Ex Parte King et al

Patent Trial and Appeal BoardApr 14, 2016

12924868 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/924,868 10/07/2010 7590 04/14/2016 CARLL JOHNSON JACOBSON AND JOHNSON SUITE 285 ONE WESTWATER STREET ST. PAUL, MN 55107-2080 FIRST NAMED INVENTOR Joseph A. 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. 6513 9587 EXAMINER LIGHTFOOT, ELENA TSOY ART UNIT PAPER NUMBER 1715 MAILDATE DELIVERY MODE 04/14/2016 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 A. KING and MARTIN ROBERT EDELSON1 Appeal 2014-007 696 Application 12/924,868 Technology Center 1700 Before PETER F. KRATZ, KAREN M. HASTINGS, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 11and18.2 We have jurisdiction pursuant to 35 U.S.C. Â§ 6. We AFFIRM. 1 Appellants identify Joseph A. King as the Real Party in Interest. Appeal Brief filed April 7, 2014 ("App. Br."), 2. 2 Pending claims 14, 19, and 20 stand withdrawn from examination. Appeal2014-007696 Application 12/924,868 CLAIMED SUBJECT MATTER Appellants' invention relates to making a water treatment composition or water treatment article comprising metal ion and an adhesive. Spec. Abstract. Claims 11, 18. Claims 11 and 18 are reproduced below from the Appeal Brief: 11. A method of making an article for insitu water treatment of a body of water over an extended period of time comprising the steps of: selecting a water treatment material from the group consisting of zinc sulfate, zinc carbonate, zinc chloride, copper chloride, copper carbonate, copper sulfate, silver chloride, stannous chloride and stannic chloride; selecting an adhesive from the group consisting of polyurethane, epoxy resin, polyvinyl acetate and polyvinyl alcohol; selecting a water insoluble solid structure; either combining the selected adhesive and selected water treatment in a slurry and coating the slurry onto the structure using a die coater or roll coating the selected adhesive onto the strttcture and applying the selected \~1ater treatment material to the roll coated adhesive on the structure; allowing the adhesive to set to thereby secure the water treatment material to the solid structure; and forming the structure into an article for placement into a body of water to thereby enable the structure to adhesively support the water treatment material thereon in a condition that maintains a water concentration of metal ions less than 1000 parts per billion (ppb) in the body of water. 18. A process of making a water treatment composition for water treatment of a body of water over an extended period of time including the steps of: a) mixing a predetermined amount of silver nitrate into a first batch of water to form a silver nitrate mixture; b) mixing a predetermined amount of sodium chloride into the silver nitrate mixture to form a silver chloride mixture; 2 Appeal2014-007696 Application 12/924,868 c) mixing an adhesive securable to both silver chloride and to support particles into a second batch of water to form an adhesive mixture; d) combining the silver chloride mixture and the adhesive mixture to form an adhesive silver chloride mixture; e) applying the adhesive silver chloride mixture to support particles; and f) curing the adhesive silver chloride mixture insitu on the support particles to form a water treatment composition having a coating containing silver chloride for placement in a body of water to control bacteria in the body of water. THE REJECTIONS Claim 18 stands rejected under 35 U.S.C. Â§ 112, second paragraph as being indefinite. Final. Act. 4; Non-Final Act. 5. Claim 11 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable for obviousness over Mikoda3 in view ofEdwards4 as evidenced by Hawley's. 5 Final Act. 5; Non-Final Act. 5-7. Claim 18 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable for obviousness over Quinn6 in view of Terry. 7 Final Act. 5; Non-Final Act. 7- 10. 3 Mikoda et al. (JP 78009022 B, published April 3, 1978) was cited by the Examiner in the Office Action mailed June 15, 2011. The Examiner relies on an English language Abstract and English translation made of record. Appellants do not contest the English language documents employed as translations. 4 Edwards et al. (US 4,906,466, issued March 6, 1990). 5 Hawley's Condensed Chemical Dictionary, thirteenth edition, p. 485. 6 Quinn (US 2,595,290, issued May 6, 1952). 7 Terry (US 6,716,895 Bl, issued April 6, 2004). 3 Appeal2014-007696 Application 12/924,868 DISCUSSION We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. 8 Appellants set forth only the rejections under 35 U.S.C. Â§ 103(a) as grounds to be reviewed on appeal (App. Br. 5) and, accordingly, do not contest the Examiner's rejection of claim 18 under 35 U.S.C. Â§ 112, second paragraph (App. Br., generally). It follows we affirm proforma the rejection of claim 18 as indefinite. As to the prior art rejections, we are unpersuaded by Appellants' arguments that the Examiner erred in concluding that one of ordinary skill in the art, armed with the cited prior art, would have been led to the claimed subject matter. We add the following. Claim 11 The Examiner relies on Mikoda for its disclosure of a method of preparing a sterilizing element for treatment of water in which particles of AgCl are mixed with an epoxy resin adhesive to form a coating applied by roller or brush onto a base after which the coating is cured and for disclosure of the sterilizing element's properties. Non-Final Act. 5-7 (citing Mikoda, Abstract, 5 i-fi-1 4, 6, 7 i12, 9 i-f l, 10 Table). The Examiner relies on Edwards for its disclosure that antimicrobial compositions containing AgCl and polymer can be applied as coatings to substrates by known techniques, including extrusion. Non-Final Act. 6 8 We refer to the Non-Final Office Action (mailed August 26, 2013, "Non- Final Act."), Final Office Action (mailed October 30, 2013, "Final Act."), the Appeal Brief (filed April 7, 2014), the Examiner's Answer (mailed April 25, 2014, "Ans."), and the Reply Brief (filed June 24, 2014, "Reply Br."). 4 Appeal2014-007696 Application 12/924,868 (citing Edwards col. 4, 11. 23-28). The Examiner explains that it was well known in the art that extrusion by definition is forcing a material through a die, citing Hawley's definition of extrusion, and determines that Edwards' disclosure of coating by extrusion is consequently a disclosure of coating using a die coater. Non-Final Act. 6 (citing Hawley's). The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention to use conventional extrusion die coating to apply the antimicrobial coating composition of Mikoda. Non-Final Act. 6. Appellants proffer three general arguments in the Appeal Brief. App. Br. 7-12. None persuade us the Examiner reversibly erred. Appellants proffer further arguments in the Reply Brief directed to an "Examiner Note" (Reply Br. 4-7), however, these comments/arguments are belated and deemed waived to the extent Appellants may wish to utilize these belated comments as additional arguments and/ or in support of arguments already made in traversing the rejections before us as the cited "Examiner Note" in the Examiner's Answer (Ans. 2-3) had already been set forth in the Final Office Action (Final Act. 2--4) and the Non-Final Office Action (Non-Final Act. 3-4). 37 C.F.R. Â§ 41.41(b)(2). In the Appeal Brief, Appellants first argue that the relied on combination fails to teach "coating the slurry onto the structure using a die coater" because Mikoda does not teach use of a die coater-as acknowledged by the Examiner-and Edwards "failed to specifically reveal the disclosure of the use of a die coater." App. Br. 7. Appellants further contend that Hawley's definition of extrusion-relied on by the Examiner as 5 Appeal2014-007696 Application 12/924,868 evidence-is inconsistent with the claimed method because it refers to use of molten material at incompatibly high temperatures. App. Br. 8. Appellants' argument is unpersuasive because-as explained by the Examiner-Edwards teaches applying composition by extrusion and such extrusion-as evidenced by Hawley's-includes extrusion of a polymer dispersion. Ans. 9-10. Appellants' reliance on the high temperature of "537 to 1093C" described as typical for extrusion of other materials, i.e., metals, in Hawley's ignores the explicit teaching in Hawley as to extruding polymer dispersions as well as Edwards' use of extrusion to apply its antimicrobial compositions including AgCl and polymer. See Ans. 9-10; Non-Final Act. 6. Further, we are unpersuaded of reversible error in the Examiner's findings, reasoning, and conclusions, as it is well established that in evaluating references "it is proper to take into account not only the specific teachings of the references but also the inferences that one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). Second, Appellants argue that neither Mikoda nor Edwards disclose the two step process of roll-coating an adhesive onto the structure and then applying the water treatment material to the adhesive coating. Appellants further argue that Mikoda' s teaching of benefits of first combining the resin adhesive and insoluble silver salt grains and then coating structure with the combined mixture teaches away from the two-step process. App. Br. 9-10. Appellants' arguments are unpersuasive because the claim does not require use of the two step method, but rather requires "either combining the selected adhesive and selected water treatment and coating ... the structure ... or roll-coating ... adhesive onto the structure and applying the selected 6 Appeal2014-007696 Application 12/924,868 water treatment material to the roll coated adhesive." Claim 11 (emphasis added). As explained by the Examiner, the claim requires using one method or the other (Ans. 10-11) and having relied on a combination providing the first method, a "one-step process" as disclosed in Mikoda, it is irrelevant whether there is or is not a teaching of a two-step process (Ans. 10-11 ). Cf In re Johnson, 435 F.3d 1381, 1384 (Fed. Cir. 2006) ("As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted."). Third, Appellants argue that the Examiner relied on impermissible hindsight. App. Br. 11-12. Appellants' argument is grounded on Appellants' contentions that Mikoda and Edwards "each work properly for their intended purposes" and that "the modification [of Mikoda] as suggested by the Examiner would provide no added benefit" because Mikoda's device "already functions to sterilize tap/household water." App. Br. 11. Appellants' argument is unpersuasive because it fails to establish that modifying Mikoda to apply the coating using die coating would have been any more than the simple substitution of one conventional method by another to obtain predictable results, particularly in light of the prior art teaching the equivalence of "conventional coating techniques," as set forth by the Examiner. Ans. 11-13 (citing Edwards col. 4, 11. 