KING SAUD UNIVERSITY

Patent Trials and Appeals Board

Aug 31, 2020

15343166 - (D) (P.T.A.B. Aug. 31, 2020)

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.
15/343,166 11/03/2016 REFAT AHMED IBRAHIM EL-SHEIKHY 32809.03 9937
37833 7590 08/31/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
DANDRIDGE, CHRISTOPHER R.
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
08/31/2020 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):
litman@4patent.com
mbashah@nathlaw.com
uspto_nva@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REFAT AHMED IBRAHIM EL-SHEIKHY and
MOSLEH ALI AL-SHAMRANI
Appeal 2020-001382
Application 15/343,166
Technology Center 3700
Before DANIEL S. SONG, CARL M. DEFRANCO, and
BRANDON J. WARNER, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision to reject claims 1, 2, 4–8, 11, and 12.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies King Saud University as the real party in
interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method of extinguishing or retarding fire
using nano-clay.2 Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of extinguishing or retarding fire, comprising:
obtaining a quantity of powdered montmorillonite-based
nano-clay, the montmorillonite-based nano-clay including
nanoparticles having a particle size of about 1 nm to about 50
nm;
storing the powdered montmorillonite-based nano-clay in
a container; and
dispensing the powdered montmorillonite-based nano-
clay from the container onto said fire for retarding or
extinguishing the fire.
Appeal Br. 12, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kaminstein US 3,976,580 Aug. 24, 1976
Mulukutla US 7,661,483 B2 Feb. 16, 2010
OPINION
The Examiner rejects claims 1, 2, 4–8, 11, and 12 as being
unpatentable over Mulukutla in view of Kaminstein. Final Act. 2–5. As to
independent claim 1, the Examiner finds that Mulukutla discloses the
method of extinguishing or retarding fire using nano-particles of about 1–50
nm in size, substantially as claimed, but fails to disclose that the nano-
particles are a powdered montmorillonite-based clay. Final Act. 2. The

