Ex Parte Molins

Patent Trial and Appeal Board

Oct 27, 2016

13003784 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/003,784 04/06/2011 Laurent Molins
22850 7590 10/31/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
373532US99PCT 1586
EXAMINER
SPAMER, DONALD R
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
10/31/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT MOLINS
Appeal2015-004738
Application 13/003,784
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claim 26 under 35 U.S.C. § 112 as
lacking written description support and as indefinite; claims 1-7 under
35 U.S.C. § 102(b) as anticipated; and claims 1-5, 7, 8, 13-16, 18-21, and
24--29 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 23, 2014).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM. Our affirmance relies
upon findings of fact and reasoning that differ from the Examiner. Thus, we
1 Saint-Gobain Quartz S.A.S. is identified as the real party in interest. Br. 2.
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Application 13/003,784
designate this affirmance as setting forth NEW GROUNDS OF
REJECTION.
BACKGROUND
The '784 Application describes a particulate filter comprising a
cartridge and a filter media. Spec. 1. The filter media comprises mineral
fibers and is substantially free of organic material. Id. at 2. This is alleged
to be advantageous because organic matter contained in prior art filter media
is attacked by oxidizing agents such as ozone, thereby creating toxic volatile
organic compounds such as formaldehyde. Id. at 1-2.
Claims 1 and 27 are representative of the '784 Application's claims
and are reproduced below:
1. A particulate filter comprising a cartridge and a filter
media positioned in the cartridge in the prefiltering position to
retain solid and/or liquid particulates suspended in air, wherein
the filter media is essentially mineral.
Br. 30 (Claims ii ..pp.).
27. A particulate filter, consisting essentially of a cartridge,
a filter media positioned in the cartridge in the prefiltering
position to retain solid and/or liquid particulates suspended in
air, wherein the filter media consist of silica fibers that are
entangled with no binder and including no organic matter,
a second filter media having a photocatalytic action positioned
after the prefiltering position, and
a UV source to activate the photocatalytic action.
Br. 32 (Claims App.).
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REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claim 26 is rejected under 35 U.S.C. § 112, i-f 2 as indefinite. Final
Act. 4.
2. Claims 1-7 are rejected under 35 U.S.C. § 102(b) as anticipated by
Sakata. 3 Final Act. 4.
3. Claims 8 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sakata and Aikawa. 4 Final
Act. 6.
4. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sakata and Snyder. 5 Final
Act. 7.
5. Claims 1-5, 7, 15, 16, 18-21, and 24--29 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination ofDunn6
and Fujihara.7 Final Act. 7.
2 The Examiner has withdrawn the rejection of claim 26 under 35 U.S.C.
§ 112, i-f 1 as failing to comply with the written description requirement.
Answer 2.
3 US 6,146,451, issued November 14, 2000.
4 US 6,284,680 Bl, issued September 4, 2001.
5 US 2005/0238551Al, published October 27, 2005.
6 US 2008/0112845 Al, published May 15, 2008.
7 US 5,910,727, issued June 8, 1999. In the Final Action and the Answer,
the Examiner erroneously refers to this as the Fugihara reference. See, e.g.,
Final Act. 7-8.
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DISCUSSION
Rejection 1. During prosecution, a claim is examined for compliance
with 35 U.S.C. § 112, i-f 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim is not indefinite
merely because more suitable language or modes of expression are available.
Id. In determining whether a particular claim is definite, the claim's
language must be analyzed in light of the content of the particular
application, the prior art's teaching, and the interpretation that would be
given to the claim's language by a person of ordinary skill in the art at the
time the invention was made. Id.
In this case, the Examiner rejected claim 26 as indefinite because the
limitation "the ambient air" has insufficient antecedent basis. Final Act. 4;
see also Answer 3. Claim 26 reads:
26. The particulate filter as claimed in claim 1, wherein the
cartridge and the filter media positioned in the cartridge in the
prefiltering position receives [sic, receive] all the ambient air
coming from outside the particulate filter.
Br. 32.
We conclude that the Examiner erred in rejecting claim 26 as
indefinite. Read in the full context of the claim, the phrase "all the ambient
air" is sufficiently precise to apprise a person having ordinary skill in the art
of what is claimed and what is still open to the public. This is all that is
required by§ 112, i-f 2. See Nautilus, Inc. v. Biosig Instruments, Inc., 134
S. Ct. 2120, 2129 (2014).
Rejection 2. The Examiner rejected claims 1-7 as anticipated by
Sakata. Final Act. 4. Appellant first argues for reversal of this rejection
with respect to all of the claims based upon the limitations of claim 1. See
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Br. 10-15. Appellant then presents separate arguments for patentability of
each of the dependent claims. See id. at 15-19. We address each set of
arguments in tum.
Claims 1-7. Appellant argues that the Examiner erred by finding that
Sakata describes a particulate filter as required in claim 1. Id. at 10-15.
The Examiner found that Sakata's Figure 3 depicts a particulate filter
that is within the scope of claim 1. Final Act. 4--5. Figure 3 is reproduced
below:
1
l ,
Sakata Figure 3 is a schematic exploded view of a filter. Sakata col. 12, line
51. The filter 1 comprises honeycomb structure 12 that supports adsorbents.
Id. col. 15, 11. 1-13. Honeycomb structure 12 is surrounded by an aluminum
frame comprised of frame members 15a, 15b, 15c, and 15d. Id. In Figure 3,
the airflow direction is shown by arrows 13. Id.
Appellant argues that honeycomb 12 is not a particulate filter. See
AB 11-15. The Examiner responds:
The gas filter of Sakata is made of porous filter material
(10) through which air can pass (column 9, line 52 through
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column 10, line 42 and column 16, line 49---column 17, line 33).
As the filter media is a porous substance through which air
passes through and around, small particles would become
trapped by the pores as this is the basic principle underlying
how a filter functions. Furthermore, some particles may
become entrapped by simply being pressed against a leading
edge of the filter material by the air flow.
Answer 3.
The Examiner's argument is not persuasive. As shown in Sakata's
Figure 3, there primarily flows through this filter in a direction parallel to the
openings in the honeycomb structure. Thus, the honeycomb structure is
unlikely to remove a substantial amount of particulate matter from the air
passing through the filter. We, therefore, cannot affirm the rejection of
claims 1-7 on the basis of the Examiner's findings of fact and reasoning.
Our analysis, however, does not end there. In addition to describing
the use of honeycomb material as a support, Sakata states that "the term
'supporter' is not limited to the honeycomb structure but may be a three
dimensional mesh structure like rock wool." Sakata col. 7, 11. 18-20.
Sakata, therefore, describes or suggests a filter such as that shown in Figure
3 in which the honeycomb is replaced by rock wool or some other three
dimensional mesh. Rock wool is capable of acting as a particulate filter.
For the reasons set forth above, we affirm the rejection of claim 1 as
anticipated by Sakata. Our affirmance relies upon findings of fact and
reasoning that differ from those expressed by the Examiner. Thus, we
designate our affirmance as constituting a new ground of rejection pursuant
to 3 7 C.F .R. § 41. 50(b ). In the alternative, we newly reject claim 1 pursuant
to 35 U.S.C. § 103(a) as unpatentable over Sakata because it would have
been obvious to a person of ordinary skill in the art at the time of the
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invention to substitute rock wool for the honeycomb supporter shown in
Figure 3.
Claims 2 and 3. Claims 2 and 3 further specify the properties of the
filter media recited in claim 1. In particular, claim 2 requires that "the filter
media has a loss on ignition of less than 0.1 % by weight," and claim 3
requires that "the filter media has a loss on ignition of less than 0.01 % by
weight." Br. 30 (Claims App.).
Appellant argues that the rejection of claims 2 and 3 should be
reversed because they depend from claim 1. Br. 10-15. For the reasons
discussed above, we are not persuaded by this argument.
Appellant further argues that the rejection of claims 2 and 3 should be
reversed because Sakata does not describe the limitations added by these
claims. Br. 15-16. In particular, Appellant argues that the Examiner erred
by finding that Sakata's filter media would inherently possess the properties
set forth in claims 2 and 3. Id. Appellant also argues that "the [E]xaminer
has the initial duty of supplying the requisite factual basis" for the rejection
and that the Examiner has failed to meet this burden with respect to claims 2
and 3. Id.
We are not persuaded by Appellant's arguments. As the Examiner
found, Sakata describes making its honeycomb support in a manner that
removes all organic material from the honeycomb. Final Act. 5 (citing
Sakata col. 16, line 49---col. 17, line 3). As discussed above, the Examiner's
reliance upon Sakata's honeycomb support as the basis for rejecting claims
1-7 is misplaced. Sakata, however, teaches that rock wool may be used as
the filter media. Rock wool is manufactured by melting basalt rock and steel
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mill slag and are then spun into a fibrous material. 8 This manufacturing
process results in a product that contains no organic material. In view of
these findings of fact, Appellant has the burden of demonstrating that rock
wool would not meet the limitations set forth in claim 2 or 3. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986).
As discussed above, we have designated our affirmance of the
rejection of claim 1 as anticipated by Sakata as comprising a new ground of
rejection. In the alternative, we have newly rejected claim 1 as obvious in
view of Sakata. Furthermore, our affirmance of the rejection of claims 2 and
3 as unpatentable in view of Sakata also contains findings of fact and
reasoning not relied upon by the Examiner. Thus, we designate our
affirmance of the rejection of claims 2 and 3 as comprising new grounds of
rejection.
In sum, claims 2 and 3 are rejected as either anticipated by or
unpatentably obvious in view of Sakata. These are new grounds of rejection
pursuant to 37 C.F.R. § 41.50(b).
8 We find that a person of ordinary skill in the art would have a rudimentary
knowledge of the rock wool manufacturing process. In the alternative, the
details of this process are widely available. See, e.g., Mineral Wool,
https:// en. wikipedia.org/wiki/Mineral_ wool ("Stone wool is a furnace
product of molten rock at a temperature of about 1600 °C, through which a
stream of air or steam is blown. . . . The final product is a mass of fine,
intertwined fibres with a typical diameter of 2 to 6 micrometers.").
Although mineral wool may contain a binder, see id., a person of ordinary
skill in the art would understand that Sakata as suggesting that organic
materials not be included in the filter material.
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Claim 4. Claim 4 depends from claim 1 and further specifies that "the
filter media is a felt of mineral fibers comprising no organic binder." Br. 3 0
(Claims App.).
Appellant argues that the rejection of claim 4 should be reversed
because it depends from claim 1. Br. 10-15. For the reasons discussed
above, we are not persuaded by this argument.
As discussed above, Sakata describes the use of a three dimensional
mesh such as rock wool as an alternative support material. Furthermore,
because Sakata describes methods of manufacturing the honeycomb filter
material that remove all organic material, a person of ordinary skill in the art
would understand that organic material should not be included in a rock
wool filter.
We have designated our affirmance of the rejection of claim 1 as
anticipated by Sakata as comprising a new ground of rejection. In the
alternative, we have newly rejected claim 1 as obvious in view of Sakata.
Furthermore, our affirmance of the rejection of claim 4 as unpatentable in
view of Sakata also contains findings of fact and reasoning not relied upon
by the Examiner. Thus, we designate our affirmance of the rejection of
claim 4 as comprising new grounds of rejection.
In sum, claim 4 is rejected as either anticipated by or unpatentably
obvious in view of Sakata. These are new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).
Claim 5. Claim 5 further requires that the mineral fibers recited in
claim 4 consist of silica fibers. Br. 30. We find that rock wool is composed
of mineral fibers that consist of silica fibers.
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Appellant argues that the rejection of claim 5 should be reversed
because it depends from claim 1. Br. 10-15. For the reasons discussed
above, we are not persuaded by this argument.
