Nabil Lawandy

Patent Trials and Appeals Board

Mar 3, 2020

13625368 - (D) (P.T.A.B. Mar. 3, 2020)

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.
13/625,368 09/24/2012 Nabil Lawandy S095 P02586-US 8837
3017 7590 03/03/2020
BARLOW, JOSEPHS & HOLMES, LTD.
40 WESTMINSTER STREET
3RD FLOOR
PROVIDENCE, RI 02903
EXAMINER
BUCCI, THOMAS
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
drj@barjos.com
patent@barjos.com
sjh@barjos.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NABIL LAWANDY
Appeal 2019-002943
Application 13/625,368
Technology Center 1700
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
HOUSEL, 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, 3–7, 9 and 10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Spectra Systems
Corporation. Appeal Brief (“Appeal Br.”) filed June 1, 2018, p. 1.
2 Our Decision additionally refers to the Specification (“Spec.”) filed
September 24, 2012, the Examiner’s Final Office Action (“Final Act.”)
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CLAIMED SUBJECT MATTER
The invention is directed to a banknote including a self-cleaning and
directed cleaning capability. Spec. ¶ 11. The banknote substrate includes a
photo-catalytic material that, upon exposure to a source of illumination,
reacts in a manner that sheds accumulated contaminants and dirt. Id. More
particularly, the invention employs coatings, inks, and additives which are
photo-active and catalytic to reactions which are effective in breaking up
organic contaminants and dirt. Id. ¶ 12. Desirably, this effect occurs through
exposure to ambient light, but may also be aided by additional equipment for
optical/UV excitation, flowing air, water flow, and mechanical brushing. Id.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter. The limitation at issue is
italicized.
1. A directed cleaning banknote material comprising:
a polymeric banknote substrate having a surface and a
contaminant encrusted on said surface; and
a photo-catalytic material on said surface of said substrate,
said photo-catalytic material upon exposure to energy having
a wavelength in the 200nm–400nm region causes said
photocatalytic material to release electrons that converts
atmospheric water to hydroxyl radicals resulting in chemical
oxidation on said surface said chemical oxidation releasing
said contaminant from said surface.
REFERENCES
The prior art relied upon by the Examiner is:

dated December 18, 2017, and the Examiner’s Answer (“Ans.”) dated
November 2, 2018.

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Name Reference Date
Marzolin et al.
(“Marzolin”)
US 2008/0053308 A1 Mar. 06, 2008
Weber et al. (“Weber”) US 2009/0138077 A1 May 28, 2009
Olsson US 2011/0200656 A1 Aug. 18, 2011

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 1, 3–7, 9, and 10 are rejected under 35 U.S.C. § 102(b)
as anticipated by Weber;
2. Claims 1, 3–7, 9, and 10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Marzolin in view of Olsson.

OPINION
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s anticipation and
obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated rejections for substantially the fact
findings and the reasons set forth in the Examiner’s Answer and the Final
Office Action. We offer the following for emphasis only.
Rejection 1: Anticipation
The Examiner rejects claims 1, 3–7, 9, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Weber. Appellant does not argue the claims under
this rejection separately. In accordance with 37 C.F.R. § 41.37(c)(1)(iv),
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dependent claims 3–7, 9, and 10 stand or fall with claim 1, which we select
as representative in our opinion below.
The Examiner finds that Weber discloses a directed cleaning banknote
material as recited in claim 1, comprising a polymeric substrate coated with
anatase TiO2. Ans. 3–5. A complete statement of this rejection is set forth in
the Examiner’s Answer, pp. 3–6. Appellant initially asserts that Weber’s
Figures 2A and 2B do not depict polymeric banknotes. Appeal Br. 5.
Although Appellant is correct (see Weber ¶ 7), this particular error is
insufficient to demonstrate reversible error on the part of the Examiner,
because Weber in paragraph 24, also relied on by the Examiner (Final Office
Action 5; Ans. 3), teaches that the polymeric substrate may be a banknote.
Weber ¶ 24.
Appellant next argues that Weber fails to disclose that exposure to UV
energy in the 200–400 nm wavelength range causes the coating to release
electrons to cause conversion of atmospheric water to hydroxyl radicals to
create an oxidation reaction. Appeal Br. 5–6. Appellant contends that Weber
provides a ceramic layer that forms a spine over which polymer materials
are adhered for better retention of materials on the surface of the substrate.
Id. at 6. In contrast, Appellant contends that the present invention is a
directed cleaning banknote comprising a polymer substrate sheet including
“a very light coating” of TiO2 “that is activated only by concentrated
ultraviolet energy when desired to have a cleaning effect.” Id. at 6–7.
Appellant urges that banknotes accumulate, but cannot slough off, organic
contaminants every time they are handled. Id.
Appellant’s arguments are not persuasive of reversible error. Claim 1
does not recite any specific amount of photo-catalytic material on the surface
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of the substrate, let alone recite that it forms a “very light coating.” In
addition, although claim 1 does recite “directed cleaning,” Appellant does
not direct our attention to these terms as requiring that the coated banknote is
activated only by concentrated UV energy. Indeed, Appellant discloses that
the inventive banknote includes both a self-cleaning and directed cleaning
capability (Spec. ¶ 11), wherein the banknote’s polymeric substrate includes
a photo-catalytic coating, ink, or additive that is desirably activated by
ambient light, and can be supplemented with “equipment with optical/UV
excitation and flowing air, water flow, and mechanical brushes” (id. ¶ 12).
See also id. ¶ 14, 18, 21, 23. Appellant fails to direct our attention to any
disclosure limiting “directed cleaning” to a photo-catalytic reaction that is
activated only by concentrated UV energy, nor is the claim so limited.
Moreover, as the Examiner finds (Ans. 12–14), the ability of the
recited banknote to cause conversion of atmospheric water to hydroxyl
radicals to create an oxidation reaction for releasing contaminants from the
surface of the banknote upon exposure to UV energy in the 200–400 nm
wavelength range is a functional property of the photo-catalytic material on
the surface of the banknote. As the Examiner correctly explains, a prior art
product that is otherwise structurally identical to a claimed product generally
is inherently capable of performing the function associated with that product.
It has long been held that “apparatus claims cover what a device is, not what
a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Therefore, the patentability of an apparatus claim
depends on the claimed structure, not on the use or purpose of that structure,
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002), or the function or result of that structure. In re Danly, 263 F.2d
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844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA
1949).
Although “[a] patent applicant is free to recite features of an apparatus
either structurally or functionally[,] . . . . choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner establishes a
reasonable belief that a property or characteristic recited in the claims would
have been inherent to the apparatus, the burden of proof shifts to Appellant
to show that this characteristic or property is not possessed by the prior art.
Id. Appellant has not provided any evidence or persuasive technical
reasoning to refute the Examiner’s reasonable determination that Weber’s
polymeric banknote with a ceramic coating of anatase TiO2 (anatase TiO2 is
Appellant’s preferred photo-catalytic material (Spec. ¶¶ 19–21)) would have
been inherently capable of converting atmospheric water to hydroxyl
radicals to create an oxidation reaction for releasing contaminants from the
surface of the banknote upon exposure to UV energy in the 200–400 nm
wavelength range. Indeed, Appellant teaches that “the anatase form of TiO2
can be excited by ultraviolet energy having a wavelength in the 200nm–
400nm region.” Id. ¶ 20.
In addition, Appellant fails to direct our attention to support for the
contention that Weber provides a ceramic layer that forms a spine over
which polymer materials are adhered for better retention of materials on the
surface of the substrate. To the contrary, Weber teaches that the ceramic
coating can be provided on a variety of substrates including polymeric
banknotes for a variety of reasons including anti-viral, anti-bacterial, and
photoactive properties. Weber ¶ 24. And, as the Examiner finds (Ans. 11),
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Weber teaches that the coating can be provided with or without the shell
structures. Id.
Accordingly, we sustain the Examiner’s anticipation rejection of
claims 1, 3–7, 9, and 10 by Weber.

