Ex Parte 7896959 et al

Patent Trial and Appeal Board

Nov 30, 2018

90013836 (P.T.A.B. Nov. 30, 2018)

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.
90/013,836 10/17/2016 7896959 3108-003 9868
91887 7590 12/03/2018
Capitol Patent & Trademark Law Firm, PLLC
P.O. BOX 1995
Vienna, VA 22183
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/03/2018 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 ENHANCED SYSTEMS & PRODUCTS, INC.,
Patent Owner and Appellant
____________

Appeal 2018–008632
Reexamination Control 90/013,836
Patent 7,896,959 B1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Enhanced Systems & Products, Inc., the owner of the patent under
reexamination (hereinafter “the ’959 Patent”), appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1–14 (Appeal Brief filed
May 3, 2018, hereinafter “Appeal Br.,” 7; Final Office Action mailed
November 13, 2017). We have jurisdiction under 35 U.S.C. §§ 134(b) and
306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding is based on a third-party request for ex
parte reexamination filed by Kinetic Systems, Inc. (Request for Ex Parte
Reexamination filed October 17, 2017, 1.) We are informed that the instant
proceeding is related to Reexamination Control Number 90/013,835, which
is an ex parte reexamination of U.S. Patent No. 7,390,340 B1, titled
“Filtration Apparatus,” in which an appeal of the Examiner’s rejections has
also been filed. (Appeal Br. 3.)
The ’959 Patent states that the invention relates to a fluid filtering
device that filters undesirable chemicals, particles, hydrocarbons, and
pathogens from liquids, gases, and vapors. (Col. 1, ll. 11–15.)
Claim 1 on appeal reads as follows:
1. A biological filtration apparatus which
decontaminates biologics or chemicals for use in a system
containing a gas or liquid to be decontaminated which
comprises:
at least one housing having an inner chamber;
an inlet and an outlet;
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at least one filter means in said at least one chamber for
decontaminating the gas or liquid;
an outlet portion for said apparatus for discharge of a
decontaminated gas or liquid from said filter means and
chamber associated with said at least one housing after
decontamination;
an inlet portion of said apparatus associated with an inlet
of said at least one housing for receiving said gas or liquid to be
passed through said chamber and filter means;
first valve means associated with the inlet portion of said
at least one housing to selectively close off the inlet to said at
least one housing and to control the flow of said gas or liquid;
second valve means associated with the outlet portion of
said at least one housing to selectively close off the outlet of
said at least one housing and to control the flow of said gas or
liquid whereby any biologics or chemicals are decontaminated.
(App. Br. 82 (Claims App’x).)

THE REJECTIONS1
The Examiner rejected claims 1–14 under 35 U.S.C. § 103(a) as
follows:
1. Claims 1, 2, 4–8, 10, 13, and 14 as obvious over Mason et al. (U.S.
Patent No. 5,424,042, issued June 13, 1995, “Mason”) in view of
Pittman (U.S. Patent No. 5,064,454, issued November 12, 1991,
“Pittman);

1 The Examiner withdrew nonstatutory Double Patenting rejections set forth
in the Final Action pages 12–13 over related patent, U.S. Patent No.
7,390,340 B1, as a result of the terminal disclaimer filed December 13,
2017. (Ans. 10.)
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2. Claims 3, 9, and 11 as obvious over Mason, Pittman, and further in
view of Kubokawa (U.S. Patent No. 6, 110,260, issued August 29,
2000, “Kubokawa”);
3. Claims 1–3 and 5–12 as obvious over Jaikaran (U.S. Patent No.
5,772,879, issued June 30, 1998, “Jaikaran”) in view of Gershon et
al. (U.S. Patent No. 5,427,683, issued June 27, 1995, “Gershon”);
4. Claims 1, 2, 5–8, 10, 12, and 13 as obvious over Pittman in view of
Reipur et al. (U.S. Patent No. 5,234,605, issued August 10, 1993,
“Reipur”); and
5. Claims 3, 9, and 11 as obvious over Pittman and Reipur, further in
view of Kubokawa or Gershon.
(Examiner’s Answer mailed May 31, 2018, hereinafter “Ans.,” 2–9.)
Appellant relied on certain parts of the following (Appeal Br. 85
(Evidence App’x)):
Declaration of Robert Monetti dated June 22, 2017, and
attachments thereto (Ex. i) (“Monetti Declaration”).
Supplemental Declaration of Robert Monetti dated December
13, 2017 (Ex. ii) (“Suppl. Monetti Declaration”).
Declaration of Jonathan Hale dated December 12, 2017 (Ex. iii)
(“Monetti Declaration”).
Supplemental Declaration of Jonathan Hale dated February 11,
2018 (Ex. iv) (“Suppl. Hale Declaration”).

Level of Ordinary Skill
The Examiner determined that all of the prior art applied in the
rejection are directly pertinent to the claimed invention and clearly evinces
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the level of one of ordinary skill in the art at the time of the invention.
(Final Act. 15; Ans. 10.)
Appellant contends that the Examiner has not sufficiently established
the level of ordinary skill in the art, because Mason and Pittman are silent to
a biological filtration apparatus combined with a compressed gas system.
(Appeal Br. 11–12.)
We agree with the Examiner and expressly adopt the Examiner’s
determination of the level of skill in the art. Appellant has not provided
sufficient explanation as to why the alleged deficiencies of Mason and
Pittman render them insufficient to provide the level of ordinary skill. That
is, Appellant has not sufficiently explained why the alleged silence in Mason
and Pittman means that such prior art is not pertinent to filtration apparatus
such as those claimed, and as a result does not provide sufficient information
as to the appropriate level of skill. See In re GPAC, 57 F.3d 1573, 1579
(Fed. Cir. 1995) (Holding that the Board did not err in concluding that the
level of ordinary skill was best determined by references of record.)

Claim Interpretation
Claim 1: “Biological Filtration Apparatus”
Appellant contends that the term “biological filtration apparatus” in
conjunction with the phrase “whereby any biologics or chemicals are
decontaminated” would have a specific meaning to one of ordinary skill in
the art to require filters that remove all biologics and chemicals, or an
“absolute rated filter,” that is, a filter with a “100% rating.” (Appeal Br. 13–
14, citing Monetti Decl. ¶ 8, Attachment A, Suppl. Monetti Decl. ¶¶ 8–10,
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Hale Decl. ¶ 16.) Initially, we emphasize that the phrase “whereby any
biologics or chemicals are decontaminated” is interpreted to mean removing
biologics or chemicals from the gas or liquid consistent with the further
language of claim 1 and the positions of Appellant and the Examiner
throughout the briefing. Appellant argues that “decontaminated” would be
interpreted as synonym for “sterilize” by one of ordinary skill in the art.
(Appeal Br. 14, citing http://www.thesaurus.com/browse/decontaminate.)
The Examiner points to column 2, lines 5–6 of the ’959 Patent, where
in the Background of the Invention, the ’959 Patent refers to “biological
filters which can trap and/or kill pathogens.” (Ans. 2, 10.) The Examiner
then stated “decontamination is met by trapping contaminants, either
biological (bacteria, virus, microorganism) or chemicals.” (Id.)
We are not persuaded that one of ordinary skill in the art would have
interpreted claim 1 in the manner articulated by Appellant. The ’959 Patent
describes, with respect to filters (col. 5, ll. 5–11, emphasis added):
The filters can contain cationic, or anionic ion exchange
material, charcoal, sand, biological filters or treating devices,
HEPA filters, and the like depending upon the system to be
filtered or treated. Filter media can be poly glass, membrane,
PTFE membrane, or expanded PTFE membrane, activated
charcoal bio-filters or any other available media depending on
the use.

Claim 1 does not specify the requirements of the filter means with
respect to the particular biologics or chemicals to be decontaminated. The
Hoff Article2 relied on by Appellant, discusses design considerations for

2 Hoff, “Sterilization and Hazard Containment” (Monetti Decl., ¶ 8,
Attachment A.)
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autoclaves in “BSL3 or BSL4 application” and refers expressly to filters of
“0.2 µm because this is smaller than any pathogen.” (Hoff Article 1–2.)
Claim 1 is not limited to such applications, nor does claim 1 require that the
apparatus be necessarily used in any particular environment for
decontaminating pathogens. However, we agree with Appellant that
“decontaminate” means more than simply trapping contaminants on filters.
Rather, consistent with the ’959 Patent, “decontaminate” means that the gas
or liquid is substantially freed of contaminants targeted for removal.
Claim 1, as discussed above, requires only that the apparatus be
capable of decontaminating biologics or chemicals, and does not have any
particular limitation as to the size of the biologics or chemicals to be
removed. Thus, we decline to read any particular size limitation for the filter
means into claim 1. This is also consistent with the disclosure of the ’959
Patent that the invention is a device that “filters undesirable chemicals,
particles, hydrocarbons, pathogens and the like.” (Col. 1, ll. 11–15.) The
’959 Patent discloses that the filtration device may have “a multiplicity of
different filters or indicators to detect and/or filter pathogens or hazardous
chemicals.” (Col. 2, ll. 55–58.)

“Valve means”
Appellant contends that “valve means” as recited in claims 1 and 10
recites means plus function language such that the valves “are at least
directed to a structure for completely closing off the inlet and outlets of a
housing,” which, as shown in Figure 2 of the ’959 Patent, includes ball
valves. (Appeal Br. 19–22.)
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The Examiner stated that “valve means can be interpreted to include
ball valves but by no means restricts or requires that be the only valve that
properly meets the claimed valve means.” (Ans. 15.)
At the outset, we agree with Appellant that recitation of “valve
means” invokes 35 U.S.C. § 112, 6th paragraph (pre-AIA), and thus limits
“valve means” to the structure disclosed in the ’959 Patent and equivalents
thereof. Williams v. Citrix Online, LLC., 792 F.3d 1339, (Fed. Cir. 2015).
We agree with Appellant that the structure corresponding to the
“valve means” is “structure for completely closing off the inlet and outlets of
a housing in order to control or preclude the flow of gas or liquid to the
housing so that the at least one filter can be removed or replaced.” (Appeal
Br. 20, citing ’959 Patent, col. 2, ll. 23–24; col. 4, ll. 12–17.) We agree also
that in view of Figure 2 of the ’959 Patent, an example of such a structure
would be a ball valve or equivalents thereof. Even though the ’959 Patent
does not use the term “ball valve,” we agree with Appellant as supported by
the declaration evidence that one of ordinary skill in the art would have
understood the valves depicted in Figure 2 to be ball valves. (Appeal Br.
20–22; Suppl. Monetti Decl. ¶¶ 13–14; Hale Decl. ¶¶ 8–11.)

“Filter means”
We interpret the corresponding structure with respect to “filter means”
as the filter materials expressly listed above, reproduced from the ’959
Patent, and equivalents thereof. (Col. 5, ll. 5–11.) Appellant argues that
“filter means” as recited in claim 1 “includes filters that are
replaceable/removable.” (Appeal Br. 18.) The Examiner stated that there is
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nothing in the claim language that requires the filters be replaceable or
removable. (Ans. 14.) We find it unnecessary to resolve this dispute in
order to decide this appeal. See Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S.
Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)
(holding claim construction is not necessary when it is not “directed to, or
has been shown reasonably to affect, the determination of obviousness”).

