Ex Parte 5878355 et al

Board of Patent Appeals and Interferences

Mar 9, 2009

90007080 (B.P.A.I. Mar. 9, 2009)

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).
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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.").
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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").
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(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").
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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).
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[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).
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[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).
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[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
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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).
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[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
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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
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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.

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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).

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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
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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).
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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
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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),
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[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
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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.
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[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.
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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
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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
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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
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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
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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,
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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.

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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
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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
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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).
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[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).
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[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).
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[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
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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
Coatingâ„¢ has been used along with a fluorescent
tracer, Invisible Blueâ„¢, and a poly-urea coating,
Insta-Coteâ„¢, 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
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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).
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[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
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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.
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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