Gregory W. Peterson et al.

Patent Trials and Appeals Board

Jul 16, 2019

15188484 - (D) (P.T.A.B. Jul. 16, 2019)

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.
15/188,484 06/21/2016 Gregory W. Peterson DAM 827-14 1048
24211 7590 07/16/2019
U.S. Army RDECOM (AMCLC-APG-RDT&E)
Intellectual Property Law Edgewood Division-
ATTN: John Biffoni/Vicki Upchurch
5179 Hoadly Road, Bldg E3330 Rm 242
APG, MD 21010-5424
EXAMINER
JOYNER, KEVIN
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
07/16/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY W. PETERSON, JOSEPH A. ROSSIN,
MATTHEW J. SHUE, SHAWN M. STEVENSON, AUSTIN GROTH,
DEREK MAANUM, and BRIT G. BILLINGSLEY1
____________

Appeal 2018-006194
Application 15/188,484
Technology Center 1700
____________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 The Appellant is the Applicant, U.S. Army Edgewood Chemical and
Biological Center. The United States of America, as represented by the
Secretary of the Army, is identified as the real party in interest. See App.
Br. 1.
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BACKGROUND
The subject matter on appeal relates to devices comprising a substrate
and zirconium hydroxide. E.g., Spec. ¶ 2; Claim 1. The Specification
identifies zirconium hydroxide as a compound that is useful “for
decontamination and detoxification.” Spec. ¶ 2. Claim 1 is reproduced
below from page 11 (Claims Appendix) of the Appeal Brief:
1. A device comprising:
a substrate; and
zirconium hydroxide applied to said substrate to form a layer on
said substrate.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1–4 and 15–20 under 35 U.S.C. § 102(a)(1) as anticipated
by Peterson (US 8,530,719 B1, issued Sept. 10, 2013);
2. Claims 1–6, 8, 9, 11, and 12 under 35 U.S.C. § 102(a)(1) as
anticipated by Takaoka (US 2002/0006425 A1, published Jan. 17, 2002);
3. Claim 7 under 35 U.S.C. § 103 as unpatentable over Takaoka;
4. Claim 10 under 35 U.S.C. § 103 as unpatentable over Takaoka and
Walls (US 2014/0287230 A1, published Sept. 25, 2014);
5. Claims 13 and 14 under 35 U.S.C. § 103 as unpatentable over
Takaoka and Singh (US 2015/0250910 A1, published Sept. 10, 2015);
6. Claim 21 under 35 U.S.C. § 103 as unpatentable over Peterson and
Takaoka.
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner’s Answer. See generally Final Act. 2–11;
Ans. 3–18.
Rejection 1
The Appellant argues most of the claims as a group but separately
identifies claims 2, 15, and 16.2 See App. Br. 7. We select claim 1 as
representative of the grouped claims, and we address claims 1, 2, 15, and 16
below. The remaining claims subject to Rejection 1 will stand or fall with
the independent claim from which they depend.
Using two independent, alternative rationales, the Examiner finds that
Peterson anticipates claim 1. As to the first rationale, the Examiner finds
that Peterson’s disclosure of applying zirconium hydroxide to a substrate,
such as carpet, results in a device comprising a substrate and zirconium
hydroxide applied to the substrate to form a layer on the substrate, as
required by claim 1. Final Act. 3; Ans. 11–12. As to the second rationale,
the Examiner finds that using a wash mitt, brush, or cloth applicator to rub
zirconium hydroxide powder across a surface, as disclosed by Peterson,
“will necessarily” result in zirconium hydroxide powder “stick[ing] and
remain[ing] on said mitt, brush or cloth much like when a person wipes a

2 The Appellant also purports to argue claim 5. App. Br. 7. Claim 5,
however, is not subject to Rejection 1. See Ans. 3, 13.
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dusty desk with a cloth and a portion of said dust sticks to said cloth.”
Ans. 12. The Examiner finds that the mitt, brush, or cloth coated with
zirconium hydroxide powder falls within the scope of claim 1. Id. Although
the Examiner does not specifically rely on them, Peterson also discloses
embodiments in which “[t]he sorbent can . . . be incorporated into coatings,
paints, fabrics, suits, and garments.” Peterson at 4:48–49.
In the Appeal Brief, the Appellant repeatedly argues that Peterson
does not disclose, e.g., “a self-contained decontamination wipe.” App.
Br. 5–6 (emphasis added).
That argument is not persuasive because, as the Examiner explains in
the Answer, Ans. 11, claim 1 is not limited to a “wipe.” See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellants’
nonobviousness argument as based on limitation not recited in claim); In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s arguments
fail from the outset because, as the solicitor has pointed out, they are not
based on limitations appearing in the claims.”). The claim recites a “device”
that has two structural components: “a substrate” and a layer of zirconium
hydroxide thereon. The Specification repeatedly refers to a “device” and
expressly identifies a “wipe” as “an exemplary embodiment.” Spec. ¶ 35.
We conclude that claim 1 is not limited to wipes.
In the Reply Brief, the Appellant acknowledges that claim 1 recites a
“device” rather than a “wipe,” but the Appellant does not persuasively
explain why the structure of either of the Examiner’s rationales falls beyond
the scope of the term “device,” particularly under the claim interpretation
standard that is applicable to this proceeding (i.e., broadest reasonable
interpretation consistent with the specification, see In re ICON Health &
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Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)). In the Examiner’s first
rationale, the carpet, for example, is the substrate, and zirconium hydroxide
is applied to the surface. See Peterson at 4:17–20. Peterson desires “good
contact between the droplets of at least one toxic agent (located on the
surface)” and the zirconium hydroxide. Id. at 7:60–62. Peterson states that
“[g]ood contact’ is defined herein as at least 80% surface to surface contact
between two objects with a minimal obstruction.” Id. at 7:62–64.
In the Examiner’s second rationale, the mitt, brush, or cloth is the
substrate, and at least some zirconium hydroxide powder sticks to the fibers
of, e.g., the cloth as it is used to spread the powder across a surface. Id. at
7:58–67.
On this record, we are not persuaded that either structure identified by
the Examiner falls beyond the scope of the term “device.” See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections . . . .”); see also SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as
to the existence of factual disputes do not amount to a developed
argument.”).
As to the Examiner’s second rationale involving the mitt, brush, or
cloth, the Appellant also argues that “merely rubbing the zirconium
hydroxide that has been poured onto a surface with a blank cloth will not
produce the ‘wipe’ of the present invention,” and that “[z]irconium
hydroxide powder resting on a surface will not produce a ‘layer’ on a cloth
when that surface is rubbed with that cloth.” App. Br. 6. The Appellant,
however, provides no reason to doubt the Examiner’s finding that, when any
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given powder, including zirconium hydroxide powder, is rubbed with, for
example, a fibrous cloth, at least some of the powder will necessarily stick to
the fibers of the cloth and form a layer thereon. See Ans. 12. On this record,
we are not persuaded of reversible error in the Examiner’s rejection of
claim 1 under either of the Examiner’s alternative rationales.
Claim 2 depends from claim 1 and requires that “said zirconium
hydroxide is embedded in said substrate.” The entirety of the Appellant’s
argument concerning claim 2 is as follows: “It should also be recognized
that the embodiment of Claim 2, recited as ‘. . . wherein said zirconium
hydroxide is embedded in said substrate’ is also not disclosed in Peterson.”
App. Br. 7.
That argument is not persuasive because it is a naked assertion that the
prior art does not teach the subject matter of the claim. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”). In any event, in
the Answer, the Examiner elaborates on the rejection and explains that