Rejection 1
Regarding claim 1, the Examiner found that Mason discloses an
apparatus and method for processing industrial hospital and household
wastes, which includes an off-gas cleaning and pollution control system.
(Ans. 3, citing Mason col. 1, ll. 7–10, col. 2, ll. 61–68.) The Examiner found
that the off-gas cleaning and pollution control system removes harmful
pollutants from the off-gas to minimize stack emissions. (Id., citing Mason,
col. 4, ll. 17–21, col. 5, ll. 40–49.) The Examiner found that the off-gas
cleaning and control subsystem includes a pair of HEPA filters, the filters
being capable of removing particles 0.3 µm and larger at approximately
99.97% efficiency. (Id.) The Examiner found that “[m]old and bacteria
generally range in size from 1–5 µm, thus the HEPA filters constitute
biological filters.” (Ans. 3.) The Examiner found that although Mason
discloses that the system remains in operation while one of the filters is
changed, Mason does not disclose that valves located at inlets and outlets
facilitate that operation. (Id.) the Examiner found that Mason discloses that
monitoring pressure differentials may be used to determine whether a filter
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may need to be replaced or cleaned, but that Mason does not disclose
pressure gauges on the HEPA filters. (Id.)
The Examiner found that Pittman discloses a filtration removal system
where valves are provided at both the inlet and exhaust of the filter units so
as to isolate the filter unit from the flow of the system for cleaning. (Id. at
3–4, citing Pittman, 4, ll. 7–31, 34–36, 40–43; col. 5, ll. 5–10.) The
Examiner found that Pittman discloses that pressure gauges are used to
detect pressure drop across each filter unit to determine when cleaning is
required. (Id. at 4, citing Pittman col. 5, ll. 10–25; Fig. 3.)
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to include valves such as those taught in Pittman in
the filter units of Mason to selectively facilitate the individual cleaning or
change out of filters without shutting down the system as disclosed in
Mason. (Id.) The Examiner determined that it would have been obvious to
employ pressure gauges as disclosed in Pittman associated with the filters of
Mason to determine the filter loads requiring cleaning or change out. (Id.)
Appellant argues that the “minimally rated” HEPA filters disclosed by
Mason do not satisfy the requirements of claim 1. (Appeal Br. 13–15.)
Appellant contends that the “pneumatic valves” disclosed in Pittman are not
the equivalent of the ball valves disclosed in the ’959 Patent, because the
valves in Pittman are knife edge gate valves that do not close long enough to
control or preclude the flow of air to allow the filters to be removed or
replaced during cleaning. (Appeal Br. 23–27.) Therefore, Appellant argues
that Pittman does not provide sufficient evidence that the valves disclosed
therein would allow the filters in Mason to be changed without releasing
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radioactive particles into the environment, which would render Mason
inoperable for its intended purpose. (Appeal Br. 28–31.)

ISSUES
Thus, the principal issues with respect to this rejection are:
1. Did the Examiner err in finding that the HEPA filter disclosed in
Mason decontaminate biologics or chemicals as required in claim
1?
2. Did the Examiner err in finding that the valves in Pittman are
capable of acting as the “valve means” recited in claim 1?

DISCUSSION
Issue 1
We are not persuaded by Appellant’s arguments that by reciting
“decontaminating” as interpreted above, the claims require a level of
removal of biologics or chemicals, sufficient to distinguish the HEPA filters
disclosed in Mason. That is, Mason discloses that the HEPA filters
disclosed therein are capable of removing particles of 0.3 µm or larger at
approximately 99.97% efficiency. (Col. 16, ll. 25–30.) As discussed above,
claim 1 does not recite any particular application, particular size of the
particles to be removed, or efficiency of the broad recitation related to
“biologics or chemicals” to be decontaminated. Thus, given the extent of
removal disclosed in the HEPA filter in Mason, in conjunction with the
Examiner’s unchallenged finding that mold and bacteria generally range in
size from 1–5 µm (Ans. 3), we are of the view that the HEPA filters in
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Mason are capable of decontaminating biologics or chemicals as recited in
claim 1.3

Issue 2
We are not persuaded by Appellant’s argument that the valves
disclosed in Pittman do not read on the “valve means” recited in the claims.
Specifically, we do not agree with Appellant that the “pneumatic valves”
disclosed in Pittman, when incorporated into Mason’s filtering apparatus,
would be incapable of “selectively clos[ing] off the inlet” and “selectively
clos[ing] off the outlet” as recited in claim 1. Pittman discloses that
“pneumatic valves 38 and 40 are closed to isolate the filter unit.” (Col. 4, ll.
41–43.) Although Appellant contends that the pneumatic valves in Pittman
“only close[] to the extent needed to isolate the collectors 16 in order to
prevent asbestos particles that are blown off the screens by the force of the
air jets 42 from reattaching themselves to the screens of the dust collectors
16” (Monetti Decl. ¶ 10), Appellant does not provide sufficient evidence or
explanation to support this position to outweigh the express disclosure in
Pittman.
In this regard, that Pittman discloses the presence of a secondary
HEPA filter does not support Appellant’s position as to the operation of the
pneumatic valves. First, Pittman discloses that the secondary HEPA filter 18
is optional. (Pittman, col. 3, l. 60 – col. 4, l. 3, e.g., col. 3, ll. 66–67, “This is

3 We observe that independent claim 10 does not expressly recite a
“biological filtration apparatus,” but does recite “whereby any biologics or
chemicals are decontaminated” as in claim 1. Accordingly, our reasoning
applies equally to claim 10.
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accomplished by filter units 16, preferably followed by backup HEPA filter
unit 18.”; col. 7, ll. 20–22 “the backup filter 18 may not be strictly essential
in normal operations, though it is certainly desirable for safety purposes.”)
Second, although the Monetti Declaration asserts that one of ordinary skill in
the art recognizes that use of the backup HEPA filter 18 ensures that air is
treated during “normal operation or cleaning” (Monetti Decl. ¶ 11), Pittman
itself does not mention that the backup HEPA filter 18 is used during
cleaning, and even so, such does not inform the capability of the pneumatic
valves themselves. Pittman’s disclosure related to back-up HEPA filter units
18 is “primarily for the purpose of avoiding an accidental release of
contaminant in the event of failure of one of the filter units.” (Col. 4, ll. 3–
6.) Appellant has not provided sufficient support for the position that one of
ordinary skill in the art would have understood Pittman’s disclosure of back-
up HEPA filters to be related to cleaning procedures that would preclude the
valves from being selectively closed as opposed to avoiding an accidental
release of contaminant during normal operating conditions.
Appellant contends that the pneumatic valves disclosed in Pittman are
“uni-directional, knife edge gate valves,” and such valves do not “have a
structure that functions to reliably and repeatedly provide 100% leakage
protection after multiple uses.” (Hale Decl. ¶¶ 12, 13.) Appellant contends
that a knife-edge gate valve has a structure where “some leakage will always
occur” due to build-up of material in the valve and particularly at the forces
the airjets in Pittman (at least 6 atmospheres) would place on the knife gate
valves. (Hale Decl. ¶¶ 12–14, Supp. Hale Decl. ¶¶ 7–9.)
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We are not persuaded by these statements made in the Hale
Declarations. First, we observe that the claims do not recite any particular
requirements with respect to the longevity of the filter means provided in the
apparatus, and we decline to impart any particular longevity requirement to
the term “valve means.” Second, these statements are unsupported by
evidence, such as typical pressure ratings for ball valves and pneumatic
valves. Third, the Supplemental Hale Declaration expressly acknowledges
that knife-edge gate valves have been used “for more than 50 years” to
“isolate different chambers for cleaning.” (Suppl. Hale Decl. ¶ 5.)
Appellant has not provided a sufficient definition, or support for such a
definition, of “isolate” for the apparent use of the term in a manner
inconsistent with its customary use, such as that disclosed in Pittman:
“Valves are provided for blocking flow from each filter unit for cleaning
when desired.” (Col. 2, l. 23–24.)
Appellant’s additional argument that the valves in Pittman only need
to be closed momentarily because of the duration of the emission of
compressed air from the airjets disclosed in Pittman (Monetti Decl. ¶ 12)
also does not address the capability of the pneumatic valves in Pittman as
applied to Mason. Rather, it focuses only on the valves as applied in the
context of Pittman alone, and not the combination of prior art as a whole. In
this regard, Appellant’s argument that completely closing the valves of
Pittman to allow for filter removal is completely counter to the purpose of
Pittman, directed to cleaning filter units without removal (Suppl. Monetti
Decl. ¶ 16), is similarly not persuasive as it does not inform the capability of
the valves in the context of Mason’s system, particularly in light of
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Pittman’s disclosure that the pneumatic valves are used to “isolate” the
filters.
Appellant’s remaining arguments with respect to the combination of
Mason and Pittman are based on the position that the pneumatic valves
disclosed in Pittman do not completely close (Appeal Br. 31–32), and thus,
are not persuasive for similar reasons as discussed above.

Claim 2
Claim 2 recites: “The filtration apparatus of claim 1 including a
pressure differential gauge associated with said at least one housing.”
Appellant’s arguments regarding whether Mason and Pittman disclose
the claimed filter means and whether the combination would decontaminate
biologics or chemicals as recited in claim 1 are not persuasive for the
reasons discussed above. (Appeal Br. 31–34.) To the extent Appellant
provides separate arguments with respect to claim 2, we agree with the
Examiner (Ans. 19) that the pressure monitoring disclosed in Pittman, in
order to detect clogged filter units, would have provided sufficient reasons
for one of ordinary skill in the art to incorporate a pressure gauge into the
apparatus in Mason. That is, one of ordinary skill in the art would have
understood that pressure monitoring to detect filter clogging was a known
technique to determine whether filters require cleaning, and therefore it
would have been obvious to have applied pressure gauges as disclosed in
Pittman to the filters of the off-gas cleaning and control system disclosed in
Mason.

