Ex Parte Nun et al

Patent Trial and Appeal BoardMar 8, 2016

12159103 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/159, 103 06/25/2008 Edwin Nun 22850 7590 03/10/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 326798USOPCT 3510 EXAMINER THOMPSON, CAMIE S ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 03/10/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWIN NUN, HEIKE BERGANDT, and ANDREAS GUTSCH Appeal2014-001695 Application 12/159,103 Technology Center 1700 Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and GEORGE C. BEST, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of a final decision of the Primary Examiner to reject claims 1-38. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. BACKGROUND The subject matter on appeal relates to a method for coating substrates to provide substrates having antimicrobial and biocidal characteristics (Spec. 1 The Appellants state that the Real Party in Interest is "Evonik Industries AG (Germany)" (Appeal Brief filed June 17, 2013, hereinafter "Br.," 1). Appeal2014-001695 Application 12/159,103 1, 11. 3--4; 3, 11. 7-12). Representative claim 1 is reproduced from the Appeal Brief (Claims App. i-ii) (disputed limitation indicated in italicized text): 1. A method for coating substrates, comprising: a) applying a composition to at least one side of a substrate, the composition comprising an inorganic compound comprising at least one metal and/or semi-metal selected from the group consisting of Sc, Y, Ti, Zr, Nb, V, Cr, Mo, W, Mn, Fe, Co, B, Al, In, Tl, Si, Ge, Sn, Zn, Pb, Sb, Bi, and mixtures thereof, and at least one element selected from the group consisting of Te, Se, S, 0, Sb, As, P, N, C, Ga, and mixtures thereof, b) drying the composition applied to the substrate, c) applying at least one coating to the at least one side of the substrate on which the composition was applied, the coating comprising a silane of the general formula (Z1)Si(OR)3, where Z1 is R, OR or 3-glycidyloxypropyl and R is an alkyl radical having 1 to 18 carbon atoms and all R may be identical or different, oxide particles which are selected from the group consisting of oxides of Ti, Si, Zr, Al, Y, Sn, Zn, Ce, and mixtures thereof, an initiator and optionally zinc, zinc salts, zinc complexes, silver, and/or silver salts, and d) drying the coating, e) applying at least one further coating to the at least one side of the substrate on which the first coating was applied, the further coating containing a silane of the general formula (Z1)Si(OR)3, where Z1 is R, OR or 3- glycidyloxypropyl and R is an alkyl radical having 1 to 18 carbon atoms and all R may be identical or different, an antimicrobial and/or biocidal substance selected from the group consisting of substances containing Zn, Zn salts, Zn complexes, Zr, Ag, Ag salts, Sn, Sn compounds, and mixtures thereof, and an initiator, and t) drying the further coating. 2 Appeal2014-001695 Application 12/159,103 THE REJECTION Claims 1-38 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Nun et al. (WO 2005/080684 Al published September 1, 2005; hereinafter "Nun")2 in view of a partial translation of JP 11-323796 (published November 26, 1999 in the name of Ichikawa; hereinafter "JP '796"). 3 (Ans. 2-7; Final Office Action entered December 19, 2012.) DISCUSSION The Appellants argue claims 1-38 together (Br. 5-11). Therefore, we confine our discussion to claim 1, which we select as representative. See 37 C.F.R. Â§ 41.37(c)(l)(iv). By rule, claims 2-38 stand or fall with claim 1. The Examiner found that Nun describes a method of coating substrates as specified in claim 1 except for the presence of an antimicrobial material such as silver, silver salts, zinc, or zinc salts in the disclosed outer ceramic layer (Ans. 2--4). The Examiner found further, however, that Nun teaches that it was known to include bioceramic compositions doped with specific metals, such as silver, in disinfecting wallcoverings (id. (citing Nun i-f 5)). In addition, the Examiner found that JP '796 teaches the use of a 2 The Appellants do not contest the Examiner's use of US 2008/0020190 Al (published in the names of Nun et al. on January 24, 2008) as an accurate English language translation of the published PCT application applied in the rejection (Br. 5). Therefore, our citations to Nun are to the published United States application. 3 On page 7 of the Examiner's Answer entered September 13, 2013 (hereinafter "Ans."), the Examiner cited to Paragraph 18 of JP '796. The electronic record, however, does not appear to include a complete copy of JP '796, much less a complete English language translation thereof. Therefore, our decision is based only on the Examiner's reliance on the 3-page partial translation of JP '796, as found in the record. 3 Appeal2014-001695 Application 12/159,103 ceramic layer comprising inorganic material, such as alumina or silica, and inorganic fine particles, such as silver having a particle diameter of 0.01-50 microns, on a wallpaper to provide a product that does not generate toxic gas during combustion and exhibits antibacterial and deodorizing activities (id. at 4). Based on these findings, the Examiner concluded that "it would have been obvious to one of ordinary skill in the art to [include] silver particles in the ceramic layer of the Nun reference as it was well known ... to use silver particles with a diameter in the range of 20 nm to 1000 nm in a ceramic layer of a wallpaper to yield a wallpaper that has superior antibacterial properties and is pervious [sic] to gaseous materials" (id. at 4--5). The Appellants do not specifically challenge the Examiner's findings regarding Nun's disclosure nor the difference between it and the claimed subject matter (Br. 6). Rather, the Appellants' principal argument is that claim 1 's subject matter would not have been obvious to a person of ordinary skill in the art because Nun (i-f 12) teaches away from "an antimicrobial and/or biocidal substance selected from the group consisting of substances containing Zn, Zn salts, Zn complexes, Zr, Ag, Ag salts, Ag complexes, Sn, Sn compounds, and mixtures thereof' in an outer coating as required by claim 1 (Br. 6). The Appellants' principal argument is insufficient to identify a reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Nun's paragraph 12 states "that the use of anatase in the ceramic coating may provide the inventive wallpapers with germicidal activities due to photocatalytic effects-without the need for free metal ions." Thus, contrary to the Appellants' belief, Nun teaches that because anatase (a 4 Appeal2014-001695 Application 12/159,103 particular crystal form of titanium dioxide) provides photocatalytic effects, free metal ions are not necessary in the ceramic coating to provide germicidal activities. That disclosure specific to anatase-i.e., that free metal ions are not necessary for anatase-would not have discouraged or dissuaded a person of ordinary skill in the art from using metals known for their antimicrobial or biocidal activities in combination with non- photocatalytically active or other alternative materials disclosed as suitable for Nun's outer ceramic layer (2) (Nun i-fi-133, 49, 97). In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed"); In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (failure to cite evidence suggesting that the claimed invention would be unlikely to work rendered teaching away argument ineffective). The Appellants "openly acknowledge[]" that it was known "metals, metal salts, and metal complexes" were used for antimicrobial and/or biocidal activity but argue that "as a rule, an elevated temperature is required for applying, for example, silver to substrates, [and, therefore,] such methods of the prior art cannot be used, for example, for wallpapers which consist of a relatively thermally labile substrate, such as, for example, paper" (Br. 7- 8). See also Spec. 2, 1. 22-3, 1. 5 (describing that, at the required elevated application temperatures, silver per se is unsuitable for wallpaper substrates that consist of "relatively thermally labile" materials, such as paper, but acknowledging that an expensive procedure involving the application of silver-containing zeolite is described in JP '796). 5 Appeal2014-001695 Application 12/159,103 As pointed out by the Examiner (Ans. 6), claim 1 is not limited to thermally labile paper as the substrate. Nor is Nun's disclosure limited to wallcoverings based on thermally labile paper substrates. Rather, Nun discloses a variety of wall covering substrates including those that appear to be the same materials disclosed as suitable in the current application (Nun i-f 20; Spec. 4, 11. 14--18). Moreover, Nun's disclosure (i-f 5) that metals, such as silver, have been used successfully as part of bioceramic compositions in prior art wallpapers belies the Appellants' argument that silver cannot be used on wallpaper. In any event, the Appellants fail to identify error in the Examiner's determination that claim 1 's disputed limitation reads on the zeolite- supported silver disclosed in JP '796. Even assuming the correctness of the Appellants' representations that the zeolite-supported silver disclosed in JP '796 is "very expensive" (e.g., Spec. 3, 11. 3-5), the additional expense associated with such materials-alone-would not have discouraged a person of ordinary skill in the art to combine JP '796 with Nun to arrive at a coating method in the manner claimed by the Appellants. In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) ("That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility. Only the latter fact would be relevant."). The Appellants argue further that "[e]ven if Nun and/or JP '796 provide a general motivation to apply metals, metal salts, and metal complexes to impart antimicrobial or biocidal properties, there is no disclosure of applying the same in conjunction with the specific silane and an initiator as required in the claims" (Br. 9). According to the Appellants, 6 Appeal2014-001695 Application 12/159,103 the combination would result in applying JP '796's zeolite-supported silver after the silane coating step (id.). Again, we discern no persuasive merit in the Appellants' argument. In a manner similar to the technique described in Nun (i-fi-f 49-53, 97), JP '796 describes forming a ceramic layer containing colloidal inorganic material (e.g., colloidal silica or alumina) and/or inorganic fine particles (zeolite-supported silver) on a substrate by a sol-gel process in which a ceramic-forming raw material such as a metal alkoxide and/or metal hydroxide, e.g., CH3Si(OCH3)3, is prepared by using an organic solvent such as isopropanol (JP '796 Abst.). Lastly, the Appellants refer to a test report prepared by the German Federal Institute for Materials Research and Testing ("BAM"), filed March 19, 2013 (Evidence App.), as "further evidence [of] the benefits of the presently claimed invention and how the claimed process provides excellent antimicrobial properties" (Br. 9). As noted by the Examiner (Ans. 7), the Appellants fail to direct us to an accurate English language translation of the "BAM" document. Therefore, it is not possible to ascertain the veracity and weight to be given to the Appellants' argument based on this document. For these reasons and those set forth in the Answer, we uphold the Examiner's rejection. SUMMARY The Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1-38 as unpatentable over Nun in view of the partial translation of JP '796 is affirmed. 7 Appeal2014-001695 Application 12/159,103 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 8