CUPRON INC.

Patent Trials and Appeals Board

Oct 20, 2020

2020000683 (P.T.A.B. Oct. 20, 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.
14/894,083 11/25/2015 Vikram KANMUKHLA CUP015.US 8853
129507 7590 10/20/2020
Pike IP Law, PLLC
P.O. Box 8592
Richmond, VA 23226
EXAMINER
YU, HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
bernard.pike@pikeiplaw.com
docket@pikeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIKRAM KANMUKHLA

Appeal 2020-000683
Application 14/894,083
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, DEBORAH KATZ, and
JOHN A. EVANS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 1, 5–7, 9–12, 14–17, and 26–34 under
35 U.S.C. § 103 as obvious and under 35 U.S.C. § 112. Pursuant to 35
U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject
the claims. 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. Appellant identifies the real party in interest as Cupron, Inc.
Appeal Br. 2.
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STATEMENT OF THE CASE
The Examiner rejected the claims in the Final Office Action as
follows:
1. Claims 1, 5–7, 9–12, 15–17, and 30–34 under 35 U.S.C. § 103(a) as
obvious in view of Fujimori et al. (US 2011/0195108 A1, published Aug.
11, 2011) (“Fujimori”). Final Act. 3.
2. Claim 14 under 35 U.S.C. § 103(a) as obvious in view of Fujimori
and Vita et al. (US 5,552,219, issued Sept. 3, 1996) (“Vita”). Final Act. 7.
3. Claims 26–29 under 35 U.S.C. § 103(a) as obvious in view of
Fujimori and Fujita et al. (US 6,093,783, issued July 25, 2000) (“Fujita”).
Final Act. 8.
4. Claims 33 and 34 under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement. Final Act. 10.
5. Claims 33 and 34 under 35 U.S.C. § 112(b) as indefinite for failing
to particularly point out and distinctly claim the subject matter which
applicant regards as the invention. Final Act. 11.
6. Claim 30 under 35 U.S.C. § 112(d) as being of improper dependent
form for failing to further limit the subject matter of the claim upon which it
depends, or for failing to include all the limitations of the claim upon which
it depends. Final Act. 12.
Independent claim is representative of the appealed claims. The claim
is reproduced below:
1. An antimicrobial fiber comprising a synthetic polymer and
crystalline cuprous iodide particles in a concentration in a range
of 1 wt.% and 15 wt.% based upon the weight of the
antimicrobial fiber and dispersed within the synthetic polymer
of the antimicrobial fiber, wherein at least 90% of the cuprous
iodide particles have a particle size in a range from about 0.50
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to about 2.0 micron as measured by scanning electron
microscope.

OBVIOUSNESS REJECTION BASED FUJIMORI
The Examiner found that Fujimori describes cuprous iodide (“CuI”)
particles dispersed in a synthetic polymer in the form of a fiber, meeting the
corresponding limitation of claim 1 of “a synthetic polymer and crystalline
cuprous iodide particles . . . dispersed within the synthetic polymer of the
antimicrobial fiber.” Final Act. 4. The Examiner also found that Fujimori
describes amounts and particle sizes of the cuprous iodide which overlap
with the recited amounts and particle sizes recited in claim 1. Id. at 4. The
Examiner determined it would have been obvious to one of ordinary skill in
the art to modify the particle size and particle distribution disclosed in
Fujimori to meet the claimed limitations because “differences in size of
particles and distribution in a composition will not support the patentability
of subject matter encompassed by the prior art unless there is evidence
indicating such particle size and distribution are critical.” Id. at 6 (emphasis
omitted). The Examiner cited In re Aller, 220 F.2d 454, 456 (CCPA 1955)
for its holding that “where the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.” Final Act. 6.

Discussion
Claim 1 requires that the crystalline cuprous iodide particles be
present “in a concentration in a range of 1 wt.% and 15 wt.% based upon the
weight of the antimicrobial fiber.” To meet this requirement of the claim, the
Examiner cited the teaching in Fujimori that the fiber can contain from 0.2
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mass % to 80 mass % of the cuprous iodide, a range which overlaps with the
claimed range. Fujimori ¶¶ 39, 41 (“copper (I)”).
Appellant contends that it is “well accepted in the art that you cannot
load fibers with 80% of the mass being particles and still be able to extrude
fibers.” Appeal Br. 6. Appellant argues that the fiber would lack sufficient
strength to remain intact with such amounts and that a lower concentration is
required. Id. Appellant states that Fujimori “does not teach a viable fiber
across its entire range.” Id.
This argument is not persuasive. First, Fujimori does not require the
particle to be incorporated into the fiber in all its embodiments. Fujimori
teaches that the particles can be present in the polymer or it can be coated on
it. Fujimori ¶ 39.
Furthermore, Fujimori teaches that the amounts of the copper iodide
particle “may be appropriately determined by a person skilled in the art” and
that “the antiviral fiber preferably contains the iodide in an amount of 80
mass% or less in order to ensure fiber strength and other physical properties
of the antiviral fiber.” Fujimori ¶ 39 (emphasis added). In other words,
Fujimori teaches that the skilled worker can routinely determine the amounts
of the particles to use in the fiber that possess suitable antiviral activity2 and
ensure the strength of the fiber. Fujimori does not require that 80% mass be
used. Rather, it expressly discloses a range as low as 0.2 % mass. Fujimori
¶¶ 39, 41. Thus, Fujimori teaches that one of ordinary skill in the art would

2 “The antiviral fiber containing the antiviral agent of the present
embodiment preferably contains the iodide, the active ingredient, or has the
iodide immobilized in an amount of 0.2 mass% or more relative to the
antiviral fiber to achieve higher antiviral activity.” Fujimori ¶ 39.
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know how to select the amounts to achieve the desired strength and antiviral
activity.
Appellant argues that that Fujimori does enable a process for
producing an antimicrobial fiber. Appeal Br. 6–7. Other than to point to the
lack of working examples, Appellant has not provided evidence that one of
ordinary skill in the art would have considered Fujimori as not enabled for
making fibers with copper iodide. Instead, Fujimori expressly discloses a
fiber structure containing copper iodide. Fujimori ¶¶ 18, 32, 38; see Final
Act 4. As held in In re Antor Media Corp., 689 F.3d 1282, 1288, “[a] prior
art printed publication cited by an examiner is presumptively enabling
barring any showing to the contrary by a patent applicant or patentee.” This
burden was not met here. Appellant makes unsupported statements in the
briefs that the fibers with particles could not be produced, but provides no
objective evidence to support these statements. Appeal Br, 6–7, 9–10. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is]
not the kind of factual evidence that is required to rebut a prima facie case of
obviousness”). Moreover, Fujimori in its background section discloses that
fibers containing antimicrobial and antiviral agents had been made in the
prior art,3 providing evidence that it was known in the art how to make
fibers comprising these agents. Fujimori also provide express guidance on

3 “For example, a fabric impregnated with an antimicrobial dye agent and
divalent copper ion is reported to have the ability to inactivate influenza
virus (Patent Document 1). Also, an antiviral fiber formed of carboxyl-
containing fiber impregnated with a copper compound is reported (Patent
Document 2). Furthermore, a cold-worked ultrafine copper fiber effective in
inactivating avian influenza virus is reported (Patent Document 3).”
Fujimori ¶ 4.
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dispersing particles in the fiber.4 In sum, in view of the explicit disclosures,
we conclude that Appellant has not provided persuasive evidence that
Fujimori does not enable and make obvious a fiber comprising “a
concentration in a range of 1 wt.% and 15 wt.% based upon the weight of the
antimicrobial fiber and dispersed within the synthetic polymer of the
antimicrobial fiber” as recited in the claim.
The claim further recites “wherein at least 90% of the cuprous iodide
particles have a particle size in a range from about 0.50 to about 2.0 micron
as measured by scanning electron microscope.” The Examiner cited the
following disclosure from Fujimori as making this range obvious:
Although the iodide or the monovalent copper compound for
use in the present embodiment may have any particle size
appropriately determined by a person skilled in the art, it is
preferably provided in the form of fine particles having an
average particle size of 500 μm or less. When the particles are
to be kneaded with a resin for spinning into fibers, they
preferably have an average particle size of l μm or less to avoid
the decrease in the fiber strength. In the present embodiment,
the particle size is preferably 1 nm or more in view of the
production, handling and chemical stability of the particles,
although the particles may have any particle size appropriately
determined by a person skilled in the art. As used herein the
term “average particle size” refers to volume average particle
size.
Fujimori ¶ 30.
Appellant explains that the claimed range of 0.5 to 2 μm refers to
“particle size” while the sizes described in Fujimori refer to the “volume

