Joseph P. Wood et al.

Patent Trials and Appeals Board

Oct 2, 2019

15271946 - (D) (P.T.A.B. Oct. 2, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/271,946 09/21/2016 Joseph P. WOOD 0075.1004CIP 6647
49455 7590 10/02/2019
STEIN IP, LLC
1990 M STREET, NW
SUITE 610
WASHINGTON, DC 20036
EXAMINER
KLINKEL, KORTNEY L
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
docketing@steinip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOSEPH P. WOOD, MORGAN Q. S. WENDLING, and
ANDREW LASTIVKA
__________

Appeal 2019-001453
Application 15/271,946
Technology Center 3600
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the United States
Government, “as represented by the Environmental Protection Agency.”
Appeal Brief (“Appeal Br.”) 1, filed August 24, 2018. We note that the
Appeal Brief is not paginated. We refer to the Appeal Brief as if it is
numbered consecutively starting from page 1.
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The claimed subject matter “relates to the field of soil
decontamination.” Spec. ¶ 1.2
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A method of inactivating B anthracis spores in a
contaminated target environment by:
a) exposing the environment containing said spores to an
effective amount of persulfate in solution and an oxidation agent
wherein an effective amount is an amount sufficient to produce
a LR (Log reduction) of at least 6 wherein LR is the efficiency
as under the formula
Efficacy = (log10CFUcij) - (log10CFUtij)
b) allowing the persulfate solution and oxidation agent to
remain in contact with the environment containing said spores
until LR of at least 6 has been achieved.

THE REJECTION
Claims 1–6 stand rejected under 35 U.S.C. § 103 as unpatentable over
Sethi (US 7,524,141 B2, issued Apr. 28, 2009) and Giletto (US 6,569,353
B1, issued May 27, 2003).

ANALYSIS
Appellant does not offer arguments in favor of claims 2–6 separate
from those presented for independent claim 1. See Appeal Br. 2–5. We
select claim 1 as the representative claim, and claims 2–6 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

2 Specification (“Spec.”), filed Nov. 22, 2016.
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Regarding claim 1, the Examiner finds that Giletto discloses “a
universal decontamination formulation and method for detoxifying chemical
warfare agents (CWA’s) and biological warfare agents (BWA’s)” in which
the formulation “includes sodium and potassium monopersulfate” and an
“oxidant [that] is preferably hydrogen peroxide” that is used “against
Bacillus anthracis spores.” Final Act. 4–53 (citing Giletto Abstr., 2:23–27,
35–39, 7:43–46). The Examiner further finds that Giletto discloses its
formulation “is highly effective at decontaminating spores and 99.999998%
are killed in 3 minutes or less,” which “resulted in a log reduction of 6.6 of
the anthrax spore surrogate,” but acknowledges that Giletto’s formulation is
“referred to throughout the document as ‘the gel.’” Id. at 5 (citing Giletto
col. 20, Example 5, Table 2, Fig. 7). The Examiner, however, finds that
Sethi discloses “contaminate removal from an environmental medium, such
as contaminated soil by treatment with a combination of a persulfate, such as
a sodium persulfate, and hydrogen peroxide” in which “the persulfate is
formed into an aqueous solution.” Id. at 4 (citing Sethi Abstr., 5:36–39).
The Examiner reasons given that “Sethi [] teaches that for in situ soil
treatment, injection rates must be chosen based upon the hydro geologic
conditions, i.e. the ability of the oxidizing solution to displace, mix and
disperse with existing groundwater and move through the soil,” it would
have been obvious to combine the teachings of Giletto and Sethi in order to
arrive at the claimed invention. Id. at 5–6 (citing Sethi 3:37–40).
Appellant contends that “Sethi is primarily concerned about
hydrocarbon contamination and does not address any microbial

3 Final Office Action (“Final Act.”), dated Apr. 2, 2018.
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contaminants” and that “Giletto gives no teaching about decontamination of
soil containing B anthracis spores.” Appeal Br. 2; see also id. at 3–4 (citing
Sethi col. 4). Appellant argues Giletto discloses that “gel was required on
the contaminated surface to hold the contaminants on the glass surface.” Id.
3.
These contentions are unpersuasive in that they do not address the
rejection. The Examiner relies on Giletto for disclosing treating microbial
contaminants such as B anthracis spores and Sethi for disclosing using
formulations in solution form for decontamination of soil. See Final Act. 4–
5. See also In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co.,
800 F.2d 1091 (Fed. Cir. 1986). We further note that claim 1 does not
require the contaminated target environment to be soil. See Appeal Br. 6
(Claims App.).4 See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Limitations not appearing in the claims cannot be relied upon for
patentability.).
Appellant contends that “[t]his rejection is clearly based on hindsight”
because “[o]ne would not look to the remediation of pollution related to
hydrocarbons to identify means for inactivating bacterial spores.” Appeal
Br. 4–5; see also id. at 3 (arguing that Sethi addresses entirely different
problems than those addressed by the claimed invention such that an

4 We note Appellant also contends that the subject invention “requires
generation of sulfate radicals for oxidation of bacterial spores in an organic
matrix.” Appeal Br. 4. However, claim 1 does not recite “generation of
sulfate radicals for oxidation of bacterial spores in an organic matrix.” Appeal
Br. 6 (Claims App.).

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ordinary artisan would not look to Sethi for treating Bacillus anthracis
spores in soil); Reply Br. 2.5
This contention is unpersuasive. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 416 (2007). Giletto evidences that a formulation including persulfate
and hydrogen peroxide is effective for treating Bacillus anthracis spores.
Giletto Abstr., 2:23–27, 35–39, 7:43–46.6 Sethi evidences that a formulation
including persulfate and hydrogen peroxide in solution form is effective for
treating contaminants in soil. Sethi Abstr., 3:37–40; 5:36–39. We therefore
agree with the Examiner that it would have been obvious to provide
Giletto’s formulation in solution form as taught by Sethi, to treat
contaminants in the soil. Final Act. 5–6. The combined teachings of Giletto
and Sethi regarding using persulfate and hydrogen peroxide in solution form
would yield predictable results of treating Bacillus anthracis spores in the
soil.7 Thus, we conclude that the Examiner’s rejection is based on sound

5 Reply Brief (“Reply Br.”), filed Dec. 7, 2018.
6 Appellant acknowledges that “Giletto’s patent generally addresses
decontamination formulations . . . including some sodium persulfates.”
Appeal Br. 3 (emphasis added).
7 We note Appellant’s assertion that “as indicated at paragraphs 4 and 5 of the
application, decontamination of soil presents special problems when the
contaminant is B. anthracis spores.” Appeal Br. 2. However, Appellant does
not explain what the “special problems” are and why the Examiner’s proposed
modification would not yield predictable results, i.e., a reasonable expectation
of success. See also Examiner’s Answer (“Ans.”) 7 (explaining that Appellant
does not provide evidence as to why the claimed composition is unexpectedly
superior when used in a particular target environment), dated Oct. 10, 2018.
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technical reasoning and evidence disclosed in the cited prior art, rather than
improper hindsight reconstruction.
Appellant contends that “Giletto teaches away from choosing the
compositions required in the claims of this application.” Appeal Br. 3.
Appellant argues that “[i]t should be noted that the tests in Giletto are all
done using surrogates and only on glass slides or in suspension and so they
do not address the functionality required on material such a soil which are
typically comprised of substantial amounts of organic constituents.” Id.
We first note that it is unclear as to why Appellant believes that
Giletto teaches away from choosing the claimed compositions based on
Giletto’s preferred embodiments. See Merck & Co. Inc. v. Biocraft Labs.
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or non-preferred embodiments. In re Susi,
440 F.2d 442, 446 n.3 (CCPA 1971). Giletto does not discredit, criticize, or
disparage the claimed persulfate and oxidation agent but instead suggests
that formulations containing persulfate and hydrogen peroxide are effective
for treating Bacillus anthracis spores. Neither does Giletto discredit,
criticize, or disparage the application of its compositions to soil or other
contaminated target environments that are different from glass. Giletto
Abstr., 2:23–27, 35–39, 7:43–46. Like our appellate reviewing court, “[w]e
will not read into a reference a teaching away from a process where no such
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language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellant argues that “thousands of chemical ingredients can be
encompassed generally as suggested at column 2” of Giletto. Appeal Br. 3;
see also Reply Br. 2. Appellant further argues that “the formulations
exemplified in Giletto do not work to address the problem of spores in soil
because they do not produce the sulfate radicals required for effectiveness in
an organic matrix such as soil.” Appeal Br. 3. Appellant also argues that
“[t]he examples tested by Giletto contain potassium peroxymonosulfates and
activators (and which one would expect would include preferred
compositions) do not generate sulfate radicals necessary in the practice of
the current invention for soil decontamination as taught and necessary for
the purposes of disinfection of solid substrates such as soil” and that “Giletto
teaches the formulations will produce hydroxyl radicals, which alone would
not be effective in inactivating bacterial spores in the presence of organic
matter as would be found in soil.” Id.
These contentions are unpersuasive. First, as the Examiner points out,
“the rejection never argues to replace the required potassium monosulfate
(KHSO5) of Giletto with the persulfate oxidant recited in column 2 (among 6
relatively small families of oxidants, not thousands of compounds as
purported by Appellant).” Ans. 6 (emphasis added).8 Second, as discussed

8 We note supra (n.5) that Appellant acknowledges Giletto discloses the
claimed composition (Appeal Br. 2) but to the extent that Appellant is arguing
Giletto does not disclose the claimed composition, the Examiner further
explains that Sethi’s compositions are functional equivalents of certain
compositions of Giletto (see Ans. 6) and Appellant does not explain why the
Examiner is incorrect in making this determination.
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above, the broader disclosure or non-preferred embodiments of Giletto must
be considered rather than only the disclosed examples and preferred
embodiments. In re Susi, 440 F.2d at 446 n.3. Third, Appellant attacks the
references individually because the arguments revolve around compositions
that are not in solution form—rather than those from the Examiner’s
proposed modification—which are in solution form. See Appeal Br. 3
(arguing that Appellant “is not dealing with a gel applied to glass”). Finally,
we find Appellant’s arguments, which lack supporting evidence, insufficient
to rebut the express teaching of Giletto as reiterated above. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[A]ttorney argument [is] not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness”). “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Sethi and Giletto. Accordingly, we sustain the Examiner’s rejection of claim
1, as unpatentable over Sethi and Giletto, with claims 2–6 falling with claim
1.

DECISION
We AFFIRM the decision of the Examiner to reject claims 1–6 as
unpatentable over Sethi and Giletto.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED