Ex parte MAHONEY et al.

Board of Patent Appeals and Interferences

Jul 30, 1998

08012872 (B.P.A.I. Jul. 30, 1998)

Application for patent filed February 3, 1993. According1
to appellants, this application is a continuation-in-part of
Application No. 07/746,756, filed August 19, 1991, now U.S.
Patent No. 5,246,647, issued September 21, 1993; which is a
continuation-in-part of Application No. 07/329,666, filed
March 28, 1989, now U.S. Patent No. 5,043,112, issued
August 27, 1991.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT D. MAHONEY, JIRO KAWAMOTO, RICHARD A. LUNDGARD,
MARK F. SONNENSCHEIN, HAWK S. WAN and H. NELSON BECK
________________
Appeal No. 95-4970
Application No. 08/012,8721
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-21
and 23-39, all the claims remaining in the present application.
Claim 1 is illustrative:
Appeal No. 95-4970
Application No. 08/012,,872
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1. A process for preparing a microporous membrane from a
poly(phenylene sulfide) polymer comprising the steps of:
A. forming a mixture comprising:
(i) at least one poly(phenylene sulfide) polymer,
(ii) at least one amorphous polymer which is substantially
stable at elevated temperatures, which possesses a glass
transition temperature of at least about -100EC, and wherein said
amorphous polymer is at least partially immiscible in said
poly(phenylene sulfide) polymer at ambient conditions; and
(iii) optionally a plasticizer comprising at least one
organic compound capable of dissolving at least about 10 weight
percent of said poly(phenylene sulfide) polymer at the extrusion
or casting temperature;
B. heating the mixture to a temperature at which said mixture
becomes a fluid;
C. extruding or casting said fluid under conditions such that a
membrane is formed;
D. subjecting said membrane to controlled cooling or
coagulation by passing said membrane through at least one
zone under conditions such that said membrane solidifies;
E. leaching said membrane by passing said membrane through at
least one zone under conditions such that at least a portion
of said optional plasticizer for said poly(phenylene sulfide)
polymer, at least a portion of said amorphous polymer, or a
combination thereof, is removed from said membrane; and
F. producing a final microporous membrane.
The examiner relies upon the following references as
evidence of obviousness:
Beck 5,043,112 Aug. 27, 1991
Damrow et al. (Damrow) 5,205,968 Apr. 27, 1993
Appeal No. 95-4970
Application No. 08/012,,872
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Appellants' claimed invention is directed to a process for
making a microporous membrane from a poly(phenylene sulfide)
polymer.
Appealed claims 1-21 and 23-39 stand rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-23 of U.S. Patent No.
5,205,968 in view of Beck. In addition, claims 1-21 and 23-39
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Damrow in view of Beck.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejections. Our reason for not sustaining either of the
examiner's rejections is the same, i.e., the patent to Beck is
not prior art.
The present application is a continuation-in-part of U.S.
Application No. 07/746,756, now U.S. Patent No. 5,246,647, which,
in turn, is a continuation-in-part of U.S. Application No.
07/329,666, now U.S. Patent No. 5,043,112 (the Beck patent relied
upon by the examiner as prior art). Since the application on
appeal incorporates by reference the subject matter of the parent
application (U.S. Patent No. 5,246,647), and said parent appli-
cation incorporates by reference in its entirety the grandparent
of the present application (U.S. Patent No. 5,043,112), it cannot
Appeal No. 95-4970
Application No. 08/012,,872
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be gainsaid that the entire specification of U.S. Patent No.
5,043,112 is part of the original specification of the present
application on appeal. Manifestly, the specification of an
application is not prior art to the same application. Accord-
ingly, the examiner errs in stating that the subject matter
regarding the equivalence of PPS and PEEK materials, which is
disclosed in U.S. Patent No. 5,043,112, is not disclosed in U.S.
Patent No. 5,246,647 and in the present application.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 95-4970
Application No. 08/012,,872
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Howard M. Peters
Phillips, Moore, Lempio & Finley
399 Sherman Ave., Ste. 10
Palo Alto, CA 94306-1827