Ex Parte 5874001 et al

Patent Trial and Appeal Board

Jul 29, 2014

90009965 (P.T.A.B. Jul. 29, 2014)

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.
90/009,965 11/30/2011 5874001 9315 9438
23387 7590 07/30/2014
Brian B. Shaw, Esq.
Harter Secrest & Emery LLP
1600 Bausch & Lomb Place
Rochester, NY 14604-2711
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
07/30/2014 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 MATRIX ENVIRONMENTAL TECHNOLOGIES, INC,
Patent Owner and Appellant
____________________

Appeal 2014-006077
Reexamination Control 90/009,965
Patent 5,874,001
Technology Center 3900
____________________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Matrix Environmental Technologies, Inc. (hereinafter “Appellant”)1
appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s final
rejection of claims 1 through 8, 10, 11, 13, and 14 in the above-identified ex
parte reexamination proceeding involving U.S. Patent 5,874,001 (hereinafter
the “’001 patent”). We have jurisdiction under 35 U.S.C. §§ 6, 134(b), and
306.
We REVERSE.

1 Matrix Environmental Technologies, Inc. is the real party in interest of the
’001 patent. (See Appellant’s Appeal Brief filed September 11, 2013
(hereinafter “App. Br.”) at 1.)
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The reexamination proceeding arose from a third-party request for ex
parte reexamination of the ’001 patent filed by William E. Hilton of the law
firm Gesmer Updegrove LLP on behalf of Innovative Engineering Solutions,
Inc. Request for Ex parte Reexamination, filed November 2, 2011. The
’001 patent was issued from Application 08/710,091 filed by Appellant on
September 11, 1996. (Bibliographic Data Sheet mailed December 30, 2011
at 1.) According to the ’001 patent, its invention is directed to:
[A] method for in situ mediation of contaminated ground water
and contaminated soil by injection of pure oxygen into the
ground water and in particular to a method of remediating
ground water and soil contaminated with petroleum products by
injecting pure oxygen into the ground water in a volume low
enough to avoid migration or volatilization of the petroleum
product but high enough to enhance the rate of bi[o]degradation
of the petroleum product. [(’001 patent, col. 1, ll. 5-13.)]

Details of this invention are recited in illustrative claims 1, 7, 10, and 11
which are reproduced below (underlining show amendments relative to the
original claims):
1. A method of in situ removal of biodegradable contaminants from a
zone of ground water or soil, or both, the method comprising:
injecting oxygen gas into ground water of the zone in a volume low
enough to avoid migration or volatilization of the contaminant but high
enough to oxygenate the ground water and enhance the rate of
biodegradation of the contaminant.
7. A method of in situ removal of biodegradable contaminants from a
zone of water-moist soil comprising:
injecting oxygen gas into water of the water-moist soil of the zone in a
volume low enough to avoid migration or volatilization of the contaminant
but high enough to oxygenate the water and enhance the rate of
biodegradation of the contaminant.
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10. The method of claim 1, wherein the injecting step comprises
injecting oxygen by pulsed sparging.
11. The method of claim 10, wherein the oxygen is injected for five
minutes at about thirty-minute intervals.
(Claims App’x 1-3.)
Appellant seeks review of the following grounds of rejection
maintained by the Examiner in the Examiner’s Answer mailed January 17,
2014 (“Ans.”):
1. Claims 1, 2, and 5 through 8 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Roux B;2
2. Claims 10, 11, 13, and 14 under U.S.C. § 103(a) as
unpatentable over the disclosure of Roux B;
3. Claim 3 under U.S.C. § 103(a) as unpatentable over the
combined disclosures of Roux B and EPA H;3
4. Claim 4 under U.S.C. § 103(a) as unpatentable over the
combined disclosures of Roux B and Wickens.4 (See App. Br. 2-3, Final

2 Roux Associates, Inc., SUMMARY REPORT OF SPARGE PILOT TESTING AND
CONCEPTUAL DESIGN REVIEW, Industri-Plex Site, Woburn, MA,
MO06626T.1.2, pp. 28-49 (submitted to U.S. EPA on March 28,
1995)(hereinafter “Roux B”).

3 HOW TO EVALUATE ALTERNATIVE CLEANUP TECHNOLOGIES FOR
UNDERGROUND STORAGE TANK SITES, Chapter VIII, “Biosparging,” U.S.
Environmental Protection Agency (EPA) publication EPA-510-B-95-007,
pp. VIII-1to VIII-36 (May 1995) (hereinafter “EPA H”).

4 U.S. Patent 5,332,502 issued to Wickens et al. on July 26, 1994
(hereinafter “Wickens”).
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Office Action mailed March 14, 2013 at 3-7, and Advisory Action mailed
May 30, 2013.)
As indicated supra, every rejection maintained by the Examiner
requires that Roux B be available as “prior art” within the meaning of
35 U.S.C. §102(b). According to the Examiner, Roux B was available on
March 28, 1995, more than one year prior to the filing date of the ’001
patent, namely September 11, 1996. (Ans. 2.) In support of this position,
the Examiner refers to the e-mail correspondence from Mr. Christopher
Ferry (Task Order Manager, OSRR RIC, U.S. EPA, New England), Exhibit
C attached to the Rule 132 Declaration executed by Mr. Robert S. Stivers
(Manager of Information Services at Harter Secrest & Emery, LLP) on May
14, 2013 (the “second Stivers Declaration”) (Ex. 2, Evidence App’x). In
particular, the Examiner relies upon the following passages in the
correspondence from Mr. Christopher Ferry:
1. This report is dated 03/28/1995. That would be the
date that it was submitted to the US EPA. The document was
first digitized in July of 2011, but I should clarify that this
action has no bearing on when the document was added to the
file system for the Industri-Plex site, merely when we captured
it in a specific application.
2. The document became publicly available when it
was received by EPA in 1995. Any FOIA request for the
document would have lead [sic., led] to its release to the public.
A member of the public could also request the document
without going through the FOIA process (as you have) and
Records Center staff would have confirmed with the EPA staff
that the document could be released and provided (as we have
in your case).

(See Ans. 2 and Exhibit C of the second Stivers Declaration, page 4.)
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On the other hand, Appellant contends, inter alia, that Roux B is not
available as prior art because it is not a “printed publication” within the
meaning of 35 U.S.C. §102(b). (App. Br. 3-16 and Reply Brief filed March
17, 2014 (“Reply Br.”) at 1-5.) In support of this contention, Appellant
relies upon Rule 132 Declarations executed by Robert S. Stivers on August
7, 2012 and May 14, 2013, respectively (the “first Stivers Declaration” (Ex.
1, Evidence App’x) and the “second Stivers Declaration,” respectively) to
show that Roux B was not disseminated to the public or sufficiently
accessible to the public. (App. Br. 3-16.) According to Appellant, the
Examiner has not proffered sufficient evidence to show that Roux B was
“publically accessible” to meet the “printed publication” requirement under
35 U.S.C. 102(b). (Id.)

II. ISSUE and CONCLUSION
The dispositive question in this appeal is: Has the Examiner
demonstrated that Roux B constitutes a “printed publication” within the
meaning of 35 U.S.C. §102, thus making it available as “prior art” for the
purposes of rejecting the claims on appeal?5 On this record, we answer this
question in the negative.

III. PRINCIPLES OF LAW
Whether a “document qualifies as a ‘printed publication’ under § 102
is a legal conclusion based on underlying factual determinations.” SRI Int’l,
Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008) (citation

5 Every rejection maintained by the Examiner in the Examiner’s Answer
requires Roux B as prior art.
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omitted); see also In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004)
(“Where no facts are in dispute, the question of whether a reference
represents a ‘printed publication’ is a question of law.”) “Because there are
many ways in which a reference may be disseminated to the interested
public, ‘public accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C.
§ 102(b).” SRI Int’l, Inc., 511 F.3d at 1194 (quoting In re Hall, 781 F.2d
897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’
upon a satisfactory showing that such document has been disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence can locate
it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378
(Fed. Cir. 2006)); In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)
(“[D]issemination and public accessibility are the keys to the legal
determination whether a prior art reference was ‘published.’” (quoting
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir.
1988), cert. denied, 488 U.S. 892 (1988))). “The proponent of the
publication bar must show that prior to the critical date the reference was
sufficiently accessible, at least to the public interested in the art, so that such
a one by examining the reference could make the claimed invention without
further research or experimentation.” Hall, 781 F.2d at 899 (citation
omitted).

