Ex Parte Hoke et al

Board of Patent Appeals and Interferences

Sep 8, 2010

09766723 (B.P.A.I. Sep. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY B. HOKE, JOHN R. NOVAK,
JOHN J. STEGER, TERENCE C. POLES,
L. MICHAEL QUICK, RONALD M. HECK,
ZHICHENG HU, and MICHAEL DURILLA
____________

Appeal 2010-002246
Application 09/766,723
Technology Center 1700
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 49-60, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
THE INVENTION
Appeal 2010-002246
Application 09/766,723

The Appellants claim an apparatus comprising an ozone treating
catalyst for treating the atmosphere. Claims 49 and 51 are illustrative.1
49. An apparatus for treating the atmosphere comprising an
outdoor component of an HVAC system bearing on ozone treating
catalyst, said outdoor component being operatively attached to an
immovable structure.

51. An apparatus for treating the atmosphere comprising a
substrate bearing an ozone treatment catalyst added to an outdoor
component of an HVAC system, said outdoor component being
operatively attached to an immovable structure.

THE REFERENCES
Galligan 5,620,672 Apr. 15, 1997
Fromson 5,711,071 Jan. 27, 1998
Hager (as translated) DE 4,007,964 Sep. 19, 1991
Beitz (as translated) EP 0 634 205 Jan. 18, 1995

THE REJECTIONS
The claims stand rejected as follows: claims 49-59 under
35 U.S.C. § 103 over Fromson in view of Hager; claim 60 under
35 U.S.C. § 103 over Fromson in view of Hager and the Appellants’
admitted prior art; claims 49-59 under 35 U.S.C. § 103 over Beitz; and

1 The Appellants’ claim term “immovable” appears to have the meaning of
“stationary”, which is the term used in the original claims. The Appellants
state that “[f]or purposes of this application, a substrate is considered
stationary when it is operatively attached to a non-moving structure. For
example, the fan or adjustable louvers of an air handling system for a
building are considered stationary, even though the fan revolves and the
louvers can be moved” (Spec. 5:26-32).
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Application 09/766,723

claims 49-60 under the judicially created doctrine of obviousness-type
double patenting over claims 2 and 22-25 of Galligan.
OPINION
We affirm the Examiner’s rejections.
Rejections over Fromson in view of Hager
The Appellants present a substantive argument as to the separate
patentability of two groups of claims: 1) claims 49 and 50, and 2) claims 51
and 52 (Br. 10-12). We therefore limit our discussion to one claim in each
of those groups, i.e., independent claims 49 and 51. Claim 50 stands or falls
with claim 49, and claim 52 stands or falls with claim 51. Regarding
claims 53-60 the Appellants merely assert that what is recited is not taught
or suggested in the references (Br. 12-13). That is tantamount to merely
pointing out the differences in what the claims cover, and is not a
substantive argument as to the separate patentability of those claims. Hence,
claims 53-60 stand or fall with claim 49 from which they indirectly depend.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 49
Fromson discloses “catalytic structures and their method of
manufacture particularly as a part of or in association with heat exchangers,
such as automotive radiators and air conditioning condensers” (col. 1, ll. 5-
7), and teaches that “[t]he catalytically active material may comprise the fins
of the heat exchanger or be incorporated into a separate catalytic structure”
(col. 1, ll. 7-9). Fromson indicates that the catalyst can treat ozone (col. 1,
ll. 10-12).
Hager discloses (pp. 2-3):
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Application 09/766,723

Cu2O or CuO or a mixture of the two is mixed with a binder
that results in a water-resistant but porous coating. This coating
converts poisonous ozone molecules directly into non-poisonous
oxygen molecules….
This coating can be applied to walls, buildings, fences, the
underbodies of vehicles, road barriers and carpets. It can also be
worked into the coverings of roadways. Since most of these objects
lie close to vehicles that product pollutants, ozone that develops due to
photo-oxidation is broken down catalytically.

The Appellants argue “that the components of an automobile
encounter vastly different conditions in terms of air space velocity and
temperature compared to the air space velocity and temperature conditions
encountered by a component of an HVAC system attached to an immovable
structure such as a residential or commercial building” (Br. 11; Reply Br. 6).
The Appellants have not provided evidence that one of ordinary skill
in the art would have considered the applicability of Fromson’s ozone
treating catalyst to be limited to certain air space velocities and
temperatures. The Appellants have provided mere attorney argument to that
effect, and such arguments of counsel cannot take the place of evidence. See
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Hager’s disclosure
that the ozone treating catalyst is effective on both a vehicle underbody,
which is a movable structure, and a building, which is an immovable
structure (p. 2), would have indicated to one of ordinary skill in the art that
Fromson’s ozone treating catalyst, which is disclosed as being effective on
heat exchangers generally (col. 1, l. 6), would be effective not only on the
exemplified radiators and air conditioning condensers of an automobile,
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Application 09/766,723

