Ex Parte King et al

Patent Trials and Appeals Board

Mar 29, 2019

13815433 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/815,433 03/01/2013
44341 7590 03/29/2019
JOHNSON & PHUNG
ONE WEST WATER STREET, SUITE 285
ST. PAUL, MN 55107
FIRST NAMED INVENTOR
Joseph King
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.
6458C 7347
EXAMINER
STELLING, LUCAS A
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
03/29/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH KING and JOHN HILL 1
Appeal2018-006490
Application 13/815,433
Technology Center 1700
Before BEYERL YA. FRANKLIN, JENNIFER R. GUPTA, and
MICHAEL G. McMANUS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Joseph A. King and
John Hill.
Appeal 20 l 8-006490Application 13/815,433
Appellants request our review under 35 U.S.C. § I34(a) of the
Examiner's decision rejecting claims 10-19, which constitute all the claims
pending in this application. Claims 1-9 and 20 have been cancelled. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 10 is illustrative of Appellants' subject matter on appeal and is
set forth below (text in bold for emphasis):
10. A building wherein the building includes a plurality of
indoor and outdoor building structural surfaces comprising of
building ceilings, building walls, building flooring, studs,
sidings, wallboard, wood laminate, roof tiles, insulation,
conduits including air ducts and electrical conduits, glass and
doorknobs, said building structural surfaces including a liquid
activated antimicrobial agent containing a biocidal metal and a
compound containing a hydantoin ring, said antimicrobial agent
incorporated to said building structural surfaces in an
inactivate state wherein the antimicrobial level of the biocidal
metal in the presence of water increases the ability of the
antimicrobial agent to destroy harmful bacteria or
microorganisms by increasing the availability of biocidal metal
from the biocidal metal.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Vange et al. ("Vange")
King et al. ("King III")
2004
Cottrell et al. ("Cottrell")
2005
US 2003/0186955 Al
US 2004/0188359 Al
US 2005/0226914 Al
2
Oct. 2, 2003
Sept. 30,
Oct. 13,
Appeal 20 l 8-006490Application 13/815,433
THE REJECTIONS
1. Claims 10-19 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. §
112 (pre-AIA), second paragraph, as being indefinite.
2. Claims 15 and 17-19 are rejected under pre-AIA 35 U.S.C. §§
102( a), (b ), or ( e) as anticipated by or, in the alternative, under pre-
AIA 35 U.S.C. § 103(a) as obvious over Cottrell.
3. Claims 10-13, 15, and 17-19 are rejected under pre-AIA 35 U.S.C. §
103 (a) as obvious over Cottrell.
4. Claims 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cottrell in view of Vange.
5. Claim 16 rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cottrell in view of King and Vange.
6. Claims 10-15 and 17-19 are rejected under pre-AIA 35 U.S.C. §
103(a) as being unpatentable over Vange in view Cottrell.
7. Claim 16 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Vange and Cottrell as applied to claim 15 and in
further view of King.
ANALYSIS
Appellants rely on that same/similar arguments for each rejection.
With no separate arguments proffered, all claims will stand or fall together
with respective independent claims. 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
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Appeal 20 l 8-006490Application 13/815,433
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner's findings and conclusion that the subject matter of
Appellants' claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner's rejections on appeal for the reasons set forth
in the Final Office Action and in the Answer, and affirm, and add the
following for emphasis.
Rejection 1
As stated by the Examiner on pages 21-22 of the Answer, Appellants
do not appeal this rejection. We thus summarily affirm this rejection.
Rejections 2-5
Appellants argue that Cottrell ( as well as the other applied art) do not
disclose that the claim limitations of a liquid activated antimicrobial agent is
incorporated into building structural surfaces "in an inactivate state."
Appeal Br. 7-11. However, Appellants do not address much of the
Examiner's position in the record (Ans. 7-18) regarding inherent properties
of a similar/same composition. We note that where the Examiner establishes
a reasonable assertion of inherency and thereby evinces that a claimed
process appears to be identical to a process disclosed by the prior art and/ or
that the products claimed by the applicant and disclosed in the prior art
appear to be the same, the burden is properly shifted to the applicant to show
that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1254-56 (CCPA 1977). Cf In re Crish, 393 F.3d 1253,
1259 (Fed. Cir. 2004) ("[W]hen the prior art evidence reasonably allows the
PTO to conclude that a claimed feature is present in the prior art, the
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Appeal 20 l 8-006490Application 13/815,433
evidence 'compels such a conclusion if the applicant produces no evidence
or argument to rebut it."' (quoting In re Spada, 911 F.2d at 708 n.3)). In the
instant case, Appellants have not produced such evidence. We thus affirm
Rejection 2. We affirm Rejections 3-5 for the same reasons.
Rejections 6-7
Appellants again argue that Vange (as well as the other applied art) do
not disclose the claim limitation of a liquid activated antimicrobial agent that
is incorporated into building structural surfaces "in an inactivate state".
Appeal Br. 7-11. In a similar manner as discussed, supra, with regard to the
rejections involving Cottrell, Appellants do not address the Examiner's
findings regarding inherent properties associated with similar/same
compositions (Ans. 18-21 ). Hence, for the same reasons that we affirmed
Rejections 2-5, we also affirm Rejections 6-7.
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
ORDER
AFFIRMED
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