Ex Parte Liu et al

Patent Trial and Appeal Board

Jun 6, 2014

11757008 (P.T.A.B. Jun. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHUNQING LIU, JEFFREY J. CHIOU, and
STEPHEN T. WILSON
____________

Appeal 2013-000427
Application 11/757,008
Technology Center 1700
____________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-13. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm.

BACKGROUND

Appellants’ claimed invention is said to be directed to “hybrid”
separation membranes that contain “inorganic fillers such as molecular
sieves dispersed in a polymer matrix.” Spec. ¶ 5. More specifically, the
claimed hybrid membranes are “UV cross-linked polymer functionalized
molecular sieve/polymer mixed matrix membranes (MMMs) with either no
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macrovoids or voids of less than several angstroms at the interface of the
polymer matrix and the molecular sieves.” Spec. ¶ 1.
Claim 1 is illustrative, and reproduced below from the Claims
Appendix (indentations and paragraphing added):
1. A composition comprising

a UV cross-linked polymer functionalized molecular
sieve/polymer membrane consisting of

a molecular sieve,

a polymer connected to said molecular sieve, and

a UV cross-linked glassy continuous phase polymer.

Appellants appeal the rejections of claims 1-13 under 35 U.S.C. §112
as being indefinite and under 35 U.S.C. §103 as being unpatentable over
Kulkarni (US 6,508,860 B1, issued Jan. 21, 2003) in view of Koros (US
6,932,859 B2, issued Aug. 23, 2005) and Dorgan (US 2003/0150795 A1,
published Aug. 14, 2003). Ans. 4-8. Because Appellants do not argue any
claim apart from the others, pursuant to 37 C.F.R. § 41.37(c)(1)(vii),
dependent claims 2-13 will stand or fall together with independent claim 1.

ISSUES

1. Did the Examiner reversibly err in determining that claims 1-13
are indefinite under 35 U.S.C. §112, second paragraph, on the
basis that “[t]here is no way to effectively determine what
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components of the claim are being excluded by the placement of
the term ‘consisting’”? We decide this issue in the affirmative.
2. Did the Examiner reversibly err in determining that the
combination of Kulkarni’s mixed matrix membranes with Koros’
and/or Dorgan’s cross-linked polymer membranes would have
rendered obvious the subject matter of claims 1-13? We decide
this issue in the negative.

FINDINGS OF FACT AND ANALYSIS

Issue 1
The preponderance of evidence on this record supports the
Appellants’ position that claims 1-13 are not indefinite.
The Examiner finds that the claims are indefinite “in the use of both
transitional phrases ‘consisting of’ and ‘comprising’” because “[t]he use of
both transitional phrases introduces confusion into the actual scope of the
claim, and the claims thus lack clarity.” Ans. 4-5.
The Appellants argue that “it is not improper practice provided the
claims are clear in meaning to include a mixture of transitional phrases
within a claim.” App. Br. 4.
With regard to claim 1, we are not persuaded by the Examiner’s
conclusion that the claims are indefinite. The transitional phrases
“consisting of” and “comprising” are commonly used and have well-
established meanings in the context of patent claims, wherein “consisting of”
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generally excludes elements not specified in a claim, and “comprising”
allows for other elements in addition to those named in the claim. See, e.g.,
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997); In re
Gray, 53 F.2d 520 (CCPA 1931). Used in the same claim, such as
“comprising” in the preamble and “consists of” in a clause in the body of the
claim, a reasonable interpretation is that “consists of” limits only the
elements set forth in that clause, and the term “comprising” means that the
claim can otherwise include additional components. See In re Crish, 393
F.3d 1253, 1257 (Fed. Cir. 2004).
Here, the use of both transitional phrases does not result in a lack of
clarity that renders the claims indefinite. The phrase “a UV cross-linked
polymer functionalized molecular sieve/polymer membrane consisting of”
limits the claimed molecular sieve/polymer membrane component to the
three subsequently recited components, namely a molecular sieve, a polymer
connected to said molecular sieve, and a UV cross-linked glassy continuous
phase polymer. The phrase “a composition comprising” in claim 1 implies
that the claimed composition must include the recited element that follows
this preamble (the UV cross-linked polymer functionalized molecular
sieve/polymer membrane), but can also include additional ingredients. App.
Br. 3-4; see also In re Crish, 393 F.3d at 1257. Accordingly, the language
in claim 1 informs those skilled in the art “about the scope of the claim with
reasonable certainty.” See Nautilus Inc. v. Biosig Instruments, Inc., No. 13-
369, slip op. at 11 (U.S. 2014).
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On this record, we reverse the Examiner’s §112 rejection.

