Appeal No. 2006-1391
Application No. 10/168,806
of one another, the reference teaches that these membranes should be the “same pore
size” (col. 10, ll. 53-60). Thus, for these membranes, the examiner has not established
that it would have been “obvious to optimize” (see also the Brief, pages 8-10).
Contrary to appellants’ argument that van Reis does not disclose two-ply
membranes lying on top of each other, yet separated by spacers (Brief, page 6), we
determine that van Reis teaches “adjacent” membranes where this term means that the
filtration membranes “may be physically layered on top of one another or with a slight
space between” (col. 9, ll. 31-35). Of course, if the membranes have a “slight space”
between, they must be kept apart by some structure which may be denominated as a
“spacer.” Appellants have pointed to the teaching of van Reis that these “adjacent”
membranes are preferably of the same pore size (Brief, page 5, citing col. 10, ll. 53-60).
However, van Reis defines the expression “same pore size” as including membranes
where the actual pore size may “vary somewhat” (col. 9, ll. 26-30). Therefore, as noted
above, we determine that the pore size ratio taught by van Reis is 1:1 or values slightly
above or below this ratio. Since these values specifically taught by the reference are
very close to the lower range limit (1.3) as claimed in claim 1 on appeal, we conclude
that these claimed values would have been prima facie obvious to one of ordinary skill
in this art with the expectation of similar properties. See In re Peterson, 315 F.3d 1325,
1330, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1470, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997), and Titanium Metals Corp. Of America v. Banner,
778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)(A prima facie case of
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