which is movable, but also on an outdoor component of a HVAC system of a
building, which is immovable.
We therefore are not persuaded of reversible error in the rejection
over Fromson in view of Hager of claim 49 and claims 50 and 53-60 that
stand or fall therewith.
Claim 51
The Appellants argue that “[a]n advantage of having a separate
substrate [is that it] can be removably mounted for replacement, rejuvenation
or cleaning” (Br.12).
The Appellants’ claim 51 does not require the substrate to be
removably mounted. Hence, the Appellants’ argument is unpersuasive as
being directed toward a limitation that is not in the claim. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982). Fromson’s disclosure that the catalytically
active material can be incorporated into a separate catalytic structure to
avoid high temperature areas and to increase the catalytic surface area
(col. 1, ll. 7-9; col. 4, l. 59 – col. 5, l. 21) would have led one of ordinary
skill in the art, through no more than ordinary creativity in view of Hager, to
place catalytically active material on a separate substrate in an outdoor
HVAC unit based upon those factors and common factors such as
practicality, cost, convenience, etc. See KSR Int’l. Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007) (In making the obviousness determination one “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ”).
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Accordingly, we are not convinced of reversible error in the rejection
over Fromson in view of Hager of claim 51 and claim 52 that stands or falls
therewith.
Rejection over Beitz
The Appellants argue claims 49-59 as a group (Br. 13-15). We
therefore limit our discussion to one claim in that group, i.e., claim 49.
Claims 50-59 stand or fall with claim 49. See 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
Beitz discloses a “catalyst for breaking down ozone that can be
installed without difficulty in air conditioners, ventilation systems and
automobiles and also causes a significant reduction in the ozone content in
the inhaled air” (p. 3). The catalyst is a noble metal-coated net wherein the
“net is a two-dimensional structure and can be installed in a space-saving
manner even in systems and devices that are already present, e.g. in
ventilation ducts to the passenger compartment of automobiles that are
present, at the outflow side of air conditioners and ventilation systems, and
also in devices and machines like photocopiers that generate ozone,
preferably before the outlet of air that is conducted through the device and/or
the machine by a fan” (p. 4).
The Examiner argues that one of ordinary skill in the art would have
added Beitz’s catalyst to an outdoor component of an air conditioning or
ventilation system to reduce the influx of ozone into the air conditioned
building (Ans. 4-5).
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The Appellants argue that ozone abatement by a catalyst on an
outdoor component of a HVAC system does not result in the treated air
being drawn into the air conditioned building (Br. 13-14).
The Appellants do not support their argument with evidence, and the
mere attorney argument provided is not a substitute for evidence. See De
Blauwe, 736 F.2d at 705. Because the air that enters a building comes from
the atmosphere surrounding the building, it appears that removing ozone
from that any part of that atmosphere, e.g., at an outdoor component of the
building’s HVAC system, would reduce the ozone in the air entering the
building to some extent. Furthermore, Beitz’s teaching that the catalyst
causes a significant reduction in the ozone content of inhaled air (p. 3)
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use the catalyst not only to reduce the ozone within
the building (e.g., by placing catalyst at the outflow side of air conditioners
and ventilation systems; p. 4) but also at any other location where air is
inhaled, such as at an outdoor component of an HVAC system. That would
be a predictable solution, in the vicinity of that outdoor component, to the
known problem of ozone in inhaled air. See KSR, 127 S. Ct. at 1742:
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options
within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

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The Appellants argue that Beitz’s catalyst is for use at ambient
temperatures and below, whereas the Appellants’ catalyst can work at
elevated temperatures (Br. 14).
Beitz discloses that the catalyst “produces an ozone reduction not only
at normal ambient temperature (20°C) but also with a somewhat lower
activity at 0°C. Heating of the catalyst can be dispensed with” (p. 7). Thus,
Beitz teaches that the catalyst is effective at ambient temperature, is less
effective at 0°C, and does not have to be heated, but Beitz does not disclose
that the catalyst is ineffective when heated. Moreover, the Appellants’ only
claim that recites a temperature is claim 58, and that temperature is “above
25°C.”2 Temperatures above 25°C include temperatures only infinitesimally
higher than 25°C, which is a typical ambient temperature similar to that
disclosed by Beitz.
The Appellants argue that “[t]he skilled artisan would not be
motivated to move the catalysts associated with an indoor component or an
automobile air conditioner to an outdoor component of an air conditioning
system that is subject to different airflow conditions, temperatures and other
environmental conditions that may degrade the catalyst” (Br. 15).
That argument is unpersuasive as being unsupported attorney
argument. See De Blauwe, 736 F.2d at 705.

2 Claim 57 recites that the ozone treating catalyst can be disposed on an air
contacting surface of a component downstream from a heat exchanger’s heat
transfer surface, but does not require that the air contacting surface be at any
particular temperature.
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Application 09/766,723

For the above reasons we are not convinced of reversible error in the
rejection over Beitz of claim 49 and claims 50-59 that stand or fall
therewith.
Obviousness-type double patenting rejection
The Appellants do not challenge the obviousness-type double
patenting rejection (Br. 9, fn 2). Accordingly we summarily affirm that
rejection.
DECISION
The rejections of claims 49-59 under 35 U.S.C. § 103 over
Fromson in view of Hager, claim 60 under 35 U.S.C. § 103 over Fromson in
view of Hager and the Appellants’ admitted prior art, claims 49-59 under
35 U.S.C. § 103 over Beitz, and claims 49-60 under the judicially created
doctrine of obviousness-type double patenting over claims 2 and 22-25 of
Galligan are 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).

AFFIRMED

tc

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