zirconium hydroxide powder applied to a carpet would be embedded in the
carpet and fall within the scope of the claim. See App. Br. 12–13. In the
Reply Brief, the Appellant argues only that “simply rubbing zirconium
hydroxide into a carpet will not produce the device of Claim 2.” Reply
Br. 4. That, again, is essentially a naked assertion that the prior art does not
teach the subject matter of the claim. We discern no error in the Examiner’s
finding that a powder rubbed into a carpet would be considered to be
“embedded” in the carpet. On this record, we are not persuaded of error in
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the Examiner’s reasoning as to claim 2. See Lovin, 652 F.3d at 1357; see
also SmithKline Beecham, 439 F.3d at 1320 (mere statements of
disagreement unpersuasive).
The Appellant includes a separate paragraph in the Appeal Brief
addressing claims 15 and 16 but argues only that “[h]ere again . . . Peterson
simply does not disclose the decontamination wipe . . . .” App. Br. 7.
Arguments concerning whether the prior art discloses a “wipe” are
unpersuasive for reasons set forth above. See Jung, 637 F.3d at 1365.
We affirm Rejection 1.
Rejection 2
The Appellant argues most of the claims subject to Rejection 2 as a
group but, in the Reply Brief, separately identifies claims 2 and 5. We select
claim 1 as representative of the grouped claims, and the remaining grouped
claims will stand or fall with claim 1. We address claims 1, 2, and 5 below.
The Examiner finds that Takaoka discloses a polymeric, fibrous,
woven, or nonwoven substrate with a combination of layers formed thereon.
Final Act. 5; Ans. 16. The Examiner finds that the layers may comprise a
photoreactive semiconductor layer supported on the surface of a carrier in
which zirconium hydroxide is the preferred carrier. Ans. 16. The Examiner
finds that the structure of a “surface” of zirconium hydroxide carrier layer on
top of a substrate falls within the scope of claim 1, notwithstanding that
other layers may also be present. Id.
The Appellant argues that “[z]irconium hydroxide is not disclosed as
an element of Takaoka’s invention, but only as a ‘carrier’ which may be
used in addition to [other elements].” App. Br. 8.
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That argument is not persuasive. That zirconium hydroxide is
described as a “carrier” in Takaoka does not remove the structure relied on
by the Examiner, i.e., a substrate with a “carrier” layer of zirconium
hydroxide thereon, from the scope of claim 1. “[A]pparatus claims cover
what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch
& Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (emphasis in original)).
The Appellant does not persuasively explain how the structure of Takaoka
relied on by the Examiner falls beyond the scope of claim 1.
The Appellant also discusses Takaoka’s disclosure of organic and
inorganic particles. See App. Br. 8–9. That discussion, however, does not
identify error in the Examiner’s reliance on Takaoka’s substrate and carrier
as falling within the scope of claim 1, because claim 1 does not prohibit the
inclusion of such particles.
In the Reply Brief, the Appellant argues that, because Takaoka’s
structure includes “numerous additional elements irrelevant to the claimed
invention,” Takaoka’s structure “does not anticipate Appellant’s claimed
invention.” Reply Br. 5. That argument is unpersuasive because claim 1 is a
“comprising” claim that, as noted above, does not exclude additional
elements such as those of Takaoka.
In the Reply Brief, the Appellant also mentions for the first time
claims other than claim 1; namely, claims 2 and 5. See Reply Br. 6
(identifying claims 2 and 5 which include “embedded in” and “encase”
limitations). In the Answer, the Examiner makes specific findings
concerning the limitations of claims 2 and 5. See Ans. 17. The Appellant’s
discussion of those claims in the Reply Brief does not acknowledge, address,
or otherwise attempt to show error in the Examiner’s specific findings, and
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amounts to little more than a naked assertion that the art does not disclose
the claimed subject matter. See Reply Br. 6. That discussion fails to show
error in the Examiner’s specific findings and conclusions. See Lovin, 652
F.3d at 1357; see also SmithKline Beecham, 439 F.3d at 1320; Jung, 637
F.3d at 1365.
We affirm Rejection 2.
Rejections 3–6
The claims subject to Rejections 3–6 fall with the independent claims
from which they depend because the Appellant raises no separate arguments
as to those claims.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1–21.
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