Rejection 2: Obviousness
The Examiner rejects claims 1, 3–7, 9, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Marzolin in view of Olsson. Appellant does
not argue the claims under this rejection separately. In accordance with 37
C.F.R. § 41.37(c)(1)(iv), dependent claims 3–7, 9, and 10 stand or fall with
claim 1, which we select as representative in our opinion below.
The Examiner finds that Marzolin discloses substrates, such as paper-
type, textiles, fabrics, etc., having photo-catalytic coatings which are capable
of application as a directed cleaning banknote as recited in claim 1. Final
Act. 7. Though Marzolin fails to teach that the substrate is a polymeric
banknote, the Examiner finds that Olsson teaches a banknote with an
antimicrobial material applied to its surface. Id. at 10. Therefore, the
Examiner concludes that it would have been obvious to provide a polymeric
banknote as taught by Olsson with Marzolin’s photo-catalytic material in
order to predictably allow for contaminant removal therefrom. Id. A
complete statement of this rejection is set forth in the Final Office Action,
pp. 6–11.
Appellant argues that the Examiner improperly treated the limitation
that the product is a banknote as preambular intended use. Appeal Br. 7.
Appellant asserts that claim 1 specifically requires a polymeric banknote
substrate. Id.
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This argument is not persuasive of reversible error because it fails to
address the Examiner’s rejection, wherein the Examiner acknowledges that
Marzolin fails to teach, but finds that Olsson suggests, that the substrate is a
polymeric banknote. Thus, the Examiner properly treated both the limitation
that the product is a banknote as well as the limitation that the banknote
substrate is polymeric. See Ans. 15, 16.
Appellant next contends that Marzolin adds anatase TiO2 to building
materials so as to be passively self-cleaning when exposed to visible light
over long periods of time, wherein “[t]hese building and construction
materials are simply substitutions for polymeric banknotes.” Appeal Br. 7–8.
Appellant further contends that Olsson similarly teaches a full time active
material that, even when combined with Marzolin, is “on” all the time
thereby deteriorating the coating and substrate. Id. at 8. In contrast,
Appellant contends that the present invention is a directed cleaning banknote
comprising a polymer substrate sheet including “a very light coating” of
TiO2 “that is activated only by concentrated ultraviolet energy when desired
to have a cleaning effect.” Id. Appellant urges that banknotes accumulate,
but cannot slough off, organic contaminants every time they are handled. Id.
Appellant’s arguments are not persuasive of reversible error. As we
explained above regarding similar arguments in the anticipation rejection,
claim 1 does not recite any specific amount of photo-catalytic material on
the surface of the substrate, let alone recite that it forms a “very light
coating.” In addition, although claim 1 does recite “directed cleaning,”
Appellant does not direct our attention to these terms as requiring that the
coated banknote is activated only by concentrated UV energy. Indeed,
Appellant discloses that the inventive banknote includes both a self-cleaning
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and directed cleaning capability (Spec. ¶ 11), wherein the banknote’s
polymeric substrate includes a photo-catalytic coating, ink, or additive that is
desirably activated by ambient light, and can be supplemented with
“equipment with optical/UV excitation and flowing air, water flow, and
mechanical brushes” (id. ¶ 12). See also id. ¶ 14, 18, 21, 23. Appellant fails
to direct our attention to any disclosure limiting “directed cleaning” to a
photo-catalytic reaction that is activated only by concentrated UV energy,
nor is the claim so limited.
Moreover, as the Examiner finds (Ans. 12–14), the ability of the
recited banknote to cause conversion of atmospheric water to hydroxyl
radicals to create an oxidation reaction for releasing contaminants from the
surface of the banknote upon exposure to UV energy in the 200–400 nm
wavelength range is a functional property of the photo-catalytic material on
the surface of the banknote. As the Examiner correctly explains, a prior art
product that is otherwise structurally identical to a claimed product generally
is inherently capable of performing the function associated with that product.
Where the Examiner establishes a reasonable belief that a property or
characteristic recited in the claims would have been inherent to the
apparatus, the burden of proof shifts to Appellant to show that this
characteristic or property is not possessed by the prior art. Schreiber, 128
F.3d at 147. Appellant has not provided any evidence or persuasive technical
reasoning to refute the Examiner’s reasonable determination that Marzolin’s
substrate, configured as a polymeric banknote as Olsson suggests, with a
ceramic coating of anatase TiO2 would have been inherently capable of
converting atmospheric water to hydroxyl radicals to create an oxidation
reaction for releasing contaminants from the surface of the banknote upon
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exposure to UV energy in the 200–400 nm wavelength range. To the
contrary, Appellant discloses that the anatase form of TiO2 has this
functional property. Spec. ¶ 20.
As Appellant has not identified reversible error in the Examiner’s
obviousness rejection over Marzolin and Olsson, we sustain this rejection.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner’s Answer, the decision of the
Examiner rejecting claims 1, 3–7, 9, and 10 under 35 U.S.C. § 102(b) as
anticipated by Weber, and under 35 U.S.C. §103(a) as unpatentable over
Marzolin and Olsson, is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis/Reference(s) Affirmed Reversed
1, 3–7, 9, 10 102(b) Weber 1, 3–7, 9, 10
1, 3–7, 9, 10 103(a) Marzolin, Olsson 1, 3–7, 9, 10
Overall
Outcome
1, 3–7, 9, 10

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED