.
Final Act. 2, 5.
3 WO 2007/081212 Al, published July 19, 2007 ("Sah").
4 US 5,265,734, issued Nov. 30, 1993 ("Linder").
5 S. Sommer and T. Melin, Design and Optimization of Hybrid Separation
Processes for the Dehydration of 2-Propanol and Other Organics, Ind. Eng.
Chem. Res. 2004, 43, 5248-5259 ("Sommer").
6 US 2004/0099603 Al, published May 27, 2004 ("Livingston").
7 US 4,806,245, issued Feb. 21, 1989 ("Boddeker").
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7, 8, 11, 14, and 15 of Kreiter et al. 8 in view of Sah, Linder,
Sommer, and Livingston. Id. at 14--17.
7. Claims 18-37 are provisionally rejected on the ground of
nonstatutory obviousness type double patenting over claims 1, 3, 4,
6, 8, 9-12, 15, and 169 of Sah II, 10 in view of Sah, Linder,
Sommer, and Livingston. Id. at 18-20.
DISCUSSION
Rejection 1. The Examiner rejected claims 18-28, 32, 41, and 38--40
as anticipated by Sah. Id. at 5-8. In support of the rejection, the Examiner
determined that Sah teaches a silica-based membrane with divalent and/or
monovalent organic substituents. Final Act. 5. The Examiner determined
that the average number of carbons in the monovalent and divalent groups,
considered together, is at least 3.5. Id. The Examiner further found that Sah
teaches a membrane that retains hydrophilic molecules from a mixture of
hydrophobic and hydrophilic molecules. Id. (citing Sah, 14:4--6, 11-12). In
this regard, Sah discloses that "[t]he selectivity number for water over the
alcohol is constant at -300, for about 2 months and then decreases to 150
and remains steady." Sah, 14:4--6.
In the Response to Arguments section of the Final Action, the
Examiner indicated that the final limitation of claim 18, "wherein the
8 US 8,709,254 B2, issued Apr. 29, 2014 ("Kreiter").
9 In the Final Action, the Examiner stated that certain claims were rejected
over "[c]laims 1, 3, 4, 6, 8, 19-12, 15, and 16" of Sah in combination with
other references. We construe "19-12" to mean "9-12" for purposes of the
present rejection.
10 US 8,277,661 B2, issued Oct. 2, 2012 ("Sah II").
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Application 13/698,262
membrane retains hydrophilic molecules from a mixture of hydrophobic and
hydrophilic molecules," would not be given patentable weight as it did not
limit the membrane structurally. Final Act. 3.
Appellants assert error on several bases. First, Appellants argue that
"wherein the membrane retains hydrophilic molecules from a mixture of
hydrophobic and hydrophilic molecules" is a structural limitation that should
be accorded patentable weight. Appeal Br. 6-8.
"A patent applicant is free to recite features of an apparatus either
structurally or functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997); In re Swinehart, 439 F.2d 210,212 (CCPA 1971) ("there is
nothing intrinsically wrong with the use of [ functional language] in drafting
patent claims").
In order to be accorded patentable weight, however, functional
language in an apparatus claim must limit the claim in terms of structure
rather than function. In re Schreiber, 128 F.3d at 1477-78; MPEP § 2114.
That is, "apparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
Here, the Specification indicates that the "present invention provides
hybrid membranes having increased organophilicity compared to prior art
organic-inorganic hybrid membranes. These new membranes enhance the
permeance of organic solvents." Spec. 4. The Specification further teaches
that "[t]he separation mechanism of these membranes is ... based on
affinity rather than size." Id. at 5. Thus, the functional limitation limits the
permissible range of organophilicity of the subject membrane. Accordingly,
we determine that such limitation limits the structure of the claimed
membrane and will be accorded patentable weight.
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Appellants additionally argue that Sah does not anticipate the claims
as Sah's membrane does not "retain[] hydrophilic molecules from a mixture
of hydrophobic and hydrophilic molecules" as required by claim 18 ( and its
dependents). Specifically, Appellants argue that Sah's membranes are
"designed to perform exactly the opposite function" as claimed. Appeal Br.
