Ex Parte 7896959 et al

Patent Trials and Appeals Board

Nov 30, 2018

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

UNITED STATES PATENT AND TRADEMARKOFFICE
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 06/28/2019
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
06/28/2019 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 REHEARING

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Enhanced Systems & Products, Inc. (“Appellant”), the owner of the
patent under reexamination (hereinafter “the ’959 Patent”), requests
rehearing of our Decision on Appeal mailed December 3, 2018 (hereinafter
“Decision”), in which we affirmed the Examiner’s final rejection of claims
1–14 (Request for Reconsideration/Rehearing filed February 4, 2018,
hereinafter “Request” 1–2).
In particular, Appellant contends that the Board has misapprehended
and/or overlooked:
1. The interpretation of filter means to “decontaminate” a gas or
liquid, whereby any biologics or chemicals are decontaminated;
2. The interpretation of “gas” and “liquid”;
3. The Board has not provided factual findings and legal
conclusions regarding its interpretation of the claim term
“decontaminate”;
4. The Board has not set forth a preponderance of evidence
establishing that the Pittman1 reference is a “reasonably
pertinent” reference;
5. The Board has not provided factual findings and legal
conclusions regarding whether or not the Mason2 reference is
analogous art or “reasonably pertinent” art;
6. The Board has not set forth a preponderance of evidence to
sustain the rejection of claims 1, 2, 4–8, 10, 13 and 14 based on
the combination of Mason and Pittman;

1 (U.S. Patent No. 5,064,454, issued November 12, 1991.)
2 (U.S. Patent No. 5,424,042, issued June 13, 1995.)
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7. The Board has not provided factual findings and legal
conclusions regarding whether or not the valves in the Pittman
reference are “equivalent” to structure that corresponds to the
claimed “valve means”;
8. The Board has not provided factual findings and legal
conclusions regarding the patentability of claims 4 and 14 with
respect the rejections based on the combination of Mason and
Pittman;
9. The Board has not set forth a preponderance of evidence to
sustain the rejection of claim 13 based on the combination of
Mason and Pittman;
10. The Board has not set forth a preponderance of evidence to
sustain the rejection of claims 3, 9 and 11 based on the
combination of Mason, Pittman, and Kubokawa;3
11. The Board has not set forth a preponderance of evidence to
sustain the rejection of claims 1, 2, 5–8, 10, 12, and 13 based on
the combination of Pittman and Reipur;4
12. The Board has not provided factual findings and legal
conclusions regarding the patentability of claims 2 and 6 with
respect to the rejections based on the combination of Pittman
and Reipur;

3 (U.S. Patent No. 6,110,260, issued August 29, 2000.)
4 (U.S. Patent No. 5,234,605, issued August 10, 1993.)
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13. The Board has not set forth a preponderance of evidence to
sustain the rejection of claims 3, 9, and 11 based on the
combination of Pittman, Reipur, and Kubokawa;
14. The Board has not set forth a preponderance of evidence to
sustain the rejection of claim 13 based on the combination of
Pittman and Reipur; and
15. The Board has not provided factual findings and legal
conclusions regarding the patentability of claims 3, 9 and 11
with respect to the rejections based on the combination of
Pittman, Reipur, and Gershon.5
(Request 1–2.)
REHEARING STANDARD
At the outset, we emphasize that according to 37 C.F.R. § 41.52(a)(1):
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.

37 C.F.R. § 41.52(a)(2) permits new argument based on a recent
relevant decision of the Board or Federal Court. 37 C.F.R. § 41.52(a)(3)
permits new argument responding to a new ground of rejection under
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.52(a)(4) permits new argument that
the Board’s decision contains an undesignated new ground of rejection.

5 (U.S. Patent No. 5,427,683, issued June 27, 1995.)
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It is against this backdrop, that we evaluate Appellant’s request for
rehearing.

DISCUSSION
Points 1 and 3
In considering Appellant’s arguments appropriate for a request for
rehearing, we understand Appellant to be arguing that with respect to the
term “decontaminate,” the Decision misapprehended or overlooked
providing support for the interpretation of “decontaminate” set forth in the
Decision. (Request 4–8.) We are not persuaded that we misapprehended or
overlooked such aspects in the interpretation of “decontaminate” set forth in
the Decision.
In the Decision, we stated: “we emphasize that the phrase ‘whereby
any biologics or chemicals are decontaminated’ is interpreted to mean
removing [(“de”)] biologics or chemicals [(“contaminants”)] from the gas or
liquid consistent with the further language of claim 1.” (Decision 6.) We
were not persuaded that one of ordinary skill in the art would have
interpreted “decontaminate” in the particular manner set forth by Appellant.
(Decision 6.) We cited the ’959 Patent for support that the invention is a
device that filters undesirable chemicals, particles, hydrocarbons, pathogens,
and the like, and that the filters may vary depending on their use, also
observing that claim 1 did not specify the particular biologics or chemicals
to be removed. (Decision 6–7; ’959 Patent, col. 1, ll. 11–15, col. 2, ll. 55–
58, col. 5, ll. 5–11.) Thus, the ’959 Patent’s discussion of removing
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undesirable contaminates provides support for and is consistent with our
interpretation that decontamination does not require “sterilization.”
As a result, because the ’959 Patent did not provide a definition for
“decontaminate” and did not specifically discuss “sterilization,” we are not
persuaded that we overlooked sufficient support for interpreting
“decontaminate” consistent with the ’959 Patent’s discussion to mean “gas
or liquid is substantially freed of contaminants targeted for removal.”
(Decision 7.)
Contrary to Appellant’s argument, we did not “conflate two different
issues” when discussing filters that filter specific sized biologics or
chemicals. (Request 6.) Rather, our discussion with respect to filter size
was in consideration of both the Monetti Declaration6 and Supplemental
Monetti Declaration, which discussed the size requirements in Mason
relative to those in the Hoff article to address the position that
decontamination would require a rating exceeding the 99.97% rating
disclosed in Mason. (Monetti Decl. ¶ 8; Supplemental Monetti Decl.
¶¶ 8–12.7)

Point 2
Appellant states that “gas” and “liquid” meant two different types of
materials to be decontaminated and argues that the Board reconsider its
affirmance of the Examiner’s rejection of claims 1, 2, 5–8, 10, 12, and 13 as

6 Declaration of Robert Monetti dated June 22, 2017, and attachments
thereto (Ex. i).
7 Supplemental Declaration of Robert Monetti dated December 13, 2017
(Ex. ii).
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obvious over Pittman and Reipur. (Request 4, 63–64.) However, we fully
acknowledged the materials in Pittman and Reipur, pointing out that by
disclosing “fluids” Reipur included “gas, air, and liquids such as water.”
(Decision 21, citing Reipur col. 1, ll. 15–22.) Accordingly, Appellant has
not identified any point misapprehended or overlooked in the Decision with
respect to difference between “gas” and “liquid.”

Point 4
Appellant asks the Board to reconsider its holding that Pittman is
analogous art and contends that Pittman is not analogous art because Pittman
is not from the same field of endeavor and is not reasonably pertinent to the
claimed invention. (Request 8–11.) In the Decision, we explained that
Pittman is reasonably pertinent to the ’959 Patent based on its use of
filtration to remove matter from gas streams with valves that are used to
isolate each filter unit. (Decision 23.) Pittman’s disclosure of the use of
negative pressures, its use of compressed air to clean the filters, and
Pittman’s silence on whether the valves function in order to remove or
replace filters argued by Appellant are not points that we misapprehended or
overlooked in rendering the Decision.

