Ex Parte Fencl

Board of Patent Appeals and Interferences

Sep 8, 2010

10426339 (B.P.A.I. Sep. 8, 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.
10/426,339 04/29/2003 Forrest B. Fencl S002-P03036US 8000
33356 7590 09/09/2010
SoCAL IP LAW GROUP LLP
310 N. WESTLAKE BLVD. STE 120
WESTLAKE VILLAGE, CA 91362
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
09/09/2010 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 FORREST B. FENCL
____________

Appeal 2010-007279
Application 10/426,339
Technology Center 1700
____________

Before EDWARD C. KIMLIN, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal from the final rejection of claims 18-20, 22-33, 35-
43, and 48-51. Appellant did not appeal the rejection of claims 44-47, 52,
and 53, which claims have been canceled by the Examiner. 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.
Appeal 2010-007279
Application 10/426,339

Claim 18 is illustrative:

18. A method of reducing concentrations of volatile organic
compounds, the method comprising

identifying a region of a mechanically ventilated space having a
volume of at least four cubic feet through which an air stream passes at a
speed of at least 100 cubic feet per minute, the air stream having a
concentration of volatile organic compounds of at least 100 parts per
million, the mechanically ventilated space at least partially defined by plural
walls

providing at least one germicidal lamp located with respect to the
region such that the germicidal lamps, when energized, will irradiate the
region and the air stream which passes there through with UVC radiation,
wherein the germicidal lamp comprises a fixture disposed exterior to the
mechanically ventilated space, and a single ended tube substantially
disposed within the mechanically ventilated space, the single ended tube
electrically connected to the fixture and supported by the fixture, wherein
the fixture includes a power supply disposed exterior to the mechanically
ventilated space

energizing the germicidal lamps and exposing the air stream to UVC
radiation with sufficient power to destroy the volatile organic compounds in
the air stream, with substantially no ozone generated

using the UVC radiation to lower the concentration of volatile organic
compounds in the identified region of the mechanically ventilated space to
less than one hundred parts per billion.

In addition to the admitted prior art (APA), the Examiner relies upon
the following references as evidence of obviousness (Ans. 3):
Matschke 5,612,001 Mar. 18, 1997
Bigelow 6,221,314 B1 Apr. 24, 2001
Matsutani 6,238,628 B1 May 29, 2001
Yasutake (as translated) JP 61200837 Sep. 05, 1986

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Appeal 2010-007279
Application 10/426,339

Appellant’s claimed invention is directed to a method of reducing the
concentration of volatile organic compounds in a mechanically ventilated
space. The method entails using a germicidal lamp located within the space
to irradiate a stream of air with UVC radiation.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 18-20, 22-29, 48, and 49 over Bigelow in view of
Matschke, the APA, and Yasutake,
(b) claims 30, 33, 35, 37-40, 50, and 51 over Bigelow in view
of the APA and Matsutani,
(c) claims 31, 32, and 41-43 over Bigelow in view of the APA,
Matsutani, and Matschke,
(d) and claim 36 over Bigelow in view of the APA, Matsutani,
and Yasutake.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for the reasons set
forth in the Answer, and we add the following primarily for emphasis.
There is no dispute that both Bigelow and Matschke disclose methods
of purifying air by radiating the air with UVC from germicidal lamps. It is
Appellant’s contention that “[n]either Bigelow or Matschke describe or
suggest methods for removing odors or volatile organic compounds (VOC)
from an air stream” (Br., sentence bridging 5-6). However, as
acknowledged by Appellant, Bigelow expressly teaches that the germicidal
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Appeal 2010-007279
Application 10/426,339

lamp emits UV radiation which purges impurities and contaminants from the
air, and “[t]he ability of ultraviolet light to decompose organic molecules has
been known for a long time” (col. 1, ll. 44-45). Consequently, we find no
merit in Appellant’s argument that Bigelow provides no suggestion of
removing volatile organic compounds from air with UV radiation. Rather,
we fully concur with the Examiner that one of ordinary skill in the art would
have reasonably expected that the UV radiation generated by the lamp of
Bigelow would intrinsically or inherently reduce the concentration of
volatile organic compounds in the air stream. As set forth by the Examiner,
Appellant’s Specification acknowledges that “VOCs and other organic odors
have existed in new and old buildings alike for decades” (Spec., para.
[0014]). Therefore, we agree with the Examiner that it is reasonable to
conclude that the air treated by the Bigelow method would comprise volatile
organic compounds that are necessarily destroyed by exposure to the UV
radiation.
We also agree with the Examiner that Matschke evidences the
obviousness of modifying the volume and speed of the air treated with UV
radiation. While Matschke is primarily concerned with killing
microorganisms present in the air with UV radiation, it follows, based on the
state of the prior art, that volatile organic compounds would also be
destroyed by the UV radiation of Matschke. Also, we concur with the
Examiner that it would have been a matter of routine experimentation to
determine the flow rate of the air for the particular area being treated. As
noted by the Examiner, Matschke expressly teaches that “[t]he kill rate is
dependent on both the intensity and the length of exposure to the UV
radiation” (col. 6, ll. 16-17), and “Matschke controls the length of exposure
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Appeal 2010-007279
Application 10/426,339

by adjusting the fan speed” (Ans. 7, third para.). Hence, the intensity of the
UV radiation and the air speed were known result effective variables for
removing contaminants.
The Examiner cites Yasutake as further evidence that it was known in
the art to employ UV radiation to significantly lower the level of volatile
organic compounds in a gas (Ans. 6, third para.).
Appellant takes issue with the Examiner’s statement that para. [0014]
of the present Specification is admitted prior art. However, the Examiner
uses the Specification disclosure only as evidence that volatile organic
compounds and organic odors are inherently found in mechanically
ventilated spaces which accumulate organic compounds as a result of
operating office equipment, building materials, furnishings, cleaning agents,
etc. (Ans. 6, second para.). Therefore, it is reasonable to conclude that the
UV treatments of Bigelow and Matschke would necessarily destroy volatile
organic compounds and odors. Moreover, the Specification disclosure that
some level of volatile organic compounds and odors have existed in new and
old buildings for decades suggests that this was well known in the art at the
time of filing the present application. Significantly, Appellant has not
denied that it was known in the art that mechanically ventilated spaces
accumulate simple organic gas phase compounds, as disclosed in the
Specification.
As for separately argued claim 20 directed to opening holes in the
ventilated space and mounting the UV lamp, Appellant has not refuted the
Examiner’s reasoning at page 14 of the Answer. Nor has Appellant
explained why the broadly claimed method of installing the UV lamp into a
fixture would have been unobvious to one of ordinary skill in the art.
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Appeal 2010-007279
Application 10/426,339

The remaining arguments of Appellant have been adequately
addressed by the Examiner.
As a final point, we note that Appellant bases no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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