Ex Parte Doye et al

Patent Trial and Appeal Board

Jun 28, 2016

12998719 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/998,719 05/24/2011 Christian Doye
86528 7590 06/30/2016
Slayden Grnbert Beard PLLC
401 Congress Avenue
Suite 1900
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03869.119169 6951
EXAMINER
KATZ, VERA
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN BOYE, URSUS KRUGER, and UEW PYRITZ
Appeal2014-007027
Application 12/998,719
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and JULIA
HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 13-15, 17, 18, and 22-24. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on June
17, 2016.
STATEMENT OF THE CASE
Claim 13 is illustrative of Appellants' subject matter on appeal and is
set forth below:
13. A component, comprising:
a component body with an antimicrobial surface, the
antimicrobial surface including metallic portions touching
Appeal2014-007027
Application 12/998,719
Ivin02 portions, the metallic portions being formed from at least
one of silver and nickel, and the Mn02 portions at least partially
having y modification of Mn02 with manganese oxide therein.
The Examiner relies on the following prior art references as evidence
of unpatentabili ty:
Riietschi us 4,172,183 Oct. 23, 1979
Shulei Chou et al., Electrodeposition synthesis and electrochemical
properties of nanostructured y-Mn02films, 162 J. Power Sources 727
(2006) (hereafter "Chou").
THE REJECTIONS
1. Claims 13-15 and 17-18 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 23-24, 26-28 and 31-32 of copending Application No. 12/998718. 1
2. Claims 13-14 and 17-18 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 20-21 and 22-23 of copending Application No. 13/699375.2
3. Claims 13-14 and 17 are rejected under 35 U.S.C. §102(b) as being
anticipated by Chou.
1 Application 12/998718 is now U.S. Patent 9,029,287, issued May 12, 2015.
The scope of the claims of this issued patent changed from the scope of
claims of the copending application when applied by the Examiner in
making Rejection 1. As such, this rejection is moot due to the change of
scope of the claims.
2 Application 13/699,375 is now U.S. Patent 9,346,037, issued May 24,
2016. The scope of the claims of this issued patent changed from the scope
of the claims of the copending application when applied by the Examiner in
Rejection 2. As such, this rejection is moot due to the change of scope of
the claims.
Appeal2014-007027
Application 12/998,719
4. Claims 13-15, 17-18 and 22-23 are rejected under 35 U.S.C. §102(b)
as being anticipated by Riietschi.
5. Claim 24 is rejected under 35 U.S.C. §102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Chou.
6. Claim 24 is rejected under 35 U.S.C. §102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Riietschi.
ANALYSIS
We REVERSE the rejections of record for substantially the reasons
argued by Appellants, and add the following.
Rejections 1 and 2
Rejections 1 and 2 are moot, and thus reversed, for the reasons
discussed in footnotes 1 and 2, supra.
Rejections 3 and 5
Our consideration of the grounds of rejection involves an issue of
claim interpretation: we must give claim terms the broadest reasonable
interpretation consistent with the written description in the Specification.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010),
and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir.
1997).
Claim 13 recites, inter alia, metallic "portions" touching Mn02
"portions." As argued by Appellants, claim 13 requires that the
antimicrobial surface includes metallic portions touching Mn02 portions.
Appeal Br. 3; Reply Br. 2-3. We agree with Appellants that the broadest
reasonable interpretation of "portions" consistent with the Specification
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Application 12/998,719
requires plural metallic portions touching plural Ivin02 portions. The
Examiner has not pointed to sufficient evidence in the record showing how
Chou discloses plural metallic portions touching plural Mn02 portions. That
is, Chou discloses thin films of Mn02 that are electrodeposited upon nickel
sheets. Chou, p. 733. The Examiner has not adequately explained how
Chou's electrodeposition of a thin film of Mn02 upon a nickel sheet results
in plural metallic portions touching plural Mn02 portions, as required by
claim 13.
In view of the above, we reverse Rejection 3. We also reverse
Rejection 5 because the Examiner's obviousness rejection does not resolve
the aforementioned deficiencies of Chou.
Rejections 4 and 6
Appellants argue that Riietschi does not disclose metallic portions
touching plural Mn02 portions, as claimed by Appellants. Appeal Br. 4-5;
Reply Br. 3-5. The Examiner finds that the Figure of Riietschi discloses
layer 2 (Mn02) touching layer 3 (metallic layer of Ni). Ans. 4. The
Examiner's position lacks evidentiary support, however, for reasons similar
to those discussed above with regard to the rejections involving Chou.
Riietschi shows that layer 2 is a layer within cup 3, and the entire lower
surface of layer 2 touches the inner surface of the cup; the Examiner has not
explained how this shows plural metallic portions touching plural Mn02
portions, as required by claim 13. We thus agree with Appellants' stated
positon in the record.
In view of the above, we reverse Rejection 4. We also reverse
Rejection 6 because the Examiner's obviousness rejection does not resolve
the aforementioned deficiencies of Riietschi.
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Application 12/998,719
DECISION
Each rejection is reversed.
ORDER
REVERSED