Jonathan F. Hester et al.Download PDFPatent Trials and Appeals BoardOct 9, 201915206659 - (D) (P.T.A.B. Oct. 9, 2019) Copy Citation 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. 15/206,659 07/11/2016 Jonathan F. Hester 64850US012 9061 32692 7590 10/09/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER PATEL, PRANAV N ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 10/09/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JONATHAN F. HESTER, JAMES S. MROZINSKI, and DEREK J. DEHN ____________________ Appeal 2019-000093 Application 15/206,659 Technology Center 1700 ____________________ Before ROMULO H. DELMENDO, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL1 1 The record on appeal includes the Specification of July 11, 2016 (“Spec.”), the Examiner’s Final Action of October 2, 2017 (“Final Act.”), the Advisory Action of December 22, 2017 (“Advisory Action”), the Pre-Appeal Conference Decision of February 20, 2018 (“Pre-Appeal Decision”), Appeal Brief of April 2, 2018 (“Appeal Br.”), the Examiner’s Answer of July 27, 2018 (“Ans.”), and Reply Brief of September 26, 2018 (“Reply Br.”). Appeal 2019-000093 Application 15/206,659 2 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims 15–31. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER “The present disclosure relates to porous membranes that have at least two zones having different average pore sizes.” Spec. 1:8–9. Claims 15 and 24, reproduced below, are illustrative of the claimed subject matter: 15. A method of making a porous membrane the method comprising: forming a first composition in a first extruder, the first composition comprising a first crystallizable polymer, a first nucleating agent and a diluent, wherein the first composition has a first concentration of the first nucleating agent, and wherein the first extruder is operated at a first specific energy input; forming a second composition in a second extruder, the second composition comprising a second crystallizable polymer and a diluent, wherein the second extruder is operated at a second specific energy input; coextruding the first composition and the second composition to form a multilayer article; and cooling the multilayer article to allow phase separation of the diluent from the crystallizable polymers to form a porous membrane wherein the first specific energy input is not the same as the second specific energy input. 2 3M Innovative Properties Company is listed as Applicant (Appellant). Application Data Sheet of July 11, 2016. Appellant states that the “real party in interest is 3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota.” Appeal Br. 2. Appeal 2019-000093 Application 15/206,659 3 24. A method of making a porous membrane the method comprising: forming a first composition in a first extruder, the first composition comprising a first crystallizable polyolefin polymer, a first nucleating agent and a diluent, wherein the first composition has a first concentration of the first nucleating agent; forming a second composition in a second extruder, the second composition comprising a second crystallizable polyolefin polymer, a second nucleating agent and a diluent, wherein the second composition has a second concentration of the second nucleating agent; coextruding the first composition and the second composition to form a multilayer article; and cooling the multilayer article to allow phase separation of the diluent from the crystallizable polymers to form a porous membrane comprising a first zone and a second zone, wherein the crystallizable polymer is the same in the first zone and the second zone, the first zone having a first average pore size and the second zone having a second average pore size, wherein the first average pore size is not the same as the second average pore size; wherein the first nucleating agent and the second nucleating agent are the same or different, wherein the first concentration and the second concentration are the same or different, and with the proviso that the first nucleating agent and the first concentration are not the same as the second nucleating agent and the second concentration. Claims Appendix (Appeal Br. 23, 24–25). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Kaytor Yen US 6,171,689 B1 WO 2006/069307 A2 Jan. 9, 2001 June 29, 2006 Appeal 2019-000093 Application 15/206,659 4 REJECTIONS Claims 15–31 are rejected under pre-AIA 35 U.5.C. § 103(a) as being unpatentable over Kaytor in view of Yen. Final Act. 5.3 Claim 27 is alternatively rejected under pre-AIA 35 U.5.C. § 103(a) as being unpatentable over Yen. Final Act. 13. Claim 31 is alternatively rejected under pre-AIA 35 U.5.C. § 103(a) as being unpatentable over Yen in view of Kaytor. Final Act. 14. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that Appellant identifies reversible error, and we affirm the Examiner’s obviousness rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. 3 An anticipation rejection of claims 24–26 and 28–30 has been withdrawn and therefore is not before us. Final Act. 14–15; Ans. 13. Appeal 2019-000093 Application 15/206,659 5 Claim 154 The Examiner rejects claim 15 finding that Kaytor teaches all the recited limitations except “[a] first extruder is operated at a first specific energy input” and “[a] second extruder is operated at a second specific energy input” that is different from the first specific energy. Final Act. 6. The Examiner thus turns to Yen which describes extruding membrane solutions at different extruder screw speeds (e.g., 50 rpm and 200 rpm). Id. Based on Yen’s statement that the “appropriate amount of shear is an amount sufficient to form, in the extrusion apparatus, a homogeneous solution of polymer in porogen so that membranes can be extruded which do not contain defects” (Yen, p. 19 (cited in Final Act. 7)), the Examiner finds that a skilled artisan would have combined Yen with Kaytor “to control shear in order to provide sufficient mixing” to arrive at claim 15. Final Act. 7. In the Pre-Appeal Conference Decision, the Examiner provides a reference known as “Words of Wisdom” which provides an overview of the twin-screw extruders used in Yen. In both the Pre-Appeal Conference Decision and the Examiner’s Answer, the Examiner refers to Words of Wisdom and provides calculations showing that operating the prior art twin- screw extruder at different specific energy inputs leads to different speeds. For example, using example 1 of Yen which describes extruding a first membrane solution at 50 rpm and extruding a second membrane solution at 4 Appellant does not present separate arguments for the obviousness rejection of claims 16–23 over Kaytor in view Yen. See, e.g., Appeal Br. 4– 21. These claims, therefore, stand or fall with the obviousness rejection of claim 15. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-000093 Application 15/206,659 6 200 rpm, the Examiner calculates the respective specific energy inputs for these extruder speeds and tabulates them in the Answer. Ans. 15–16. Appellant argues that the Examiner’s calculations rely on parameters such as the horsepower and torque which are assumptions not found in Yen.5 Reply Br. 3.6 We are unpersuaded by this argument because claim 15 does not require the first and second specific energy input to be based on a particular parameter. All claim 15 requires is operating the extruder at two different specific energy inputs – which is shown by the Examiner’s calculations of the different specific energy at different prior art extrusion speeds. Appellant’s argument that other unperformed calculations “might result in some identical specific energy calculations for different extruders operating at different rpms and/or HPs” (Reply Br. 4) does not identify error in the Examiner’s finding that different specific energy inputs lead to different extruder speeds at least in some instances in the prior art. The Examiner’s finding is also consistent with the Specification which provides 5 Appellant raises arguments for the calculations performed in the Pre- Appeal Conference Decision. Appeal Br. 16–17 (arguing, for example, the calculations in the Pre-Appeal Conference Decision do not account for “the actual horsepower, maximum screw speed, and torque of each of extruder 1 and extruder 2”). The calculations provided in the Examiner’s Answer further refine those performed in the Pre-Appeal Conference Decision which address these arguments. Ans. 14–16 (providing calculations based on holding torque constant for the different extruder speeds and comparing the specific energy using various parameters including motor horse powers, max rpm and others). Appellant raises arguments in the Reply Brief in response to the Examiner’s Answer which we address herein. We are not persuaded by Appellant’s arguments regarding the calculations in the Pre-Appeal Conference Decision for the same reason that claim 15 does not require the specific energy to be based on any particular parameter. 6 The Reply Brief lacks page numbers and we therefore provide our own pagination. Appeal 2019-000093 Application 15/206,659 7 that “[i]ncreasing the screw speed increases the specific energy input to the extruder, e.g., increasing the rotations per minute (rpm).” Spec. 14:15–16. Appellant also argues that the Examiner erred “because the term ‘specific energy’ as used in the present application encompasses more factors than just ‘the amount of power that is being input by the motor into each kilogram of material being processed’, which is how ‘specific energy’ was defined in the evidentiary document ‘Words of Wisdom’.” Reply Br. 4. First and foremost, we note that an argument raised for the first time in a Reply Brief can be considered waived if Appellant does not explain why it could not have been raised previously. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). See also 37 C.F.R. § 41.41(b)(2). In this case, Appellant does not explain why this argument about “the definition of ‘specific energy’” could not have been raised in the opening brief which would have afforded the Examiner an opportunity to respond to it. See Reply Br. 3. In any event, instead of providing a definition of the “specific energy input” recited in claim 15 Appellant merely argues that “the present application discloses that there are numerous ways beyond the factors used in the ‘Words of Wisdom’ calculation that impacts the energy input at which an extruder is operated.” Id. at 4. The portion of the Specification, cited by Appeal 2019-000093 Application 15/206,659 8 Appellant, does not provide a definition of specific energy but instead states that: There are a number of ways of modifying the specific energy put into an extruder. Exemplary methods include, but are not limited to, modifying the screw speed, modifying the extruder temperature, modifying the extruder throughput, modifying the aggressiveness of the screw design, modifying the extruder length/diameter (L/D) ratio, and modifying the extruder pressure. Spec. 14:11–15; see also Reply Br. 4 (reproducing this portion of the Specification but citing it as Spec. 16:3–15). As noted supra, the Specification provides that one of the ways to vary specific energy input is by varying the screw speed which supports the Examiner’s finding that Yen’s teaching of operating an extruder at 50 rpm and 200 rpm meets the limitation at issue. Appellant lastly argues that there lacks sufficient reason to combine Kaytor and Yen because “the compositions of Kaytor contain flame retardant additives and can also include nucleating agents for inducing polymerization of a crystallizable polymer, whereas Yen is silent regarding both flame retardant additives and nucleating agents” and the combination would “not necessarily have predictable effects for forming membranes having the compositions of Kaytor.” Appeal Br. 9–10. From the outset, claim 15 does not exclude the presence of a flame retardant additive. Appellant also does not elaborate on why combining Kaytor’s extrusion process with Yen’s operation of an extruder at two different speeds would be an unpredictable art. We are therefore not persuaded by Appellants’ conclusory assertion. Appeal 2019-000093 Application 15/206,659 9 Moreover, as the Examiner points out, both Kaytor and Yen describe “forming two polymer solutions, sending each of the two polymer solutions in different extruders, coextruding the polymer solutions forming layers of polymeric membranes.” Ans. 17. Claim 15 is no more than the combination of familiar elements according to known methods, as shown by the Examiner, to yield the predictable product of “a porous membrane” which is all claim 15 requires. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We, thus, determine that the Examiner’s rationale for combining the references is based on articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See id. at 418. Claim 24 The Examiner rejects claim 247 finding, among others, that Yen describes membranes that “are asymmetric in that one layer has an average pore size different from the average pore size in a second layer” (Yen, p. 1) which teaches the limitation “the first zone having a first average pore size and the second zone having a second average pore size” as recited in claim 24. Final Act. 9–10. Appellant acknowledges that Kaytor states “[m]icroporous membranes or films have been utilized in a wide variety of applications, such as the filtration of solids, the ultrafiltration of colloidal matter, diffusion barriers or separators in electrochemical cells, in the preparation of synthetic leather, and in the preparation of fabric laminates.” Appeal Br. 18 (citing Kaytor 1:19–23). Appellant, however, argues that the Examiner erred in 7 Appellant does not present separate arguments for the obviousness rejection of claims 26 and 27–31 over Kaytor in view Yen. See, e.g., Appeal Br. 4–21. These claims, therefore, stand or fall with the obviousness rejection of claim 24. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-000093 Application 15/206,659 10 combining the references because, unlike Yen’s membrane which is used for filtration, “[n]one of the applications noted by Kaytor involve filtering particles, and no other motivation has been demonstrated to wish to form the first zone and the second zone having different pore sizes for the particular microporous articles described by Kaytor.” Id. at 10, 14.8 We are not persuaded by this argument because it does not address the Examiner’s rationale for combining the references, which is based on Yen’s teaching to use varying pore sizes so that “the overall useful life of the membrane is extended.” Yen, p. 1 (cited in Final Act. 10). Appellant also argues that the Examiner erred in combining the references because “there would not have been any motivation for a person of ordinary skill in the art to have looked to the disclosure of Yen to improve filtration properties of a microporous membrane of the disclosure of Kaytor.” Appeal Br. 19 (emphasis omitted). Again, this argument is not persuasive because it does not address the Examiner’s rationale to combine based on the references being analogous as well as Yen’s teaching to extend the useful life of the membrane. See Final Act. 10. Appellant’s argument regarding the particular structures of the products in Yen and Kaytor does not persuaded us otherwise for the same reason. Moreover, as we noted supra with regard to claim 15, claim 24 is likewise no more than the combination of familiar elements according to known methods, as shown by the Examiner, which yields a predictable result of a recited “porous membrane.” KSR, 550 U.S. at 416. We, thus, determine that the Examiner’s rationale for combining the references is based on 8 Appellant raises the same argument with regard to the Examiner’s analysis provided in the Advisory Action which we address collectively herein. Appeal 2019-000093 Application 15/206,659 11 articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See id. at 418. Claim 25 Claim 25 depends from claim 24 and further recites “wherein the first extruder is operated at a specific energy input, the second extruder is operated at a second specific energy input and the first specific energy input is not the same as the second specific energy input.” Appellant argues that the Examiner reversibly erred in rejecting claim 25 because the calculations in the Pre-Appeal Conference Decision are based on assumptions not found in the prior art. Appeal Br. 16–18. As we state in footnote 5, the further refined calculations provided in the Examiner’s Answer address these arguments based on the Pre-Appeal Conference Decision. As with claim 15, Appellant does not identify error in the Examiner’s finding that different specific energy inputs lead to different extruder speeds at least in some instances in the prior art. The rejection of claim 25 is therefore sustained. Claims 27 and 31 Appellant argues the rejection of claim 27 over Yen and the rejection of claim 31 over Yen in view of Kaytor under separate headings but without specificity. Appeal Br. 21. Appellant does not address the Examiner’s analysis rejecting claim 27 over Yen. Compare id., with Final Act. 13–14 (rejecting claim 27 as obvious in view of Yen alone). Nor does Appellant address the Examiner’s analysis rejecting claim 31 over Yen in view of Kaytor. Compare Appeal Br. 21, with Final Act. 13, 14. We affirm the rejections of claims 21 and 31 for lack of identification of reversible error. Appeal 2019-000093 Application 15/206,659 12 CONCLUSION The Examiner’s decision is affirmed. Claims Rejected Basis Affirmed Reversed 15–31 35 U.S.C. § 103(a) (pre-AIA) over Kaytor in view of Yen 15–31 27 35 U.S.C. § 103(a) (pre-AIA) over Yen 27 31 35 U.S.C. § 103(a) (pre-AIA) over Yen in view of Kaytor 31 Overall Outcome 15–31 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation