10520608 (B.P.A.I. Jul. 25, 2012)

Ex Parte Durrant et al

Board of Patent Appeals and InterferencesJul 25, 2012

10520608 (B.P.A.I. Jul. 25, 2012)

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. 10/520,608 01/03/2006 James Robert Durrant FRYHP0127US 9651 23908 7590 07/25/2012 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER PATTERSON, MARC A ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 07/25/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES ROBERT DURRANT, ANDREW MILLS and JOACHIM HANS GEORG STEINKE ____________ Appeal 2011-005743 Application 10/520,608 Technology Center 1700 ____________ Before PETER F. KRATZ, HUBERT C. LORIN and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005743 Application 10/520,608 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 through 34. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to a packaging having an oxygen-scavenging element including a photo-activatable semiconductor. App. Br. 10. Claim 1 is illustrative: 1. A package packaging an item and defining a closed environment in which the item is enclosed, the packaging including an oxygen-scavenging element which includes a photo-activatable semiconductor and an electron donor, wherein the semiconductor, whilst exposed to ultra-bandgap light, generates electron-hole pairs, with the electrons acting to reduce oxygen, and thereby scavenge the same from the closed environment, and the holes combining with electrons sacrificed by the electron donor. The Examiner relied on the following references in rejecting the appealed subject matter: Fisher US 2,877,197 March 10, 1959 Ebner US 6,387,461 B1 May 14, 2002 Appellants request review of the following rejections (App. Br. 7) from the Examiner’s final office action: 1. Claims 1-7, 9-16, 18-29 and 34 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ebner. 2. Claims 17 and 30-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ebner. 3. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Ebner and Fisher. Appeal 2011-005743 Application 10/520,608 3 OPINION Did the Examiner err in determining that Ebner describes an oxygen scavenging element that includes a photo-activatable semiconductor as required by the subject matter of independent claim 1? 1, 2 We answer this question in the affirmative and REVERSE. The Examiner bears the initial burden of establishing a prima facie case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986). Anticipation under 35 U.S.C. § 102 requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). We agree with Appellants that the subject matter of independent claims 1 is not anticipated. According to Appellants, Ebner does not teach or suggest an oxygen-scavenging element that includes a photo-activatable semiconductor, as recited in claim 1 (App. Br. 12), because Ebner’s oxygen-scavenger is used in conjunction with moisture to scavenge oxygen (id. at 10). That is, Appellants argue that Ebner is directed to a moisture- activated oxygen-scavenging combination that comprises at least one hydroxosulfitometalate (HSM) in combination with small amounts of at least one transition metal ion source to provide oxygen scavenging activity when the agent is placed in the presence of oxygen and moisture. App. Br. 10. 1 We will limit our discussion to independent claim 1. 2 A discussion of the Fisher reference is unnecessary for disposition of the third rejection. The Examiner relied upon this reference to describe features not related to the dispositive issue for the rejection of claim 8. Appeal 2011-005743 Application 10/520,608 4 The Examiner found that Ebner discloses a package packaging an item in a closed environment where the packaging has an oxygen- scavenging element which includes titanium oxide and polyvinyl chloride. Ans. 3. The Examiner also found Ebner’s scavenger, which can include titanium oxide, to be a photo-activatable semiconductor (id.) and the Examiner found the polyvinyl chloride disclosed by Ebner to be an electron donor. (id. at 4). The Examiner has not adequately explained why Ebner discloses or suggests an oxygen-scavenging element that includes a photo-activatable semiconductor. The Examiner asserts that Ebner’s disclosure of titanium oxide as a possible component of Ebner’s moisture activated oxygen- scavenger is a disclosure of a photo-activatable semiconductor. Id. at 3. However, as argued by Appellants , Ebner’s oxygen-scavenger is moisture activated and includes HSM as a main ingredient (App. Br. 10), and there is no disclosure in Ebner that the combination oxygen –scavenger includes titanium dioxide that functions as a photo-activated semiconductor (id. at 12). To the extent the Examiner is relying on inherency based on an asserted disclosure of titanium dioxide as a transition metal source by Ebner , the Examiner does not direct us to any disclosure of Ebner together with persusive technical reasoning that would support such an inherency position. In this regard, the Examiner has not discharged the burden of explaining how it can be concluded that Ebner describes a package that includes titanium oxide and HSM together with PVC in a form wherein the titanium oxide of the combination oxygen-scavenging element comprises a semiconductor that necessarily “generates electron-hole pairs, with the electrons acting to reduce oxygen, and thereby scavenge the same from the Appeal 2011-005743 Application 10/520,608 5 closed environment [of the package] , and [with] the holes combining with electrons sacrificed by the [PVC carrier of Ebner acting as an] electron donor ” when exposed to ultra-bandgap light, as required by appealed claim 1. Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing anticipation under § 102(b). We also cannot sustain the rejection of dependent claims 17 and 30-33 under § 103(a) over Ebner and of dependent claim 8 under 35 U.S.C. § 103(a) over Ebner and Fisher for the same reasons. With respect to claim 8, we note that the Examiner cited Fisher teach a polymer comprising a polythiol for the purpose of obtaining a polymer that is corrosion resistant. Ans. 6. Appellants argue, and we agree, that Fisher does not overcome the deficiencies of Ebner (App. Br. 19), as discussed above. Therefore, the rejections of claims 1-7, 9-16, 18-29 and 34 under 35 U.S.C. § 102(b) over Ebner, of claims 17 and 30-33 under 35 U.S.C. § 103(a) over Ebner and of claim 8 under 35 U.S.C. § 103(a) over Ebner and Fisher are reversed. ORDER The rejection of claims 1-7, 9-16, 18-29 and 34 under 35 U.S.C. § 102(b) as anticipated by Ebner is reversed. The rejection of claims 17 and 30-33 under 35 U.S.C. § 103(a) as unpatentable over Ebner is reversed. The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Ebner and Fisher is reversed. REVERSED bar