6 ( emphasis in original). In support, Appellants point to a portion of Sah
which provides that "[t]he selectivity number for water over the alcohol is
constant at -300, for about 2 months and then decreases to 150 and remains
steady." Sah, 14:4--6. Sah is additionally discussed in the Specification,
which provides as follows:
Importantly, although these membranes are stable in aggressive
organic solvents, their application in organic nanofiltration or in
organophilic pervaporation, in which the organic solvent is the
permeating component, is unfeasible. This is due to the
relatively polar pore structure of these membranes, probably
because of the presence of large numbers of hydroxyl groups in
the micropores. Because of this polarity, the permeance of
organic components through these membranes is very low
compared to their water permeance. Intrinsically, the
membranes disclosed in WO 2007 /081212 [Sah] are therefore
selective for water over organics.
Spec. 4:20-28 (emphasis added). Thus, there is support for Appellants'
argument that the membrane of Sah has low permeance for organic
components relative to the permeance of water. This, however, is not
dispositive.
The limitation at issue requires only that "the membrane retains
hydrophilic molecules from a mixture of hydrophobic and hydrophilic
molecules." It does not specify any particular degree of selectivity. Indeed,
the Examiner indicates that Appellants amended their claims so as to remove
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any "selectivity" limitation. Answer (Dec. 2, 2016) 6; see also Amendment
and Reply Under 37 CPR 1.111 (dated Sept. 1, 2015).
During examination, claims are given their broadest reasonable
interpretation consistent with the Specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims broadly
during prosecution is not unfair to the applicant ... because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage." Id.
Giving the limitation its broadest reasonable construction consistent
with the Specification, we construe the phrase "the membrane retains
hydrophilic molecules from a mixture of hydrophobic and hydrophilic
molecules" to require only that the membrane retains some hydrophilic
molecules from the stated mixture.
The Examiner has determined that the teachings of Sah regarding the
selectivity number of the membrane indicate that a certain amount of water
is retained by the membrane. Final Act. 3; Answer 6. Appellants argue that
such determination is in error because Sah teaches only that its "membrane
enriches alcohol in the retentate and water in the permeate, [whereas] the
hydrophobic membrane of the claimed invention enriches water in the
retentate and alcohol in the permeate." Appeal Br. 9. Similarly, Appellants
argue that "[t]he degree of selectively of Sah's membranes does in fact
change over time, but the selectively of water over alcohol remains
constant." Reply Br. 4 ( emphasis omitted). These arguments fail as they
concern the relative retention and permeation of different molecules.
Appellants do not show that there is no water retained by the membrane of
Sah.
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In view of the foregoing, Appellants have not shown reversible error
in the Examiner's determination that Sah teaches a membrane that "retains
hydrophilic molecules from a mixture of hydrophobic and hydrophilic
molecules."
Appellants additionally argue that Sah does not teach that "the
average number of carbon atoms in the monovalent organic groups and the
divalent hydrocarbylene groups taken together is at least 3.5." Appeal Br.
9--10. Appellants concede that Sah teaches certain monovalent organic
groups with more than 3 .5 carbon atoms and certain divalent hydrocarbylene
groups with more than 3.5 carbon atoms. Id. at 9. Sah additionally teaches
monovalent and divalent organic groups with fewer than 3 .5 carbon atoms.
Sah, 2:28--4:29. Appellants argue, however, that Sah does not teach that the
average number of carbons is greater than 3 .5 when the monovalent and
divalent groups are taken together. Appeal Br. 9.
A reference may anticipate where it includes an anticipatory teaching
in a list that includes components falling outside the scope of the claim at
issue. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed.
Cir. 2005) ("This court rejects the notion that one of these ingredients cannot
anticipate because it appears without special emphasis in a longer list.")
Here, Sah teaches a preferred membrane where the number of carbons
(designated as "m") in the divalent substituent is "m = 6." Sah, 3:38. Sah
further teaches that"[ e ]xamples include: ... Si-cycohexylene-Si, Si-
phenylene-Si" and others. Id. at 4:1-3. Thus, Sah teaches divalent
substituents having more than 3.5 carbons.
In regard to the monovalent substituent, Sah teaches that "[ t ]he
monovalent organic moiety may be any group having from 1 to 10 carbon
atoms, which is connected to silicon via a carbon atom." Id. at 4: 12-13.
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Sah further teaches that "preferred examples or moieties having formula -
CrHsQ are linear or branched C1-C6 alkyl .... " Id. at 4:22-23. Thus, Sah
has clear teachings of embodiments having more than 3.5 carbons for both
the monovalent and divalent organic substituents. That such teachings occur
as part of a well-delineated list does not diminish the disclosure of Sah.
Further, Appellants indicate that Examples 5 and 6 of Sah have an "average
number of carbon atoms in the monovalent and divalent groups [that] is at
least 3.5." Reply Br. (Feb. 2, 2017) 2 (Table).
The Examiner further found that Sah' s embodiments which use the
precursors methyl-triethoxysilane (MTES), tetracthoxysilane (TEOS), and
bis(triethoxysilyl)ethane (BTESE) result in an average number of carbon
atoms of at least 3 .5. Ans. 6-7. Appellants argue that such precursors
would yield groups with a lower number of carbon atoms. See Appeal Br.
10 n.18; Reply Br. 4--5. Appellants, however, do not provide declaratory or
other factual evidence in support of their argument. See, e.g., Gemtron
Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
("[U]nswom attorney argument ... is not evidence and cannot rebut ...
other admitted evidence .... "). Further, as above, Appellants indicate that
Examples 5 and 6 of Sah have an average number of carbon atoms that is at
least 3.5. Reply Br. 2. Accordingly, we adopt the Examiner's analysis in
this regard.
In view of the foregoing, we determine that Appellants have not
shown reversible error in the rejection of claims 18-28, 32, 3 8, and 41 as
anticipated by Sah.
Rejections 2-5. The Examiner rejected claims 29-31 as obvious over
Sah in view of Linder. Final Act. 8-9. The Examiner additionally rejected
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claims 33, 34, and 37 as obvious over Sah in view of Sommer. Id. at 9--10.
The Examiner additionally rejected claim 35 as obvious over Sah in view of
Sommer and further in view of Livingston. Id. at 10-11. The Examiner
additionally rejected claim 36 as obvious over Sah in view of in view of
Sommer and further in view of Boddeker. Id. at 11-13.
Appellants argue that these rejections should be reversed because Sah
does not teach "retain[ing] hydrophilic molecules from a mixture of
hydrophobic and the hydrophilic molecules" nor that "the average number of
carbon atoms in the monovalent organic groups and the divalent
hydrocarbylene groups taken together is at least 3. 5." Appeal Br. 10-11. As
we have not found such arguments to be persuasive for the reasons set forth
above, we determine that Appellants have not shown reversible error with
regard to the rejections at issue.
Rejections 6 and 7. The Examiner provisionally rejected claims 18-
3 8, and 41 on the ground of nonstatutory double patenting over claims 1, 3-
5, 7, 8, 11, 14, and 15 of Kreiter in view of Sah, Linder, Sommer, and
Livingston. Id. at 14--17. The Examiner additionally provisionally rejected
claims 18-3 7 on the ground of nonstatutory double patenting over claims 1,
3, 4, 6, 8, 9--12, 15, and 16 ofSah II in view ofSah, Linder, Sommer, and
Livingston. Id. at 18-20.
Appellants argue that the rejection of claims 1, 3-5, 7, 8, 11, 14, and
15 over Kreiter in view of Sah, Linder, Sommer, and Livingston (Rejection
6) should be reversed because Kreiter does not teach that "the average
number of carbon atoms in the monovalent organic groups and the divalent
hydrocarbylene groups taken together is at least 3.5" nor that "the membrane
retains hydrophilic molecules from a mixture of hydrophobic and
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hydrophilic molecules." Appeal Br. 11. The Examiner, however, does not
rely upon Kreiter as teaching such features. Rather, the Examiner cites to
Sah as teaching these limitations. Final Act 15. Appellants' arguments that
Sah does not teach such elements have been considered, as set forth above,
but found not to be persuasive. Accordingly, Appellants have not shown
reversible error with regard to the rejection of claims 18-3 8 and 41 on the
ground ofnonstatutory double patenting over claims 1, 3-5, 7, 8, 11, 14, and
15 of Kreiter in view of Sah, Linder, Sommer, and Livingston (Rejection 6).
Appellants further argue that the rejection of claims 18-37 over
claims 1, 3, 4, 6, 8, 9-12, 15, and 16 ofSah II in view ofSah, Linder,
Sommer, and Livingston (Rejection 7) should be reversed because Sah II
does not teach the same limitations noted above. Appeal Br. 11. Appellants,
however, do not put forth any specific argument regarding Sah II. Indeed,
Appellants' brief does not include a single citation to any specific portion of
Sah II. Accordingly, Appellants have failed to show error in this regard.
See 37 C.F.R. § 4I.37(c)(l)(iv) ("the brief shall contain .... The arguments
of appellant with respect to each ground of rejection, and the basis therefor,
with citations of the statutes, regulations, authorities, and parts of the Record
relied on. The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant.").
CONCLUSION
The rejections of all claims are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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