Issue 2
The preponderance of the evidence supports the Examiner’s
conclusion of obviousness with respect to claims 1-13.
The Examiner finds that Kulkarni discloses all of the limitations of
claim 1 except for the “failure to teach that the polymeric material of the
continuous phase is UV cross-linked.” Ans. 7. The Examiner relies on the
disclosure of Koros and Dorgan as teaching that mixed membrane polymers
can be UV cross-linked and provides as the reason for combining with
Kulkarni the teaching in Koros that crosslinking improves selectivity and
plasticization resistance. Id.
Appellants dispute the Examiner’s finding that Kulkarni discloses the
claimed “molecular sieve” as an element of the polymer functionalized
molecular sieve/polymer membrane recited in claim 1. App. Br. 4.
Appellants further argue that Koros and Dorgan fail to provide enough
information regarding UV crosslinking and cross-linkable polymers to
reasonably conclude that it would have been obvious to combine the
teachings of Koros or Dorgan with Kulkarni to arrive at the claimed
invention. Id. at 5-6.

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A. Kulkarni
Appellants do not dispute that Kulkarni discloses a polymer
functionalized molecular sieve/polymer matrix comprising at least one type
of molecular sieve, a polymer employed to functionalize the exterior surface
of the sieve particles, and a glassy continuous phase polymer. Appellants
nevertheless argue that the claimed invention is different from what is
disclosed in Kulkarni because the molecular sieves in Kulkarni are treated
with a monofunctional organosilicon compound, whereas the claimed
molecular sieves are not. Id. at 4. Appellants argue that because they do
not “treat the molecular sieve particles with a monofunctional organosilicon
compound in the polymer matrix . . . the compositions taught by Kulkarni et
al. cannot be equated to those of the present invention.” Id.
Appellants’ argument is based on their proposed claim interpretation
that the restrictive “consisting of” language makes it “clear that the
[claimed] molecular sieves are not subjected to a silanation step.” Id. As a
result, Appellants argue that the claims should be interpreted so that the “the
molecular sieves as claimed would not include the silanated molecular
sieves” disclosed in Kulkarni. Id.
The Examiner responds that the “consisting of” language does not
limit the “identity of the molecular sieve.” Ans. 4. The Examiner
“considers that the term ‘molecular sieve’ is inclusive of as-synthesized
molecular sieves, ion-exchanged molecular sieves or any type of treated
sieves inclusive of silanated molecular sieve[s].” Id. at 8. According to the
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Examiner, these “types of modifications to molecular sieves are well known
and do not destroy the sieve properties.” Id. Ultimately, the Examiner
concludes that “it cannot be considered that the terminology ‘molecular
sieve’ is in anyway limited by the transitional phrase ‘consisting of’ so long
as a molecular sieve is present.” Id.
Appellants’ arguments are not persuasive.
In the context of claim construction,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the
written description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). It is well-established
that the meaning of the transitional phrase “consisting of” generally excludes
elements or ingredients not specified in a claim. In re Gray, 53 F.2d 520
(CCPA 1931). Rather than interpreting “consisting of” to exclude whole
elements or ingredients not identified by the claim, Appellants argue that
“consisting of” should restrict only particular types of elements or
ingredients specifically identified by the claim. Appellants, however, have
not offered persuasive evidence to demonstrate why, in this particular
instance, the term “consisting of” should take on a meaning that is
inconsistent with its ordinary meaning.
Further, Appellants have not directed us to any evidence in the
Specification that supports their proposed interpretation which excludes a
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specific type of molecular sieve. To the contrary, the Specification includes
a broad discussion of molecular sieves (see, e.g., Spec. ¶¶ 15, 42-52),
including a non-exhaustive list of acceptable molecular sieves (e.g. id. at ¶
15), and also expressly contemplates [m]olecular sieves of different
chemical compositions” (id. at ¶ 43).
In view of the foregoing, we conclude that the broadest reasonable
interpretation of “consisting of a molecular sieve” is one that does not limit
the type of the molecular sieve used in the mixed matrix membrane. We
find that the Examiner reasonably concluded that “it cannot be considered
that the terminology ‘molecular sieve’ is in any way limited by the
transitional phrase ‘consisting of’ so long as a molecular sieve is present.”
Ans. 8.
Under this interpretation, claim 1 does not exclude the silanated
molecular sieves disclosed in Kulkarni.