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Claim 4
Appellant’s argument that the Examiner did not present any rationales
in support of the rejection of claim 4, which recites the presence of HEPA
filters in the housing (Appeal Br. 34) is without merit. The Examiner found
that Mason discloses HEPA filters. (Ans. 3, 20.)

Claim 13
Claim 13 recites “[t]he apparatus of claim 10 in combination with a
compressed gas system.”
The Examiner found that Mason and Pittman both disclose gas
filtration such that the combination would be capable with a gas source of
compressed gas. (Ans. 5)
Appellant contends that because Mason and Pittman are directed to
systems applying negative pressures, one of ordinary skill in the art would
not have appreciated that the proposed are capable of operating with a
compressed gas system, which is a positive pressure system. (Appeal Br.
34–40.) In particular, Appellant argues that one of ordinary skill in the art
would recognize that the use of positive pressures created by a compressed
gas system would cause failures in the systems of Mason and Pittman.
(Appeal Br. 36–37.) Appellant points to the Monetti Declaration (¶ 20) and
Supplemental Monetti Declaration (¶¶ 19–24) for support. (Appeal Br. 37–
40.)
We have reviewed the declaration evidence, and are not persuaded
that the filtration apparatus resulting from the combination of Mason and
Pittman would be incapable of operating in conjunction with compressed air.
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That is, we find the opinions expressed in the declarations to lack sufficient
explanation and support to be persuasive. In particular, the Monetti
Declaration sets forth general statements that the use of compressed air
would risk damage/destruction of elements, etc. of the treatment systems of
Mason and Pittman without explanation as to what such damage might be
and why a system that can withstand the use of negative pressure
differentials would not be able to withstand a positive pressure differential.
(Monetti Decl. ¶ 20.) In addition, although the Supplemental Monetti
Declaration discusses the components in Mason and Pittman in more detail,
the declaration makes similar conclusory statements regarding the effect of
negative pressures on such systems without detailed explanation. (Suppl.
Monetti Decl. ¶¶ 19–24.) Such declaration evidence is insufficient to
address the capability of the combined disclosures of Mason and Pittman,
particularly in view of Pittman, which discloses the use of compressed air
jets for cleaning. (Pittman, col. 2, ll. 33–37.)

Rejection 2–Claims 3, 9, and 11
Claim 3 recites: “The filtration apparatus of claim 1 wherein said
filter means contains an indicator.” Claims 9 and 11 contain similar
limitations.
Appellant contends that Kubokawa, relied on by the Examiner for
disclosing an indicator for filter media, does not disclose that its patch
indicator may be used in the presence of biologics or in conjunction with a
filter that decontaminates biologics or chemicals from a gas or liquid.
(Appeal Br. 45; Ans. 5.) Appellant argues that Kubokawa is designed to
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capture larger particles than that of biologics such as pathogens and that one
of ordinary skill in the art would have understood that Kubokawa’s patch
would not function at all, or would be of such a size to reduce the
effectiveness of the filter to the point where Kubokawa would unsatisfactory
for its intended purpose. (Appeal Br. 45–46.)
Kubokawa discloses a change indicator for a filter that changes
appearance in response to the accumulation of contaminants. (Abstr.)
Kubokawa discloses that the change indicator changes color and appearance
“dependent on the nature of contaminants encountered.” (Col. 6, ll. 20–21.)
Kubokawa discloses (col. 8, ll. 31–38):
It will also be appreciated that the size and configuration
of an indicator patch for a particular application may be
calibrated to take into the account the characteristics of the filter
media, the HVAC systems, the expected contaminants to be
encountered and the air impervious qualities of the indicator
patch material, along with any other pertinent factors to provide
an accurate indication of the accumulation of the contaminants
in the air filter.

