Theresa Chang et al.

Patent Trials and Appeals Board

Mar 12, 2020

13907126 - (D) (P.T.A.B. Mar. 12, 2020)

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.
13/907,126 05/31/2013 Theresa Chang SP12-149 2988
22928 7590 03/12/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
03/12/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THERESA CHANG, DAVID FERRUGHELLI,
ROBERT RANDALL HANCOCK JR., TRISTA NICOLE HESCH,
RANDALL D. PARTRIDGE, and EMMANUEL ULYSSES
____________

Appeal 2018-006268
Application 13/907,126
Technology Center 1700
____________

Before ELIZABETH M. ROESEL, MONTÉ T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–10 and 14–20, which are all of the claims
pending in this application.3 We have jurisdiction under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed May 31, 2013
(“Spec.”); Final Office Action dated May 1, 2017 (“Final Act.”); Advisory
Action dated July 31, 2017 (“Advisory Act.”); Appeal Brief filed Dec. 6,
2017 (“Appeal Br.”); Examiner’s Answer dated Mar. 22, 2018 (“Ans.”); and
Reply Brief filed May 22, 2018 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Corning Incorporated as the real
party in interest. Appeal Br. 2.
3 Claims 11–13 are cancelled. See Claims Listing entered July 17, 2017.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to methods for coating
polymeric membranes onto porous ceramic supports. Spec. ¶¶ 2, 6;
Abstract. Claim 1, the sole independent claim, illustrates the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
1. A method for preparing a polymer membrane on a porous
support, the method comprising:
providing a porous support having an outer wall, a first
end, a second end, and porous channel surfaces that
define a plurality of channels through the porous
support from the first end to the second end, the
plurality of channels comprising membrane
channels defined by membrane-channel surfaces;
placing the porous support in a coating vessel comprising
a vessel wall extending from a first end plate of the
coating vessel to a second end plate of the coating
vessel, wherein the vessel wall comprises at least
one port such that fluidic communication between
the at least one port and the plurality of channels
occurs only through the outer wall of the porous
support;
applying a vacuum to the at least one port on the vessel
wall thereby establishing a pressure differential
between the outer wall and the plurality of channels
that draws a fluid from the plurality of channels
through the outer wall of the porous support;
drawing a pre-polymer coating solution through the
membrane-channel surfaces, thereby applying the
pre-polymer coating solution to at least the
membrane-channel surfaces while maintaining the
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pressure differential to form a pre-polymer layer on
the membrane-channel surfaces; and
curing the pre-polymer layer to form the polymer
membrane.
Appeal Br. 19 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Craun et al. (“Craun”) US 5,252,637 Oct. 12, 1993
Okajima et al. (“Okajima”) US 6,403,224 B1 June 11, 2002
Jiang et al. (“Jiang”) US 2009/0110873 A1 Apr. 30, 2009
Pattil et al. (“Pattil”) US 2010/0059441 A1 Mar. 11, 2010
Komoda et al. (“Isomura”) EP 1070533 A1 Jan. 24, 2001
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–10 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Jiang in view of Isomura in view of Pattil.
(“Rejection 1”). Final Act. 3.
2. Claims 14–20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Jiang in view of Isomura in view of Pattil in view
of Craun in view of Okajima (“Rejection 2”). Id. at 6.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
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Advisory Action, and Final Office Action, which we adopt as our own. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 1–10 under § 103(a) as obvious over the
combination of Jiang, Isomura, and Pattil (Final Act. 3–5), which we refer to
as Rejection 1. In response to the Examiner’s rejection, Appellant presents
argument for the patentability of claims 1–10 as a group. Appeal Br. 7. We
select claim 1 as representative and claims 2–10 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Jiang, Isomura, and
Pattil suggests a method for manufacturing an inorganic/organic hybrid
membrane structure satisfying all of the limitations of claim 1 and concludes
the combination would have rendered the claim obvious. Final Act. 3–4.
The Examiner relies on the combination of Jiang and Pattil for suggesting
the majority of the limitations of the claim. Id. at 3–4 (citing Jiang,
Abstract, Figs. 2A, 2B, 4, ¶¶ 64, 69, 77, 78, 108, 110; Pattil, Abstract, ¶¶ 20,
26).
Regarding the “at least one port such that fluidic communication
between the at least one port and the plurality of channels occurs only
through the outer wall of the porous support,” recitation of claim 1, the
Examiner relies on Isomura for teaching or suggesting that element of the
claim. Id. at 3–4. In particular, the Examiner finds Isomura teaches a
coating apparatus used in the manufacture of a filter, which comprises a
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pump for supplying coating material into a substrate and a port4 that only
has fluid communication with the interior of the substrate via the outer wall
of the substrate. Id. at 3–4 (citing Isomura ¶¶ 1, 83–87).
Based on the above findings, the Examiner concludes
it would have been obvious to one of ordinary skill in the
art at the time the invention was made to substitute the
coating apparatus of Jiang with that of Isomura because
both are used to successfully deposit a coating on the
interior of a porous substrate.
Id. at 4.
Appellant argues principally the Examiner’s rejection should be
reversed because the Examiner has not provided reasoning or rationale for
one of ordinary skill in the art to modify Jiang in view of Isomura and Pattil
to arrive at the claimed invention. Appeal Br. 9–14; Reply Br. 3–9.
Appellant argues that, in contrast to the Examiner’s rejection, one of
ordinary skill would not have modified Jiang in view of Isomura because the
references are not directed to applying the same types of materials to the
same types of substrate. Appeal Br. 10. In particular, Appellant contends
Jiang is directed to applying a polymer membrane to a substrate with small
pore sizes, generally a pore size less than 3 µm; while Isomura, on the other
hand, is directed to applying a ceramic coating to a substrate with relatively
large pore sizes, ranging from 0.05 to 50 µm. Id. at 10–11.

