Ex Parte Verpoort et al

Patent Trial and Appeal Board

Sep 25, 2017

13932857 (P.T.A.B. Sep. 25, 2017)

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.
13/932,857 07/01/2013 Thierry Verpoort 073510.0121 1017
23640 7590 09/27/2017
Baker Botts L.L.P.
910 Louisiana Street, One Shell Plaza
HOUSTON, TX 77002
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
debie.hernandez @ bakerbotts. com
susan.stewart@bakerbotts.com
sydney.oldham@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THIERRY VERPOORT
and STEPHANE CHOLLET
Appeal 2017-001763
Application 13/932,857
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35U.S.C. § 134 from the Examiner’s March
15, 2016 decision finally rejecting claims 1—20. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to the filtration of blood or a blood
component and to the separation and collection of different constituents,
1 Appellants state that the real party in interest is Macopharma (Appeal Br. 3).
Appeal 2016-001763
Application 13/932,857
such as leukocytes, from the blood (Spec. Tflf 2—3). Claim 1 is representative
and is reproduced below from the Claims Appendix of the Appeal Brief
{emphasis added):
1. A fdtration unit for removal of leukocytes from a fluid, the
fdtration unit comprising an outer casing comprising: at least
one inlet aperture and at least one outlet aperture between which
a fluid to be filtered flows in one direction from upstream near
the inlet aperture to downstream near the outlet aperture; and a
porous element comprising a medium which, when the fluidflows
through it, removes leukocytes by adsorption and fdtration, the
medium comprising: a plurality of stacked layers of a porous
non-woven material with substantially the same composition,
having an upstream side and a downstream side, wherein the
plurality of stacked layers comprises at least one first layer and
at least one second layer, wherein the at least one second layer
is disposed downstream of the at least one first layer, wherein the
at least one first layer has an average pore size in the range of
about 5 pm to about 15 pm and comprises fibers having an
average fiber diameter in the range of from about 1 pm to about
3 pm, wherein the at least one second layer has an average pore
size in the range of from about 2 pm to about 10 pm and
comprises fibers having an average fiber diameter in the range of
from about 1 pm to about 3 pm, and further wherein the average
pore size of the at least one second layer is smaller than the
average pore size of the at least one first layer and the average
fiber diameter of the at least one first layer and the at least one
second layer are the same.
Appeal Br. 14 (Claims App.).
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REJECTIONS
(1) Claims 1—20 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
S o wemimo-Coker.2
(2) Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sowemimo-Coker and further in view of Dalle.3
Appellants do not offer separate arguments in support of any of the
dependent claims; arguments are directed to whether Sowemimo-Coker
discloses, teaches, or suggests limitations recited in independent claim 1 (see
Appeal Br. 7—12). Accordingly, our discussion will focus on Rejection (1)
to claim 1. Independent claims 14 and 19 will stand or fall with claim 1;
dependent claims 2—13, 15—18, and 20 will stand or fall with their respective
independent claims. 37 C.F.R. § 41.37(c)(l)(iv).
DISCUSSION
Rejection (1)
35 U.S.C. $ 102(b)
It is well established that “[a] prior art reference anticipates a patent
claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. CoxFibernet Va., Inc., 602 F.3d 1325, 1336—37 (Fed. Cir. 2010)).
2 Sowemimo-Coker et al., U.S. Patent Pub. No. 2006/0016753 Al, issued
Jan. 26, 2006.
3 Dalle et al., EP 0953361 Al, published Nov. 3, 1999. We will refer to the
translation, as do both Appellants and the Examiner, because Dalle is in
French.
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The anticipatory reference, furthermore, must disclose the claimed invention
“such that a skilled artisan could take its teachings in combination with his
own knowledge of the particular art and be in possession of the invention.”
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In reLeGrice,
301 F.2d 929, 936 (CCPA 1962)).
In this instance, Appellants argue, inter alia, that the Examiner has
failed to show that Sowemimo-Coker discloses each and every limitation of
claim 1 (Appeal Br. 6). Particularly, Appellants argue that Sowemimo-
Coker fails to disclose “the limitation wherein ‘the average fiber diameter of
the at least one first layer and the at least one second layer are the same’”
(id.).
The Examiner, however, finds that the limitations in these claims read
on Sowemimo-Coker’s disclosure because the applied prior art discloses that
the first layer has a fiber diameter of 2.7 pm, while the second layer has a
fiber diameter of 3.0 pm (Final Act. 3—4, citing Sowemimo-Coker || 107—
09). There is no dispute that these disclosed diameters are different (see
Final Act. 7). However, according to the Examiner, Appellants’ argument
“is not persuasive because the claimed diameters are in a wide range; there is
no significance in the difference between the 2.7 and the 3 microns when the
claim requires only ‘about 1 to about 3 microns’” (id.).
During prosecution, words in the claims under examination are given
their broadest reasonable interpretation. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). We agree with Appellants that the
