TOYOBO CO., LTD.

Patent Trials and Appeals Board

Jul 29, 2020

15516969 - (D) (P.T.A.B. Jul. 29, 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.
15/516,969 04/05/2017 Takahito Nakao P170420US00 6017
38834 7590 07/29/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKAHITO NAKAO, MAYUMI AKASHI, MIYUKI YAO,
SEIJI WATANUKI, and TOORU KITAGAWA

Appeal 2019-006220
Application 15/516,969
Technology Center 1700
____________

Before JEFFREY T. SMITH, N. WHITNEY N. WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 5–8. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Toyobo
Co., Ltd. Appeal Br. 2.
Appeal 2019-006220
Application 15/516,969

2
The following rejection is presented for appeal:
Claims 1, 2, and 5–8 under 35 U.S.C. § 103 as unpatentable over
Higashi et al. (US 2015/0136692 A1, pub. May 21, 2015) with evidence
from Nagoya et al. (US 2004/0023017 A1, pub. Feb. 5, 2004).
Appellant’s invention relates generally to an osmosis separation
membrane composed of a material having excellent chemical durability, and
achieves both excellent separation property and high water permeability.
(Spec. 1.) Representative independent claim 1 is reproduced below:
1. A separation membrane having a density gradient from an
outer surface side to an inner surface side,

a ratio between a thickness of a dense layer having a dense
polymer density and a thickness of a coarse layer having a
coarse polymer density being in a range of 0.25 ≤ (the thickness
of the coarse layer)/[(the thickness of the dense layer)+(the
thickness of the coarse layer)] ≤ 0.6, when measuring polymer
density distribution in a thickness direction of the separation
membrane by Raman spectroscopy, and wherein

the coarse polymer density increases toward the dense layer,

the separation membrane comprises sulfonated poly(arylene
ether) having a repeating structure of a hydrophobic segment
represented by the following formula (I) and a hydrophilic
segment represented by the following formula (II):

Appeal 2019-006220
Application 15/516,969

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where m and n each represents a natural number equal to or
greater than 1, R1 and R2 represent -SO3M, M represents a
metal element, and a ratio of sulfonation expressed as a
percentage of the number of repetition of the formula (II) to a
total of the number of repetition of the formula (I) and the
number of repetition of the formula (II) in the sulfonated
poly(arylene ether) copolymer is higher than 10% and lower
than 50%.

Appeal Br. 13–14, Claims Appendix.

OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we reverse the Examiner’s
rejection based on the arguments presented by Appellant. We add the
following.
We limit our discussion to the independent claim 1.
The Examiner finds Higashi teaches a reverse osmosis membrane
with structure having a degree of sulfonation in the range 10–50%. (Final
Act. 2.) The Examiner finds Higashi does not explicitly teach the density
gradient required by independent claim 1. The Examiner further states:
the examiner respectfully submits that such density gradient is
inherently present in the Higashi membrane because the
Higashi membrane is made from the same polymer and using
the same or similar process - see details in example 1 and
paragraphs [0040-0046]. Higashi also teaches that at the least
for the first micron of outer thickness, there are no pores larger
than 10 nm. The above cited paragraphs also teach optimizing
the process parameters to obtain the right kind of membrane as
desired. . . .

Additional evidence that hollow fiber membrane with
gradient density as claimed is known in the art is seen in
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Application 15/516,969

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Nagoya. Nagoya teaches a hollow fiber membrane in which the
ratio of thicknesses of the dense outer layer and the coarse inner
layer match - see the abstract. Raman spectroscopy is only a
tool for measurement and thus do not contribute as invention in
a product claim. Membrane porosity significantly overlaps the
range claimed [0046].

(Final Act. 2–3.)
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see
also Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’
refers not to the teachings in the prior art of a motivation to combine, but to
the court’s analysis.”).
The dispositive issue on appeal is:
Did the Examiner err in determining that Higashi alone or in
combination with Nagoya teach or suggest a density gradient from an outer
surface side to an inner surface side and a ratio between a thickness of a
dense layer having a dense polymer density and a thickness of a coarse layer
having a coarse polymer density being in a range of 0.25 ≤ (the thickness of
the coarse layer)/[(the thickness of the dense layer)+(the thickness of the
coarse layer)] ≤ 0.6 as required by independent claim 1?
We answer this question in the affirmative.
Appeal 2019-006220
Application 15/516,969

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Appellant argues Higashi does not teach or suggest the claimed
density gradient or ratio between a thickness of a dense layer having a dense
polymer density and a thickness of a coarse layer having a coarse polymer
density being in a range of 0.25 ≤ (the thickness of the coarse layer)/[(the
thickness of the dense layer)+(the thickness of the coarse layer)] ≤ 0.6 as
required by independent claim 1. (Appeal Br. 6–7.) Appellant further
states:
the Examples of Higashi employ a temperature of 150°C, the
concentration gradient is not formed sufficiently due to the low
membrane formation temperature as taught by the present
specification. In addition, the Comparative Examples of the present
specification show that even with a temperature of 170°C, the gradient
structure is not necessarily formed based on the composition of the
bore liquid.

(Appeal Br. 8–9.)
The Examiner finds (Ans. 4) Higashi’s membrane inherently
possesses the density gradient required by the claimed invention because
they are both made from the same polymer and are formed utilizing similar
process conditions. However, the Examiner has failed to identify where
Higashi alone or in combination with Nagoya expressly teaches the gradient
structure where the ratio between the thickness of a dense layer having a
dense polymer density and the thickness of a coarse layer having a coarse
polymer density fall in the range required by independent claim 1. An
inherent characteristic must be inevitable, and not merely a possibility or
probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981); In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). The Examiner’s reliance on
Nagoya as evidence that a hollow fiber membrane has a density gradient
does not establish that Higashi necessarily has the ratio between a thickness
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Application 15/516,969

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of the dense layer and the thickness of a coarse layer as required by the
claimed invention. The Examiner has failed to direct us to portions of
Higashi, alone or in combination with Nagoya, that teach the ratio between a
thickness of the dense layer having a dense polymer density and the
thickness of a coarse layer having a coarse polymer density being in a range
of 0.25 ≤ (the thickness of the coarse layer)/[(the thickness of the dense
layer)+(the thickness of the coarse layer)] ≤ 0.6 as required by independent
claim 1. The presence of the density gradient in and of itself does not
necessarily establish the gradient structure where the ratio between a
thickness of the dense layer and the thickness of a coarse layer as required
by the claimed invention. The Examiner has failed to address the
Comparative Examples in the present Specification that show the
composition of the bore liquid, although processed at a temperature of
170°C, does not necessarily result in the claimed density gradient. The
Examiner has not adequately articulated the modification to parameters that
are required to obtain the claimed invention by optimization.
Therefore, we do not sustain the Examiner’s decision to reject
independent claim 1 for the reasons presented by Appellant and given above.
We likewise reverse the Examiner’s decision to reject dependent claims 2
and 5–8 because the rejections of these claims are premised on the
Examiner’s unsupported reliance on Higashi alone or in combination with
Nagoya.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 2, 5–8 103 Higashi, Nagoya 1, 2, 5–8

REVERSED