Appeal No. 2006-1391
Application No. 10/168,806
size or molecular weights of the particles to be separated” (id.). The examiner cites
case law for the holding that discovery of an optimum value of a result effective variable
in a known process is ordinarily within the skill of the art (Answer, page 4).
In the “Response to Argument” section of the Answer (pages 4-10), the examiner
attempts to interpret claim 1 on appeal as “reading on” Figure 4A of van Reis (e.g.,
Answer, page 8, first full paragraph; see the Reply Brief, pages 4-5). However, as
correctly argued by appellants (Brief, pages 5-6), van Reis teaches that layered parallel
membranes have the same pore size, i.e., a 1:1 pore size ratio (see van Reis, col. 10, ll.
53-60). The membranes of the cascade systems of van Reis do have decreasing pore
sizes (col. 6, ll. 48-55 and 62-64; col. 11, ll. 50-51) but the examiner has failed to
establish that the disclosure of these cascade systems of van Reis meet the limitations
of claim 1 on appeal, namely that the plies “physically lie on top of one another and are
joined at their peripheries by spacers” and also have the flow channels specified in the
claim. Furthermore, contrary to the examiner’s rationale that it would have been
“obvious to optimize” the result effective pore size variable (Answer, pages 3-4), we
determine that the examiner has failed to establish that the pore size of adjacent
membranes is a result effective variable. See In re Antonie, 559 F.2d 618, 620, 195
USPQ 6, 8-9 (CCPA 1977). We determine that van Reis teaches that the “size of the
species of interest to be separated will determine the pore size of the membrane to be
utilized” (col. 8, ll. 32-34), but this teaching is in reference to the cascade system of
membranes. Where van Reis has disclosed membranes adjacent or physically on top
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