Ex Parte Anderson et al

Patent Trial and Appeal Board

Oct 24, 2016

11375644 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111375,644 03/14/2006
32692 7590 10/26/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Mark T. Anderson
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
60899US002 2867
EXAMINER
BUCKLEY, AUDREA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
10/26/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKT. ANDERSON,
RACHAEL A.T. GOULD, and JEFFRY L. JACOBS 1
Appeal2014-001961
Application 11/375,644
Technology Center 1600
Before FRANCISCO C. PRATS, JACQUELINE T. HARLOW, and
TA WEN CHANG, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to articles,
useful as construction materials, that have biocidal ingredients incorporated
into them. The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants state that the "real party in interest is 3M Company (formerly
known as Minnesota Mining and Manufacturing Company) of St. Paul,
Minnesota and its affiliate 3M Innovative Properties Company of St. Paul,
Minnesota." Br. 2.
Appeal2014-001961
Application 11/375,644
STATEMENT OF THE CASE
The Specification discloses "biocidal construction substrates that
include a biocidal material within the construction substrate and a biocidal
polymeric layer disposed on the construction substrate surface." Spec. 2.
The Specification discloses that the "combination of biocidal material
within the structural layer and the biocidal coating on the structural layer
unexpectedly provides long-term resistance to staining from bio-organisms
or from airborne contaminants." Id. at 3.
In particular, the Specification explains, when exposed to ultraviolet
(UV) light from sunlight, "the photocatalytic titania in the structural layer
and coatings[] photo-oxidizes organic materials. For example, it oxidizes
materials such as volatile organic compounds, soot, grease, and micro-
organisms; all of which can cause unsightly discoloration." Id.
Claim 1, the only independent claim on appeal, and claims 5 and 7
illustrate the appealed subject matter, and read as follows (Br. 8):
1. A structure comprising:
a structural layer comprising a biocidal material further
comprising photocatalytic particles selected from
the group consisting of ZnO, W03, Sn02, CaTiQ3,
Fe203, Mo03, Nb20s, TixZro-x)02, SiC, SrTiQ3,
CdS, GaP, InP, GaAs, BaTiQ3, KNbQ3, Ta20s,
Bh03, NiO, Cu20, Si02, MoS2, InPb, Ru02, Ce02,
Ti(OH)4, or combinations thereof, the structural
layer having an external surface; and
a biocidal polymeric coating layer on the external
surface, wherein the biocidal polymeric coating
layer comprised photocatalytic particles and
polyacrylate.
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Application 11/375,644
5. The structure according to claim 1 wherein the biocidal
polymeric coating layer comprises a quaternary ammonium
compound and a polymeric material
7. The structure according to claim 1 wherein the structural
layer is formed from concrete.
The following rejections are before us for review:
(1) Claims 1, 3, 4, 6-8, 11, 13, and 14, under 35 U.S.C. § 103(a), for
obviousness Freed,2 Beverly,3 Bygott,4 and Haneda5 (Final Action 2---6); and
(2) Claims 5 and 9, under 35 U.S.C. § 103(a), for obviousness over
Freed, Beverly, Bygott, and Sengupta6 (Final Action 7-8).
OBVIOUSNESS-
FREED, BEYERL Y, BYGOTT, AND HANEDA
The Examiner's Position
Appellants do not present separate arguments as to any of the claims
subject to this ground of rejection. Accordingly, we limit our analysis to
claim 1. See 37 C.F.R § 41.37(c)(l)(iv).
The Examiner cited Freed as describing reinforced concrete having
antimicrobial fibers dispersed throughout the concrete to reduce the growth
of mold and mildew on the concrete. Final Action 3--4. The Examiner
found that Freed differs from claim 1 in that Freed does not teach "a biocidal
polymeric coating layer in addition to the antimicrobial agent incorporated
2 U.S. Patent No. 6,162,845 (issued Dec. 19, 2000).
3 EP 1 550 691 Al (published July 6, 2005).
4 U.S. Patent No. 7,521,039 B2 (issued Apr. 21, 2009).
5 Di Li and Hajime Haneda, Morphologies of zinc oxide particles and their
effects on photocatalysis, 51 Chemosphere 129-137 (2003) ("Haneda").
6 WO 02/10244 A2 (published Feb. 7, 2002).
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Application 11/375,644
into the concrete. Freed also does not explicitly teach a photocatalytic
particle incorporated into the concrete." Id. at 4.
To address those differences, the Examiner cited Beverly as evidence
that it was known in the art to apply a polymeric coating, composed of
polyacrylate and photocatalytic particles as required by claim 1, to building
materials. Id. at 4--5. The Examiner cited Bygott as evidence that it was
known in the art to include titanium dioxide as an antimicrobial
photocatalytic material in building materials, both in coatings, and in the
materials themselves. Final Action 5. The Examiner cited Haneda as
evidence that the zinc oxide recited in Appellants' claim 1 was known in the
art to be an equivalent photocatalytic material to Bygott's titanium dioxide.
Id.
Based on the references' teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious to combine Beverly's
polymeric coating layer "with the antimicrobial reinforced concrete material
as taught by Freed." Id. The Examiner reasoned that an ordinary artisan
"would have been motivated to do so in order to reinforce the antimicrobial
activity in the substrate by combining it with an antimicrobial coating. This
combination utilizes two individually known antimicrobial active agents
which reasonably would have been expected to maintain their efficacy upon
combination." Id. at 5---6.
The Examiner reasoned that an ordinary artisan also would have been
motivated to combine the teachings of Freed and Beverly in the posited
manner, "based on the explicit suggestion of Bygott et al. which teaches the
preferable inclusion of titanium dioxide (a photocatalyst and biocide) in both
the substrate and its coating." Id. at 6. The Examiner reasoned that a skilled
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Application 11/375,644
artisan "further would have been motivated to include zinc oxide in place of
or in addition to titanium dioxide as taught by Haneda, since Haneda teaches
these materials as equivalent photocatalysts having a characteristic similar
band gap." Id.
Lastly, the Examiner concluded that an ordinary artisan would have
considered it obvious to include zinc oxide and, optionally, titanium dioxide
photocatalytic particles into Freed's antimicrobial concrete, "since Freed
teaches that an antimicrobial active is any substance which effectively
protects the fibers and concrete from biological attack from organisms, and
since Beverly teaches zinc oxide and titanium dioxide and additional
antimicrobial actives such as triclosan to be useful in building materials."
Final Action 6 (citing MPEP § 2144.06; In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980) ("It is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same purpose, in order
to form a third composition which is to be used for the very same
purpose. . . . [T]he idea of combining them flows logically from their
having been individually taught in the prior art.").
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prim a facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art as set out in the Final Action, discussed
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Application 11/375,644
above, and in the Examiner's Answer. Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to representative claim 1.
Appellants contend initially that the cited references do not suggest
the structure of claim 1, which requires both a structural layer that includes
photocatalytic particles, as well as a polymeric coating on the surface of the
structural layer. Br. 4--5. In particular, Appellants contend, Bygott "appears
to describe only using photocatalytic particles in a structural layer or a
coating layer, but does not appear to describe a photocatalyst in a structural
layer that is covered by a coating layer." Br. 4. Accordingly, Appellants
contend, "the cited references do not appear to describe or suggest each
element of independent claim 1, and claim 1 is not unpatentable under 3 5
U.S.C. § 103(a) in view of the proposed combination." Id. at 5.
We are not persuaded. As the Supreme Court explained in KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398 (2007), "when a patent 'simply arranges
old elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
In the instant case, Appellants' claim 1 recites a structure composed of
two layers: ( 1) a structural layer that includes a biocidal material composed
of photocatalytic particles, and (2) a coating layer composed of
photocatalytic particles and polyacrylate. Br. 8. Claim 1 limits the
photocatalytic particles in the structural layer to a number of materials,
including zinc oxide. Id.
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Bygott is directed to preparation of a specific crystalline form of
titanium dioxide photocatalytic particle. Bygott, abstract. Like Appellants'
Specification, Bygott explains that photocatalysts "typically comprise one or
more metal oxides, such as titanium dioxide, zinc oxide, tungsten oxide
and/or zirconium oxide. Titanium dioxide, which is a particularly common
photocatalyst, has for example, been used in applications, such as air-
conditioning to remove toxic or malodorous substances, water purification
and destruction of harmful bacteria." Id. at 1:21-27.
