Ex Parte Leung

Board of Patent Appeals and Interferences

Aug 27, 2012

11740513 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/740,513 04/26/2007 Wallace W. Leung R1731-15701 1303
49842 7590 08/27/2012
DUANE MORRIS LLP - (prev. San Francisco)
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
TURNER, SONJI LUCAS
ART UNIT PAPER NUMBER
1776
MAIL DATE DELIVERY MODE
08/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALLACE W. LEUNG
____________

Appeal 2011-008577
Application 11/740,513
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 102(b) of independent claims 1 and 31 as
anticipated by Koslow (US 2003/0177909 A1 issued September 25, 2003)
and the Examiner's rejections under 35 U.S.C. § 102(b) and § 103(a) of the
remaining dependent claims on appeal as anticipated by Koslow or

Appeal 2011-008577
Application 11/740,513

2
unpatentable over Koslow in view of other prior art of record.1 We have
jurisdiction under 35 U.S.C. § 6.

We REVERSE.

Appellant claims a filtration medium comprising a fine filter layer 22
comprising a plurality of nanofibers and a coarse filter layer 32 comprising a
plurality of microfibers wherein the coarse filter layer is attached to the fine
filter layer (claim 1; Fig. 1). Appellant also claims a method of making such
a filtration medium (claim 31).

Representative claim 1 reads as follows:
1. A filtration medium, comprising:
a fine filter layer comprising a plurality of nanofibers; and
a coarse filter layer comprising a plurality of microfibers, the coarse
filter layer attached to said fine filter layer,
wherein said coarse filter layer is positioned proximal to a direction of
fluid flow, and said fine filter layer is positioned distal to said direction of fluid
flow.

Each of the above rejections depends upon the Examiner's finding that
"Koslow teaches a filtration medium comprising a fine filter layer
comprising a plurality of nanofibers and a coarse filter layer attached to said

1 The statements of rejection made by the Examiner in the Answer do
not include dependent claims 8, 16, and 17. In light of our disposition of
this appeal, the Examiner's apparent oversight in failing to address these
dependent claims is harmless.

Appeal 2011-008577
Application 11/740,513

3
fine filter layer comprising a plurality of microfibers [0045]" (Ans. 7) as
required by the independent claims.

Appellant argues that paragraph [0045] of Koslow contains no
teaching of the independent claim requirement for a coarse filter layer of
microfibers which is attached to a fine filter layer of nanofibers (App. Br. 6).

In response, the Examiner points out that paragraph [0045] teaches a
support layer (i.e., for supporting nanofibers) made from materials which
include cellulosic material and that Appellant's Specification teaches
microfibers made from materials which include cellulose acetate (Ans. 13).
The Examiner reasons that, because Koslow's support layer and Appellant's
microfibers can be made from cellulosic material, the cellulosic support
layer of Koslow corresponds to the claimed coarse filter layer comprising a
plurality of microfibers (id.).

As correctly argued by Appellant, the Examiner's reasoning is without
merit (Reply Br. 2-3). There is no acceptable logic in the Examiner's
assumption that items (i.e., Koslow's support layer and Appellant's
microfibers) made from the same material must be identical. It follows that
the Examiner has failed to provide the record of this appeal with any support
for the finding that Koslow teaches the claim limitation "a coarse filter layer
comprising a plurality of microfibers, the coarse filter layer attached to said
fine filter layer" (representative claim 1).

Appeal 2011-008577
Application 11/740,513

4
For this reason alone, we cannot sustain the § 102 and § 103 rejections
advanced by the Examiner in this appeal.

The decision of the Examiner is reversed.

REVERSED

sld