KURARAY CO., LTD.

Patent Trials and Appeals Board

Oct 13, 2021

2020005403 (P.T.A.B. Oct. 13, 2021)

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.
15/527,965 05/18/2017 Hiroe YOSHINOBU 503624US 3966
22850 7590 10/13/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROE YOSHINOBU and TETSUYA HANAMOTO1
____________

Appeal 2020-005403
Application 15/527,965
Technology Center 1700
____________

Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3 and 5–7. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to water filters. See, e.g.,
Spec. ¶¶ 1, 2; Claim 1. Claim 1 is reproduced below from page 15 (Claims
Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Kuraray Co., Ltd. Appeal Br. 2.
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1. An adsorption filter comprising activated carbon and a fibrillated
fibrous binder,
wherein
the activated carbon has a 0% particle diameter (D0) of 10 to 60
µm in a volume-based cumulative particle-size distribution,
wherein the particle diameter (D0) is a minimum particle size in
the volume-based cumulative particle-size distribution;
the activated carbon has a 50% particle diameter (D50) of 90 to
200 µm in the volume-based cumulative particle-size
distribution:
the fibrillated fibrous binder has a CSF value of 10 to 150 mL;
the adsorption filter comprises 4 to 8 parts by mass of the
fibrillated fibrous binder relative to 100 parts by mass of the
activated carbon; and
the adsorption filter has an initial turbidity removal ratio of less
than 65% under a condition of a space velocity (SV) of 200/hr or
more and 1000/hr or less.
ANALYSIS
Claims 1–3 and 5–7 stand rejected under 35 U.S.C. § 103 as
unpatentable over Yoshinobu (US 2012/0132578 A1, published May 31,
2012) and Sakai (JP 2011255310 A, dated Dec. 22, 2011).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated January 2, 2020, and in the Examiner’s Answer.
The Appellant presents separate arguments as to claims 1 and 6. We
address those claims below. The remaining claims will stand or fall with
claim 1, from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv).
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Claim 1. The Examiner finds that Yoshinobu teaches a filter within
the scope of claim 1 except that (1) Yoshinobu “does not specify the D0
value as claimed,” and (2) Yoshinobu does not specify the CSF value of its
binder. Final Act. 2–3.
As to (1), the Examiner finds that Yoshinobu teaches D50 values
within the scope of claim 1, that Yoshinobu teaches a standard deviation for
its particle sizes, and that Yoshinobu teaches that fine particles are
detrimental because they can increase clogging and enter the treated water.
Id. Based on these findings, the Examiner further finds that a person having
ordinary skill in the art would have understood that minimum particle size
(D0) is a result effective variable, and that it would have been obvious to
optimize that variable to “avoid[] too small particle sizes and fines . . . to
prevent clogging and ent[ering] fines in treated water.” Id.
The Examiner further finds that Sakai is consistent with that
optimization analysis because Sakai “also teaches . . . that many fines in the
particles can cause problems,” and Sakai teaches a mode particle size range
with a lower boundary of 20 µm, which suggests a D0 that falls within the
scope of claim 1. Id. at 3.
As to (2), the Examiner finds that Sakai teaches a filter comprising
activated carbon and binder, and that Sakai’s binder has a CSF value within
the scope of claim 1.
As to the initial turbidity removal ratio recited by claim 1, the
Examiner finds that it is an inherent property that would flow naturally from
the composition of the filter. Id.
The Appellant first argues that the prior art does not teach or suggest
the claimed D0 value. Appeal Br. 5–7 (citing Yoshinobu Decl. dated June
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27, 2019). In particular, the Appellant provides evidence containing a single
example that allegedly uses Yoshinobu’s D50 and a standard deviation of
1.46 (which falls within the scope of Yoshinobu’s disclosed standard
deviation range of 1.3 to 1.9) and argues that the experiment result using a
standard deviation of 1.46 “demonstrate[s] that D0 of activated carbon is not
10 µm or more in Yoshinobu.” Id. at 6. The Appellant also argues that
Sakai’s lower particle size boundary of 20 µm is a “mode diameter,” which
“is different from D0.” Id. at 7.
Those arguments are not persuasive. Even accepting that the
Appellant’s example using a D50 of 116.7 and particle size standard
deviation of 1.46 results in a minimum particle size less than 10 µm, that
fails to show that other particle size distributions taught or suggested by
Yoshinobu likewise have minimum particle sizes that fall beyond that scope
of claim 1. For example, the Appellant fails to address whether selecting a
D50 of 120 µm and a standard deviation of 1.3, as taught by Yoshinobu, see
Yoshinobu at Abstr., would have minimum particle sizes that fall beyond
that scope of claim 1. The Appellant appears to have cherry picked values
within the D50 and standard deviation ranges disclosed by Yoshinobu to