4 At page 4 of the Final Office Action, it appears the Examiner incorrectly
identifies element 13 of Figure 4 of Isomura as a “port” (but see Isomura ¶ 7
(referencing “vacuum pump 13”)). We note, however, Appellant does not
specifically raise this as an issue or argue the Examiner’s finding in this
regard in either the Appeal or the Reply Briefs.
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Appellant further argues that Isomura does not comprise a “plurality
of channels,” as recited in the claim and “there is no reason or rationale for
one of ordinary skill in the art to have expected that the pressure differential
disclosed in Isomura would provide any benefit to an interior channel of a
substrate.” Id. at 11.
Appellant also argues one of ordinary skill in the art would have
recognized the “fundamental differences between Jiang and Isomura” and
“conclude[d] that there is no reason or rationale to have modified the method
of Jiang with the method and apparatus of Isomura.” Id. at 11; see also id. at
13 (arguing the Examiner does not “provide reasoning with any technical
underpinning to address how this result is predictable given the fundamental
differences between Jiang and Isomura”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the Examiner’s fact-finding and
reasoning provided at pages 3–5 of the Answer and pages 3–4 of the Final
Office Action, which we find is supported by a preponderance of the
evidence. Jiang, Abstract, Figs. 2A, 2B, 4, ¶¶ 64, 69, 77, 78, 108, 110;
Isomura, Fig. 4, ¶¶ 1, 83–87; Pattil, Abstract, ¶¶ 20, 26.
Contrary to what Appellant argues, we find the Examiner does
provide a reasonable basis to evince why one of ordinary skill in the art
would have combined the teachings of the cited art to arrive at the claimed
invention. As the Examiner finds (Final Act. 3–4), both Jiang and Isomura
teach analogous processes for applying a coating material onto an interior
channel of a porous substrate utilizing a vacuum. Jiang, Abstract, Figs. 2A,
2B, 4, ¶ 108; Isomura, Fig. 4, ¶¶ 1, 83–87. As the Examiner further finds
(Ans. 3), Isomura teaches, in the context of forming a filter, a process that
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utilizes a vacuum applied to the outer circumference side of the substrate 1
to assist in deposition (Isomura ¶ 86), which is an alternative to Jiang’s
process whereby a vacuum is applied to the end of the substrate to form a
filter (Jiang ¶ 108).
As the Examiner explains (Ans. 3–5; Final Act. 4), it would have been
obvious to one of ordinary skill in the art to have modified Jiang’s coating
process to utilize a vacuum applied to the outer circumference side of the
substrate, as taught by Isomura, because both Jiang and Isomura are
analogous processes known in the art for depositing a coating on the interior
of a porous substrate, and one of ordinary skill would have had a reasonable
expectation of success in doing so. Indeed, it is well-settled that the mere
substitution of one equivalent for another known in the art is likely to be
obvious when it does no more than yield predictable results. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Appellant fails to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant’s argument that Jiang and Isomura are not directed to
applying the same types of materials to the same types of substrate (Appeal
Br. 10) is not persuasive because it is premised on what Appellant contends
each reference teaches individually, and not the combined teachings of the
cited references as a whole and what the combined teachings would have
suggested to one of ordinary skill in the art. One cannot show
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non-obviousness by attacking references individually where the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413,425
(CCPA1981).
Contrary to what Appellant’s argument seems to imply, the
Examiner’s rejection does not require applying the coating material used in
Isomura to Jiang’s substrate. Rather, as previously discussed, the rejection
involves modifying Jiang’s coating process to utilize a vacuum applied to
the outer circumference side of the substrate, as taught by Isomura.
Appellant’s contentions that “Jiang is directed to applying a coating to
