Ex Parte Ernst et al

Board of Patent Appeals and Interferences

Nov 19, 2010

10243590 (B.P.A.I. Nov. 19, 2010)

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.
10/243,590 09/13/2002 William Ernst 43557.249334 4355
826 7590 11/19/2010
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
HENDRICKSON, STUART L
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
11/19/2010 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 WILLIAM ERNST, JOEL TENNEY, and TOM ISAAC
____________________

Appeal 2009-013802
Application 10/243,590
Technology Center 1700
____________________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 86, 89-92, 94-97, 100-105, 107-114, 116-119, 121-
128, 130-134, and 136-139. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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We REVERSE.
Appellants’ invention relates to compositions of matter used to
produce carbon dioxide and the method of producing carbon dioxide using
the composition. The process involves activating a carbon-containing
compound (e.g., bicarbonate) with protons from an acid or other-proton-
generating species. (Spec. 1:4-8.) One or both of the carbon-containing and
proton-generating species are impregnated into porous carriers such as
zeolite crystals. The composition can also include a water-retaining
compound that functions to control the rate of release of the carbon dioxide
produced by the reaction of the carbon-containing compound and the
protons (Spec. 2:29 to 3:4). Claims 86 and 100 are illustrative of the
composition:
86. A composition of matter for the production of carbon dioxide,
comprising:
(a) at least one carbon-containing compound selected from the group
consisting of carbonates, bicarbonates, sesquicarbonates, and mixtures
thereof;
(b) a porous carrier selected from the group consisting of zeolite
crystals, silica, pumice, diatomaceous earth, bentonite, and clay impregnated
with at least one species selected from the group consisting of aqueous acids,
metal salts and mixtures thereof; and
(c) at least one water-retaining substance selected from the group
consisting of calcium chloride, magnesium sulfate, potassium chloride,
potassium hydroxide, and mixtures thereof.

100. A composition of matter for the production of carbon dioxide
comprising:
(a) at least one carbon-containing compound selected from the group
consisting of carbonates, bicarbonates, sesquicarbonates, and mixtures
thereof impregnated in a first porous carrier selected from the group
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consisting of zeolite crystals, silica, pumice, diatomaceous earth, bentonite,
and clay; and
(b) a species selected from the group consisting of aqueous acids,
metal salts, and mixtures thereof impregnated in a separate, second porous
carrier selected from the group consisting of zeolite crystals, silica, pumice,
diatomaceous earth, bentonite, and clay.

