Ex Parte Jones et al

Patent Trial and Appeal Board

Apr 15, 2016

12904226 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/904,226 10/14/2010
23906 7590 04/19/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
David Charles Jones
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
TK5055USNA 5474
EXAMINER
MCKENZIE, THOMAS B
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
04/19/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHARLES JONES and
JUNAID AHMED SIDDIQUI
Appeal2014-006490
Application 12/904,226
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1-14 and 18-19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. Because we find no reversible error in the findings and
reasoning given by the Examiner, we adopt them as our own and add the
following for emphasis.
1 The Appellants state that "E. I. du Pont de Nemours and Company" is the
real party in interest (Appeal Brief filed January 2, 2014, hereinafter "Br.,"
1 ).
Appeal2014-006490
Application 12/904,226
BACKGROlH~D
The subject matter on appeal relates to a nanofiber and nanoweb filter
media comprising nanofibers, where the nanofiber comprises at least one
moisture sensitive polymer and essentially spherical nanoparticles of a
hydrogen bonding material incorporated into the body of the fiber
(Specification, hereinafter "Spec," Abst.; pg. 2, 11. 20-32). Representative
claim 1 is reproduced from page 8 of the Appeal Brief (Claims App.), with
the key limitation at issue indicated in italicized text, as follows:
1. A nanofiber comprising at least one moisture sensitive
polymer and essentially spherical nanoparticles of a
hydrogen bonding material incorporated into the body of
the fiber, wherein the material is present in an amount
corresponding to greater than 2% of the polymer weight
and the nanofiber has a mean fiber diameter measured
along its length of less than one micron.
THE REJECTION
The Examiner rejected claims 1-14 and 18-19 under 35 U.S.C.
§ 102(b) as being anticipated over Leung. 2 (Examiner's Answer entered
March 12, 2014, hereinafter "Ans.," at 2--4; Final Office Action entered July
12, 2013, hereinafter "Final Act.," 4-6.)
DISCUSSION
In arguing for reversal, the Appellants argue the claims together,
focusing only on claim 1. Therefore, consistent with 37 C.F.R.
2 US 2008/0264259 Al published October 30, 2008.
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Application 12/904,226
§ 41.37(c)(l)(iv), we confine our discussion to representative claim 1.
Claims 2-14 and 18-19 stand or fall with claim 1.
The Examiner found that Leung describes a nanofiber comprising a
moisture sensitive polymer with essentially spherical nanoparticles of
hydrogen bonding material (Final Act. 4; Ans. 2-3). Additionally, the
Examiner found that "Leung discloses nanofibers with antimicrobial
particles embedded in the fiber" (Ans. 4; emphasis in original; internal
citations omitted). Based on these findings, the Examiner concluded Leung
discloses "[ t ]he antimicrobial nanoparticles are incorporated into the body of
the nanofibers because the nanoparticles are embedded in the fibers" (id. at
5). In addition to the above analysis, the Examiner notes "Leung's process
uses a nanoparticle suspension in a solution used for spinning fibers, as
required by the process of instant application" (id. at 5---6). The Examiner
thus concludes "Leung's process inherently produces the claimed fiber
because Leung's process is substantially identical to the process disclosed in
instant application" (id at 6).
The Appellants respond that "Leung discloses particles located on the
surface of the web of Leung, rather than incorporated into the body of the
fibers as recited in Appellants' claims" (Br. at 5, emphasis in original).
Specifically, the Appellants argue the particles of Leung "are attached to the
surface of the nanofiber" and discloses methods to "graft, coat or adsorb" the
nanoparticles and thus does not incorporate the nanoparticles into the fiber
as claimed (id. at 4, 6). In addition, the Appellants argue the nanoparticles
being incorporated into the body of the nano fibers is not inherent in the
disclosure of Leung (id. 5). In support of this argument, the Appellants
contend that the electro spinning process of Leung requires a small amount of
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Appeal2014-006490
Application 12/904,226
adhesive and due to the presence of this adhesive the Appellants conclude
"the process in Leung is not substantially identical to the process in the
present invention, and consequently the nanoparticles in Leung are not
incorporated in the body of the fiber in a similar manner as the instant
application" (id. at 7). Therefore, the Appellants conclude "Leung does not
disclose or suggest either inherently or explicitly a nanofiber that contains at
least one moisture sensitive polymer and nanoparticles of a hydrogen
bonding material incorporated into the body of the fiber" (Br. at 4; emphasis
in original).
We have fully considered the Appellants' arguments; however we
find the arguments do not reveal any reversible error in the Examiner's
factual findings, analysis, and determination that Leung anticipates the
claimed invention. As found by the Examiner (Ans. 4), Leung explicitly
discloses "the antimicrobial particles to be embedded in or adhered to the
nanofibers" (i1i1 31 ). We find it reasonable to draw an inference that Leung' s
nanoparticles "embedded" in the nanofibers anticipates nanoparticles
incorporated into the nanofibers as required by the claims. See In re Bond
910 F.2d 831 (Fed. Cir. 1990) ([t]he elements must be arranged as required
by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required.) See also In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009) (a reference does not have to satisfy an ipsissimis verbis test
to disclose a claimed element).
Additionally, we find the Examiner has found this limitation at issue
is disclosed in the prior art reference, and the Appellants' mere assertions to
the contrary are insufficient to identify a reversible error. See Ex parte
Belinne, No 2009-004693, 2009 WL 2477843 (BPAI 2009) (informative)
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Application 12/904,226
("[W]e find that the Examiner has made extensive specific fact finding ...
with respect to each of the argued claims. Appellant's argument ...
repeatedly restates elements of the claim language and simply argues that the
elements are missing from the reference. However, Appellant do not present
any arguments to explain why the Examiner's explicit fact finding is in
error"). See also 37 C.F.R. § 41.37(c)(l)(vii) (noting that an argument that
merely points out what a claim recites is unpersuasive).
In so holding, we find it unnecessary to reach the Appellants'
argument as to whether Leung inherently results in incorporated
nanoparticles. In any event, we find the Examiner's findings, analysis and
determination regarding inherent disclosure, which we have incorporated as
our own, to be a sufficient alternative basis for finding Leung describes the
disputed limitation of claim 1 within the meaning of 35 U.S.C. § 102(b ).
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1-14 and 18-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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