In view of these disclosures in Kubokawa, we are not persuaded that
one of ordinary skill in the art would not have been able to have selected an
appropriate indicator to detect contaminants consistent with the disclosure of
Mason in view of Pittman. (Ans. 21.) Kubokawa provides express guidance
as to the ability of the indicator to be selected based on the contaminant, and
the Monetti Declaration relied on by Appellant discusses inoperability with
respect to Kubota’s air filter and not in the application of an appropriate
indicator to the filters of Mason. (Monetti Decl. ¶ 39.) We are not
persuaded that simply because Kubokawa may disclose an embodiment
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where the contaminants involve larger particles such as dust, lint, smoke,
pollen, or dander (Reply Br. 27–28), that one of ordinary skill in the art
would not have been able to adjust the indicator for applications in other
contexts, including contaminants that would be present in the hospital
applications expressly disclosed in Mason. (Mason, col. 1, l. 10.)

Rejection 3–Jaikaran and Gershon
The Examiner found that Jaikaran discloses a water treatment system
having certain elements required by the claims, but that Jaikaran does not
disclose a filter that traps pathogens or chemicals as required by the claims.
(Ans. 6.) The Examiner found that Gershon discloses a filtration system to
filter a water supply where the filter means is constructed to remove toxins
pesticides, and viral microorganisms. (Id.) The Examiner concluded that it
would have been obvious to have utilized the filter units of Gershon in the
system of Jaikaran “to optimize effective water treatment . . . because it
would minimize or eliminate the need for further treatment.” (Id. at 7.)
Appellant argues that because Gershon “is completely silent as to the
extent that [viral] microorganisms are decontaminated,” Gershon does not
provide sufficient evidence that the filter disclosed therein would satisfy the
recitation “whereby any biologics or chemicals are decontaminated” in claim
1. (Appeal Br. 48–49.)
We agree with Appellant that, in contrast to Mason discussed above,
although Gershon expressly discloses that contaminants that are removed
from the liquid stream include “heavy metal ions, hormones, toxins, viral
microorganisms, and pesticides” (col. 1, ll. 14–17; col. 5, ll. 4–6), Gershon
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does not expressly disclose the extent or efficiency of such a removal.
Indeed, the Examiner in the rejection, only stated that by using Gershon’s
filters, further treatment may be minimized. (Ans. 7, 21–22.) We do not
view this as sufficient to support the position that using Gershon’s filters
would decontaminate biologics or chemicals as required by the independent
claims.
Accordingly, we reverse the Examiner’s rejection of claims 1–3 and
5–12 as obvious over Jaikaran and Gershon.

Rejection 4-Pittman and Reipur
Appellant’s arguments with respect to the valves disclosed in Pittman
(Appeal Br. 60–66) have been addressed above.
Appellant argues that Pittman’s disclosure of broader applications
than the removal of particulate and fibrous matter generally cannot be
interpreted to include fluids, which is the medium filtered in Reipur.
(Appeal Br. 67.)
Pittman discloses that the apparatus disclosed therein “is particularly
intended for use as an asbestos removal system, but has broader application
to the removal of particulate and fibrous material generally.” (Col. 1, ll. 8–
12.) Appellant points to Pittman, which discloses “[t]he entrained solid
matter must be filtered from the air.” (Pittman, col. 3, l. 65–66; Appeal Br.
67.) Appellant points to the Supplemental Monetti Declaration, in which it
is stated: “Pittman’s statement . . . would not indicate to one of ordinary
skill that Pittman’s filtering system can be applied to cover fluids, but may
indicate that it can be applied to other methods of removing relatively fluffy
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solid particulate.” (Appeal Br. 67, Suppl. Monetti Decl. ¶ 27.) The
Supplemental Monetti Declaration does not provide any further explanation
or citation to evidence with respect to this interpretation of Pittman.
We agree with the Examiner (Ans. 25–26) that Appellant appears to
be unduly limiting Pittman, both to exclude fluids and in limiting the
disclosure to “relatively fluffy” solid particulate (Suppl. Monetti Decl. ¶ 27).
The Supplemental Monetti Declaration does not provide sufficient
explanation to support the narrow reading of Pittman to exclude applications
in the areas of filtering liquids and gases. Moreover, in view of Reipur,
which discloses a filtering apparatus that may be used with “fluids”
including gas, air, and liquids such as water (col. 1, ll. 15–22), we are not
persuaded that one of ordinary skill in the art would have limited the
disclosure of Pittman in the manner proposed by Appellant.
Appellant further argues that the combination of Pittman and Reipur
would change the operation of Pittman, which according to Appellant,
operates with an outside-in flow of air, whereas Reipur’s filter operates with
an inside-out flow of water. (Appeal Br. 69, citing Monetti Decl. ¶¶ 34–36,
Attachments F, G.) We are not persuaded by Appellant’s argument and
evidence, because it appears to focus on the bodily incorporation of the
filters of Reipur into Pittman without accounting for modifications that
would have been made by one of ordinary skill in the art and does not
provide sufficient explanation as to why one of ordinary skill in the art
would have been incapable of such modifications.