Appellant's additional arguments are directed to the Examiner's
reliance upon the honeycomb support material described in Sakata. Because
our new grounds of rejection are based upon Sakata's description of using
rock wool as a filter media, we need not address these arguments.
We have designated our affirmance of the rejection of claim 1 as
anticipated by Sakata as comprising a new ground of rejection. In the
alternative, we have newly rejected claim 1 as obvious in view of Sakata.
Furthermore, our affirmance of the rejection of claim 5 as unpatentable in
view of Sakata also contains findings of fact and reasoning not relied upon
by the Examiner. Thus, we designate our affirmance of the rejection of
claim 5 as comprising new grounds of rejection.
In sum, claim 5 is rejected as either anticipated by or unpatentably
obvious in view of Sakata. These are new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).
Claim 6. Claim 6 reads:
6. The particulate filter as claimed in claim 1, wherein the
filter media also has a photocatalytic action.
Br. 30. The Examiner found that Sakata describes filter media with a
photocatalytic action. Final Act. 6. We further find that it would have been
obvious to a person of ordinary skill in the art to provide a rock wool filter
media with the photocatalytic action described in Sakata.
Appellant argues that the rejection of claim 6 should be reversed
because it depends from claim 1. Br. 10-15. For the reasons discussed
above, we are not persuaded by this argument. Appellant's additional
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arguments for patentability of claim 6 are based upon the Examiner's
reliance upon a honeycomb support. Because the new ground of rejection
set forth in this Opinion does not rely upon a honeycomb support, we do not
address this argument.
We have designated our affirmance of the rejection of claim 1 as
anticipated by Sakata as comprising a new ground of rejection. In the
alternative, we have newly rejected claim 1 as obvious in view of Sakata.
Furthermore, our affirmance of the rejection of claim 6 as unpatentable in
view of Sakata also contains findings of fact and reasoning not relied upon
by the Examiner. Thus, we designate our affirmance of the rejection of
claim 6 as comprising new grounds of rejection.
In sum, claim 6 is rejected as either anticipated by or unpatentably
obvious in view of Sakata. These are new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).
Claim 7. Claim's 7 reads:
7. The particulate filter as claimed in claim 1, further
comprising a second filter media having a photocatalytic action
positioned after the prefiltering position.
Br. 30. The Examiner found that Sakata describes a filter comprising a
second filter media having a photocatalytic action positioned after the
prefiltering position. Final Act. 6.
Appellant argues that the rejection of claim 7 should be reversed
because it depends from claim 1. Br. 10-15. For the reasons discussed
above, we are not persuaded by this argument. Appellant's additional
arguments for reversal of the rejection of claim 7 are based upon the
Examiner's reliance upon a honeycomb structure as the first filter media. As
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discussed above, the rejection of claim 7 now relies upon a rock wool filter
media. Thus, we need not address Appellant's additional arguments.
We have designated our affirmance of the rejection of claim 1 as
anticipated by Sakata as comprising a new ground of rejection. In the
alternative, we have newly rejected claim 1 as obvious in view of Sakata.
Furthermore, our affirmance of the rejection of claim 7 as unpatentable in
view of Sakata also contains findings of fact and reasoning not relied upon
by the Examiner. Thus, we designate our affirmance of the rejection of
claim 7 as comprising new grounds of rejection.
In sum, claim 7 is rejected as either anticipated by or unpatentably
obvious in view of Sakata. These are new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).
Rejection 3. The Examiner rejected claims 8 and 13 as unpatentable
over the combination of Sakata and Aikawa. Final Act. 6-7. Appellant
argues that this rejection should be reversed because the Examiner has not
provided sufficient explanation for why a person having ordinary skill in the
art would have combined Sakata and Aikawa. Br. 19-20.
