Appeal No. 2006-2023 Page 7
Application No. 10/650,785
the dual purposes of both separating resin and simultaneously filtering water. In the
second embodiment, a first membrane filter removes treated water from the process
tank, while a second membrane filter, located downstream from the process tank,
separates the resin from the treated water. According to the examiner, since the
disclosure of the ‘044 application does not provide support for the first embodiment, “the
concept of removing water from a process tank through a membrane filter is not
described in prior application Serial No. 08/809,044 (now U.S. Patent No. 6,669,849) so
as to satisfy the description requirement of 35 U.S.C. § 112, first paragraph” (Answer,
p. 5, ¶ 2).
The examiner states that “one of ordinary skill in the…art, upon viewing the
disclosure of utilizing a membrane to effect separation of resin while simultaneously
filtering water… would not have been guided to the concept of removing water from a
process tank through a [single] membrane filter” (Answer, p. 5, ¶ 1). In support of his
position, the examiner states that “a cursory review of the references of record (e.g.
Collier, U.S. Patent No. 2,697,724; Jowett et al., U.S. Patent No. 4,154,675; and
Anselme et al., U.S. Patent No. 5,364, 534) [shows that] ion exchange resins are
typically removed from the treated liquid by a separator located downstream from the
treatment tank, not at or within the treatment tank” (original emphasis) (Answer, p. 4,
¶ 1). Thus, the examiner argues that claims 1-26 are not entitled to the 8 September
1995 filing date of the ‘044 application.
C. Appellants’ position
Appellants argue that claims 1-26 are fully supported by the ‘044 specification, at
page 12, line 30 through page 13, line 13, and therefore, Mueller, which has a
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