Point 5
Appellant contends that the Decision did not address how Mason
qualifies as analogous art. (Request 8.) Although not expressly identified in
the Request, we understand Appellant to be referring to the argument for
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Rejection 1 relating to claim 13 that Mason is not analogous art. (Appeal
Br. 40–43; Reply Br. 24.)
We did not overlook Appellant’s arguments in this regard. In the
Decision, we addressed claim 13 and stated that we were not persuaded by
Appellant’s argument that one of ordinary skill in the art would not have
appreciated that Mason would be capable of operating in a positive pressure
environment. (Decision 16–17.) Appellant’s arguments that Mason is not
reasonably pertinent to the claims are similarly based on the position that
Mason discloses the use of negative pressure. (Appeal Br. 40–43.) Thus,
our rationale for determining that Mason is at least reasonably pertinent to
the ’959 Patent is similar, as discussed in the Decision, namely, that Mason
discloses an apparatus and a method for processing wastes, including
industrial, hospital, and household waste, where the process and apparatus
includes filtering. (Decision 9, 11–12, 16–17; Ans. 3; Mason col. 1, ll. 7–
10, col. 4, ll. 17–21, and col. 5, ll. 40–49.)

Point 6
Appellant contends that the claim interpretation of “decontaminate”
set forth in the Decision raises new issues not addressed by Appellant or the
Examiner as to what level of removal would satisfy the claim, and whether
one of ordinary skill in the art would have considered the combination of
Mason and Pittman to suggest a filter means that satisfies the claim
interpretation. (Request 13–14.) Appellant also contends that Mason’s
minimally-rated HEPA filter does not function to sterilize any biologic or
chemical, which is the level of sterilization required in the claims. (Request
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15.) We are not persuaded that the claim interpretation set forth for
“decontaminate” raises new issues as argued by Appellant. As explained
above, we did not misapprehend or overlook aspects with respect to
Appellants’ interpretation of “decontaminate” as recited in the claims to
require sterilization. The Examiner took the position in the Answer
“decontaminate” does not require “sterilization.” (See Ans. 13
(“Decontamination of the breadth set forth in the specification, as claimed,
and as recognized in the art does not require sterilization, but rather
sterilization is a level (the highest) of decontamination. As pointed out in
the rejection, the HEPA filters 184 and 186 are capable of removing
particles 0.3 μm and larger at approximately 99.97% efficiency.”).)
Thus the claim interpretation does not raise new issues with respect to
the rejection set forth by the Examiner.

Point 7
Appellant argues that the Decision does not set forth adequate factual
findings to support the position that Pittman’s valves are equivalent to the
claimed valve means. (Request 15–18.) Appellant repeatedly emphasizes
Pittman’s silence on whether the valves provide the function of controlling
or precluding the flow of gas or liquid to the housing “so that at least one
filter means can be removed or replaced.” (Request 17–33.) Appellant
argues the Decision engages in complete “speculation” that the valves in
Pittman would allow for the replacement of filters. (Request 25–26.)
We are not persuaded that we misapprehended or overlooked points
with respect to the ability of the valves and Pittman to close off the filter
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units to allow for filter replacement. The Decision discusses in detail how
the pneumatic valves disclosed in Pittman read on the “valve means” recited
in the claims. (Decision 12–15.) The Decision discusses with reference to
Pittman that the pneumatic valves disclosed therein are used to “isolate” the
filters. (Decision 12–15, citing Pittman, col. 2, ll. 23–24; col. 4, ll. 41–43.)
That is, Pittman discloses the pneumatic valves isolate the filter units. Thus,
we do not view the mere silence in Pittman that the filters can be removed or
replaced as meaning that the pneumatic valves disclosed therein may not be
capable of performing this function. In this regard, we considered
Appellant’s declaration testimony regarding the disclosure of back-up filter
units in Pittman, as well as the position that the pneumatic valves in Pittman
are knife edge gate valves and found it to be unpersuasive. (Decision 13–
15.) Thus, we do not discern any points misapprehended or overlooked
from Pittman’s disclosure.

