Ex Parte 5878355 et alDownload PDFBoard of Patent Appeals and InterferencesMar 9, 200990007080 (B.P.A.I. Mar. 9, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ENCAPSULATION TECHNOLOGY, LLC, Appellant ____________________ Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 Technology Center 3900 ____________________ Decided:1 March 9, 2009 ____________________ Before EDWARD C. KIMLIN, CAROL A. SPIEGEL, and ROMULO H. DELMENDO, Administrative Patent Judges. SPIEGEL, Administrative Patent Judge. DECISION ON APPEAL I. Statement of the Case Appellant appeals under 35 U.S.C. §§ 134 and 306 from an Examiner's final rejection of all the pending claims, claims 1-48. We have jurisdiction under 35 U.S.C. § 134. We AFFIRM. 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided date shown on this page of the Decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 2 The 355 patent is the patent-in-suit in litigation between the patent owner and the third party requestor of this reexamination proceeding. The lawsuit, Encapsulation Technology, LLC v. Instacote, Inc., Civ. Action No. 03-WY-1927 (D. Colo.), has been stayed pending the reexamination proceeding (Br.2 1-2). The subject matter on appeal is directed to a method of removing particulates, such as lead dust, asbestos fibers, and radioactive dust, from a processing or work area by generating a fog capable of encapsulating the particulates and then introducing the fog into the area where it encapsulates and adheres the particulates to surfaces in the area. Claims 1, 2, 18, and 47 are illustrative and read (Br. 51, 54, and 59): 1. A method for collecting particulates from a process area containing surfaces exposed to the particulates, the method comprising the steps of: generating a fog from a capture liquid; and introducing the fog into the process area to coat the surfaces of the process area and encapsulate and adhere the particulates against the surfaces with the fog. 2. The method of claim 1 further comprising the step of selecting the capture liquid from liquids that will form a tacky layer on the surfaces of the process area. 18. A method for collecting particulates from a process area containing surfaces exposed to the particulates, the method comprising the steps of: generating an aerosol fog from a capture liquid; introducing the aerosol fog into the process area to coat the surfaces of the process area and encapsulate and adhere the particulates against the surfaces with the aerosol fog; and 2 Amended Appeal Brief filed 5 July 2007 ("Br."). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 3 venting a portion of the aerosol fog from the process area as an exhaust stream. 47. The method of claim 18 further comprising estimating the amount of aerosol deposited on the surfaces of the process area by measuring the amount of aerosol exhausted from the process area and calculating the amount of aerosol added to the process area. Various dependent claims, such as claims 3, 5, and 6, additionally recite removing the encapsulated particulates from the surfaces of the processing or work areas, e.g., by scraping or wiping. Independent claim 48 is similar to claim 1, but adds the limitation "wherein the coat formed on the surfaces of the process area has a thickness of about 3 mils" (Br. 59). The Examiner has rejected (i) claims 1-17, 22-30, and 32-48 as unpatentable under 35 U.S.C. § 103(a) over Grawe,3 Castronovo,4 and Mitsui5 (Ans.6 3-7), (ii) claims 18, 19, and 31 as unpatentable under 35 U.S.C. § 103(a) over Grawe, Castronovo, Mitsui, and Eller7 (Ans. 7-8), (iii) claims 1, 4, 7-9, 11, 12, 14-19, 22, 23, 25-31, 33, 34, 37, 41, 47, and 48 as unpatentable under 35 U.S.C. § 103(a) over Eller, Mitsui, and Castronovo (Ans. 8-9), and 3 US Patent 5,421,897, Abatement Process for Contaminants, issued 6 June 1995 to John Grawe ("Grawe"). 4 US Patent 5,246,675, Concealed Fumigation Apparatus, issued 21 September 1993 to Anthony Castronovo ("Castronovo"). 5 US Patent 3,901,443, Ultrasonic Wave Nebulizer, issued 26 August 1975 to Mitsui et al. ("Mitsui"). 6 Examiner's Answer mailed 20 November 2007 ("Ans."). 7 US Patent 5,090,972, Particulate Abatement and Environmental Control System, issued 25 February 1992 to Eller et al. ("Eller"). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 4 (iv) claims 20 and 21 as unpatentable under 35 U.S.C. § 103(a) over Eller, Mitsui, Castronovo, and Wade8 (Ans. 9-11). Appellants contend that Castronovo is nonanalogous prior art and that the Examiner has failed to establish a prima facie case of obviousness in any of the rejections (Br. 8-42). Appellants further contend that even if the prior art references are properly combinable and the Examiner has established a prima case of obvious, the submitted declarations and supporting exhibits are sufficient evidence of nonobviousness, i.e., of a solution to a long-felt need, to rebut the Examiner's conclusion (Br. 42-48). Appellants rely on declarations by John P. Albers dated August 15, 2005 ("Albers Decl. I") and August 7, 2006 ("Albers Decl. II"). The earlier Albers declaration is supported by six exhibits: 1. a two page interoffice correspondence from K.E. Cavin to J. Sawicki, dated August 7, 1997, regarding Room 3559 decontamination ("the Cavin correspondence," Exh. 1), 2. an undated four page document titled "Rocky Flats Closure Project: Building 771, 'The Most Dangerous Building in America' Ready for Demolition" ("the Building 771 project document," Exh. 2), 3. a one page interoffice correspondence from Dick Hogue to Mark Sautman and Don Owens, dated July 26, 1999, regarding a report on the use of the passive aerosol generator (fogging) in building 371, without attachments ("the Hogue correspondence," Exh. 3), 8 US Patent 4,676,811, Wet Air Cleaning Apparatus, issued 30 June 1987 to Rodney L. Wade ("Wade"). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 5 4. an undated two page document titled "Technology @ Rocky Flats: Demonstration & Deployment Summary: Passive Aerosol Generator reduces worker risk during decontamination activities" ("the D&D summary," Exh. 4), 5. "Rocky Flats 'room fogging' reduces personnel entries, secondary waste," Environmental Stewardship Value Engineering, 3 (2): 12 (2nd Quarter 2001) ("ESVE," Exh. 5), and 6. T.W. Halverson, "Nuclear Material Stabilization and Disposition," Nuclear Material Stabilization and Disposition, Section B, B1- B5 (December 2003) ("Halverson," Exh. 6). Thus, three issues are before us. Has Appellant shown that Castronovo is nonanalogous prior art? Has Appellant shown the Examiner erred in concluding the claimed subject matter is prima facie obvious over the combined teachings of the applied prior art? If not, has Appellant provided rebuttal evidence sufficient to overcome the Examiner's conclusion of prima facie obviousness? II. Findings of Fact ("FF") The following findings of fact are supported by a preponderance of the evidence of record. A. The 355 patent [1] According to the disclosure of the 355 patent ("Spec."), certain contamination levels or physical configurations of the environment which make conventional access impractical, such as ventilation areas or sealed environments, presents decontamination problems (Spec. 1:21-37). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 6 [2] The 355 patent describes a method of decontaminating an enclosed space, e.g., ventilation ducts, processing pipes, and work areas, by generating and introducing a "capture liquid" aerosol into the space where the aerosol encapsulates hazardous particulates, e.g., radioactive, lead, and asbestos dust, and adheres them to surfaces in the space (Spec. 1:12-15, 52-56; 2:14-17; 4:36-41, 49-51). [3] The aerosol can be introduced into a processing area "through existing ventilation ducts to create a fog which passively fills the enclosed space" (Spec. 2:33-37). [4] The encapsulated particulates can either be left in place or removed to eliminate the risk of resuspending the contaminants (Spec. 1:15-18). [5] An aerosol may be generated by filling a reservoir, containing at least on transducer for generating ultrasonic waves, in a pressurized chamber having inlet and outlet ports with capture liquid, preferably a liquid that will form a tacky or sticky coating over the hazardous particulates (Spec. 2:47-52, 65-66; 3:35-37). [6] The ultrasonic waves are focused to cause tiny droplets of the liquid to shear off and form the aerosol (Spec. 2:53-56). [7] Pressurized air from the inlet port transports the aerosol from the chamber through the outlet port and into the process/work area (Spec. 2:66-3:4). [8] Upon contacting with the surfaces of the process/work area, the aerosol preferably forms a tacky or sticky coating over the hazardous particulates (Spec. 3:33-38). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 7 [9] For example, a water-based urethane suspended in a two part organic solution is a preferred capture liquid for radioactive dust, while a capture liquid that hardens into a durable, permanent layer may be preferred for lead or asbestos dust (Spec. 4:55-61; 5:18-22; 13:1-35). B. The prior art 1. Grawe [10] According to Grawe, traditional methods of removing hazardous materials commonly involve either wet wiping with cleaning solutions or using vacuums with high efficiency particle accumulator (HEPA) filters (Grawe 4:9-14). [11] Wiping may not be effective in areas that are geometrically complex, physically obstructed, or located in inaccessible surfaces; wet vacuuming with cleaning solutions may drive surface contamination deeper into porous, open structures; and, neither protects a worker from exposure to hazardous materials; and, (Grawe 4:37-5:6). [12] Grawe discloses a method of abating contaminants, such as airborne lead particles or radioactive spills, by applying a liquid-state composition to a horizontal or vertical surface, allowing the liquid- state composition to solidify into a solid-state matrix which sequesters the contaminants, and then removing the solid-state matrix (Grawe 1:5-6, 15-18, Table 1; 2:66-3:42; 3: 60-68; 5:50-56; 6:44-50). [13] The liquid-state composition can comprise a polymer, such as a polyurethane dispersion, and optional additives (Grawe 10:40-43; 10:45-18:47, especially 11:43-44). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 8 [14] The liquid-state composition may be applied by any conventional method, including aerosol spraying, generally between 10 to 60 mils wet film thickness (Grawe 6:60-64). [15] Grawe defines "sequester" as including "all physical and chemical means by which a contaminant becomes associated with a solid-state matrix, including . . . physical entrapment. . ." (Grawe 7:29-33). [16] Preferred solid-state matrices may be removed from the applied surface by simple physical peeling (Grawe 7:36-40). 2. Castronovo [17] Castronovo discloses a housing apparatus for a conventional aerosol fogger, based on a petroleum product, which includes a means for securely maintaining the aerosol fogger perpendicular to a mounting surface, such as a wall or a ceiling, to permit extermination of insects, including potentially disease transmitting insects, inside a building (Castronovo 1:6-24 and 64-66; 3:16-23). [18] Castronovo teaches that a fogging device atomizes a tiny jet of liquid which is then distributed throughout a room "encompassing areas that sprays may not be able to reach" (Castronovo 1:54-59). [19] According to Castronovo, a "fogging type device is arguably the most effective method in treating a volume of space" (Castronovo 1:59-61). 3. Mitsui [20] Mitsui discloses an apparatus for nebulizing liquids using ultrasonic waves, having advantages including the capability of expelling all the produced fog from the nebulizing chamber by arranging the air flow Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 9 around the generating portion of the fog in a particular direction (Mitsui 2:7-42). [21] The apparatus of Mitsui includes a chamber filled with liquid and a transducer for generating ultrasonic waves (Mitsui 3:9-16). 4. Eller [22] Eller discloses a system for abating/reducing the level of airborne particulates, such as asbestos or lead-based paint, in a workplace, preferably in an air-tight enclosed space (Eller 1:10-17; 4:49-52). [23] The system includes a blower and a filter, such as a HEPA filter, which provide a negative air unit for exhausting air from the workplace to prevent hazardous airborne contaminants from leaking out of the enclosed space (Eller abstract; 4:49-62; 5:39-43; 8:24-27). [24] According to Eller, in some asbestos abatement procedures after the majority of the asbestos has been removed from a working space, typically three or more coatings of a sealant are sprayed on asbestos remaining in cracks or crevices to "lock down" the remaining asbestos in place. Each sealant coating must be cured prior to applying the next coat (Eller 3:48-60; 7:1-8). [25] The humidity level within the space may be intentionally raised when conducting wet asbestos removal process to minimize airborne contaminant levels, and may be subsequently lowered to reduce both the time required to dry out materials after the wet removal process and the curing time for liquid sealants applied over contaminant containing materials (Eller 5:62-6:4; 7:1-8; 12:41-52). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 10 [26] In one wet removal embodiment, an atomizer unit sprays a fine mist of cool condensed air within the working space to maintain a high humidity level in the space (Eller 9:16-23). 5. Wade [27] Wade discloses a wet air cleaning apparatus that overcomes the problem of HEPA filters becoming plugged very quickly when used to separate solids from the air (Wade 1:6-31). [28] The apparatus has a container for receiving externally supplied, particle-containing air, e.g., air containing asbestos particles. The container has nozzles which spray water in the air, causing the particles in the air to become wet and heavy and fall to the bottom of a separator compartment. The rest of the air in the container sequentially passes through a pre-filter and then a HEPA filter before being exhausted out of the container. [Wade 1:34-52; 3:18-64; Figure 4.] Other findings of fact follow below. III. Discussion A. Issue 1: is Castronovo nonanalogous prior art 1. Legal principles The test for determining whether a prior art reference is analogous art and thus relevant in determining obviousness is determining (1) whether the reference is "within the field of the inventor's endeavor;" and (2) if not, whether the reference is "reasonably pertinent to the particular problem with which the inventor was involved." In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). "A reference is reasonably pertinent if, even though it may be in Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 11 a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering the problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). 2. Appellant's arguments Appellant argues that the claimed process and Castronovo's process are directed to different fields of endeavor, i.e., decontamination versus insect extermination (Br. 10). Appellant points out that claim 1 requires the fog to coat the surfaces of the process area and encapsulate and adhere the particulates against the surfaces with the fog, while Castronovo simply treats a volume of space to kill insects (Br. 8-12). Appellant argues Castronovo impliedly teaches against surface coating because Castronovo teaches against using high concentrations of fog, while highly concentrated, i.e., dense fogs are generally needed to practice the claimed methods (Br. 10-11). Appellant further argues that Castronovo is not reasonably pertinent to the inventor's problem of providing a coating that would contain hazardous particles that could easily be resuspended if disturbed because Castronovo teaches that insecticides generally dissipate quickly and impliedly teaches away from using a dense fog (Br. 13-14). 3. Examiner's position The Examiner broadly defines the inventor's field of endeavor as the field of applying a liquid-state composition to an enclosed surface area, regardless of any specific composition (Ans. 11-12). According to the Examiner, whether the aerosol fog used to apply a liquid-state composition coats, encapsulates and/or adheres particulates is a characteristic of the Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 12 composition, not the field of endeavor (Ans. 12). Similarly, the Examiner contends that whether highly concentrated fogs are used or not is also a characteristic of the specific composition being aerosolized (Ans. 13). The Examiner points out that none of the claims on appeal require "highly concentrated fogs" (Ans. 13). 4. Analysis Castronovo cannot be considered within the inventor's field of endeavor merely because both relate to applying a liquid-state composition to an enclosed surface area. Applying a liquid-state composition to an enclosed surface area broadly encompasses painting walls and filling swimming pools. The inventor's field of invention is cleaning up work areas contaminated by hazardous airborne-particles, such as radioactive, lead, and asbestos dust, which may cause disease (FF 2). Castronovo's field of invention is exterminating airborne pestilence, such as mosquitoes, which may transmit disease (FF 17). However, Castronovo is directed to essentially the same problem of treating relatively inaccessible areas with a liquid composition (FF 1 and 18). Thus, we conclude that Castronovo satisfies the “reasonably pertinent†prong of the analogous art test and therefore would have logically commended itself to the inventors’ attention in considering the problem addressed by the invention. Arguments drawn to relative concentrations of applied liquid and duration of application are not persuasive since these parameters are not only result effective variables, but also unclaimed limitations. Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 13 5. Conclusion Castronovo is analogous prior art relevant to an obviousness analysis. B. Issue 2: is the claimed subject matter prima facie obvious over the prior art 1. Legal principles A claimed invention is not patentable if it would have been obvious to a person having ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Facts relevant to a determination of obviousness include (1) scope and content of the prior art, (2) any differences between the claimed invention and the prior art, (3) the level of ordinary skill in the art, and (4) relevant objective evidence of obviousness or nonobviousness. KSR, 127 S.Ct. at 1734; Graham, 383 U.S. at 17-18. The proper inquiry under § 103 is what the collective teachings of the prior art would have reasonably suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). 2. Rejection of claims 1-17, 22-30, and 32-49 under § 103 over Grawe, Castronovo, and Mitsui As an initial matter, we note that Appellant's patentability arguments group the following claims together: (i) claims 1, 3-6, 8-17, 22-30, and 32- 46 (Br. 26 and 30); (ii) claims 2 and 42 (Br. 27-28); (iii) claim 7 (Br. 28); (iv) claim 47 (Br. 28-29); and, (v) claim 48 (Br. 29-30). Therefore, we decide the appeal of this rejection on the basis of claims 1, 2, 7, 47, and 48. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 14 a. Examiner's findings and conclusions The Examiner found that Grawe teaches removing contaminants by applying a liquid-state composition to a horizontal or vertical surface, allowing the composition to solidify to a solid-state matrix which sequesters the contaminants, and then removing the contaminated solid-state matrix from the surface (Ans. 4). The Examiner found that Grawe teaches applying the liquid-state composition generally at a wet film thickness of 10 to 60 mils using any conventional application process including aerosol spraying (Ans. 4). The Examiner found that Grawe does not describe generating a fog (Ans. 4). However, the Examiner found that Castronovo teaches aerosol fogging devices is arguably the most effective method of distributing a liquid throughout a room, including into areas where sprays may not reach (Ans. 4-5). The Examiner found that Mitsui teaches an ultrasonic wave nebulizer for generating a liquid fog, including an air supply inlet for guiding or flowing the fog and an exhaust duct for exhausting a fog composed of minute liquid particles formed in the nebulizer (Ans. 5). The Examiner concluded it would have been obvious to use the ultrasonic wave nebulizer of Mitsui to generate a fog for applying the liquid- state composition of Grawe in view of Castronovo's teaching that fogging is arguably the most effective method of treating a volume of space, including areas that sprays may not reach, thus arriving at a method encompassed by claim 1 (Ans. 5, 15-16). The Examiner further concluded that it would have been obvious to use a "tacky" liquid-state composition, as required by claim 2, or a liquid-state composition that hardens by oxidation, as required by claim 7, given Grawe's teaching of sequestering contaminants by all physical Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 15 and chemical methods (Ans. 5-6). The Examiner still further concluded that it would have been obvious to calculate the amount of aerosol added to the process area and to measure the amount of aerosol exhausted from the process area, as required by claim 47, to estimate the amount of aerosol deposited on the surfaces of the process area (Ans. 6). Finally, as to claim 48, the Examiner concluded that it would have been obvious to optimize the wet coat/film thickness of the applied liquid-state composition to achieve the desired effect (Ans. 6). b. Appellant's arguments Appellant argues that Grawe requires its liquid-state composition to be forcefully applied onto the contaminated surfaces in order to dislodge and then sequester the contaminant from the surface (Br. 15-16). According to Appellant, the '355 patent explains that the fog introduced into the process area of claim 1 passively fills the enclosed space in order to minimize resuspending hazardous dust particles (Br. 15-16). Thus, Appellant submits the process of Grawe would not work if its liquid-state composition was applied as a fog (Br. 16-17). In addition to contending that Castronovo is nonanalogous prior art, Appellant argues that Castronovo also teaches away from the claimed method. Specifically, Appellant argues that dense/highly concentrated fogs are generally needed to apply a coating to a surface and Castronovo not only discloses using fogs that dissipate quickly, but also suggests that using highly concentrated fogs may result in an explosion (Br. 18). Appellant argues that the disclosure of Mitsui is limited to an ultrasonic device that generates an aerosol fog (Br. 19). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 16 Appellant contends that the Examiner's conclusion of obviousness lacks factual support, particularly any teaching or suggestion of using a fog to coat the surfaces of process area and encapsulate and adhere particulates against the surface of the process area (Br. 20-23). Appellant further contends that even if the Examiner's conclusion of obviousness was not based on hindsight reconstruction, there is no reasonable expectation of success in combining Grawe, Castronovo, and Mitsui because the process of Grawe is inoperable if its liquid-state composition were applied as a fog (Br. 23-26). As to claim 2, Appellant argues that Grawe's definition of "sequester" is so broad as to be meaningless (Br. 27). Appellant further argues that the "tacky" layer of claim 2 adheres the hazardous particles to the surfaces of the area; it does not physically entrap them (Br. 27). As to claim 7, Appellant argues the capture liquid encapsulates and adheres particulates against the surfaces of the process area; it does not sequester or remove the particulates from the surfaces of the process area (Br. 28). As to claim 47, Appellant argues the Examiner has failed to provide a factual basis for concluding that calculating the amount of aerosol added to the process area and measuring the amount of aerosol exhausted from the process area is known and used in the art to provide an estimate of the amount of aerosol deposited on the surfaces of the process area (Br. 28-29). As to claim 48, Appellant argues that applying a 3 mils wet coat thickness of liquid-state composition in the method of Grawe would result in Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 17 a concentrated puddle of contaminants requiring special treatment (Br. 29- 30). [29] In this regard, Mr. Albers testified (Albers Decl. II ¶ 5) that the process disclosed in . . . Grawe . . . applies a very thick coating of from 60 to 10 mils. If such a thick coating were applied with the process of the '355 Patent it would present a significant problem when treating vertical surfaces, i.e. walls, because it would (in all likelihood) cause the encapsulate to streak down the walls and collect in a puddle on any horizontal surface located on or at the bottom of the wall. Such streaking and puddling would present a significant problem with hazardous particulates because streaking tends to carry many of the particulates from the streak into the puddle causing the puddle to contain a higher concentration of hazardous material. This complicates the decontamination process since these highly contaminated puddles require special treatment. c. Analysis Appellant's arguments are unpersuasive of Examiner error because they fail to consider the teachings of each reference in their entirety, they fail to consider the teachings of the references in combination, and they read limitations into the claims without basis. For example, the disclosure of Grawe is not limited to forceful application of the liquid-state composition to surfaces to achieve commingling or dislodging and then sequestering of contaminants. [30] According to Grawe (Grawe 7:10-13), Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 18 [a]lternatively, packaging the liquid-state composition in aerosol spray-can form allows the use of foaming, effervescent and blowing agents that provide lifting and suspending action. Moreover, the method of claim 1 is silent regarding the degree, if any, to which introduction of the fog into process area might resuspend particulates in the process area. Similarly, the method of claim 1 is silent regarding the concentration of the fog or and the liquid composition from which the fog is generated. Appellant has not challenged the Examiner's statement (Ans. 14) that the quickness with which a fog dissipates is a characteristic of the applied liquid and not a limitation of the process. Notably, the fogger of Castronovo is a petroleum based product (FF 17). [31] Castronovo cautions that gas pilot lights or inopportune sparks can cause an explosion of highly concentrated petroleum based fogs (Castronovo 2:4-9). Thus, whether a particular aerosol fog is explosive depends, at least in part, on whether a flammable liquid is used to generate the fog. Indeed, it would appear to be within ordinary skill in the art to minimize potential explosive damage when using foggers based on flammable liquids, e.g., by eliminating sources of sparks or flames or by using an inert gas rather than air to carry the fog. In short, the Examiner has provided a sufficient factual basis to conclude that the method of claim 1 is prima facie obvious over the combined teachings of Grawe, Castronovo, and Mitsui. Castronovo's teaching that an atomizing, i.e., nebulizing, fogger device is arguably the Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 19 most effective method for treating a volume of space (FF 19) provides motivation for applying the liquid-state composition of Grawe using a known nebulizer device, such as that disclosed by Mitsui. Nonobviousness cannot be shown by attacking the references individually where the rejection is based on a combination of references. In re Keller, 642 F.2d at 425. Furthermore, Appellant has not shown that Grawe's method requires the forceful application of the liquid-state composition. Indeed, a reference must be considered for everything it discloses, including nonpreferred embodiments. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Therefore, Appellant's arguments for the patentability of claim 1 are not persuasive of Examiner error. Regarding claim 2, Grawe broadly defines the term "sequester" to include all physical and chemical means for associating a contaminant with a solid-state matrix (FF 15). As pointed out by the Examiner (Ans. 19), while Grawe's definition of "sequester" is broad, it is not indefinite. Appellant has not pointed to where Grawe teaches or suggests that associating contaminants with a solid-state matrix excludes adhering the contaminants to the matrix or, alternatively, where the '355 patent defines a "tacky" coating liquid which does not associate particulate contaminants therewith. Therefore, this argument is not persuasive of Examiner error. Regarding claim 7, as pointed out by the Examiner (Ans. 19), claim 7 reads on using a liquid-state composition fog that solidifies on the surfaces of the process area by encapsulation and does not exclude removing or sequestering the particles as taught in Grawe. Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 20 [32] Indeed, Mr. Albers testified that process of the '355 patent "also encapsulates non-airborne particulates, i.e. particulates resting on the surfaces and adheres them to the surfaces of the contaminated areas" (Albers Decl. II ¶ 3). Therefore, this argument is not persuasive of Examiner error. Regarding claim 47, we agree with the Examiner that knowing the amount of aerosol added to a process area and the amount of aerosol exhausted from the process area provides the data one of ordinary skill in the art would need to determine how much aerosol is left in the process area. To hold otherwise presumes that a person having ordinary skill in the art is unknowledgeable and unskilled. In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Therefore, this argument is not persuasive of Examiner error. Finally, Grawe generally applies between a 10 and 60 mils wet film thickness of liquid-state composition (FF 14), whereas the method of claim 47 introduces a fog with forms a surface coat having a thickness of about 3 mils. Grawe applies the liquid-state composition to vertical surfaces and allows it to solidify to a solid-state matrix (FF 12). As pointed out by the Examiner (Ans. 21), there is no indication or evidence that the liquid-state composition applied to vertical surfaces in Grawe's process streaks down the vertical surface and puddles on any horizontal surface. Rather, Mr. Albers speculates, without supporting data, that applying 10 mil wet thickness of fog liquid in the method of claim 48 would, "in all likelihood", streak down the walls and collect in a puddle (FF 29). Furthermore, claim 48 refers to a 3 mil thick coat, not a 3 mil thick liquid application. Therefore, this argument is not persuasive of Examiner error. Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 21 d. Conclusion The Examiner has provided a sufficient factual basis to conclude that the subject matter of claims 1-17, 22-30, and 32-49 is prima facie obvious over the combined teachings of Grawe, Castronovo, and Mitsui, and Appellant’s arguments are insufficient to rebut the Examiner’s prima facie case. (Appellant's evidence of secondary considerations is discussed in § III C below.) 3. Rejection of claims 18, 19, and 31 under § 103 over Grawe, Castronovo, Mitsui, and Eller As an initial matter, we note that Appellant has argued claims 18, 19, and 31 as a single group of claims (Br. 30-32). Thus, we decide the appeal of this rejection on the basis of claim 18. 37 C.F.R. § 41.37(c)(1)(vii). Claim 18 reads (Br. 54): 18. A method for collecting particulates from a process area containing surfaces exposed to the particulates, the method comprising the steps of: generating an aerosol fog from a capture liquid; introducing the aerosol fog into the process area and encapsulate and adhere the particulates against the surfaces with the aerosol fog; and venting a portion of the aerosol fog from the process area as an exhaust stream. a. Examiner's findings and conclusions The Examiner found that Eller teaches a particulate abatement system wherein a portion of the air from a working area is vented or exhausted, thereby creating a negative pressure which prevents hazardous material leakage (Ans. 7). The Examiner further found Eller teaches the humidity Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 22 level within the working area may be increased or decreased to reduce the curing time for hazardous material encapsulation operations or to reduce airborne contamination levels during wet abatement operations, respectively (Ans. 7). The Examiner concluded it would have been obvious to vent a portion of the aerosol and air mixture from a working area in the process of Grawe/Castronovo/Mitsui in order to establish a negative pressure in the working area and prevent hazardous material leakage as taught by Eller (Ans. 7). The Examiner further concluded it would have been obvious to adjust the humidity level to a desired level as taught by Eller (Ans. 8). b. Appellant's arguments Appellant argues that none of Grawe, Castronovo, Mitsui, or Eller teach or suggest introducing a fog into a process area to coat the surfaces of a process area and encapsulate and adhere particulates against the surfaces of the process area (Br. 31). Appellant also reiterates the arguments that Castronovo is nonanalogous prior art and that the process of Grawe would not work if its liquid-state composition was applied as a fog (Br. 31). Appellant newly argues there is no motivation to combine Grawe with Eller their methods are so different (Br. 31). Specifically, Appellant argues that the Eller method exhausts and filters asbestos contaminated air from an enclosed working area and then returns the filtered air to the enclosed working area, while the Grawe method has no need for air filtration (Br. 31). In addition, Appellant argues the '355 patent discloses venting a portion of the aerosol fog from the process area in order to measure or estimate the amount of aerosol deposited on the surfaces of the process area, not to filter Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 23 out contaminants and recycle the aerosol back into process area as in Eller (Br. 32). c. Analysis Appellant's first three arguments are unpersuasive of Examiner error for the reasons set forth above in §§ III.A.4 and III.B.2.c. Regarding the Appellant's next two arguments, as noted by the Examiner (Ans. 22-23), it is well settled that a reference disclosure must be evaluated for all that it fairly teaches In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) and that the prior art need not disclose the same purpose or benefits of a claimed method in order to establish its obviousness under 35 U.S.C. § 103. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). Here, Eller fairly teaches that providing a negative air unit for exhausting air from a process area prevents hazardous airborne contaminants from leaking out of the area (FF 24). Therefore, the fact that the Examiner's reason for exhausting a portion of the aerosol fog from the process area, i.e., to prevent hazardous airborne contaminant leaks, is not the same as Appellant's alternative reason is insufficient to rebut the conclusion of obviousness presented by the Examiner. Therefore, these last arguments are also unpersuasive of Examiner error. d. Conclusion The Examiner has provided a sufficient factual basis to conclude that the subject matter of claims 18, 19, and 31 is prima facie obvious over the combined teachings of Grawe, Castronovo, Mitsui, and Eller, and Appellant’s arguments are insufficient to rebut the Examiner’s Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 24 prima facie case. (Appellant's evidence of secondary considerations is discussed in § III C below.) 4. Rejection of claims 1, 4, 7-9, 11, 12, 14-19, 22, 23, 25- 31, 33, 34, 37, 41, 47, and 48 under § 103 over Eller, Mitsui, and Castronovo Appellant has argued the patentability of claim 1 (Br. 33-41). Therefore, we decide the appeal of this rejection on the basis of claim 1. 37 C.F.R. § 41.37(c)(1)(vii). As stated above, the method of claim 1 comprises the steps of "generating a fog from a capture liquid; and introducing the fog into the process area to coat the surfaces of the process area and encapsulate and adhere the particulates against the surfaces with the fog" (Br. 51). a. the Examiner's findings and conclusion The Examiner found that Eller teaches some asbestos abatement procedures wherein some remaining asbestos is sealed or encapsulated in place with a liquid sealant (Ans. 8). The Examiner found that Eller differed from the claimed method in failing to teach aerosol spraying (Ans. 8). The Examiner reiterated his findings that Castronovo teaches aerosol fogging as arguably the most effective method of distributing a liquid throughout a room and that Mitsui teaches an ultrasonic wave nebulizer for generating a liquid fog (Ans. 8-9). The Examiner concluded it would have been obvious to use the ultrasonic wave nebulizer of Mitsui in a method of removing or encapsulating hazardous airborne contaminants, such as asbestos, as taught by Eller, with a reasonable expectation of success based on the teachings of Eller, Castronovo, and Mitsui (Ans. 9). The Examiner explained that "the Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 25 teachings of Eller are not limited to direct spraying and it is the combination of Eller . . . in view of Castronovo and Mitsui . . . that leads an individual having ordinary skill in the art to the instant fogging" (Ans. 25). b. Appellant's arguments Appellant argues that Eller, like Grawe, fails to teach or suggest step 2 of method claim 1, i.e., introducing a fog into the process area to coat the surfaces of the process area and encapsulate and adhere the particulates against the surfaces with the fog (Br. 33). According to Appellant, a procedure requiring wet removal of most asbestos from a surface and then the direct spraying of at least three coats of sealant onto the surface, as described by Eller, fails to suggest step 2 of claim 1 (Br. 34-35). Appellant contends that one of ordinary skill in the art would have been led away from applying a liquid as a fog where Eller teaches the liquid is a sealant which must completely coat the surface if it is to be effective (Br. 35). Appellant contends that the Examiner's conclusion of obviousness lacks factual support, motivation, and reasonable expectation of success in a manner similar to the arguments based on the combined teachings of Grawe/Castronovo/Mitsui discussed above in § III.B.2, but with Eller in place of Grawe (Br. 36-41). In addition, Appellant notes that the surfaces being treated in Eller were washed prior to being sprayed with sealant and, therefore, would contain few, if any, easily resuspended particulates (Br. 38). c. Analysis We reiterate our analysis, given in § III.B.2 above, of Appellant's repeated arguments alleging the Examiner failed to provide factual support, Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 26 motivation, and a reasonable expectation of success for his conclusion of obviousness. We emphasize that a reference, such as Eller, must be considered for everything that it discloses, including non-preferred embodiments. In re Burckel, 592 F.2d at 1179. Thus, while a two part asbestos abatement including wet removal of most of the asbestos followed by applied a multilayered liquid skin to seal the remaining asbestos in cracks or crevices (FF 24) may indeed be more time consuming and expensive, Eller nonetheless teaches applying a liquid sealant to coat hard to reach surfaces of a process area to encapsulate and adhere asbestos particles as recited in method claim 1. The open "comprising" claim language does not preclude an initial wet removal of hazardous particulates followed by the claimed steps of introducing a fog of sealant liquid into the process area to coat the surfaces of the process area and encapsulate and adhere the particulates against the surfaces with the fog. Furthermore, as noted by the Examiner (Ans. 25), it is the combined teachings of Eller, Castronovo, and Mitsui that would have led one of ordinary skill in the art to apply the liquid sealant of Eller to hard to reach cracks and crevice by fogging based on Castronovo's teaching of the effectiveness of fogging in treating even hard to reach surface areas using a conventional ultrasonic fogger a disclosed by Mitsui. Nonobviousness cannot be shown by attacking the references individually where the rejection is based on a combination of references. In re Keller, 642 F.2d at 425. In short, Appellant's arguments are unpersuasive of Examiner error. Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 27 d. Conclusion The Examiner has provided a sufficient factual basis to conclude that the subject matter of claims 1, 4, 7-9, 11, 12, 14-19, 22, 23, 25-31, 33, 34, 37, 41, 47, and 48 is prima facie obvious over the combined teachings of Eller, Castronovo, and Mitsui, and Appellant’s arguments are insufficient to rebut the Examiner’s prima facie case. (Appellant's evidence of secondary considerations is discussed in § III C below.) 5. Rejection of claims 20 and 21 under § 103 over Eller, Castronovo, Mitsui, and Wade According to Appellant, the patentability of claims 20 and 21 stands or falls with the patentability of claim 18 under § 103 over the combined teachings of Eller, Castronovo, and Mitsui (Br. 4). Appellant again argues that Castronovo is nonanalogous prior art (Br. 4). For the reasons in §§ III. A and B.4 above, Appellant's arguments are unpersuasive of Examiner error. a. Conclusion The Examiner has provided a sufficient factual basis to conclude that the subject matter of claims 20 and 21 is prima facie obvious over the combined teachings of Eller, Castronovo, Mitsui, and Wade, Appellant’s arguments are insufficient to rebut the Examiner’s prima facie case. (Appellant's evidence of secondary considerations is discussed in § III C below.) C. Issue 3: has Appellant submitted relevant objective evidence sufficient to rebut the Examiner's prima facie conclusion of obviousness Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 28 1. Legal principles It is well settled that the Examiner "bears the initial burden of presenting a prima facie case of unpatentability. . . . However, when a prima facie case is made, the burden shifts to the applicant to come forward with evidence and/or argument supporting patentability." In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). Rebuttal evidence is "merely a showing of facts supporting the opposite conclusion." In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Evidence rebutting a prima facie case of obviousness can include evidence of secondary considerations, such as commercial success and long-felt but unresolved needs, WMS Gaming, Inc. v. Int'l Game Tech, 184 F.3d 1339, 1359 (Fed. Cir. 1999). "If . . . a patent applicant presents evidence relating to these secondary considerations, the board must always consider such evidence in connection with the determination of obviousness." In re Sernaker, 702 F.2d 989, 996 (Fed. Cir. 1983). A successful showing of long-felt but unresolved need requires objective evidence of three factors. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 539 (CCPA 1967). Second, the long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Third, the invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). "[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem." Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir. 1993). Objective evidence of nonobviousness must be commensurate in Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 29 scope with the claimed invention. In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). 2. Appellant's position According to Appellant, cleaning up the "legacy waste" of weapons grade nuclear materials ("WGNM") produced during the cold war was a high priority for the U.S. government (Br. 43-45). The costs and health and safety risks posed by decontaminating certain highly contaminated WGNM production facilities were said to be so high that cleanup efforts were abandoned (Br. 45). Appellant credits its passive aerosol generator ("PAG") process with effectively and efficiently cleaning up several highly contaminated nuclear waste production facilities (Br. 45-47). According to Appellant, the PAG process is commensurate in scope with the method of claim 1 and "[t]he actual commercial method similarly follows very closely the steps of independent claims 14, 22, 34, 42, and 48" (Br. 47). Appellant has submitted two declarations by John P. Albers as objective evidence that the claimed invention solves a long-felt but previously unresolved need. 3. the Albers Declarations and Exhibits [33] Mr. Albers testified that he is a named inventor of the '355 patent and an owner of Encapsulation Technology, LLC, which owns the '355 patent (Albers Decls. I and II, ¶ 1). [34] Mr. Albers testified that during the "cold war" the U.S. Department of Energy managed the radioactively contaminated waste generated by the nuclear weapons program (Albers Decl. I ¶ 3). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 30 [35] According to Mr. Albers, when the "cold war" ended, it was determined that radioactively contaminated facilities, with their "legacy waste," should be cleaned up (Albers Decl. I ¶¶ 3 and 5). [36] Mr. Albers testified that he and his co-inventors learned of the legacy waste problem through public forums held around the country in the early 1990s to discuss the problem and soon began developing the claimed invention (Albers Decl. II, ¶ 6). [37] Mr. Albers cites exhibits 1-6 in his declaration, i.e., the Cavin correspondence, the Building 771 project document, the Hogue correspondence, the D&D summary, ESVE, and Halverson (Albers Decl. I, ¶¶ 7, 8, 11-14). [38] The 1997 Cavin correspondence recommends cessation of further standard decontamination efforts in Room 3559 at Safe Sites of Colorado, Rocky Flats Environmental Technology Site because each time a surface was "cleaned" by hydrolasing or hand wiping, subsurface contamination migrated to the surface, creating an unknown number of decontamination-migration cycles (Exh. 1 at 1). [39] The Cavin correspondence recommended exploring "new" cleanup methods, including chelation and application of fixatives, for a longer term solution (Exh. 1 at 2). [40] The 1999 Hogue correspondence refers to an attached "synopsis on the use of the Passive Aerosol Generator (PAG) in Building 371," however, no attachment was included as part of the exhibit (Exh. 3). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 31 [41] According to the Hogue correspondence, "the implementation of the new process was successful and can be a very powerful tool for airborne contamination control" (Exh. 3). [42] Further according to the Hogue correspondence (Exh. 3), [a] concern I have is that the other projects on plant site (ie: B771 and B771/776) do not seem to want to take advantage of this technology to protect their workers. I have talked with them and provided them with technical data that substantiates our successes, but they don't seem to be aggressively pursuing this path? It's very frustrating for me to have worked so hard this past 1 1/2 years to incorporate this process into the plant's deactivation and D&D path. From my viewpoint, the work level employees in B371 and B371 management are fully supportive of this process and believe that it is the right thing to do. My perception is that upper management on the rest of the plant site has not recognized the value of this technology to protect the work force. [43] According to the undated Building 771 project document, plutonium operations were begun in Building 771 in May 1953 but a large fire spread plutonium contamination throughout much of the building in 1957 (Exh. 2 at 1). [44] Initial cleanup of Building 771 began in 1993 and the last radioactive liquids were drained from process piping in 2001 (Exh. 2 at 1-2). [45] One abandoned and sealed room in Building 771, room 141, is said to have initially registered 2,000 times the maximum limit of airborne plutonium contamination for safe entry in 2002 (Exh. 2 at 2). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 32 [46] Decontamination and dismantling ("D&D") of room 141 involved an "innovative approach" using a glycerin-based fog, remotely pumped into the room, which caused contamination to adhere to surfaces and reduced airborne contamination to levels that allowed workers in supplied air breathing suits to enter the room to remove and package equipment stored in the room and spray fixative to further control contamination. Dismantling the room involved another "innovative approach" using diamond wire saws to cut the room's 3-foot-thick ceiling, floor, and walls and then concrete saws to cut the slabs into blocks for packaging and shipping. [Exh. 2 at 2-3.] [47] The undated D&D summary reports that [i]n the past workers [at Rocky Flats] had used pressurized hot water spray to remove contamination but still could not bring contamination levels down even after repeated applications. In 1998, the site began using a two- step process to remove the contamination from the air and then seal it in place on the floor and walls of the room. An aerosol sugar fog called Capture Coating was dispersed with a machine that used sound waves to make the droplets very small. After the radioactive particles in the air were fixed to the surfaces by the fog as it settled, up to a 1/4- inch layer of poly-urea coating called Insta-Cote would then be sprayed on to permanently seal the contamination in place. Capture Coating has been successfully used . . . to reduce . . . the concentration of plutonium particles in the air, in . . . Room 3559 in Building 371 and Room 114 in Building 771. However, an improved method . . . is needed [for very large Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 33 rooms] because the existing fogging equipment is not capable of uniformly coating all the contaminated surfaces in extremely large rooms sufficiently enough to downgrade the respiratory protection requirements. . . . [Exh. 4 at 1-2, bracketed text added.] [48] The D&D summary describes a large room fogging technology which creates an encapsulating aerosol of sugar, glycerin and water with ultrasonic parabolic transducers to optimize the droplet size of the liquid aerosol so that it behaves more like a gas, thereby ensuring a more complete coating of the contaminated surfaces (Exh. 4 at 2). [49] According to the D&D summary, the success of room fogging has provided cost savings "as the requirements for room entry have been downgraded after the fixative is applied. . . [i.e., eliminating] the need for multiple entries in the more expensive PremAire suits" (Exh. 4 at 2). [50] ESVE states the technology known as "room fogging" has avoided 86.19 cubic meters of waste and saved $2,898,000 since the technology was first applied in 1999. A machine-made, airborne sugar "fog," Capture Coating™ has been used along with a fluorescent tracer, Invisible Blue™, and a poly-urea coating, Insta-Cote™, to reduce airborne contamination during the decontamination of Building 371. . . [ESVE 12] [51] According to ESVE, the fogging technique limits supplied air entries of personnel to the time required to remove debris and set up the fogging equipment and waste generation to disposable air suits, the Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 34 containment, and unused coating, in contrast to the large quantities of waste and numerous room entries required by conventional decontamination methods (ESVE 12). [52] Mr. Albers identifies Halverson as "a copy of a Performance Report from the Hanford Nuclear Reservation" (Albers Decl. I ¶ 14). [53] According to Halverson, as of the end of December 2003, one of its "Notable Accomplishments" includes Transition 241-Z Facility: Planning was completed and materials were received to support the replacement of all 241-Z below-grade differential pressure gauges in early January. This will accommodate the planned aerosol fogging of the vault areas for contamination control during upcoming deactivation and decommissioning (D&D) activities. A Facility Modernization Plan was prepared and submitted for internal approval to permanently isolate unused electrical circuits that route through the 241-Z below-grade areas. This will simplify the lock and tag process for later below-grade area entries to execute D&D work. [Halverson B:3.] [54] According to Mr. Albers, conventional attempts to decontaminate the Rocky Flats Environmental Technology Site ("Rocky Flats") were unsuccessful and shelved pending evaluation of newer technology (Albers Decl. I, ¶ 7; the Cavin correspondence, Exh. 1) and cleanups at other sites, i.e., Building 771, proceeded slowly due to technological limitations in the ability to contain high levels of airborne plutonium (Albers Decl. I., ¶ 6; the Building 771 project document, Exh. 2). Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 35 [55] Further according to Mr. Albers, in the mid 1990's, '355 patent owner Encapsulation Technology developed a process, dubbed "Passive Aerosol Generator" or "PAG," for minimizing, if not eliminating, airborne plutonium from contaminated areas (Albers Decl. I, ¶ 9). [56] The PAG process created an aerosol of a capture liquid which is passively introduced into the contaminated area as a fog which fills the contaminated area, encapsulates particulates of resuspended or settled hazardous material, and adheres the hazardous material to area surfaces so they will not be resuspended (Albers Decl. I, ¶ 9). [57] Mr. Albers testified that Rocky Flats used the PAG technology to decontaminate certain of its facilities where previously known methods of decontamination had failed, as evidenced by the Hogue correspondence (Exh. 3) and the D&D summary (Exh. 4) (Albers Decl. I, ¶¶ 10-12). [58] Mr. Albers further testified that "room fogging" has avoided 86.19 cubic meters of waste and saved $2,898,000 since PAG technology was first applied in 1999, as evidenced by ESVE (Exh. 5) (Albers Decl. I, ¶ 13). [59] According to Mr. Albers, the planned use of the PAG fogging technology described in Halverson (Exh. 6) "in the referenced tank vaults has reduced airborne [contamination] levels from approximately 500,000 DAC to less than 50 DAC (Albers Decl. I, ¶ 14, bracketed text added). [60] Finally, Mr. Albers testified that the PAG fogging process has been successfully used for about 5 years at the Hanford facility (discussed Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 36 by Halverson, Exh. 6), as well as at six other nuclear facilities (Albers Decl. I, ¶ 15). [61] Mr. Albers emphasized that the process of the '355 patent encompasses encapsulation of both airborne and non-airborne particulates (Albers Decl. II, ¶ 3). 3. Analysis The Albers declarations and supporting exhibits are insufficient to show the claimed invention has satisfied a long-felt but unresolved need in the art. Mr. Albers testified that the "legacy waste" problem was publicly articulated in the early 1990s (FF 36) and that the PAG process of the '355 patent was developed in the mid 1990s (FF 55) and was being used by the late 1990s (FF 47 and 58). Standard decontamination processes, e.g., hydrolasing or hand wiping, were noted as inadequate in the 1997 Cavin correspondence (FF 38) which recommended exploring "new" cleanup processes, including chelation and application of fixatives (FF 39). Based on the submitted evidence, the long-felt need of cleaning up legacy waste was an articulated identified problem in the early 1990s and efforts to solve that problem, including the newer methods of cleaning up radioactive waste that had seeped into subsurfaces, occurred in the mid 1990s. For example, the 1997 Cavin correspondence refers to "new" chelation and fixative technologies9 (FF 38) and Mr. Albers testified that PAG technology of the '355 patent was also developed in the mid 1990s (FF 55). PAG technology was being used to solve the legacy waste problem at least by 1999 and 9 The nature of the chelation and fixative technologies referred to in Cavin correspondence is not of record. Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 37 perhaps as early as 1997 (FF 40-42). In addition, Appellant has not pointed us to evidence of record establishing that a less than 10 year time frame between articulation of an identified problem and its solution would have been considered a "long" time by one of ordinary skill in the art. Therefore, the evidence of record fails to show that the identified articulated need was a persistent long-felt unresolved need. In addition, the fogging process referred to in the evidence is not commensurate in scope with the claimed invention. Specifically, the D&D summary report and ESVE describe the nuclear waste cleanup process as involving a two-step process in which (i) an aerosol fog sized to behave more like a gas was generated from sugar, glycerin, and water and dispersed into a room to fix radioactive particulates to surfaces in the room as the fog settled, and (ii) a poly-urea layer coating was sprayed on to permanently seal the contamination in place (FF 46-48 and 50). The claimed invention is not reasonably limited to a process requiring (i) introduction of an aerosol fog sized to behave like a gas for cleanup of nuclear waste particles, (ii) generated from sugar, glycerin, and water, and (iii) followed by application of a poly-urea fixative after the fog settles. Nor does the claimed invention exclude process areas that are very large rooms (see FF 47). Furthermore, a general reference to an undefined aerosol fogging in Halverson (FF 53) is insufficient to show a nexus to the claimed invention. Therefore, the evidence is insufficient to show that the claimed invention satisfied the long- felt need for the invention as broadly claimed. In short, the Albers declarations and supporting exhibits are insufficient to show the claimed invention has satisfied a long-felt but Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 38 unresolved need in the art. Furthermore, the relied upon evidence is not commensurate in scope with the degree of patent protection desired. 4. Conclusion The evidence of secondary considerations submitted by Appellant, i.e., evidence of solution of a long-felt unresolved need, is insufficient to rebut the Examiner's prima facie conclusion of obviousness. IV. Order Upon consideration of the record, and for the reasons given, it is ORDERED that the decision of the Examiner rejecting claims 1-17, 22-30, and 32-48 as unpatentable under 35 U.S.C. § 103(a) over Grawe, Castronovo, and Mitsui is AFFIRMED, FURTHER ORDERED that the decision of the Examiner rejecting claims 18, 19, and 31 as unpatentable under 35 U.S.C. § 103(a) over Grawe, Castronovo, Mitsui, and Eller is AFFIRMED, FURTHER ORDERED that the decision of the Examiner rejecting claims 1, 4, 7-9, 11, 12, 14-19, 22, 23, 25-31, 33, 34, 37, 41, 47, and 48 as unpatentable under 35 U.S.C. § 103(a) over Eller, Mitsui, and Castronovo is AFFIRMED, FURTHER ORDERED that the decision of the Examiner rejecting claims 20 and 21 as unpatentable under 35 U.S.C. § 103(a) over Eller, Mitsui, Castronovo, and Wade is AFFIRMED, and FURTHER ORDERED that requests for extending time for taking any subsequent action in connection with this appeal are governed by 37 C.F.R. § 1.550(c). AFFIRMED Appeal 2009-1926 Reexamination Control 90/007,080 Patent 5,878,355 39 ack cc: Brian D. Smith, P.C. 1125 Seventeenth Street Suite 600 Denver, CO 80202 Third Party Requester: Matthew T. Bailey McKenna Long & Aldridge LLP 1900 K Street NW Washington, DC 20006 Copy with citationCopy as parenthetical citation