Ex Parte Takaya et al

Patent Trial and Appeal Board

Dec 18, 2018

14346820 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/346,820 03/24/2014
35811 7590 12/20/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Kiyohiko Takaya
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.
TIP-14-1044 7127
EXAMINER
PEO, JONATHAN M
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIYOHIKO TAKA YA, KOJI NAKA TSUJI, MASAHIRO
KIMURA, TAKAO SASAKI, and HARUTOKI SHIMURA 1
(Applicant: TORAY INDUSTRIES, INC.)
Appeal2018---001018
Application 14/346,820
Technology Center 1700
Before BEYERL YA. FRANKLIN, A VEL YN N. ROSS, and MICHAEL G.
McMANUS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as TORi\Y LNDUSTRJ ES,
.lllC ..
Appeal 2018-001018
Application 14/346,820
Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
Claim 7 is illustrative of Appellants' subject matter on appeal and is set forth
below (with text in bold for emphasis):
7. A composite semipermeable membrane comprising a porous support
membrane made of a substrate and a porous support layer and a polyamide
separation-functional layer disposed on the porous support layer, wherein a zeta
potential of the separation-functional layer at pH 6 is -20 mV or lower, and a zeta
potential difference between potentials of the separation-functional layer at pH 10
and pH 3 is 25 mV or smaller, wherein the separation-functional layer comprises a
crosslinked polyamide obtained by the interfacial polycondensation of a
polyfunctional amine with a polyfunctional acyl halide, wherein a zeta potential of
the separation-functional layer is measured with an electrophoretic light scattering
photometer using liquids prepared by dispersing particles of polystyrene latex to be
monitored in each of aqueous 10 mM-NaCl solutions which are adjusted to pH 6,
pH 10 and pH 3, and the membrane has a NaCl rejection ratio, evaluated at a
temperature of 25°C, a pH of 7, and a sodium chloride concentration of 2000 ppm
and an operating pressure of 1.55 MPa, of 99.3%, or more.
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Appeal 2018-001018
Application 14/346,820
The Examiner relies on the following prior art references as evidence of
unpatentability:
Yoshida et al. (Yoshida '113)2
Takagi et al. (Takagi '131 )3
WO 2010/126113 Al
W02011/07813I Al
Nov. 4, 2010
Jun.20,2011
Bellona et al., The Role of Membrane Surface Charge and Solute Physic-chemical
Properties in the Rejection of Organic Acids by NF Membranes, Journal of
Membrane Science 249, pp. 227-234 (2005).
Mondal et al., Produced Water Treatment by Nanofiltration and Reverse Osmosis
Membranes, Journal of Membrane Science 322, pp. 162-170 (2008).
Wang et al., The Influence of Dispersed Phases on Polyamide/ZIF-8 Nanofiltration
Membranes for Dye Removal From Water, Royal Society of Chemistry, 50942-
50954 (2015).
Filmtec, FILMTEC Basics of RO and NF: Membrane Description, Tech Manual
Excerpt,
Dow, http://msdssearch.dow.com/PublishedLiteratureDOWCOM/dh_0042/0901 b80
38004 2dd8.pdf, obtained from Web on December 19, 2016, 2 total pages).
THE REJECTIONS
1. Claims 7-10, 12, and 13 are rejected underpre-AIA35 U.S.C. § I02(b)
as being anticipated by Bellona as evidenced by Mondal, and as evidenced by
Wang, and as evidenced by FILMTEC.
2. Claim 11 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Bellona, as evidenced by Mondal, and as evidenced by Wang in
view of Yoshida.
2 As translated by machine translation.
3 As translated by machine translation.
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Appeal 2018-001018
Application 14/346,820
3. Claim 13 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Bellona, as evidenced by Mondal, and as evidenced by Wang
in view of Takagi.
ANALYSIS
To the extent that Appellants have presented substantive arguments for the
separate patentability of any individual claim on appeal, we will address each
separately consistent with 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports the
Examiner's findings and conclusion that the subject matter of Appellants' claims are
unpatentable over the applied art. Accordingly, we sustain each of the Examiner's
rejections on appeal essentially for the reasons set forth in the Final Office Action
and in the Answer, and affirm with the following emphasis.
It is the Examiner's position that because Bellona's membrane is structurally
the same, the claimed NaCl rejection ratio is an inherent property of the membrane.
Ans. 17.
Notably, Appellants do not argue that Bellona's membrane is not structurally
the same. Appeal Br. 2-3. Rather, Appellants present a Declaration in an effort to
show that the membrane of Bellona does not achieve a NaCl rejection ratio
( evaluated at a temperature of 25°C, a pH of 7, and a sodium chloride concentration
of 2000 ppm and an operating pressure of 1.55 MPa) of99.3% or more, as claimed.
The Examiner states that the Declaration evidence is not convincing because an
actual test of Bellona's membrane was not conducted; rather an extrapolation was
calculated. Ans. 13. Declaration, pp. 1-3.
In the Reply Brief, Appellants argue that the Examiner has not established
that the NF-90 membrane disclosed in Bellona inherently has the claimed NaCl
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Application 14/346,820
rejection ratio. Reply Br. 1. However, this is not an accurate position. We note that
when a claimed product appears to be substantially identical to a product disclosed
by the prior art, the burden is on the Appellants to prove that the product of the prior
art does not necessarily or inherently possess characteristics or properties attributed
to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255 (CCPA 1977).
In the instant case, as stated supra, there is no dispute that Bellona's
membrane is structurally the same. Hence, the burden is on Appellants to prove that
the product of the prior art does not necessarily or inherently possess characteristics
or properties attributed to the claimed product. The Declaration calculates that
Bellona's membrane has a NaCl rejection ratio of 99.1 %. There is dispute by the
Examiner and Appellants regarding the correctness of the use of significant figures
in the calculations. There is also dispute regarding retention versus rejection ratio.
Ans. 12. Reply Br. 1. But, the dispositive issue raised by the Examiner, and notably
not adequately addressed by Appellants in the record, is that actual testing of the
membrane of Bellona was not conducted, which would be more persuasive than the
extrapolation calculations set forth in the Declaration. Ans. 13. We note that all of
the competent rebuttal evidence taken as a whole should be weighed against the
evidence supporting the primafacie case. In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). We also note that "evidence of unexpected results and other secondary
considerations will not necessarily overcome a strong prima facie showing ... ".
Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009). In
the instant case, we agree with the Examiner that the rebuttal evidence (provided in
the Declaration) does not outweigh the strongprimafacie case of anticipation.
In view of the above, we affirm Rejection 1. Because Appellants rely upon
similar arguments for Rejections 2 and 3 (Appeal Br. 4), we also affirm these
rejections for the same reasons that we affirm Rejection 1.
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Each rejection is affirmed.
DECISION
TIME PERIOD
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
ORDER
AFFIRMED
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