The following passage from Bygott, upon which Appellants focus
their contentions (see Br. 4--5), explains that photocatalytic particles can be
included in a number of different building materials:
The photocatalyst of the present invention may, for
example, be incorporated into a photocatalytic article. The
phrase "photocatalytic article" refers to a substrate that has been
combined with a photocatalyst. According to the present
invention, preferably the substrate is selected from the group
consisting of ceramic tile, glass, concrete, metals and polymeric
substances and 1s coated with the above-described
photocatalytic particles. Methods for incorporating
photocatalysts into photocatalytic articles are well known to
persons skilled in the art.
The photocatalyst may also be incorporated directly or as
part of a photocatalytic article into a "photocatalytic
composition." Examples of photocatalytic compositions
include but are not limited to photocatalytic paints,
photocatalytic coatings, photocatalytic cement and
photocatalytic mortar. Methods for incorporating
photocatalysts and/or photocatalytic articles into photocatalytic
compositions are also well known to persons skilled in the art.
The photocatalysts of the present invention may be used
directly or as part of photocatalytic articles or photocatalytic
compositions in applications, including but not limited to,
environmental abatement and defogging of mirrors and glass by
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Application 11/375,644
exposing the photocatalyst, the photocatalytic article or
photocatalytic composition to ultraviolet and/or visible light.
Bygott, 4:14--37 (emphasis added).
Given this disclosure, it is evident that Bygott contemplates including
photocatalytic particles in building materials, both in the form of a
"photocatalytic article" such as coated concrete (id. at 4: 16-20), and also
"directly or as part of a photocatalytic article into a 'photocatalytic
composition,"' examples of which include "photocatalytic cement and
photocatalytic mortar." Id. at 4:24--28 (emphasis added). We are not
persuaded, therefore, that the coating embodiment and direct incorporation
embodiment described by Bygott are mutually exclusive, as Appellants aver.
See Br. 4--5.
Given Bygott' s disclosure of the desirability of including
photocatalytic particles in both coatings as well as directly in substrates used
in building materials, Appellants also do not persuade us that a
preponderance of the evidence fails to support the Examiner's finding that
an ordinary artisan would have been motivated to combine a photocatalytic
particle-containing coating with a photocatalytic particle-containing
substrate "in order to reinforce the antimicrobial activity in the substrate by
combining it with an antimicrobial coating." Final Action 5---6.
To that end, we note that Freed teaches the desirability of including
essentially any type of antimicrobial agent (Freed 5:31-36) in fibers
dispersed in a variety of building material substrates similar to those
described in Bygott, including concrete, as well as "mortar, grout, shotcrete,
cast in place concrete, stucco, cementitious aggregate, asphalt concrete and
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Application 11/375,644
the like, and mixtures thereof~ all of which generally comprise hardenable
concrete-like materials." Id. at 3:42--45.
Beverly, like Bygott, teaches the desirability of including a biocidal
compound in an acrylate-based coating for building materials (Beverly,
abstract), the biocidal compound including, among others, the zinc oxide
recited in Appellants' claim 1. Id. at i-f 15.
Haneda, also like Bygott, teaches that claim 1 's zinc oxide was an art-
recognized photocatalytic compound similar in properties to titanium
dioxide. Haneda 129 ("Since ZnO has almost the same band gap energy (3.2
e V) as Ti02, its photocatalytic capacity is anticipated to be similar to that of
Ti02."); see also Bygott 1:21-23 (zinc oxide among compounds typically
included in photocatalysts ).
Thus, in addition to Bygott's express teaching that antimicrobial
photocatalytic agents are desirably included in building material coatings, as
well as being dispersed into the building materials themselves, Freed teaches
that antimicrobial compounds are desirably incorporated into building
materials, and Beverly teaches that antimicrobial photocatalytic materials
may be incorporated into building material coatings. Further, Haneda, like
Bygott, teaches that zinc oxide was known in the art to be a photocatalytic
compound. Appellants do not, therefore, persuade us that the cited
references fail to provide reason for preparing a structure having all of the
features required by claim 1. Moreover, because the suggestion for
preparing a composition having the claimed features comes from the prior
art, we do not find Appellants' arguments regarding improper hindsight
convincing. See Br. 6.
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Application 11/375,644
We are also unpersuaded by Appellants' contention that the cited
references fail to support "the suggestion that incorporation of photocatalytic
particles would maintain efficacy when covered by a polymer coating. That
is, none of the cited references describe that a light activated photocatalytic
material would function as described when covered by a polymeric coating."
Br. 5.
Contrary to Appellants' contention, rather than suggesting that its
coating would block light penetration, and thereby prevent activation of the
photocatalytic particles, Beverly discloses that its coatings are preferably
transparent. Beverly ,-r 22. Freed, moreover, discloses incorporating
biocidal particles into the actual building material to ensure the absence of
microbial growth in the event the material cracks, thus suggesting that it
would be desirable to disperse biocidal particles within a building material
even if it were coated. Freed 6:47-50 ("[I]n view of the zones of inhibition
achieved, protection against bacteria, mold, fungi and the like is available
even should the concrete crack, unless, of course, there is gross
contamination.").
As to Appellants' assertions regarding unexpected results (Br. 6
(citing Spec. 3)), Appellants do not direct us to any specific comparison
between a claim-encompassed embodiment and the closest prior art. We,
therefore, find these assertions insufficient to demonstrate nonobviousness.
See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
("[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.").
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Lastly, Appellants do not persuade us that an ordinary artisan would
have considered it illogical to combine Freed and Beverly in the manner
posited by the Examiner. See Br. 6-7. It might be true, as Appellants
contend, that neither Freed nor Beverly expressly describes any shortcoming
in the techniques they respectively use to protect building materials from
microbial contamination.
As the Supreme Court has explained, however, in determining
whether the prior art supplies a reason for practicing the claimed subject
matter, the analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR, 550 U.S. at 418; see also id. at 421 ("A person of
ordinary skill is ... a person of ordinary creativity, not an automaton.").
In the instant case, we agree with the Examiner that an ordinary
artisan would have reasonably inferred that, by both coating a building
material substrate, such as concrete, with antibacterial photocatalytic
particles as taught by Bygott and Beverly, and also dispersing antibacterial
photocatalytic particles within the building material substrate, as taught by
Bygott and Freed, one would "reinforce the antimicrobial activity in the
substrate" (Final Action 5---6), thus providing a building material maximally
protected against microbial contamination.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that the evidence of record fails to support the Examiner's prima
facie case of obviousness as to claim 1. As also discussed above, Appellants
have not advanced secondary evidence of nonobviousness sufficient to
outweigh the Examiner's evidence of prima facie obviousness. Accordingly,
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Application 11/375,644
we affirm the Examiner's rejection of claim 1 over the cited references.
Because they were not argued separately, claims 3, 4, 6-8, 11, 13, and 14
fall with claim 1. See 37 C.F.R § 41.37(c)(l)(iv).
OBVIOUSNESS-
FREED, BEVERLY, BYGOTT, AND SENGUPTA
In rejecting claims 5 and 9, both of which depend from claim 1, the
Examiner relied on the teachings of Freed, Beverly, and Bygott discussed
above, and cited Sengupta as evidence that an ordinary artisan would have
considered it obvious to include, in a biocidal coating, a quaternary
ammonium compound, as recited in claims 5 and 9. Final Action 7-8.
Appellants contend only that Sengupta fails to remedy the previously
argued deficiencies, addressed above, of the combination of Freed, Beverly,
and Bygott as to claim 1. Br. 7. As seen above, however, Appellants do not
persuade us that the combination of Freed, Beverly, and Bygott is deficient
in demonstrating the obviousness of the structure recited in claim 1.
Accordingly, because Appellants do not identify, nor do we discern, any
deficiency in the Examiner's conclusion of obviousness as to claims 5 and 9,
we affirm the Examiner's rejection of those claims as well.
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 1, 3, 4, 6-8, 11, 13, and 14, under 35 U.S.C. § 103(a), for
obviousness Freed, Beverly, Bygott, and Haneda.
For the reasons discussed, we also affirm the Examiner's rejection of
claims 5 and 9, under 35 U.S.C. § 103(a), for obviousness over Freed,
Beverly, Bygott, and Sengupta.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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