B. Koros and Dorgan, in Combination with Kulkarni
The Examiner relies on Koros and Dorgan for their separate
disclosures that “related and analogous mixed polymer and zeolite
membrane materials can be UV cross-linked.” Ans. 7. The Examiner finds
that Koros and Dorgan each disclose the use of UV cross-linkable polymers
for the continuous polymer phase of the membranes, and expressly disclose
UV treatment as a possible way to cross-link the continuous polymer phase.
Id. at 7-8 (citing Koros col. 7; Dorgan ¶ 102). According to the Examiner,
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the UV cross-linkable polymers disclosed in both Koros and Dorgan include
polyimides, polyetherimides, and polysulfones, which are “the same
polymers for the continuous phase . . . as those employed by both Kulkarni
et al. and [A]ppellant[s] for producing the membrane materials and they
have identical utility.” Ans. 7; see also e.g., Koros at col. 9, ll. 19-26;
Dorgan at ¶¶ 19-20.
Additionally, the Examiner notes that Koros and Dorgan both teach
the benefits and advantages associated with crosslinking the polymers in the
membrane, including “improved selectivity and plasticization resistance”
(Ans. 7 (citing Koros col. 7)), and “a more chemical and mechanically stable
membrane” (id. at 12; see id. at 7-8; Dorgan ¶ 102).
Appellants do not dispute that Koros and Dorgan are analogous art, or
that these references each disclose the use of UV cross-linkable polymers in
the continuous phase of the membrane, the use of UV crosslinking itself, or
the benefits of crosslinking. App. Br. 5-6. Rather, Appellants contend that
Koros and Dorgan disclose a wide variety of cross-linkable polymers, and
“there are many types of polymer that can or cannot be UV-crosslinked.”
Id. Appellants argue that neither Koros nor Dorgan disclose “what are the
required UV crosslinkable functional groups or what are the UV
crosslinkable polymers that can be used for making UV crosslinked mixed
matrix membranes.” Id. at 5, see also id. at 6. According to Appellants,
without these teachings, “one is not able to prepare such UV cross-linkable
polyimide polymers,” and therefore, it would not be obvious to a person of
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ordinary skill in the art to select and prepare the claimed UV cross-linked
matrix membranes based on the disclosure of Koros or Dorgan. Id. at 6.
Other than attorney argument, Appellants offer no support for their
positions. 1
The Examiner responds by noting that “a reference is valid for all
that it would disclose to one of ordinary skill in the art.” Ans. 9. The
Examiner concludes that “[a]t the time of invention a person of ordinary
skill in the art would have found it obvious to have used UV crosslinking
because Koros et al. teach it to be possible and disclose potentially UV
crosslinkable polymers, as well as teaching benefits associated with
crosslinking of the continuous phase polymers.” Id. at 11-12. The Examiner
further concludes that “a person of ordinary skill in the art would have found
it obvious to have used UV crosslinking because Dorgan et al. teach UV
crosslinking of the continuous phase polymers and provide more motivation
in the suggestion that crosslinking the polymers yields a more chemical[ly]
and mechanically stable membrane.” Id. at 12. Additionally, the Examiner
finds that the teachings of Koros and Dorgan, “combined with the

1 Appellants also contend that the claims at issue were amended to be
restricted to UV cross-linkable sulfonic groups and polyimide polymers, and
that mixed matrix membranes comprising UV cross-linkable sulfonic groups
would not be obvious over the teachings of Koros and Dorgan. App. Br. 6.
The Examiner responds, and we agree, that the claims are not restricted to
polyimides with UV cross-linkable sulfonic groups, and even if they were,
these sulfonic groups are indeed disclosed in the prior art. Ans. 10.
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knowledge in the art is sufficient to support a very strong expectation of
success associated with practicing the reference combination.” Id. at 10.
We do not find Appellants’ arguments persuasive. Based on the
undisputed disclosures in Koros and Dorgan regarding the benefits of
crosslinking in polymer membranes, the suggestion of using UV
crosslinking, and the disclosure of UV cross-linkable polymers, the
Examiner reasonably concluded that it would have been obvious to a person
of ordinary skill in the art to have used UV crosslinking in combination with
the mixed matrix membranes disclosed in Kulkarni. The fact that Kulkarni
itself discloses the use of UV cross-linkable polymers in the continuous
phase provides additional support for combining the teachings of the cited
references.
Further, the general disclosure of UV crosslinking in the Koros and
Dorgan references indicates that a person of ordinary skill in the art would
understand how to identify “the required UV crosslinkable functional
groups” or the “UV crosslinkable polymers that can be used for making UV
crosslinked membranes,” and how to apply UV treatment to cross-link these
polymers. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989). Accordingly, we find the Examiner’s conclusion regarding a strong
expectation of success associated with practicing the combination of
Kulkarni with Koros and/or Dorgan to be reasonable.
In view the foregoing, we find that the preponderance of the evidence
on this record supports the Examiner’s rejection.
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CONCLUSION
For the reasons set forth above, we reverse the rejection under 35
U.S.C. § 112, ¶ 2, but affirm the rejection under 35 U.S.C. § 103(a) of
claims 1-13. 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

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