Specification includes no suggestion that the claimed limitation “the same”
has any meaning other than its plain and ordinary meaning (see Appeal Br.
8). Based on the language of the claim, claim 1 requires that no difference
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Application 13/932,857
exists between the average fiber diameters of at least one first layer and at
least one second layer.
Appellants’ arguments comport with our construction of “the same” in
light of the plain and ordinary meaning of the limitation. Thus, Appellants’
arguments {id. at 7—9) are persuasive that the evidence of record does not
support the Examiner’s findings that there is no significance in the
difference between the 2.7 and the 3 micron diameters of Sowemimo-
Coker’s first and second layers, respectively. Graves, 69 F.3d at 1152.
Because Sowemimo-Coker does not disclose that the claimed average
fiber diameter of the first layer and the second layer are the same, we find
that the Examiner has erred in finding that Sowemimo-Coker anticipates
claim 1. Montgomery, 677 F.3d at 1379. Accordingly, we reverse the
rejection of claims 1—20 under 35 U.S.C. § 102(b) as anticipated by
Sowemimo-Coker.
35 U.S.C. $ 103(a)
The Examiner determined that Sowemimo-Coker
teaches the variety of conditions to be considered and the purpose
as depleting leukocytes while passing other desired components
to pass through the filter.... [Thus,] it would have been obvious
to one of ordinary skill in the art to optimize the design of the
filter to suit the desired purpose ....
(Final Act. 4, citing Sowemimo-Coker || 44, 54).
Appellants make the following arguments urging reversal of the
Examiner’s alternative § 103(a) rejection: (1) it would not be obvious to try
first and second layers of the same average fiber diameter because
“Sowemimo-Coker does not show that there were a finite number of
identified and predictable solutions, or that any obvious to try combinations
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had a reasonable expectation of success” (Appeal Br. 10); (2) Sowemimo-
Coker failed to recognize the problems that Appellants identified in prior art
filter apparatuses, and did not “propose[] what variables may be particularly
useful in addressing them” {id. at 11); and (3) “the Examiner provided no
further support as to how or why one of ordinary skill in the art could have
optimized” the parameters of pore and fiber sizes for the required
applications {id.).
With regard to arguments (1) and (3), it is well established that a
reference is good for all it fairly teaches a person having ordinary skill in the
art, even when the teaching is a cursory mention. E.g., In re Mills, 916 F.2d
680, 682 (Fed. Cir. 1990). Appellants’ arguments are not persuasive
because they fail to adequately address the Examiner’s position. As the
Examiner found, Sowemi mo-Coker teaches
the common theme of stacks of three or more filter elements . . .,
each filter element including two or more fibrous layers, wherein
the intermediate element differs from the upstream and the
downstream elements with respect to at least one of: basis
weight, P8 value, pore structure, average fiber diameter, average
voids volume, and number of layers ....
(Ans. 2—3, citing Sowemimo-Coker || 35—40).
The Supreme Court has made clear that an obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421. Therefore, we agree with the Examiner that Sowemimo-Coker
suggests that “the difference can be just pore structure [pore size], and the
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fiber diameter can be the same in all three layers” with the average fiber
diameter of about 3.5 microns or less (Ans. 3, citing Sowemimo-Coker 119;
see also Final Act. 3).
Appellants’ argument (2) is unpersuasive because the applied prior
art’s silence regarding the problems associated with prior art filter
apparatuses is immaterial to our disposition. See Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005)
(“One of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.”);
see also In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992) (Nies, C.J.,
concurring).
Thus, Appellants’ arguments have failed to identify reversible error in
the Examiner’s reasoned determination that Sowemimo-Coker renders claim
1 obvious. Accordingly, we affirm the alternative rejection of claims 1—20
under 35 U.S.C. § 103(a) as unpatentable over Sowemimo-Coker.
Rejection (2)
Appellants urge reversal of the Examiner’s § 103(a) rejection based
on Sowemimo-Coker and further in view of Dalle by relying on the same
arguments that the Sowemimo-Coker does not disclose, teach, or suggest
that “the average fiber diameter of the at least one first layer and the at least
one second layer are the same,” as recited in claim 1 (see Appeal Br. 12).
For the same reasons set forth above, Appellants’ arguments are not
persuasive. Thus, we affirm this obviousness rejection of claim 1.
Accordingly, we affirm the rejection of claims 1—20 under 35 U.S.C.
§ 103(a) as unpatentable over Sowemimo-Coker and further in view of
Dalle.
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CONCLUSION
We REVERSE the rejection of claims 1—20 under 35 U.S.C. § 102(b)
as anticipated by Sowemimo-Coker.
We AFFIRM the rejection of claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Sowemimo-Coker.
We AFFIRM the rejection of claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Sowemimo-Coker and further in view of Dalle.
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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