Ex Parte Simmons et al

Board of Patent Appeals and Interferences

Mar 21, 2012

11386612 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/386,612 03/22/2006 Donald K. Simmons 2000.199 4568
29494 7590 03/21/2012
HAMMER & ASSOCIATES, P.C.
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226
EXAMINER
ARCIERO, ADAM A
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
03/21/2012 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 DONALD K. SIMMONS and
JOSEPH G. YARITZ
____________

Appeal 2010-009157
Application 11/386,612
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-009157
Application 11/386,612

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
twice rejecting claims 1-8, 31, 32, and 34-37, the only claims pending in the
Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a microporous membrane which is usable, for
example, as a separator for an electrochemical device. (Spec.3 1.) Claim 1 is
representative of the invention and is reproduced below from the Claims Appendix
to the Appeal Brief:
1. A membrane comprising a microporous sheet being made by a wet
process of a blend of a first ultra high molecular weight polyethylene having a first
molecular weight and a second ultra high molecular weight polyethylene having a
second molecular weight, said first molecular weight and said second molecular
weight being greater than 1 million and being different from one another.
Appellants request review of the following grounds of rejection (App. Br.
10):
1. claims 1-8 under 35 U.S.C. §102(b) as anticipated by or, in the
alternative, under 35 U.S.C. §103(a) as obvious over Junichi4, as evidenced by
Schwartz5 (Ans.6 3-6);

1 Office Action mailed Dec. 8, 2008.
2 Appeal Brief filed Jul. 2, 2009 (“App. Br.”).
3 Specification filed Mar. 22, 2006.
4 US 2000/195490 published July 14, 2000 (as translated).
5 Schwartz et al., Plastic Materials and Processes, Van Nostrand Reinhold Co.,
New York, NY, pg. 74-77 (1982).
6 Examiner’s Answer mailed Oct. 15, 2009.
Appeal 2010-009157
Application 11/386,612

3
2. claims 31, 32, 34, 35 and 37 under 35 U.S.C. §103(a) as obvious over
Junichi in view of Funaoka7 (Ans. 6-78); and
3. claim 36 under 35 U.S.C. §103(a) as obvious over Junichi in view of
Funaoka as applied to claims 31, 32, 34, 35, and 37, and further in view of Kaji9
(Ans. 8).
The sole issue presented for our consideration is: did the Examiner
reversibly err in finding that the claim term “wet process” fails to patentably
distinguish the structure of Appellants’ claimed membrane from Junichi’s
membrane? (See App. Br. 10 (“Each of these rejections is based upon the
Examiner giving the term ‘by a wet process’ no patentable weight.”), 12 (“The
claims stand or fall together.”); see generally, id. at 11-17 (failing to refute the
Examiner’s findings that Junichi discloses a porous membrane “compris[ing] a
mixture of a first UHPE powder having a molecular weight of 2,000,000 and a
second UHPE powder with a molecular weight of 4,500,000 (Detailed Description,
[Example 1] paragraph [0019]) [, b]oth first and second molecular weights [being]
greater than one million and different from one another” (Ans. 4, 6)).)
Appellants rely on Kesting10 to establish a structural difference between
Appellants’ and Junichi’s membranes. Specifically, Appellants direct us to
Kesting pages 262 and 290, and various Figures in Kesting to establish that the
pores formed by a “wet process” are spherical in shape, while the pores resulting

7 US 6,824,865 B1 issued November 30, 2004.
8 The statement of the rejection, as it appears on page 6 of the Answer,
inadvertently includes cancelled claim 33.
9 US 3,976,612 issued August 24, 1976
10 Kesting, R.E., Synthetic Polymer Membranes A Structural Perspective, 2nd
Edition, John Wiley & Sons, New York, NY (1985), pages 237-302.
Appeal 2010-009157
Application 11/386,612

4
from Junichi’s sintering process are in the form of “interstitial spaces formed
between closely packed spherical particles.” (App. Br. 14-16.)
We are in agreement with the Examiner’s assessment of Appellants’
evidence as insufficient to demonstrate a patentable difference in the structures of
Appellants’ and Junichi’s membranes. (Ans. 8-10.) As noted by the Examiner (id.
at 9), Appellants’ Specification is not specific as to the wet process utilized for
forming the claimed membrane. (See Spec. 2, 10-11.) However, the disclosure in
Kesting relied on by Appellants to establish that the pores in the claimed
membrane are spherical relates to membranes formed by a particular process, i.e.,
the thermal process of Castro. (See Kesting pp. 261-262.) The evidence likewise
fails to demonstrate that the particular process used by Junichi would necessarily
result in a membrane which structurally differs from Appellants’ claimed
membrane. (See Ans. 9 (noting that Kesting’s discussion of sintering processes is
not specific to Junichi’s process which uses a steam atmosphere).) Appellants
have not addressed the Examiner’s position regarding the deficiencies in the
evidence. (See generally, Rep. Br.)
In sum, for the reasons expressed in the Answer, we conclude that a
preponderance of the evidence weighs in favor of the Examiner’s finding of
anticipation as to appealed claims 1-8 and conclusion of obviousness as to
appealed claims 1-8, 31, 32, and 34-37.
The Examiner’s decision to reject claims 1-8, 31, 32, and 34-37 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).
AFFIRMED

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