The Examiner maintains, and Appellants seek review of, the
following rejections:
1) The rejection of claims 100-103, 107-111, 116-118, 134, and 136
under 35 U.S.C. § 103(a) as obvious over the combination of Kaylor (US
5,422,330; issued Jun. 6, 1995) and Katagiri (JP 58140312 A; pub. Aug. 20,
1983); and
2) The rejection of claims 86, 89-92, 94-97, 100-105, 107-114, 116-
119, 121-128, 130-134, and 136-139 under 35 U.S.C. § 103 (a) as obvious
over Hamilton (US 2003/0053931 A1; pub. Mar, 20, 2003) in view of
Katagiri and Klatte (US 6,174,508 B1; issued Jan. 16, 2001).
II. DISCUSSION
A. REJECTION OVER KAYLOR AND KATAGIRI
Turning first to the rejection of claims 100-103, 107-111, 116-118,
134, and 136 over Kaylor and Katagiri, we note that claims 100-103, 107-
111, and 116-118 require separate porous carriers, one impregnated with the
carbon-containing compound and one impregnated with the acid or metal
salt species.
The Examiner finds that Kaylor teaches impregnating bicarbonate and
an acid species into a porous polymeric material, and that while Kaylor does
not teach using two carriers, “this is an obvious expedient to prevent
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premature reaction.” (Ans. 4, citing Kaylor, col. 4, l. 50 to col. 5, l. 30.) We
presume the Examiner reaches this conclusion based upon the teaching in
Kaylor of coating or associating the porous polymeric material (water
soluble polymer particles of that reference) with gas generating compounds
(e.g., bicarbonate and acid) in sequential fashion (Kaylor, col. 5, ll. 13-17).
Based upon the teaching in Katagiri of mixing zeolite, bicarbonate,
and acid to form a gas generating composition, the Examiner concludes that
using the zeolites of Katagiri with the gas generants of Kaylor “is an obvious
expedient to make a gas generating composition.” (Ans. 4.)
It appears that the Examiner’s rejection is based upon the obviousness
of adding zeolites into the bicarbonate particles and acid particles to be
sequentially coated or associated with the water soluble polymer of Kaylor.
In order to meet the requirements of the claims, the zeolite must serve
as a porous carrier and the bicarbonate and acid must respectively be
impregnated into separate carriers. The Examiner finds that because
Katagiri teaches mixing zeolite, bicarbonate, and citric acid, “at least some
‘impregnation’ is deemed to occur.” (Ans. 4.)
The Examiner, however, does not provide any evidence indicating
how one of ordinary skill in the art would interpret the term “impregnation”
as used in the claim.
Appellants contend that Katagiri does not teach impregnation of any
kind, much less impregnation of the carbon and acid components in separate
carriers (Br. 12-13). Appellants submit evidence of the meaning of
“impregnation.”
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According to Appellants, Webster’s Dictionary 3rd ed. defines
“impregnation” as: “(a) ‘to cause to be filled, imbued, permeated, or
saturated’ and (b) ‘to permeate thoroughly.” (Br. 13.)
Appellants’ definition is reasonable and consistent with the use of the
word in the Specification. As the Examiner has offered no opposing
evidence, we adopt the definition of Appellants.
The Examiner provides no reasonable basis to believe that merely
mixing solid particles of no particular size of carbonate and acid with zeolite
and coating or associating the mixture with a water soluble polymer will
result in the kind of thorough permeation, filling, imbuing, permeating, or
saturating of the bicarbonate and/or acid into the pores of the zeolite such
that the zeolite becomes an impregnated carrier. Therefore, we cannot say
the Examiner’s rejection on this rationale is supported by the weight of the
evidence.
It is possible that the Examiner’s rejection is based upon the
substitution of the water soluble polymer of Kaylor with the zeolite of
Katagiri. However, in the sorbent product of Kaylor, the water soluble
polymer dissolves during use (Kaylor, col. 4, ll. 41-48; col. 5, ll. 46-49), a
zeolite would not. The Examiner offers no rational reason why one of
ordinary skill in the art would have substituted the water soluble polymer of
Kaylor with a zeolite. Therefore, we further agree with Appellants that the
Examiner has failed to provide a reason to make the combination under this
rationale (Br. 14).
Claims 134 and 136 require a water-retaining substance impregnated
into a porous carrier. These claims specifically require that the water-
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retaining substance be selected from the group consisting of calcium
chloride, magnesium sulfate, potassium chloride, potassium hydroxide, and
mixtures thereof.
Appellants contend that Katagiri and Kaylor fail to teach including the
claimed water-retaining substance and impregnation of any kind (Br. 16).
The Examiner fails to make any finding that the references teach or suggest
the specifically claimed water-retaining substances (Ans. 4 and 6).
Therefore, we cannot say that the Examiner has provided sufficient evidence
in support of the rejection of those claims.
B. REJECTION OVER HAMILTON, KATAGIRI, AND KLATTE
With respect to the rejection of claims 86, 89-92, 94-97, 100-105,
107-114, 116-119, 121-128, 130-134, and 136-139 as obvious over
Hamilton, Katagiri, and Klatte, we note that the Examiner again finds that
mixing zeolite, bicarbonate, and acid as taught by Katagiri would result in
impregnation as claimed (Ans. 5). The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time the invention
to use the carbonate and other inorganic materials of Katagiri in the
composition of Hamilton to generate the carbon dioxide desired by Hamilton
(id.). The Examiner limits his use of Klatte to the teaching of the use of
inorganic salts and acids in a system for generating chlorine dioxide (id.).
Appellants again contend that Katagiri does not impregnate the zeolite
as claimed (Br. 17). For the reasons stated above we agree. Moreover, the
Examiner has provided no reasonable rationale supporting the conclusion
that one of ordinary skill in the art would impregnate the acid of Hamilton
(Hamilton, ¶ [0045]) into the zeolite suggested by Katagiri (Ans. 5 and 7) as
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required by claims 86, 119, and 128. Nor has the Examiner provided any
reasoning to support impregnating any porous carrier with a water-retaining
substance selected from a specific group of compounds recited in claims 123
and 134 (id.). According to the Examiner, Katagiri’s zeolite functions as a
sorbent (Ans. 5). The Examiner has provided no reason to believe that one
of ordinary skill in the art would use a sorbent as an impregnated carrier.
We are cognizant of the fact that Klatte describes zeolite crystals
impregnated with gas generating agents (metal chlorite and proton-
generating species) for generating chlorine dioxide gas as well as
impregnating water-retaining substances in zeolite carriers (Klatte,
Abstract). However, the Examiner does not rely upon Klatte for its teaching
of impregnation of such compounds.
III. CONCLUSION
On the record before us, we do not sustain the rejection maintained by
the Examiner.
IV. DECISION
The decision of the Examiner is reversed.
REVERSED

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ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE NC 28280-4000