2 Throughout the record, “nano-clay” is also referred to as “nanoclay.”
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Examiner relies on Kaminstein for disclosing “a method of retarding a fire
using particles wherein the particles used are a powdered montmorillonite-
based clay.” Final Act. 2 (citing Kaminstein, col. 3, ll. 26–28; col. 2, ll. 36–
39). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have modified Mulukutla in view of Kaminstein to
use “a powdered montmorillonite-based clay as a substitute for the
retardants disclosed by Mulukutla, in order to provide for a component that
is effective in retarding flame growth.” Final Act. 2–3.
The Appellant argues all of the claims as a group, only submitting
arguments for independent 1, and stating that claims 2, 4–8, 11, and 12 stand
or fall with claim 1. Appeal Br. 7. The Appellant argues that the rejection is
flawed because it is “based on the belief that nanocrystalline particles of clay
are the claimed ‘nanoclays.’ . . . Conventional clay is NOT ‘nanoclay’ even
if the former’s particle size is of a nanoscale.” Appeal Br. 9. The Appellant
argues that the prior art relied upon in the rejection does not disclose a
“nanoclay,” and that “[t]he Examiner’s refusal to accept the industry’s
nomenclature and definition is the issue in the instant Appeal.” See Appeal
Br. 9; Reply Br. 5 (emphasis added).
In particular, the Appellant asserts the term “nanoclay” is “a
recognized term of art with recognized meaning and morphology” shown in
Figures 1A–1D. Appeal Br. 8. The Appellant asserts that the evidence of
record, also submitted in the Evidence Appendix, establishes “the difference
between conventional powdered clay soils (bentonite or montmorillonite)
and bentonite- or- montmorillonite-based nanoclays,” and that “the
properties of ‘nanoclays’ are different than the properties of micro-sized
clay.” Appeal Br. 9; see also Reply Br. 6. According to the Appellant,
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“‘[n]anoclay’ requires a complicated process to exfoliate the micro particles
to nano layers, then particles[,] and is in the nanometer range; furthermore,
the nanoclays have either a platey structure (bentonite or montmorillonite) or
nanotube structure (halloysite clay).” Appeal Br. 8–9. Based thereon, the
Appellant further argues that “[a] person of ordinary skill in the art
interpreting [c]laim 1 in light of the [S]pecification would realize that the
term ‘nanoclay’ refers to a surface modified montmorillonite; that is,
nanoclay is synthesized, while clays are naturally occurring materials.”
Appeal Br. 8 (emphasis added); see also Appeal Br. 9 (“‘[N]anoclays’ are
synthesized, while the prior art clays are merely natural, powdered clays.”).
The Examiner disagrees and determines that “nano-clay is not a term
of art, limited to synthetic nano-clay. Nano-clay is also naturally occurring.”
Ans. 4. The Examiner explains that “[t]o interpret the claims as putting forth
nano-clay from only synthetic sources, would be an unreasonably narrow
interpretation, in light of the [S]pecification,” which “puts forth a method
that may include not only synthesized nano-clay, but also natural nano-
clay.” Ans. 4 (citing Spec. ¶ 11), and 5 (“Synthetic sourcing is not to be
read into claim language.”). The Examiner further explains that, because the
Appellant’s Specification also encompasses naturally occurring nano-clays,
and does not disclose “what synthetic process is [] performed,” and the
Appellant does not specifically claim only synthetic nano-clays, the broader
interpretation of claim 1 is reasonable. Ans. 4.
Regardless of whether the term nano-clay is “a term of art,” the
Examiner has the better position as to what nano-clay, as recited in claim 1,
encompasses. In particular, although the Appellant relies on its submitted
evidence, this evidence appears to support the Examiner’s interpretation, or
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at best, is ambiguous. Specifically, Nano Minerals: Nanoclays (Appeal Br.,
Evidence App., Exhibit A, hereinafter “Nano Minerals”) discloses that
“nanoclays are organized into several classes such as montmorillonite,
bentonite, kaolinite, hectorite, and halloysite.” It then discloses that “[p]late-
like montmorillonite is the most common nanoclay used in materials
applications.” See Nano Minerals. Another submitted evidence Nanocor,
Nanoclay Structures (Appeal Br., Evidence App., Exhibit B, hereinafter
“Nanocor”) discloses that “[t]he essential nanoclay raw material is
montmorillonite. . . . Naturally occurring montmorillonite is hydrophilic.
Since polymers are generally organophilic, unmodified nanoclay disperses in
polymers with great difficulty.” Nanocor.
Thus, Nano Minerals discloses that montmorillonite is a “nanoclay” in
that montmorillonite is disclosed as being a “class” of nanoclays. Nano
Minerals. This evidence also discloses that montmorillonite has a plate-like
structure. Id. The Nanocor evidence discloses that montmorillonite is
naturally occurring. In addition, the Appellant’s own Specification states
that “[t]he nano-clay can be obtained from natural or synthetic sources.”
Spec. ¶ 11.
The Appellant’s argument based on nanoclays having “either a platey
structure (bentonite or montmorillonite) or nanotube structure (halloysite
clay)” is unpersuasive considering that Nano Minerals discloses that
montmorillonite is a nanoclay having a plate-like structure, such that this
structure fails to distinguish the naturally occurring montmorillonite from
allegedly claimed “surface modified montmorillonite; that is, nanoclay [that]
is synthesized.” Appeal Br. 8–9. In essence, the Appellant unpersuasively
argues that “nanoclay” recited in claim 1 should be narrowly interpreted to
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mean “synthesized” nanoclay or “surface modified” nanoclay, which has
undergone a “complicated process,” without claiming such synthesis,
modification, or complicated processing. Accordingly, the Examiner’s
interpretation of “nanoclay” recited in claim 1 to encompass naturally
occurring nanoclays, instead of being limited to synthetic nanoclays, is
supported by substantial evidence, and is reasonable.
The Appellant responds that “the term ‘nanoclay’ describes a
specialized form of clay whether it’s in its natural or synthetic embodiment.”
Reply Br. 6. Notwithstanding that this appears to be a new argument, it is
unpersuasive for the reasons already discussed in that the evidence of record
indicates that nanoclay is naturally occurring, and the claim does not recite
any limitations as to the “specialized form of clay” that would distinguish
the claimed nanoclay from that occurring naturally.
The Appellant further argues that “[t]he flaw in the Examiner’s
rejection is based on the assumption that Kaminstein’s montmorillonite clay
that, in powder form, has a particle size of about 20-50 microns, is the
claimed ‘nanoclay’. . . . Natural montmorillonite clay used by Kaminstein is
in micro size and, therefore, is not the claimed ‘nanoclay.’” Appeal Br. 9.
In addition, according to the Appellant, Kaminstein discloses particles that
are “neither nano-sized nor composed of platelets; that is, a ‘particle’ is not a
‘platelet’ that is a requirement to be considered a ‘nanoclay.’” Reply Br. 6
(citing Kaminstein, col. 2, ll. 46–47). Thus, according to the Appellant, the
combination of Mulukutla and Kaminstein “still lacks the use of
‘nanoclay.’” Appeal Br. 9; see also Reply Br. 7.
However, these arguments are unpersuasive because, not only is
platelet not recited in claim 1, but the evidence indicates that
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montmorillonite has a plate-like structure. See generally Nano Minerals. In
addition, in contrast to the Appellant’s assertion, Kaminstein does not
disclose particles of 20–50 microns, which sets the minimum size at 20
microns, but instead, discloses “an average particle size less than about 20
microns,” such that 20 microns is the maximum size. Kaminstein, col. 2, ll.
47–48. Furthermore, the rejection is not based on Kaminstein alone, but
instead, also relies on Mulukutla for its disclosure of nano-particles sized in
the range claimed for retarding or extinguishing fire. Final Act. 2 (citing
Mulukutla, col. 3, ll. 60–63 (disclosing nanocrystalline particles between
about 1–20 nm)); see also Mulukutla, Abstract; and Ans. 4–5.
Thus, the Examiner’s position that the “combination suggests a
powdered montmorillonite-based clay with nano-sized particles used as fire
retardant” (Ans. 5), is sufficiently supported by the evidence to establish a
prima facie case of obviousness. Although the Appellant argues that “[t]he
Examiner’s contention that nano-sized particles make the clay ‘nanoclay’ is
in error” (Appeal Br. 10), the evidence and arguments provided by the
Appellant is unpersuasive for the reasons discussed above. Accordingly, we
are not persuaded that the Examiner erred in concluding that “one having
ordinary skill in the art would find motivation to combine the disclosures of
Mulukutla and Kaminstein, arriving at a montmorillonite-based clay
retardant with nano-sized particles, in order to retard flame growth.” Ans. 4.
We affirm the Examiner’s rejection of claim 1, and claims 2, 4–8, 11, and
12, fall with claim 1.

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CONCLUSION
The Examiner’s rejection of claims 1, 2, 4–8, 11, and 12 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
11, 12
103 Mulukutla,
Kaminstein
1, 2, 4–8,
11, 12

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED