Carbon Technology Holdings, LLC

Patent Trials and Appeals Board

Mar 2, 2021

2019006991 (P.T.A.B. Mar. 2, 2021)

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.
14/922,829 10/26/2015 Daniel J. Despen 126267-8029.US01 8846
113677 7590 03/02/2021
Perkins Coie LLP - CHI General
PO Box 1247
Seattle, WA 98111-1247
EXAMINER
HENDRICKSON, STUART L
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte DANIEL J. DESPEN and
JAMES A. MENNELL
_______________
Appeal 2019-006991
Application 14/922,829
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–8, 13–15, 24, 25, 28–32, 34, and 36–
43 of Application 14/922,829, which constitute all the claims pending in this

1 In our Decision, we refer to the Specification filed Oct. 26, 2015 (“Spec.”)
of Application 14/922,829 (“the ’829 Application”); the Non-Final Office
Action dated Mar. 8, 2018 (“Non-Final Act.”); the Appeal Brief filed Feb. 6,
2019 (“Appeal Br.”); Corrected Appeal Briefs filed Mar. 19, 2019 and Apr.
23, 2019 (“Corrected Appeal Br.”); the Examiner’s Answer dated July 31,
2019 (“Ans.”); and the Reply Brief filed Sept. 27, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Carbon Technology Holdings, LLC as the real party in interest.
Appeal Br. 2.
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application. Because at least one of the claims on appeal has been rejected
at least twice, we have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM IN PART.
BACKGROUND
The ’829 Application relates to halogenated biogenic activated carbon
compositions. Spec. ¶ 2. The ’829 Application describes activated carbon
as useful for controlling mercury emissions. Id. ¶ 5. The ’829 Application
teaches that known processes to produce activated carbon generally require
large energy inputs and suffer from low yields. Id. ¶ 3. According to the
Specification, the described activated carbon composition is more efficiently
activated for controlling mercury and other emissions in an economical way.
Id. ¶¶ 5, 39, 102.
Claims 1, 28, and 41 are representative of the ’829 Application’s
claims and are reproduced below from the Appeal Brief’s Claims Appendix.
1. A halogenated activated carbon composition, said
composition comprising, on a dry basis, at least 85 wt% carbon;
a halogenated compound; and a copper halide or Dead Sea salt,
wherein the halogenated compound and/or the salt are present
in a total amount of about 0.1 wt% to about 15 wt%.
Appeal Br. 57 (Claims App.).
28. A biogenic activated carbon composition comprising, on
a dry basis:
80 wt% or more total carbon;
10 wt% or less hydrogen; and
a first salt comprising a halogenated compound selected
from the group consisting of copper bromide, copper chloride,
and combinations thereof; and
a second salt,
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wherein said halogenated compound and said second salt
are present in a total amount of about 0.2 wt% to about 20 wt%,
and wherein the second salt is optionally halogenated.
Appeal Br. 59 (Claims App.).
41. An activated carbon product comprising biogenic
activated carbon and Dead Sea salt.
Appeal Br. 60 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Sinha US 4,158,643 June 19, 1979
Toomey et al.
(“Toomey”)
US 4,248,839 Feb. 3, 1981
Curnutt US 5,132,259 July 21, 1992
Stencel et al.
(“Stencel”)
US 5,248,413 Sept. 28, 1993
McNamara US 5,336,835 Aug. 9, 1994
Maor et al.
(“Maor”)
US 8,637,055 B2 Jan. 28, 2014
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REJECTIONS
The Examiner maintains the following rejections:3, 4
1. Claims 13–15, 28–32, 34, and 36–43 under 35 U.S.C. § 112(b) as
indefinite.5 Non-Final Act. 2.
2. Claims 1–7, 13–15, 24, 25, 28–32, 34, and 36–43 under 35 U.S.C.
§ 103 as unpatentable over McNamara, as evidenced by Maor and
Toomey.6 Non-Final Act. 2.
3. Claims 1, 5, 7, 8, 28, and 29 under 35 U.S.C. § 102(a)(1) as
anticipated by Sinha. Non-Final Act. 3.
4. Claims 1, 4, 5, 7, 8, 28, 29, and 36 under 35 U.S.C. § 103 as
unpatentable over Sinha. Non-Final Act. 3.

3 Because this application claims priority to an application filed after the
March 16, 2013 effective date of the America Invents Act, we refer to the
AIA version of the statutes.
4 The Examiner’s rejection of claim 8 under 35 U.S.C. § 112(a) was
withdrawn in the Answer. Ans. 3.
5 The Examiner rejected claim 8 under 35 U.S.C. § 112(b) as indefinite “for
the [same] reasons” this claim was rejected under 35 U.S.C. § 112(a). Non-
Final Act. 2. The Examiner does not explicitly state that the indefiniteness
rejection of claim 8 is withdrawn in the Answer. Because the rejection of
claim 8 under 35 U.S.C. § 112(a) was withdrawn and claim 8 is not included
in the Answer’s statement of the § 112(b) rejection, we agree with Appellant
that the rejection of claim 8 under 35 U.S.C. § 112(b) was also withdrawn.
Ans. 3, 4; Reply Br. 4.
6 In response to Appellant’s arguments that Maor and Toomey cannot be
combined with McNamara, the Examiner clarifies in the Answer that Maor
and Toomey are relied upon for evidentiary purposes. Ans. 7 (explaining
that Maor and Toomey “are not being combined” with McNamara, but are
“cited to show facts.”).
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5. Claim 41 under 35 U.S.C. § 103 as 35 U.S.C. § 102(a)(1) as
anticipated by Curnutt, as evidenced by Maor.7 Non-Final Act. 4.
6. Claims 1, 4–8, 13–15, 24, 25, 28–31, 34, and 36–43 under 35
U.S.C. § 103 as unpatentable over Curnutt, as evidenced by Maor,
Toomey, and Stencel.8 Non-Final Act. 4.
DISCUSSION
Ground 1: Rejection of claims 13–15, 28–32, 34, and 36–43 as
indefinite
The Examiner concludes that claims 13–15 are indefinite because
these claims depend upon a claim that has been canceled. Non-Final Act. 2.
The evidence is sufficient to establish a prima facie case of indefiniteness.
See Corrected Appeal Br. 7 (Claims App.) (filed Mar. 19, 2019), Corrected
Appeal Br. 6 (Claims App.) (filed Apr. 23, 2019). We sustain the rejection
of claims 13–15 as indefinite.
The Examiner determines that claims 30–32 are indefinite because it
is unclear how a halogenated compound, which is also a salt, can possess a
concentration “less than 100% of itself.” Non-Final Act. 2. Appellant does

7 In Ground 5, the Examiner relies on Maor for evidentiary purposes only.
Id. at 9, 10. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Rejection
for anticipation or lack of novelty requires, as the first step in the inquiry,
that all the elements of the claimed invention be described in a single
reference.”). But cf. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d
1316, 1328 (Fed. Cir. 2001) (“[R]ecourse to extrinsic evidence is proper to
determine whether a feature, while not explicitly discussed, is necessarily
present in a reference.”).
8 In Ground 6, the Examiner explains in the Answer that Maor, Toomey, and
Stencel are relied upon as evidence only. Ans. 9, 10.
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not contest the Examiner’s position or clarify the meaning of the recitations
found in claims 30–32. See generally Appeal Br. 12–14; Reply Br. 4. We
sustain the rejection of claims 30–32 as indefinite.
Discerning the proper scope of claims 13–15 and 30–32 would require
undue and improper speculation. Without reaching the merits, we
summarily reverse the rejections of claims 13–15 and 30–32 under 35
U.S.C. § 103 over McNamara, as evidenced by Maor and Toomey (Ground
2), and of claims 13–15, 30, and 31 over Curnutt, as evidenced by Maor,
Toomey, and Stencel (Ground 6). See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should
be based on such speculations and assumptions.”).
The Examiner determines that claims 28 and 41 are indefinite. The
Examiner concludes that is unclear how the claimed “activated carbon” is
“biogenic” because any elemental carbon obtained from the earth, such as
coal, originated from living “plants and/or dinosaurs.” Non-Final Act. 2.
According to the Examiner, “no difference is imparted by the term
[‘biogenic’].” Id. at 3.
The Examiner improperly rejects a claim as failing to meet the
statutory requirements of 35 U.S.C. § 112(b) when Appellant has provided a
satisfactory response in “the form of . . . a separate definition of the unclear
language, or, in an appropriate case, a persuasive explanation for the record
of why the language at issue is not actually unclear.” In re Packard, 751
F.3d 1307, 1311 (Fed. Cir. 2014).
We are persuaded by Appellant’s arguments that the Specification’s
definition of “biogenic” reasonably apprises the skilled artisan of the scope
of the invention. Appeal Br. 12. Appellant’s relied-upon passage
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adequately describes to one of skill in the art that the limitations directed to
biogenic activated carbon do not encompass all elemental carbon that
originates from the earth. See Spec. ¶ 49. Rather, claims 28 and 41 are
limited to elemental carbon, which “is renewable on time scales of months,
years, or decades.” Id.; see also id. ¶ 93. Contrary to the Examiner’s
position, the claimed “biogenic activated carbon” does not encompass coal
because coal is not renewable within these time scales. See Non-Final Act.
2; see also Spec. ¶ 49 (describing that “[n]on-biogenic materials may be . . .
renewable on time scales of centuries, thousands of years, millions of years,
or even longer geologic time scales.”). Appellant, therefore, shows that the
Examiner reversibly errs in concluding that claims 28 and 41 are unclear as
to the meaning of the term “biogenic.”
We do not sustain the rejection of claims 28, 29, 34, and 36–43 as
indefinite. See 37 C.F.R. § 41.37(c)(1)(iv).
Ground 2: Rejection of claims 1–7, 13–15, 24, 25, 28–32, 34, and 36–
43 as obvious over McNamara, as evidenced by Maor and Toomey
The Examiner rejects claims 1–7, 13–15, 24, 25, 28–32, 34, and 36–
43 over McNamara, with evidence from Maor and Toomey. See Non-Final
Act. 3–4.
Because we consider the evidence insufficient to establish a prima
facie case of obviousness with regard to recitations found in each of
independent claims 1, 28, and 41, we need only address claims 1, 28, and 41.
Claims 1 and 28
With respect to claims 1 and 28, the Examiner finds, inter alia,
McNamara teaches an activated carbon having less than 10% metal halide
dopants. Id. at 3. The Examiner reasons that the remaining composition
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consists of at least 90% carbon. Id. at 3; see also id. at 4 (concluding that
“[w]hen pure carbon is added to 10% of a salt, it is self-evident that the
resultant composition is 90% carbon.”) (Emphasis added).
Appellant argues that McNamara fails to teach or suggest each and
every element of independent claims 1 and 28, including a composition
comprising at least 85 and 80 weight percent carbon, respectively, on a dry
basis. Appeal Br. 20, 28. Appellant contends that the disputed carbon
concentrations are not inherently disclosed in McNamara’s coal based
compositions. Id. at 20, 26, 28; Reply Br. 5. In addition, McNamara does
not specify any weight percent of carbon present in any of the disclosed
compositions, according to Appellant. Appeal Br. 21. Appellant argues that
McNamara’s coal based compositions include ash impurities, which are not
removed and “will necessarily . . . decrease the weight percent of carbon.”
Id. at 22 (citing McNamara 4:32–41; 12:24–30; 12:61–63; Tables I–III,
VIII). Appellant argues that “[i]mpurities, such as ash [and sulfur] . . . are
necessarily present in carbon obtained from coal . . . , unless otherwise
removed.” Appeal Br. 48 (citing Stencel 1:20–29, 2:56–60, 6:21–25, 7:34–
38).
The Examiner does not demonstrate prima facie obviousness by a
preponderance of the evidence. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[P]atentability is determined on the totality of the record,
by a preponderance of evidence with due consideration to persuasiveness of
argument”). The Examiner errs in at least one important factual finding—
McNamara does not teach a composition comprising pure carbon with metal
halide dopants (compare Non-Final Act. 4; Ans. 7–8 with McNamara 4:32–
41; Tables I–III, VIII (disclosing use of coal based activated carbon in which
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ash constituents are present)). Such a factual error demonstrates a lack of
“rational underpinning” to support obviousness. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”).
We find no support in McNamara for any teaching of the claimed
carbon weight percentage amounts. Rather, our review of McNamara (along
with Stencel) shows that the coal feedstock used in the known activated
carbon composition is not a source of pure carbon. McNamara 12:26–30,
12:60–63, Table VIII; Stencel 6:20–26, 7:34–38. McNamara’s use of coal
based activated carbon suggests nothing in terms of carbon purity.
According to the Examiner, “there would be no reason to believe that
other extraneous materials would be present.” Ans. 7–8. The Examiner
contends that Appellant “has not established that there is so much”
extraneous impurities in the coal based activated carbon “that it would
reduce the carbon below the claimed levels.” Id. at 8. However, the
Examiner’s arguments improperly shift the burden of factually supporting
the obviousness rejection to Appellant.
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. Oetiker, 977 F.2d at 1445. A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1369 (Fed. Cir. 2006).
Here, the Examiner has not met the initial burden of presenting a
prima facie case of obviousness of claims 1 and 28, and, therefore, has not
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properly shifted the burden of coming forward with rebuttal or argument
onto Appellant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
Furthermore, claim 28 recites a “biogenic activated carbon.” Appeal
Br. 59 (Claims App.). As discussed in Ground 1, the claimed “biogenic
activated carbon” does not encompass McNamara’s coal based
compositions. See Spec. ¶ 49.
We do not sustain the rejection of claims 1 and 28 under § 103 over
McNamara, as evidenced by Maor and Toomey. We also do not sustain the
rejection of claims 2–7, 24, 25, 29, 34, and 36–40 which depend from claims
1 and 28. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 41
Claim 41 recites “[a]n activated carbon product comprising . . . Dead
Sea salt.” Appeal Br. 60 (Claims App.).
The Examiner relies upon Maor as evidence that the potassium
chloride disclosed in McNamara describes the claimed Dead Sea salt. Non-
Final Act. 3 (citing Maor Table 1); see also Ans. 7.
Appellant argues that Maor’s explicit teaching that Dead Sea salt is a
“salt mixture comprising the ingredients as described in table 1 and table 2”
establishes that Dead Sea salt comprises potassium chloride, but not that
McNamara’s disclosure of potassium chloride is a disclosure of Dead Sea
salt. Appeal Br. 25; see also Maor 3:47–48 (describing Table 1 in which
potassium chloride is listed among 7 compounds and insoluble matter as
“[m]ajor constituents of the Dead Sea salt.”). Appellant argues that
McNamara fails to teach Dead Sea salt. Appeal Br. 25.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
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Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[A] patentee may choose
to be his own lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term is clearly
stated in the patent specification or file history.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The Specification provides that Dead Sea salt is “salt that is obtained
from the Dead Sea in the Jordan Rift Valley” and that “[t]he exact
composition of the Dead Sea water varies . . . , but predominantly includes
magnesium chloride, potassium chloride, and high amounts of bromide
salts.” Spec. ¶ 63. Applying this definition, we agree with Appellant that
Maor provides insufficient evidence that McNamara’s potassium chloride
teaches or suggests the claimed Dead Sea salt. Appeal Br. 25.
Furthermore, claim 41 recites “[a]n activated carbon product
comprising biogenic activated carbon.” Id. at 60 (Claims App.). As set
forth supra in Ground 1, the claimed “biogenic activated carbon” does not
encompass McNamara’s coal based compositions. See Spec. ¶ 49.
We do not sustain the rejection of claim 41 under § 103 over
McNamara, as evidenced by Maor and Toomey. We also do not sustain the
rejection of claims 42 and 43 which depend from claim 41. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Ground 3: Rejection of claims 1, 5, 7, 8, 28, and 29 as anticipated by
Sinha
The Examiner rejects claims 1, 5, 7, 8, 28, and 29 as anticipated by
Sinha. See Non-Final Act. 3.
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Because we consider the evidence insufficient to establish a prima
facie case of anticipation with regard to recitations found in each of
independent claims 1 and 28, we need only address claims 1 and 28.
The Examiner finds “Sinha teaches, especially in col. 6–7, copper
halide and PdCl[2], with 89.2% carbon (based upon the amounts reported).”
Id. at 3. The Examiner reasons that because Sinha discloses numerous
compositions “having 0.8% of a metal, 10% CuCl[2]” with “no other
components recited, the carbon support must be the remainder.” Ans. 8
(citing Sinha Table 1) (emphasis added).
Appellant argues that Sinha fails to teach each and every element of
independent claims 1 and 28, including a composition comprising at least 85
and 80 weight percent carbon, respectively, on a dry basis. Appeal Br. 33,
37. Appellant contends that the disputed carbon concentrations are not
inherently disclosed in Sinha’s coal. Id. at 33, 37. In addition, Sinha’s
activated carbon is obtained from coal, which includes ash impurities,
according to Appellant. Id. at 34. In the absence of any evidence that
Sinha’s ash impurities are removed, Appellant contends that the presence of
ash shows error in the Examiner’s assumption that the activated carbon’s
coal based portion is purely carbon. Id. (citing McNamara 12:24–30; 12:61–
63; Table VIII).
The Examiner fails to establish inherency, which requires more than
an assumption that pure carbon can be calculated from a coal-based
activated carbon having 0.8% metal and 10% CuCl2. Ans. 8. Inherency
requires that the claimed carbon weight percent amount must necessarily be
present in Sinha. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). To
establish inherency, “the examiner must provide a basis in fact and/or
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technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
Here, the Examiner’s argument that “the carbon support must be the
remainder” because no other support components are disclosed is
speculative and unsupported by evidence. Ans. 8 (emphasis added). The
fact that Sinha describes “no other components” does not indicate that the
activated carbon’s coal-based portion is purely carbon. Id. at 8; see also
Appeal Br. 34.
Furthermore, claim 28 recites a “biogenic activated carbon.” Appeal
Br. 59 (Claims App.). As set forth supra in Ground 1, the claimed “biogenic
activated carbon” does not encompass Sinha’s coal based compositions. See
Spec. ¶ 49.
We do not sustain the Examiner’s rejection of claims 1 and 28 as
anticipated by Sinha. Claims 5, 7, 8, and 29 fall with claims 1 and 28. See
37 C.F.R. § 41.37(c)(1)(iv).
Ground 4: Rejection of claims 1, 4, 5, 7, 8, 28, 29, and 36 as obvious
over Sinha
The Examiner rejects claims 1, 4, 5, 7, 8, 28, 29, and 36 as obvious
over Sinha. See Non-Final Act. 3.
Because we consider the evidence insufficient to establish a prima
facie case of obviousness with regard to recitations found in each of
independent claims 1 and 28, we need only address claims 1 and 28.
Appellant contends that claims 1 and 28 are nonobvious because the
Examiner “points to discrete elements of the present claims as allegedly
being present in” Sinha, “but no motivation to combine those elements is
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provided, no evidence is provided that such modification would be routine,
and no assertion of a reasonable expectation of success of arriving at the
presently claimed invention [is] made.” Appeal Br. 39.
The Examiner responds that “Sinha teaches . . . that the amount of
metals can be adjusted as desired.” Ans. 9 (citing Sinha 3:12–17).
According to the Examiner, “optimizing the amount of carbon” can be
accomplished “by adjusting the amount of non-carbon dopants.” Ans. 9.
However, the Examiner merely proposes modifications that could be
made—but not that one of ordinary skill in the art would have made such
modifications to arrive at the claimed invention. See Personal Web Techs.,
LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017). “[O]bviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015).
We do not sustain the rejection of claims 1 and 28 under 35 U.S.C.
§ 103 over Sinha. We also do not sustain the rejection of claims 4, 5, 7, 8,
29, and 36, which depend from either claim 1 or claim 28. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Ground 5: Rejection of claim 41 as anticipated by Curnutt, as
evidenced by Maor
Claim 41 recites “[a]n activated carbon product comprising . . . Dead
Sea salt.” Appeal Br. 60 (Claims App.).
The Examiner relies upon Curnutt as evidence that the potassium
chloride disclosed in Curnutt describes the claimed Dead Sea salt. Non-
Final Act. 4 (citing Maor Table 1); see also Ans. 7.
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For the reasons set forth above supra in Ground 2 regarding claim 41,
Appellant persuasively argues that Maor provides insufficient evidence that
Curnutt’s potassium chloride teaches or suggests the claimed Dead Sea salt.
See Appeal Br. 25.
Furthermore, claim 41 recites “[a]n activated carbon product
comprising biogenic activated carbon.” Id. at 60 (Claims App.). As set
forth supra in Ground 1, the claimed “biogenic activated carbon” does not
encompass Curnutt’s lignite based compositions. See Spec. ¶ 49; Curnutt
6:64–65.
We do not sustain the rejection of claim 41 under § 103 over Curnutt,
as evidenced by Maor.
Ground 6: Rejection of claims 1, 4–8, 13–15, 24, 25, 28–31, 34, and
36–43 as obvious over Curnutt, as evidenced by Maor, Toomey, and
Stencel
The Examiner rejects claims 1, 4–8, 13–15, 24, 25, 28–31, 34, and
36–43 over Curnutt, as evidenced by Maor, Toomey, and Stencel. See Non-
Final Act. 3–4.
Because we consider the evidence insufficient to establish a prima
facie case of obviousness with regard to recitations found in each of
independent claims 1, 28, and 41, we need only address claims 1, 28, and 41.
Claims 1 and 28
The Examiner finds Curnutt discloses each component of the claimed
composition, but “teaches too much salt.” Id. at 4. The Examiner finds
Curnutt teaches that “using less salt (and thus raising the carbon level to the
claimed amount) is an obvious expedient to avid [sic, avoid] the problems of
halogens discussed in col. 1–2” of Curnutt. Id.; see also Ans. 10 (finding
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that Curnutt “teaches in col. 1 line 57 et seq. that halogens are to be
avoided.”).
We have reviewed Curnutt’s cited disclosures. In our view, Appellant
persuasively argues that the relied-upon passages “fail to disclose any
‘problems of halogens.’” Appeal Br. 50. We find that the rejection lacks the
necessary “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Kahn, 441 F.3d at 988. The
Examiner’s conclusion that it would have been obvious to raise Curnutt’s
carbon level to the claimed amount to avoid the problems of halogens lacks
sufficient explanation and support in the record. See Non-Final Act. 4;
Ans. 10.
We do not sustain the rejection of claims 1 and 28 under § 103 over
Curnutt, as evidenced by Maor, Toomey, and Stencel. We also do not
sustain the rejection of claims 4–8, 24, 25, 29, 34, and 36–40 which depend
from claim 1 or claim 28. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 41
As set forth supra in Ground 5, the claimed “biogenic activated
carbon” does not encompass Curnutt’s lignite based compositions. See
Spec. ¶ 49; Curnutt 6:64–65.
We do not sustain the rejection of claim 41 under § 103 over Curnutt,
as evidenced by Maor, Toomey, and Stencel. Claims 42 and 43 fall with
claim 41. See 37 C.F.R. § 41.37(c)(1)(iv).
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
13–15,
28–32, 34,
36–43
112(b) Indefiniteness 13–15, 30–32 28, 29, 34,
36–43
1–7, 13–
15, 24, 25,
28–32, 34,
36–43
103 McNamara, Maor,
Toomey
1–7, 13–15,
24, 25, 28–
32, 34, 36–
43
1, 5, 7, 8,
28, 29
102(a)(1) Sinha 1, 5, 7, 8,
28, 29
1, 4, 5, 7,
8, 28, 29,
36
103 Sinha 1, 4, 5, 7, 8,
28, 29, 36
41 102(a)(1) Curnutt, Maor 41
1, 4–8,
13–15, 24,
25, 28–31,
34, 36–43
103 Curnutt, Maor,
Toomey, Stencel
1, 4–8, 13–
15, 24, 25,
28–31, 34,
36–43
Overall
Outcome
13–15, 30–32 1–8, 24, 25,
28, 29, 34,
36–43
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)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART