Ex Parte Aimi et al

Board of Patent Appeals and Interferences

Oct 7, 2010

11123375 (B.P.A.I. Oct. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARCO AIMI and TIMOTHY ERIC BEERLING
____________

Appeal 2009-013407
Application 11/123,375
Technology Center 1700
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2009-013407
Application 11/123,375

DECISION ON APPEAL1
This is an appeal from the final rejection of claims 1-10 and 18-20.
Claims 11-17 have been withdrawn from consideration. Claim 1 is
illustrative:
1. A toxic material containing device, comprising:
a first chamber containing a toxic material;
a second chamber containing a neutralizing material
capable of reducing the toxicity of the toxic material; and
a control mechanism for selectively combining the toxic
material and the neutralizing material to provide a combined material that is
less toxic than the toxic material.

The Examiner relies upon the following reference as evidence of
obviousness:
Webster et al. WO 99/33137 Jul. 1, 1999
Appellants’ claimed invention is directed to a device for containing
toxic material. The device comprises a first chamber, a second chamber and
a control mechanism that allows neutralizing material in the second chamber
to combine with toxic material in the first chamber to render the toxic
material less toxic.
Appealed claims 1-4, 6, 7, 9, 10, 18 and 19 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Webster. Claims 5, 8 and 20 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Webster.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Appeal 2009-013407
Application 11/123,375

Appellants provide separate arguments only for independent claims 1
and 18. Accordingly, claims 2-10 stand or fall together with claim 1 and
claims 19-20 stand or fall together with claim 18.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter is unpatentable over the cited prior art. Accordingly, we will sustain
the Examiner’s rejections for essentially those reasons expressed in the
Answer, and we add the following primarily for emphasis.
We consider first the § 102 rejection. We agree with the Examiner
that Webster, like Appellants, describes a toxic material containing device
comprising a first chamber that contains a toxic material, such as mercury, a
second chamber containing a fixation reagent that serves as a neutralizing
material, and a control mechanism for selectively combining the toxic
material and the fixation reagent to provide a combined material that is less
toxic than the toxic material. We also agree with the Examiner that the
appealed claims define only a structure comprising a first chamber, a second
chamber and a control mechanism for selectively combining material that
may be placed in the second chamber with material that is placed in the first
chamber.
The appealed claims, when given their broadest reasonable
interpretation, define a device or apparatus that is capable of containing a
toxic material and a neutralizing material in a first chamber and a second
chamber, respectively, but the toxic and neutralizing materials are not part of
the structure of the device. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI
1987). The appealed claims do not define a sealed container, such as a
battery, which requires the presence of a electrolyte material to qualify as a
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Appeal 2009-013407
Application 11/123,375

battery. The appealed claims, as drafted, broadly encompass an open
container with first and second chambers connected by a control mechanism.
By analogy, the structure of a box with two compartments is not defined by
the material placed in the two compartments, nor is the patentability of the
box determined by the material it contains.
Appellants maintain that Webster does not disclose a neutralizing
material because the aim of Webster is to reduce the solubility of soluble
metals and not to reduce their toxicity (App. Br. 6, last para.). However,
Appellants have not refuted the Examiner’s reasonable position that
rendering a soluble material insoluble makes it less toxic since it “is less
capable of causing cell damage because it can not be dissolved in water and
thus is not easily taken into an organism’s cells to cause damage” (Ans. 9,
2nd para.). Also, Webster relates solubility and toxicity by disclosing
“[c]ertain metals have solubility and toxicity concerns related to the valence
state of the metal” (pg. 18, last para.). Appellants have not explained how a
soluble metal, such as mercury, is not rendered less toxic when it becomes
less soluble or insoluble when reacting with a fixation reagent as disclosed
by Webster. Appellants’ argument that Webster relates to reducing the
solubility of soluble metals but does not disclose reducing their toxicity is
essentially one of semantics only. We are confident that one of ordinary
skill in the art would have understood that Webster is directed to reducing
the toxicity of soluble metals such as mercury.
Appellants do not set forth a separate, substantive argument for the
103 rejection of claim 5, 8 and 20 but assert that “these claims are patentable
for at least the same reasons provided above” with respect to the § 102
rejection (App. Br. 11, last para.).
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Appeal 2009-013407
Application 11/123,375

In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

PL
tc

Agilent Technologies, Inc. in care of:
CPA Global
P. O. Box 52050
Minneapolis, MN 55402
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