Point 8
Regarding claims 4 and 14, Appellant contends that the Decision
overlooks that the claim 4 is directed to a housing that contains at least two
filters with different filtering capacity, at least one in an inner chamber that
decontaminates any biologic or chemical in a gas or liquid and a HEPA filter
that removes a level of contaminates, but would not attain a level that
decontaminates a gas or liquid. (Request 37–39.)
We are not persuaded that we misapprehended or overlooked any
aspects with respect to claim 4 (or claim 14) in the Decision. (Decision 16.)
Although Appellant argues that claim 4 should be interpreted to require the
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presence of an additional filter with differing filtering capacity, claim 4 itself
only recites “said housing contains a HEPA filter.” The housing in claim 1
is recited to have an inner chamber, and the inner chamber is recited to
include a “filter means.” The HEPA filter recited in claim 4 may,
accordingly, be the filter means of claim 1. Therefore, we do not agree that
we misapprehended that claim 4 requires the presence of an additional
HEPA filter that is different from the filter means that decontaminates the
gas or liquid. (See ’959 Patent, col. 5, ll. 5–11.)

Point 9
Appellant contends that regarding claim 13, the Examiner’s and the
Board’s conclusions are speculative, and Appellant has produced evidence
that outweighs the position of the Board with respect to claim 13. (Request
39–48.) In the Decision, we set forth our view with respect to claim 13,
which included consideration of the evidence submitted by Appellant.
(Decision 16–17.) Appellant appears to be expressing disagreement with the
Decision, rather than a point misapprehended or overlooked. Accordingly,
the points raised by Appellant are not appropriate in a request for rehearing.

Point 10
Appellant expresses disagreement with the Board’s Decision with
respect to claims 3 and 9. (Request 50.) This does not meet the standard for
request for rehearing. As such, we decline Appellant’s invitation to revisit
claims 3 and 9 and stand by the discussion in the Decision. (Decision 18–
19.) We take a similar view with respect to Appellant’s arguments regarding
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claim 11 (Request 53–55), with the additional observation that Appellant did
not present any substantive argument regarding claim 11 in the Appeal
Brief, relying on arguments made for claims 3 and 9 (see Appeal Br. 47).
As such, Appellant’s arguments extending beyond those made in the Appeal
Brief are belated and not appropriate in the context of a rehearing.

Point 11
Appellant’s arguments regarding the interpretation of
“decontaminate” (Request 55) are similar to those addressed above. In
addition, Appellant presents similar arguments regarding “valve means” that
we addressed above with respect to Point 7. (Request 66–84.)
We are also not persuaded that we misapprehended or overlooked any
points related to Appellant’s further arguments that the Board did not
provide factual findings and legal conclusions with respect to the
combination of Pittman and Reipur. (Request 55–66.)
As discussed in the Decision, Appellant’s arguments with respect to
Pittman and Reipur were directed to the scope of Pittman’s disclosure with
respect to fluids. (Decision 20–21, citing Appeal Br. 67.) The Decision
discussed Appellant’s argument and evidence, and with explanation with
respect to the disclosures of both Pittman and Reipur sustained the
Examiner’s position on that point. (Decision 20–21.) Accordingly, we did
not misapprehend or overlook any points related to the difference between
gases and liquids in the combination of Pittman and Reipur. (Request 63–
64.)
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As to Appellant’s argument with respect to outside-in and inside-out
flow, and Appellant’s argument regarding the change of operation in
Pittman, we expressly referred to Appellant’s argument in the Appeal Brief
and evidence related thereto and indicated we were not persuaded by such
arguments. (Decision 21, citing Appeal Br. 69, Monetti Decl. ¶¶ 34–36,
Attachments F, G.) Thus, contrary to Appellant’s argument that we did not
identify what statements we were referring to in our discussion of
Appellant’s evidence being related to bodily incorporation (Request 56), we
expressly referred to the very argument and evidence argued by Appellant in
the Appeal Brief, and as a result, did not shift any burden of proving
obviousness to the Appellant. (Appeal Br. 69.)
We point out that Appellant’s arguments with respect to Pittman and
Reipur repeatedly emphasize Pittman’s disclosure as being limited to
asbestos particles. For example, Appellant argued, after noting that Pittman
discloses the outside-in flow and Reipur discloses inside-outside flow, that
“the inside-out flow of liquid through Reipur’s filters would prohibit
Pittman’s from filtering its airborne asbestos particles in accordance with its
outside-in flow (Monetti Declaration, para. [36]).” (Appeal Br. 69.) Thus,
Appellant’s position also is related to the scope of Pittman as discussed
above and addressed in the Decision. (Decision 20–21.) As such, we do not
discern any particular points misapprehended or overlooked.
Appellant’s further arguments in the Request beyond those already
addressed herein appear to extend beyond Appellant’s arguments in the
Appeal Brief to the extent where the arguments are considered new relative
thereto. (Request 57–66.) Thus, we do not discern any points
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misapprehended or overlooked by the additional arguments made by
Appellant. 37 C.F. R. § 41.52(a)(1).
Point 12
Appellant argues with respect to claims 2 and 6, that the rejection of
claim lacks rationale as to why one of ordinary skill in the art would have
combined Pittman and Reipur to arrive at the claims. (Request 84–85.)
However, Appellant does not address the discussion of claim 2 in the
Decision, and as a result has not pointed out any points we misapprehended
or overlooked. (Decision 15, 22, citing Ans. 19; see also Ans. 26.)

Point 13
Appellant argues that claims 3 and 9, that the Board did not set forth
adequate factual findings regarding the patentability of the claims with
respect to the combination of Pittman, Reipur, and Kubokawa, because the
Board relied on the discussion of these claims with respect to the rejection
based on Mason, Pittman, and Kubokawa. (Request 85–86.) Appellant then
sets forth similar arguments as discussed above in point 10. (Request 86–
89.) We are not persuaded that we misapprehended or overlooked any
points for the reasons discussed above. Appellant’s argument that the
application of Reipur instead of Mason was not a point argued by Appellant
in the briefing, which focused on the application of Kubokawa in each
rejection. (Compare Appeal Br. 44–46 with Appeal Br. 77–79.8) Thus, we

8 Indeed, on page 79 of the Appeal Brief, in summation of the argument with
respect to Pittman, Reipur, and Kubokawa, even Appellant states
“Accordingly, the subject matter of claims 3, 9, and 11 would not have been
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did not misapprehend or overlook any points with respect to the combination
of Pittman, Reipur, and Kubokawa, in relying on our discussion of these
claims with respect to the rejection based on Mason, Pittman, and
Kubokawa. (Decision 17–19, 23.)

Point 14
Appellant contends that regarding claim 13, the Examiner’s and the
Board’s conclusions are speculative, and Appellant has produced evidence
that outweighs the position of the Board with respect to claim 13. (Request
89–95.) In the Decision, we set forth our view with respect to claim 13,
which included consideration of the evidence submitted by Appellant.
(Decision 22–23.) Appellant appears to be expressing disagreement with the
Decision, rather than a point misapprehended or overlooked. Accordingly,
the points raised by Appellant are not appropriate in a request for rehearing.

Point 15
Appellant argues with respect to claims 3, 9, and 11 and the
combination of Pittman, Reipur, and Gershon, that the Board did not set
forth any factual findings or legal conclusions. (Request 95–96.) However,
Appellant fails to acknowledge that the rejection was based on the
combination of Pittman and Reipur, as well as Kubokawa or Gershon. The
Decision notes that Appellant’s arguments were not persuasive with respect
to the discussion of Kubokawa set forth in Rejection 2. (Decision 23.)

obvious based on the combined teachings of Mason, Pittman, and
Kubokawa.”
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Thus, Appellant has not identified sufficient points misapprehended or
overlooked with respect to this rejection.

Thus, while we clarify certain points expressed in the Decision as
discussed above, we decline to make any changes to the outcome of the
Decision mailed December 3, 2018.

DENIED

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

FOR THIRD-PARTY REQUESTER:
Nixon Peabody LLP
c/o Daniel J. Burnham
70 West Madison Street, Ste. 3500
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