IV. DISCUSSION
We concur with Appellant that the Examiner has not demonstrated
that Roux B constitutes a “printed publication” under 35 U.S.C. §102 for the
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reasons set forth at pages 7 through 15 of the Appeal Brief. Although Roux
B was presumably available as of March 28, 1995, more than one year prior
to the filing date of the ’001 patent, as shown by the Examiner, such
availability, without more, is not sufficient to demonstrate that Roux B was
reasonably or sufficiently accessible to the public or the public interested in
the art as of that date or any other critical date prior to the filing date of the
’001 patent. Cronyn, 890 F.2d at 1161; see also In re Lister, 583 F.3d 1307,
1314 (Fed. Cir. 2009) (The fact that “the Lister manuscript was available at
the Copyright Office for inspection by any interested person does not end
our inquiry. We must also consider whether anyone would have been able to
learn of its existence and potential relevance prior to the critical date.”) In
other words, the Examiner is required to show that Roux B “has been
disseminated [at least to the interested public] or otherwise made available to
the extent that persons interested and ordinarily skilled in the subject matter
or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc., 511 F.3d
at 1194.
However, neither is done in this case. On this record, the Examiner
has not shown that the U.S. Environmental Protection Agency’s general
practice involves indexing or cataloging documents of such type or
including such documents in a database that permitted keyword searching
upon their submission within the critical time period prior to the filing date
of the ’001 patent. Nor has the Examiner shown that the U.S.
Environmental Protection Agency has disseminated Roux B to the public
prior to the critical date relative to the ’001 patent. The first Stivers
Declaration states that Mr. Stivers, a research librarian, was unable to find
Roux B in the EPA’s online catalogs or library catalogs and without the
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document identification number for Roux B, Mr. Stivers would not have
located Roux B. (See the first Stivers Declaration ¶ 8 and its Exhibits A and
B.) The second Stivers Declaration, according to Appellant, also states that:
In further e-mail correspondence with Mr. Ferry, [Task Order
Manager, ASRC Primus, the Office of Site Remediation and
Restoration Center Records &Information Center, US
Environmental Protection Agency, New England, Boston, MA,]
Mr. Stivers was informed that . . . the document does not appear
to have been included in any Administrative Records or FOIA
responses that the Record Center has records for, and that the
RIC [(Records & Information Center)] does not generally
produce registries or indices or publicly available documents
beyond Administrative Records and FOIA (April 4, 2013
9:25AM e-mail). Mr. Ferry also informed Mr. Stivers that the
SDMS DocID [(document identifying number)] is assigned at
the time of indexing and digitization of the document, which in
this case was July 26, 2011 (April 04, 2013 4:31 PM e-mail).
[(See App. Br. 9 and the second Stivers Declaration ¶ 10,
Exhibit C, pp. 3-4.)]

These factual statements in the first and second Stivers Declarations have
not been challenged by the Examiner. (Compare App. Br. 9 with Ans. 2-3.)
The Examiner has not supplied any evidence to show that persons interested
in the subject matter exercising reasonable diligence would have been able
to learn of the existence and potential relevance of Roux B prior to the
critical date relative to the ’001 patent. (Ans. 2-3.) In particular, the
Examiner has not proffered sufficient evidence to show that Roux B was
disseminated to the public or indexed, cataloged or otherwise effectively
made publicly accessible prior to the critical date. (Id.)
Accordingly, on this record, we determine that the Examiner has not
established a prima facie case of unpatentability under §§ 102(b) and 103(a).
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V. ORDER
In view of the foregoing, we reverse the rejections maintained by the
Examiner.

REVERSED

cdc