In the Examiner's Answer, the Examiner explains:
The issue of Sakata's filter being a particulate filter is
addressed above. Regardless of what the intended function of
Sakata' s filter is, the filter of Sakata and Aikawa are both used
to filter air streams and are non-woven fiber filters. Since
Aikawa teaches a mass per unit area for a non-woven fiber air
filter, it can be concluded that in order to make a non-woven
fiber filter a person having ordinary skill in the art would have
to determine a mass per unit area of the filter. Sakata does not
provide any guidance in this regard. Thus a person having
ordinary skill in the art would have to look to the prior art for a
teaching of a known mass per unit area of a non-woven fiber
filter for use in filtering air streams. It is obvious for such a
person to do so as mass per unit area is a known design
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parameter in filter design. Aikawa's teachings apply to a filter
of any shape as Aikawa contemplates that the filter can take on
any shape (column 8, lines 63---65). A reasonable expectation
of success is supported by the facts that both filters are non-
woven fiber filters capable of filtering air and that Aikawa
teaches that the taught mass per unit area is applicable to filter
media formed into any shape. A person having ordinary skill in
the art would thus have been motivated to combine the
references as previously presented in the prior office action
based on a need to determine a known filter design parameter
and a reasonable expectation that the taught filter mass per unit
area would result in a successful non-woven fiber air filter.
Answer 7.
Appellant did not file a Reply Brief to respond to the Examiner.
Thus, we affirm the rejection of claims 8 and 13. Because these claims
depend from claim 1, we designate our affirmance as comprising a new
ground of rejection under 37 CPR§ 41.50(b).
Rejection 4. Claims 14 and 15 are directed to embodiments of a
particulate filter that comprise a UV source to activate the photocatalytic
action. The Examiner rejected claims 14 and 15 as unpatentable over the
combination of Sakata and Snyder. Final Act. 7. In particular, the Examiner
found that Snyder describes an air purifier in which a UV light source and
radiates the manganese dioxide photo catalyst to cause breakdown of voes
in the air. Id.
Appellant argues that this rejection should be reversed because Sakata
teaches that manganese dioxide is included to remove sulfurous acid gases.
Br. 21-23 (quoting Sakata col. 5, 11. 54--59; col. 7, line 24--col. 8, line 34).
This argument is not persuasive. Snyder describes the use of photo
activated manganese dioxide to remove VOCs. Because Sakata already
includes manganese dioxide in its filter media, the Examiner correctly
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concluded that it would have been obvious to a person having ordinary skill
in the art to include a UV light source so that the manganese dioxide could
serve two roles. Answer 7-8.
Because these claims depend from claim 1, we designate our
affirmance as comprising a new ground of rejection under 37 C.F.R.
§ 41.50(b).
Rejection 5. The Examiner rejected claims 1-5, 7, 15, 16, 18-21, and
24--29 as unpatentable over the combination of Dunn and Fujihara. Final
Act. 7-11. In making this rejection, the Examiner found that Dunn describes
a particulate filter that includes a HEP A filter that includes a
polyethylene/polypropylene fiber. Id. at 7-8. In the rejection, the Examiner
proposes replacing Dunn's HEPA filter with a HEPA filter made of silicon
dioxide as described in Fujihara. Id.
Appellant argues for the reversal of this rejection with respect to six
different groups of claims. Br. 23-28. We address each group of claims
separately.
Claim 1. Appellant argues that the rejection of claim 1 is improper
because the Examiner has not provided any explanation as to why a person
of ordinary skill in the art would have replaced one filter media with a
second filter media. Br. 23-25. In particular, Appellant points out that
Dunn describes the use of a filter comprising mineral fibers as an order
reducing medium. Id. at 24--25. Appellant argues that "[t]he Examiner has
not reasonably established that one of ordinary skill reading this disclosure
would have sought to change one media (designated as 200 for removing
particles) with another media (designated as 400 for odor reduction) for any
purpose and with a reasonable expectation of success." Id. at 25.
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Appellant's argument is not persuasive. In this rejection, the
Examiner is merely suggesting the replacement of a HEP A filter made of
one type of material with HEP A filter made of a second material. See Final
Act. 8. As the Supreme Court has explained, "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Furthermore, an "[e]xpress suggestion to substitute
one equivalent for another need not be present [in the prior art] to render
such substitution obvious." In re Fout, 675 F.2d 297, 301 (CCPA 1982).
Thus, we affirm the rejection of claim 1 as unpatentable over the
combination of Dunn and Fujihara.
Claims 2-5, 18, 21, 24, 25, and 29. Appellant's arguments for
reversal of the rejections of claims 2-5, 18, 21, 24, 25, and 29 are
substantively identical to the arguments already presented with respect to
independent claim 1. See Br. 25-26. We, therefore, also affirm the
rejections of these claims as unpatentable over the combination of Dunn and
Fujihara.
Claims 7 and 15. Appellant contends that the rejection of these
claims should be reversed:
The Examiner argues that Dunn teaches a second filter
media having a photocatalytic action positioned after the
prefiltering position as required in Claim 7. Page 8 of the Final
Rejection relying on paragraphs [0056] and [0119]-[0120].
However, the teachings in Dunn to include an odor
reducing medium ( 400) and a uv lamp disclosed in these
paragraphs (see also FIG. 8) are positioned after the organic
material as the filter media that includes polyethylene/propyl-
ene fiber. Thus, Dunn, considered by itself or combined with
Fugihara, does not teach all of the limitations of Claim 7, by
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virtue of its dependence on Claim 1 and in tum the dependence
on Claim 15 on Claim 7.
Br. 26-27.
Appellant's argument is not persuasive. Indeed, it fails to take into
account the Examiner's finding that it would have been obvious to replace
the polyethylene/polypropylene HEP A filter described in Dunn with a
HEPA filter made from mineral fiber. Thus, we affirm the Examiner's
rejection of claims 7 and 15 as unpatentable over the combination of Dunn
and Fujihara.
Claims 16, 19, 20, and 24. Appellant argues:
While Dunn does teach the possibility of using a HEP A
filter, that HEP A filter must be considered in the context of
Dunn's teachings to use organic material as the filter media that
includes polyethylene/propylene fiber, HEP A being the
abbreviation of high-efficiency particulate air and simply
defines the minimum performance. Yet that teaching does not
preclude Dunn's teachings that lead away from using a HEPA
filter that include filter media that is "essentially mineral" as is
required in each of these claims.
Br. 27.
This argument is not persuasive. As discussed above, we agree with
the Examiner's conclusion that it would have been obvious to a person of
ordinary skill in the art to replace Dunn's organic polymer HEPA filter with
a mineral fiber HEP A filter. Furthermore, Appellant's assertion that Dunn
teaches away from using a mineral fiber-based HEP A filter is not supported
with any citations to the record. Such unsupported attorney argument is
persuasive only in the very rarest of circumstances. This is not such an
occas10n.
Claim 26. Appellant's argument for reversal of the rejection of claim
26 is premised upon the contention that the Examiner erred in concluding
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that it would of been obvious to replace Dunn's organic HEP A filter with a
mineral fiber-based HEP A filter. See Br. 27-28. As discussed above, we
disagree with this contention. Thus, we also affirm the rejection of claim 26
as unpatentable over the combination of Dunn and Fujihara.
Claims 27 and 28. Appellant's argument for reversal of the rejection
of claims 27 and 28 is premised upon the contention that the Examiner erred
in concluding that it would of been obvious to replace Dunn's organic
HEPA filter with a mineral fiber-based HEPA filter. See Br. 28. As
discussed above, we disagree with this contention. Thus, we also affirm the
rejections of claims 27 and 28 as unpatentable over the combination of Dunn
and Fujihara.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claim 26 as
indefinite. We, however, affirm the rejections of claims 1-8, 13-16, 18-21,
and 24--29 as unpatentable over Sakata, either alone or in combination either
with Aikawa or with Snyder. As explained above, we designate our
affirmance of these rejections as setting forth new grounds of rejection. We
also affirm the rejections of claims 1-5, 7, 15, 16, 18-21, and 24--29 as
unpatentable over the combination of Dunn and Fujihara.
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
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options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . ..
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record.
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; NEW GROUNDS OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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