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Claim 2
Appellant sets forth similar arguments with respect to the pressure
differential gauges recited in claim 2 with respect to Pittman as addressed
above in the discussion of Rejection 1. (Appeal Br. 70–71.) We are not
persuaded for similar reasons as addressed above.

Claim 12
Claim 12 recites that the apparatus of claim 10 is “in combination
with a water supply system.” Appellant’s argument that the Examiner has
not set forth sufficient rationale for claim 12 is not persuasive. The
Examiner expressly found that Reipur discloses the filtration of liquids from
waste water, and that the combination of Pittman and Reipur would allow
for flexibility to treat liquid sources. (Ans. 8, citing Reipur col. 1, ll. 10–22.)
Appellant has not provided a sufficient explanation as to why such findings
and conclusions by the Examiner were not sufficient to address claim 12.

Claim 13
Appellant contends that Pittman operates under negative pressure and
therefore is not capable of operating with a compressed air system, which
operates under positive pressure, and as such the combination suggested by
the Examiner fails because, Pittman is not analogous art, it requires a change
to Pittman’s principle of operation, and renders Pittman unsatisfactory for its
intended purpose of removing and pulling asbestos through its system.
(Appeal Br. 72–77; Monetti Decl. ¶¶ 19–21.)
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We are unpersuaded by Appellant’s arguments in this regard for
similar reasons as discussed above with respect to Rejection 1. We are also
not persuaded by Appellant’s argument that Pittman is non-analogous art
because it is directed to the use of negative pressure. (Appeal Br. 74–75.)
We observe, as discussed above, that Pittman at least uses compressed air in
cleaning the filter units. (Col. 2, ll. 33–37.) Thus, we are not persuaded that
because Pittman also uses negative pressure, it is not reasonably pertinent to
the ’959 Patent. As found by the Examiner, Pittman teaches filtration
removal of matter from gas streams with valves that are used to isolate each
filter unit (Ans. 3–4, citing Pittman col. 4, ll. 7–31, 34–36, 40–43, and col. 5,
ll. 5–10), such that if Pittman could not be considered as in the same field of
endeavor as the ’959 Patent, it would at the very least be reasonably
pertinent to the ’959 Patent.

Claims 3, 9, and 11
Appellant sets forth similar arguments with respect to the indicator
limitation and Kubokawa as discussed above. (Appeal Br. 77–79.) We are
not persuaded for similar reasons as discussed above with respect to
Rejection 2.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 2, 4–8, 10, 13, and 14
as obvious over Mason in view of Pittman.
We affirm the Examiner’s rejection of claims 3, 9, and 11 as obvious
over Mason, Pittman, and Kubokawa.
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We affirm the Examiner’s rejection of claims 1, 2, 5–8, 10, 12, and 13
as obvious over Pittman in view of Reipur.
We affirm the Examiner’s rejection of claims 3, 9, and 11 as obvious
over Pittman, Reipur, and Kubokawa.
We reverse the Examiner’s rejection of claims 1–3 and 5–12 as
obvious over Jaikaran and Gershon.

DECISION
The Examiner’s decision to reject claims 1–14 as discussed above
under 35 U.S.C. § 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

FOR PATENT OWNER:

Capitol Patent & Trademark Law Firm, PLLC
P.O. Box 1995
Vienna, VA 22183

FOR THIRD-PARTY REQUESTER:

Nixon Peabody LLP
70 West Madison Street
Suite 3500
Chicago, IL 60602
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