23-28). Not being persuaded the Examiner's articulated reasoning was deficient, we are likewise unpersuaded that the combination is based on hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of 7 Appeal2014-007696 Application 12/924,868 obviousness") (cited with approval in KSR Int? Co. v. T'elej7ex Inc., 550 U.S. 398, 418 (2007)). For the reasons above, it follows that we affirm the obviousness rejection of claim 11. Claim 18 The Examiner relies on Quinn for its disclosure of a composition comprising granules coated with bactericide such as silver chloride and its use for purification of water. Non-Final Act. 7 (citing Quinn col. 1, 11. 1-2, col. 2, 11. 19-0, col. 3, 11. 16-20). The Examiner relies on Terry for its disclosure for preparing and applying coatings containing a polymer and a colloid of silver chloride that provided sustained antimicrobial activity over time. Non-Final Act 8-10. Of particular note, the Examiner relies on Terry teaching that the colloid is formed by reacting salt A with salt B and that these can be combined in any order and that the colloid formed can then be added to a solution or dispersion of a hydrophilic polymer (adhesive mixture). Non-Final Act. 9 (citing Terry col. 5, 11. 17-19, 26-30). The Examiner further relies on Terry disclosing that salt A can be silver nitrate (Terry col. 9, 11. 4-5, 12) and salt B can be sodium chloride (col. 9, 1. 8) such that the colloid formed is silver chloride and that this colloid can then be combined with the polymer composition (col. 5, 11. 57-59) to form an adhesive silver chloride mixture as set forth in the claim. Non-Final Act. 9. Appellants argue that Terry does not disclose particular steps required by the claim and teaches away from forming colloid silver chloride and then 8 Appeal2014-007696 Application 12/924,868 combining it with an adhesive mixture to form an adhesive silver chloride mixture. 9 App. Br. 14-16. In particular, Appellants argue that Terry fails to disclose the steps of "mixing a predetermined amount of silver nitrate into a first batch of water to form a silver nitrate mixture" followed by the step of "mixing a predetermined amount of sodium chloride into the silver nitrate mixture to form a silver chloride mixture" and then the step of mixing an adhesive ... into a second batch of water to form an adhesive mixture; App. Br. 14-15. Appellants then cite to Terry's disclosure of embodiments in which the colloid is formed in the coating solution which includes polymer rather than being formed and only then being combined with an (adhesive) polymer solution/dispersion solution. App. Br. 15-16 (citing Terry col. 9, 11. 8-14, 51-52, col. 11, 11. 59-63). Appellants' argument is unpersuasive because it fails to address the grounds of rejection as set forth by the Examiner, including failing to address cited portions of Terry disclosing that the salt solutions can be combined to form the colloid prior to combining the colloid with the polymer. Non-Final Act. 9 (citing Terry col. 5, 11. 17-19, 26-30). Rather, Appellants' argument focuses on particular embodiments of Terry not relied upon by the Examiner. App. Br. 13-16. As explained by the Examiner (Ans. 13-14), such narrow consideration of the cited prior art is improper. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) ("Patents ... relevant for all they contain."); Preda, 401 F.2d 826 ("it is proper to take into account not only the specific teachings of the references but also the inferences that one skilled in the art would reasonably be expected to draw therefrom."). 9 As explained above in respect to claim 11, Appellants' arguments raised in the Reply Brief as to the "Examiner Note" are deemed waived. 9 Appeal2014-007696 Application 12/924,868 Further, as to particular embodiments or preferences differing from the claimed method, as explained by the Examiner (Ans. 13-14), they are no teaching away. See, e.g., DyStar Textilfarben Gmbh & Co. Deutschland KG v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) ("We will not read into a reference a teaching away from a process where no such language exists."). For the reasons above, it follows that we affirm the obviousness rejection of claim 18. CONCLUSION The indefiniteness rejection of claim 18 is AFFIRMED. The obviousness rejections of claims 11 and 18 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a)( 1 ). AFFIRMED 10