produce a desired result, without meaningfully addressing the Examiner’s
rationale involving the broader ranges disclosed by Yoshinobu.
The Appellant does not dispute the Examiner’s finding that
Yoshinobu discloses that minimum particle size is a result-effective variable
that affects clogging and other filter properties. The Examiner’s
determination that a person of ordinary skill in the art would have optimized
that variable to values that fall within the scope of claim 1 to achieve desired
filtration properties is consistent with the record. See, e.g., Yoshinobu ¶ 49
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(observing that small particles may increase clogging and enter the treated
water).
As to the Examiner’s reliance on Sakai, it is undisputed that Sakai
discloses a mode diameter rather than a D0 as recited by claim 1. See
Appeal Br. 7; Ans. 6. It is also undisputed, however, that Sakai discloses
that minimum particle size affects filter properties, and that Sakai’s lower
boundary mode diameter of 20 µm “gives a clear indication of what the
lower end diameters should be – closer to 20 microns, and diameters below
20 microns would be less and less desirable.” Ans. 6. Thus, Sakai provides
additional support for the Examiner’s determination that routine
optimization of minimum particle size reasonably would have led to particle
sizes falling within the scope of claim 1.
On this record, we are not persuaded of reversible error in the
Examiner’s rejection on the basis of the Appellant’s arguments concerning
the D0 value of claim 1.
The Appellant also argues that the filter of claim 1 yields
“unexpectedly superior properties compared to the filter of Yoshinobu, and
that Yoshinobu teaches away from the technical objectives of the present
application.” Appeal Br. 8. Specifically, the Appellant argues that the
claimed filter is concerned principally with improving clogging life, whereas
Yoshinobu concerns “all . . . filtering properties, such as filterability,
turbidity removal properties, and clogging properties.” Appeal Br. 8. The
Appellant also argues that “the minimum turbidity removal efficiency
required in the filter of Yoshinobu is 80%,” which is higher than the 65%
recited by claim 1. Id. at 9.
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Those arguments are not persuasive. As an initial matter, the
Appellant’s assertion that Yoshinobu “require[s]” minimum turbidity
removal of 80%, id., is contradicted by Yoshinobu’s express statement that
“it is preferable that the turbidity removal efficiency is no less than 80%.”
Yoshinobu ¶ 68 (emphasis added). As to alleged unexpected results, the
Appellant does not provide an explanation of why any allegedly superior
result as to clogging life would have been unexpected. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness.” (emphasis in original)). The Examiner explains in the Answer
that, contrary to the Appellant’s assertion, the results at issue are what a
person of ordinary skill in the art would have expected: reducing the initial
filtration (i.e., decreasing turbidity removal) extends clogging life. Ans. 7.
The Appellant provides no basis to doubt the Examiner’s finding on that
point. Balancing filtration ability with filter life would have been well
within the level of ordinary skill in the art. Yoshinobu appears to prefer
higher initial filtration, which may result in somewhat shorter clogging life,
e.g., Yoshinobu ¶ 67, but that fails to establish that it would not have been
obvious to select lower initial filtration to achieve extended clogging life.
Cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (“[T]he benefits, both lost and gained, should be weighed against one
another.”).
On this record, the Appellant has not persuasively established either
that Yoshinobu teaches away from the subject matter of claim 1 or that
unexpected results support a conclusion of nonobviousness in this case.
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Claim 6. Claim 6 depends from claim 1 and, in relevant part, narrows
the D0 of claim 1 to “13.1 to 55 µm.” Appeal Br. 16 (Claims Appendix).
The Examiner relies on the optimization analysis described above as
to claim 1. Ans. 10.
The entirety of the Appellant’s argument is that the particle sizes “of
claim 6 [are] representative of specific Examples in the specification, which
unquestionably show unexpected results compared to the cited references.”
Appeal Br. 12. The Appellant does not reference any particular example in
the Specification; nor, as above, does the Appellant provide an explanation
of why it would have been unexpected that reducing initial filtration ability
would have extended clogging life. Id.
The Appellant’s argument is unpersuasive for reasons set forth above
concerning claim 1, and because it is simply a naked assertion with no
support. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections . . . .”). The Appellant’s argument fails to
identify error in the Examiner’s rejection of claim 6.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7 103 Yoshinobu, Sakai 1–3, 5–7
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