Ex Parte Chalmer et al

Board of Patent Appeals and Interferences

May 25, 2012

11341299 (B.P.A.I. May. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL DAVID CHALMER
and
ABDUL SHAHEED ABDUL
____________

Appeal 2010-009598
Application 11/341,299
Technology Center 1700
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
MARK NAGUMO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
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Paul David Chalmer and Abdul Shaheed Abdul, the Appellants,1 seek
our review under 35 U.S.C. § 134(a) of a final rejection of claims 3-10 and
12-17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The invention relates to a biofiltration system for removing volatile
organic compounds (VOCs), such as paint solvents, from air. Substitute
Specification filed March 25, 2006 (“Spec.”) at 1. Specifically, the system
includes a plurality of fabric-based bio-reactor panels, which upon being
applied with VOC-consuming microbes and nutrients, reduces the amount of
VOCs from the air moving through the system. Id. at 4.
Claims 3 and 12, the only independent claims on appeal, are
reproduced below:
3. A biofiltration system for treating biodegradable
airborne contaminants, comprising:
a bio-reactor chamber comprising a sealed housing;
a heater for maintaining the temperature within said
chamber within a predetermined range;
a plurality of bio-reactor panels mounted within said
chamber, wherein said bio-reactor panels each comprise at least
one woven fabric plane suspended vertically from an upper
portion of said housing;

1 The Appellants identify the real party in interest as “NESA & Associates,
Inc.” Appeal Brief filed November 12, 2009 (“Br.”) at 3.
2 Br. 3; Final Office Action mailed August 5, 2009 at 2; Examiner’s Answer
mailed March 1, 2010 (“Ans.”) at 2.
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an applicator system for applying a liquid mixture
containing microbes and nutrients to said bio-reactor panels;
and
an air handling system for moving air laden with
biodegradable contaminants through said chamber and over the
surfaces of said bio-reactor panels.

12. A biofiltration system for treating airborne volatile
organic compounds (VOCS), comprising:
a bio-reactor chamber comprising a sealed housing;
a heater for maintaining the temperature within said
chamber within a predetermined optimum range;
a plurality of fabric-based bio-reactor panels mounted
within said chamber;
a system for applying a temperature-controlled liquid
mixture containing microbes and nutrients to said bio-reactor
panels; and
an air handling system for moving air laden with VOC
through said chamber and over the surfaces of said bio-reactor
panels.
Br. 11, 13 (Claims App’x).
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 3, 5, 6, 8, 9, and 12 as unpatentable over Bayless3
in view of Kodo4 and Budahazi;5
II. Claim 4 as unpatentable over Bayless in view of Kodo,
Budahazi, and Voinche;6

3 U.S. Patent 6,667,171 B2 issued December 23, 2003.
4 U.S. Patent 6,083,740 issued July 4, 2000.
5 U.S. Patent Application Publication 2004/0157244 A1 published August
12, 2004.
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III. Claim 7 as unpatentable over Bayless in view of Kodo,
Budahazi and Abdul;7
IV. Claim 10 as unpatentable over Bayless in view of Kodo,
Budahazi, and Gruenberg;8
V. Claim 13 as unpatentable over Bayless in view of Kodo,
Budahazi, and Park;9
VI. Claims 14 and 15 as unpatentable over Bayless in view
of Kodo, Budahazi, and Hasz;10
VII. Claims 16 and 17 as unpatentable over Bayless in view
of Kodo, Budahazi, and Morneault.11
Ans. 3-12.

ISSUE
The Examiner found that Bayless describes, either explicitly or
inherently, an apparatus for carbon sequestration satisfying every limitation
of claim 3 or claim 12 except: (1) a heater; and (2) a plurality of bio-reactor
panels comprising at least one woven fabric plane or a plurality of fabric-
based bio-reactor panels. Ans. 3-4. With respect to difference (1), the
Examiner relied on the teachings of Kodo. Id. With respect to difference

6 U.S. Patent 4,678,587 issued July 7, 1987.
7 U.S. Patent 5,577,558 issued November 26, 1996.
8 U.S. Patent Application Publication 2003/0054544 A1 published March
20, 2003.
9 U.S. Patent Application Publication 2004/0137610 A1 published July 15,
2004.
10 U.S. Patent 3,712,027 issued January 23, 1973.
11 U.S. Patent Application Publication 2004/0071589 A1 published April 15,
2004.
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(2), the Examiner relied on the teachings of Budahazi. Id. Specifically with
respect to Budahazi, the Examiner found that the reference discloses an
apparatus for purifying DNA that includes a filtration unit in which the filter
may be a woven fabric. Id. Based on these findings, the Examiner
concluded that “it would be obvious for one of ordinary skill in the art to try
the filter of Budahazi within the tank of Bayless [as modified by] Kodo with
a reasonable expectation of success as Budahazi has shown that such a
woven fabric is used for DNA purification.” Id.
The Appellants contend that the Examiner’s rejection is in error
because Budahazi teaches the use of a fabric filter in the context of
mechanical, and not biological, filtration. Br. 7. The Appellants urge that
“Budahazi is devoid of any teaching or suggestion that a fabric could be
used to support a bio-remediation reaction.” Id.
Thus, a dispositive issue arising from these contentions is:
Did the Examiner articulate sufficient reasoning with some rational
underpinning to support the conclusion that a person of ordinary skill in the
art would have been prompted to use Budahazi’s filter in Bayless’s carbon
sequestration apparatus?

DISCUSSION
We agree with the Appellants that the Examiner’s rejections are not
well founded.
Bayless describes biologically-based gas cleaning systems for
reducing emissions from fossil burning units (i.e., removing carbon-
containing compounds from a flowing gas stream). Col. 1, ll. 26-29; col. 2,
ll. 39-41. In particular, