11487556 (B.P.A.I. Sep. 15, 2010)

Ex Parte Miller et al

Board of Patent Appeals and InterferencesSep 15, 2010

11487556 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte STANLEY B. MILLER III, LOUIS PATRONE, and PATRICIA A. ZIARNIAK __________ Appeal 2009-009331 Application 11/487,556 Technology Center 1600 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N. FREDMAN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to an acid- gas absorbing tablet. The Examiner has rejected the claims for obviousness. 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 2009-009331 Application 11/487,556 2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses that “in confined environments, such as computer hard drives and other types of computer and electronic devices, volatile organic and other acid gases are generated which may deleteriously affect them” (Spec. 1, ¶ 5). Claims 1, 4, 5, 9, 12, 13, 15, 18, 19, 24, 26, and 31-34 are on appeal. Claim 1 is representative and reads as follows: 1. An acid-gas absorbing tablet comprising in relatively sufficient proportions by weight at least one adsorbent, a binder, a first basic salt, a second basic salt, said first basic salt being blended with said adsorbent, and said second basic salt being in intimate contact with said binder wherein said second basic salt comprises potassium bicarbonate or sodium bicarbonate. The Examiner has rejected claims all of the claims on appeal under 35 U.S.C. § 103(a) based on Tuma2 and Yoshikawa3 (Answer 3). The Examiner concludes that it would have been obvious to include a bicarbonate salt in Tuma’s device “because Yoshikawa teaches that it is well known in the art to mix/combine carbonate and bicarbonate salts to obtain a useful adsorbent article” (id. at 4). However, we agree with Appellants that the type of protection desired in each patent is completely different. Yoshikawa teaches an oxygen absorbent article. Such an absorbent article must be used in a tightly closed container because if air circulates past the oxygen absorbent it is soon used up and is useless. The absorbent material of Tuma is used in a filter assembly, such as with a fan on a computer 2 Tuma et al., US 6,146,446, Nov. 14, 2000 3 Yoshikawa et al., US 4,104,192, Aug. 1, 1978 Appeal 2009-009331 Application 11/487,556 3 disk drive. This is not a use where an oxygen absorbent is useful as air is present. There is no teaching to combine these two dissimilar absorbents to reach the invention. (Reply Br. 2.) As Appellants point out, Tuma discloses that “adsorbent filters are used within the housings or casings of electronic devices to protect the electronic components from contaminants, such as water vapor, acid gas, and volatile organic compounds” (Tuma, col. 1, ll. 16-20). Tuma discloses “shaped adsorbent articles for use in adsorbent filters” (id. at col. 1, ll. 52- 53) that can include a mixture of, among other things, activated carbon, sodium or potassium carbonate, and a binder (id. at col. 5, ll. 3-26). Yoshikawa discloses an oxygen absorbent for use in preserving foodstuffs (Yoshikawa, col. 1, ll. 5-13) that contains “a dithionate and at least one compound having water of crystallization or water of hydration” (id. at col. 2, ll. 39-41). Yoshikawa discloses that its absorbent can additionally contain an alkaline material such as sodium bicarbonate or potassium bicarbonate (id. at col. 3, ll. 60-64). The Examiner has not adequately explained why Yoshikawa’s disclosure that sodium and potassium bicarbonate are useful in an oxygen absorbent for preserving food would have made it obvious to include one of those compounds in Tuma’s adsorbent filter, which is intended to adsorb water vapor, acid gas or volatile organic compounds – not oxygen – in the housing of an electronic device. SUMMARY The Examiner has not shown that the rejected claims would have been obvious to a person of ordinary skill in the art. We reverse the rejection of Appeal 2009-009331 Application 11/487,556 4 claims 1, 4, 5, 9, 12, 13, 15, 18, 19, 24, 26, and 31-34 as obvious in view of Tuma and Yoshikawa. REVERSED lp MTI - INTELLECTUAL PROPERTY HARTER, SECREST & EMERY, LLP 1600 BAUSCH & LOMB PLACE ROCHESTER NY 14604