Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE PAUL J. MARINACCIO AND RONALD V. REPETTI
Appeal No. 86-1462
November 30, 1988
Heard: November 16, 1988
Application for Patent filed December 29, 1983, Serial No. 566,839. Cross-Flow Filtration.
Michael E. Zall for appellants
Primary Examiner--Frank Spear
Before Winters, Downey and Metz
This is an appeal from the examiner's refusal to allow claims 1 through 35, all the claims in the application. At Oral Hearing, appellants' representative indicated that there was an amendment filed on even date with appellants' Brief requesting cancellation of claims 34 and 35. Our review of the record indicates that the paper is included in the application papers, however, it has not been entered in the contents of the application. When asked if it was appellants' intention to pursue an appeal of claims 34 and 35, appellants' representative indicated that appellants no longer intended to appeal from the examiner's decision with respect to claims 34 and 35 and, accordingly, we take appellants' representative's representation as a withdrawal of the appeal of claims 34 and 35. Accordingly, the only claims before us for our consideration in this appeal are claims 1 through 33.
The appealed subject matter is directed to a process for the cross-flow filtration of a liquid containing particulates or suspended solids and dissolved solids. The process comprises circulating the liquid containing said particulates or suspended solids and dissolved solids tangential to and axially on one side of a charge modified organic polymeric skinless microporous hollow fiber filter membrane. Claim 1, the only independent claim before us for our consideration, is reproduced below for a more facile understanding of appellants' invention:
1. A process for the cross-flow filtration of a liquid containing particulate or suspended solid and dissolved solids comprising circulating the liquid tangential to and axially on one side of a charge modified organic polymeric skinless microporous hollow fiber filter membrane, substantially retaining the particulate or suspended solids on said one side, the dissolved solids passing through the membrane and the charge on the membrane repelling similarly charged particulate or suspended particles preventing clogging or blocking of pores through excessive adsorption of said particulate or suspended solids.
The references of record which are being relied upon by the examiner as evidence of obviousness are:
Gregor 3,808,305 Apr. 30, 1974
Klein et al. (Klein) 4,051,300 Sep. 27, 1977
Dorson et al. (Dorson) WO 82/03568 Oct. 28, 1982
The appealed claims stand rejected as being unpatentable under 35 U.S.C. 103 from Dorson taken with Klein and Gregor. We reverse.
*2 In any rejection founded upon 35 U.S.C. 103, the scope and content of the prior art must be determined, the differences between the prior art and the claims in issue must be ascertained and, finally, the level of ordinary skill in the relevant art must be resolved. Graham v. John Deere, 383 U.S. 1, 148 U.S.P.Q. 459 (1966). In determining the scope and content of the prior art it is appropriate for us to consider that which is admitted by appellants to be old in the art. In re Nomiya, 509 F.2d 566, 184 U.S.P.Q. 607 (CCPA 1975). Accordingly, we note that appellants have conceded that cross-flow filtration methods are well known in the art (page 6, first full paragraph of appellants' Brief) and that the charge modified organic polymeric microporous membranes are, per se, known (page 6, second paragraph of appellants' Brief). It is this background against which we must determine the propriety of the examiner's rejection.
Essentially, while appellants recognize that Dorson describes a filtration process which utilizes cross-flow circulation of the fluid being filtered, it is appellants' position that Dorson is directed to a type of filtration, that is ultra filtration, which is so distinct from the type of filtration claimed by appellants that Dorson may not be relied upon to reject the appealed claims. Appellants also maintain that Dorson utilizes flat stock asymmetric skinned membranes and not charge modified organic polymeric skinless microporous hollow fiber filter membranes as required by the appealed process. Appellants submit that the only reference in Dorson to hollow fibers is the disclosure at page 13 of the reference which states that rapid plugging of a substantial number of fibers can occur and unacceptably diminish the affected area of the filter for Dorson's purpose. Appellants strongly urge that such a disclosure would direct the skilled routineer in this art away from the use of hollow fibers rather than teaching their usefulness. Since the secondary references are not directed to convective or cross-flow filtration of the type claimed but are directed to ultra filtration and reverse osmosis processes, appellants urge that the references are not properly combinable with the Dorson reference. Further, it is appellants' position that the secondary references do not describe the specific type of filter membrane required by the appealed claims nor do they suggest any modification of the Dorson filter material which would suggest or render obvious the particular membrane utilized by appellants in their process.
The examiner has failed to challenge or argue against appellants' distinctions between the type of filtration claimed and the filtration processes described in the prior art relied upon. Rather, the examiner has taken the apparent approach that because Dorson describes a filtration process which utilizes cross-flow circulation of the medium being filtered that the use of any filtration medium in said process would have been obvious regardless of Dorson's specific disclosure against the use of hollow fibers. We are satisfied, however, that based upon appellants' positively recited claim limitations, the description of the term "cross-flow filtration" found at page 32, lines 14 through 23 of appellants' specification and the distinctions drawn between the various types of filtration (batch filtration, ultra filtration and reverse osmosis) that the modification and substitutions proposed by the examiner based upon the prior art of record would not have been obvious to one of ordinary skill in this art at the time appellants' invention was made.
*3 As we noted above, the examiner has failed to adequately explain why the skilled routineer in this art would have been motivated to use a particular filter medium specifically noted by Dorson as being unacceptably prone to clogging. We note, too, that no reference or combination of references appears to teach or suggest a specific charge modified organic polymeric skinless microporous hollow fiber filter membrane required by the appealed claims. While we have no doubt that the skilled routineer in this art could modify the prior art relied upon by the examiner and obtain the appealed process, the question of obviousness under 35 U.S.C. 103 is not what a routineer could have done but what it would have "been obvious" for such a person to do. Ortho Kinetics Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 U.S.P.Q.2d 1081 (Fed.Cir.1986). The examiner has presented no supporting explanation or evidence why it would have been obvious to use the particular membranes of the appealed claims in appellants' particular type of filtration process.
The decision of the examiner is reversed.
Sherman D. Winters
Mary F. Downey
Andrew H. Metz