a substrate with small pore sizes” (Appeal Br. 10) and “Isomura is directed
to applying a coating to a substrate with large pore sizes” (id. at 10–11) are
not well-taken because they are unsupported by persuasive evidence in the
record. Rather, as Appellant seems to acknowledge in footnote 1 at the
bottom of page 10 of the Appeal Brief, Jiang and Isomura actually disclose
substrates having pore size ranges, which overlap. See Jiang ¶ 44
(disclosing “a median pore size of 25 microns or less”); Isomura ¶ 25
(disclosing a “pore size of 0.05 to 50 μm”).
Moreover, as the Examiner finds (Ans. 3–4), because both Jiang’s and
Isomura’s deposition processes are analogous, one of ordinary skill would
have reasonably expected the vacuum to be capable of acting on the coating
material through the substrate pores. See Jiang ¶ 108 (disclosing the
“vacuum can be applied until a suitable pressure (e.g., 150 mmHg) is
achieved”); Isomura ¶ 86 (disclosing that “a differential filtration pressure
was applied between the outer circumference side of the substrate 1 and the
inside of the through-hole 17 by evacuating the inside of the vacuum
chamber 6 at a reduced pressure of 0.1 atm”).
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Appellant’s argument that “the substrate of Isomura does not
comprise a ‘plurality of channels’” (Appeal Br. 11) is misplaced and not
persuasive of reversible error in the Examiner’s rejection because the
Examiner does not rely on Isomura for teaching that element of the claim.
Keller, 642 F.2d at 425. Rather, as the Examiner finds (Final Act. 3), Jiang
is relied upon for teaching the “plurality of channels” recitation claim 1. See
Jiang, Figs. 2A, 2B, ¶ 89 (identifying a “plurality of inner channels 12”)).
We find equally unpersuasive Appellant’s assertions that “there is no
reason or rationale for one of ordinary skill in the art to have expected that
the pressure differential disclosed in Isomura would provide any benefit to
an interior channel of a substrate” (Appeal Br. 11) and “no reason or
rationale to have modified the method of Jiang with the method and
apparatus of Isomura” (id. at 11) because they are conclusory and
unsupported by persuasive evidence in the record. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we affirm the Examiner’s rejection of claims 1–10 under
pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of Jiang,
Isomura, and Pattil.
Rejection 2
The Examiner rejects claims 14–20 under § 103(a) as obvious over
the combination of Jiang, Isomura, Pattil, Craun, and Okajima (Final
Act. 6–8), which we refer to as Rejection 2.
In response to the Examiner’s rejection, Appellant presents arguments
for the patentability of claims 14–20 as a group. Appeal Br. 15. We select
claim 14 as representative and claims 15–20 stand or fall with claim 14.
37 C.F.R. § 41.37(c)(1)(iv).
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Claim 14 is reproduced below from the Claims Appendix to the
Appeal Brief:
14. The method of claim 10, wherein the pre-polymer
coating solution is an oil-in water emulsion comprising:
an aqueous phase;
an oil phase dispersed in the aqueous phase and containing
the polymer precursor in the water-immiscible
organic solvent; and
a surfactant.
Appeal Br. 21 (Claims Appendix) (key disputed claim language italicized
and bolded).
The Examiner determines that the combination of Jiang, Isomura,
Pattil, Craun, and Okajima suggests a method satisfying all of the limitations
of claim 14 and concludes the combination would have rendered the claim
obvious. Final Act. 6.
Appellant argues the Examiner’s rejection of claim 14 should be
reversed for the same reasons previously presented above in response to the
Examiner’s rejection of claim 1. Appeal Br. 15–16; Reply Br. 10. We do
not find this argument persuasive for principally the same reasons discussed
above for affirming the Examiner’s rejection of claim 1.
Appellant further argues that the Examiner’s rejection of claim 14
should be reversed because “Craun and Okajima do not provide any reason
or rationale for one of ordinary skill in the art to use the coatings disclosed in
these references on a porous support” and one of ordinary skill in the art
would not have had a reasonable expectation of success in doing so. Appeal
Brief 16; see also Reply Br. 11–12 (same).

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Appellant’s argument is not persuasive because it is premised on what
Appellant contends the Craun and Okajima references teach individually and
not the combined teachings of the cited references as a whole and what the
combined teachings would have suggested to one of ordinary skill in the art.
Keller, 642 F.2d 413,425 (CCPA1981).
As the Examiner explains (Ans. 5), Craun and Okajima are relied
upon for teaching the form of the coating, i.e. an aqueous emulsion, and as
evidentiary support to explain why it would have been preferable to one of
ordinary skill in the art to have used an aqueous emulsion as an alternative to
using an organic solvent. Craun 2:47–53, 3:23–26; Okajima 11:41–58; see
also KSR, 550 U.S. at 420 (explaining that any need or problem known in
the art can provide a reason for combining the elements in the manner
claimed).
Moreover, based on the Examiner’s fact-finding and reasoning
provided at page 5 of the Answer and page 6 of the Final Office Action, we
find a preponderance of the evidence and sound technical reasoning support
the Examiner’s findings and determination that it would have been obvious
to one of ordinary skill to have arrived at the claimed invention based on the
combined teachings of the cited art. Jiang, Abstract, Figs. 2A, 2B, 4, ¶¶ 64,
69, 77, 78, 108, 110; Isomura, Fig. 4, ¶¶ 1, 83–87; Pattil, Abstract, ¶¶ 20, 26;
Craun 2:47–53, 3:23–26, 4:36–68, 5:34–52; Okajima 11:41–58.
Appellant’s mere disagreement as to the Examiner’s factual findings
and reasoning for combining the references, without more, is insufficient to
establish reversible error. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as
to the existence of factual disputes do not amount to a developed
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argument.”); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(explaining that mere lawyer’s arguments or conclusory statements, which
are unsupported by concrete factual evidence, are entitled to little probative
value).
Accordingly, we affirm the Examiner’s rejection of claims 14–20
under 35 U.S.C. § 103(a) as obvious over the combination of Jiang, Isomura,
Pattil, Craun, and Okajima.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10 103(a) Jiang, Isomura,
Pattil

1–10
14–20 103(a) Jiang, Isomura,
Pattil, Craun,
Okajima
14–20
Overall
Outcome
1–10,
14–20

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)(iv).
AFFIRMED