4 “[A] technique including dispersing copper (I) iodide powder in a molten
resin, and spinning the resin; a technique including dispersing copper (I)
iodide powder in a polymer solution, and spinning the polymer solution.”
Fujimori ¶ 38.
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average particle size.” Appeal Br. 7–8. Appellant argues that the size of a
particle measured by scanning electron microscopy is different from the
volume size measured in Fujimori, an argument supported by evidence cited
by Appellant. Appeal Br. 8.
Appellant states that the claimed size range of about 0.50 to about 2.0
μm as measured by scanning electron microscope corresponds to a volume
average particle size in the range of 3.4 to about 13.0 μm. Appeal Br. 4.
Appellant contends that that the data described in the report from
“Micromeritics Analytical Services” (“Report) shows this result. Id. We
therefore turn to the Report.
On page 1 of the Report, a graph is reproduced which shows a plot
described as “Incremental Volume Percent vs. Particle Diameter Graph.”
The graph shows particle diameter on the x-axis and incremental volume
percent on the y-axis. Underneath the graph, weighted statistics of the
volume distribution are shown, listing the mean as 8.065 and the volume
from 3.485 μm at 10% Finer to 12.992 μm at 90% Finer by volume. There is
no explanation or identification in the Report of the material which is being
tested that possesses the volume range of 3.485 to 12.992 μm. There is no
statement in the Report that this material has the same properties required by
the claim of “least 90% of the cuprous iodide particles have a particle size in
a range from about 0.50 to about 2.0 micron as measured by scanning
electron microscope.” In fact, the graph on its x-axis shows volumes up to
20 μm as do other pages of the Report (at 6, 7). We have reviewed the
remaining pages of the Report and find that they also do not necessarily
describe the material which is tested in the Report.
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In sum, Appellant makes the statement in the Appeal Brief that the
claimed particle size distribution has a volume of 3.4 μm to 13 μm (Appeal
Br. 4), but provides no objective evidence to establish that the material tested
in the Report possessed the same particle size and size distribution as
claimed. See Ans. 6. An argument made by counsel in a brief does not
substitute for evidence lacking in the record. Estee Lauder, Inc. v. L’Oréal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
The Examiner found the claimed range of 0.50 μm to about 2.0 μm
obvious in view of Fujimori’s overlapping range of 1 nm to 1 μm, stating it
would be routine experimentation optimize to find the optimal or workable
ranges as explained in Aller. Final Act. 6. Appellant contends that the
Examiner misapplied Aller because Aller enabled the production of the
compound by disclosing the reaction conditions to do so, but Fujimori does
not enable production of the particles and lacks working examples. Appeal
Br. 9–10.
This argument does not persuade us the Examiner erred. Fujimori
discloses that copper iodide powders are commercially available. Fujimori
¶ 43 (Table 1, Example No. 1). Appellant does not provide objective
evidence that one of ordinary skill in the art would have considered Fujimori
to not be enabled for making the disclosed range of 1 nm to about 1 μm and
other values outside this range. Appellant therefore did not meet their burden
of showing that Fujimori lacks enablement for particles that fall within the
claimed range.
With respect to the Examiner’s argument regarding Aller, it is well
established that when there is a range disclosed in the prior art, and the
claimed range overlaps or falls within that range, there is a presumption of
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obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). One of
ordinary skill in the art would have reason to optimize the prior art range “to
avoid the decrease in the fiber strength” as explained by Fujimori at ¶ 30
(reproduced above). As held in Peterson, there is a “normal desire of
scientists or artisans to improve upon what is already generally known.”
Peterson, 315 F.3d at 1329–30.
Appellant also states that Fujimori “do not know the mechanism by
which the antiviral agent inactivates viruses” and “[w]ithout knowing the
mechanism by which the many antiviral agents work, how can one enable an
invention without testing and experimentation whether the antiviral agent
still has antiviral properties when embedded in a polymer fiber?” Appeal Br.
9.
This argument does not persuade us that the Examiner erred. While
Fujimori states the mechanism of the antiviral activity “is still unclear,” the
publication provides a mechanism believed to be responsible for its activity.
Fujimori ¶ 23. Nonetheless, it is not necessary to know the mechanism of
action to determine whether a fabric comprising the particles has antiviral
activity, e.g., by suspending the fibers in solution comprising virus and then
testing for virus activity as described by Fujimori at ¶¶ 43–48.
The Examiner stated to establish patentability of the claim range,
criticality must be shown. Final Act. 6. We agree.
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims . . . in such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
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Appellant responds that the “inventors found that their claimed range
produced efficacious antimicrobial fibers with sufficient strength to be
woven into textiles.” Appeal Br. 9. Appellant also states that “[s]maller
particles cause degradation of the polymer in the fiber and larger particles
weaken the mechanical properties of the fiber.” Id. However, Appellant
provides no objective evidence of these facts. As already discussed,
“attorney argument [is] not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.” Geisler, 116 F.3d at 1470 (Fed.
Cir. 1997).
Appellant argues that the application demonstrates the efficacy of the
claimed fibers. Appeal Br. 10. Appellant asserts that it “could not be
expected that the copper iodide having these properties would have such
great efficacy compared to other antimicrobial compositions.” Id. As
evidence, Appellant cites Table 3 of the Specification which shows that 4%
crystalline cuprous iodide reduces bacterial CFU more than 3% amorphous
and 3% crystalline cuprous oxide. Spec. ¶ 102. The Specification discloses
that “unexpectedly, Crystalline Cuprous Iodide (4%) containing yarns were
even more effective than Crystalline Cuprous Oxide (3%) containing yarns.”
Spec. ¶ 103.
We have considered this data but find it is insufficient to establish
unexpected results.5 A showing of unexpected results must be made in

5 A showing of “unexpected results” can be used to demonstrate the non-
obviousness of the claimed invention. In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995) (“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected.”).
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comparison to the closest prior art. In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”); Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004) (A showing of “new and unexpected
results” must be “relative to the prior art.”). Here, Fujimori describes a fiber
comprising from 0.2%-80% by mass of cuprous iodide. Fujimori ¶¶ 39, 41.
The concentrations disclosed in Fujimori, which are outside the claimed
range of 1 wt.% and 15 wt.%, serve as the closest prior art. However,
Appellant did not compare the 3% concentration of cuprous iodide to
cuprous iodide concentrations outside this range and disclosed in Fujimori.
Therefore, the comparison in Table 3 was not made to the closest prior art
and did not demonstrate the criticality of the claimed range.
In addition, only one concentration of cuprous iodide was tested,
namely 3% wt. Appellant did not show that other amounts within the
claimed concentration range of “1 wt.% and 15 wt.%” would be
unexpectedly better than values outside this range that still fall within the
disclosed prior art range of 0.2%-80% copper iodide. Unexpected results
must be “commensurate in scope with the degree of protection sought by the
claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Appellant did not show that any other value within the claimed range was
unexpectedly better than the other compositions tested in Table 3.
Appellant also cites Table 4 of the Specification. Table 4 “describes
comparative results for the antimicrobial properties of yarns containing
crystalline cuprous iodide particles therewithin in drawn and undrawn forms

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with equal w/w% loading of the crystalline cuprous iodide particles.” Spec.
¶ 105. The claims do not require the fiber to be drawn or undrawn. The
result in this table are therefore not commensurate in scope with the claim.
For the foregoing reasons, the rejection of claim 1 as obvious in view
of Fujimori is affirmed. Claims 5–7, 9–12, 15–17, and 30–34 were not
separately argued and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

REJECTIONS BASED ON FUJIMORI AND VITA OR FUJITA
Appellant did not separately address the rejections based on Fujimori
and further citing Vita or Fujita. We therefore affirm these rejections of
claims 14 and 26–29 for the reasons set forth by the Examiner.

WRITEN DESCRIPTION REJECTION
Claims 33 and 34 are rejected by the Examiner as lacking a written
description. The claims are reproduced below:
33. The antimicrobial fiber, comprising a synthetic
polymer and crystalline cuprous iodide particles dispersed
within the fiber, wherein said particle size of at least 80% of the
crystalline cuprous iodide particles have a volume distribution
of particle sizes within a range from 3.4 to about 13.0 microns.
34. The antimicrobial fiber of claim 33, wherein the
volume average particle size is about 8 microns.
The Examiner rejected Claims 33 and 34 as lacking a written
description as required by 35 U.S.C. § 112 because the volume limitations
do not appear in the Specification as originally filed. Final Act. 10–11.
While Appellant did not provide a separate heading to address this rejection,
Appellant in the obviousness rejection asserted that “new Claims 33 and 34
are supported by the specification as filed” for the reasons that “volume
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particle size distribution is always higher than the number particle size
distribution and either result may be calculated from the other.” Appeal Br.
8. This argument is not persuasive because Appellant did not disclose or
show how the calculations were made. In addition, as already discussed, the
Report does not establish that the material tested has the same particle size
and particle distribution as required by the claims. See Ans. 6. Accordingly,
the written description rejection of claims 33 and 34 is affirmed

SECTION 112 INDEFINITE AND IMPROPERLY DEPENDENT
REJECTIONS
The Examiner also rejected claims 30, 33, and 34 based on 35 U.S.C.
§ 112 as indefinite and improperly dependent. Appellant did not respond to
these rejections in the Appeal Brief. We, therefore, affirm the rejections for
the reasons set forth by the Examiner. Final Act. 11–12.

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CONCLUSION
In summary:
Claims
rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–7, 9–
12, 15–17,
30–34
103 Fujimori 1, 5–7, 9–
12, 15–17,
30–34

14 103 Fujimori, Vita 14
26–29 103 Fujimori, Fujita 26–29
33, 34 112(a) Written description 33, 34
33, 34 112(b) Indefinite 33, 34
30 112(d) Improperly
dependent
30
Overall
Outcome
1, 5–7, 9–
12, 14–17,
26–34

TIME PERIOD
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).

AFFIRMED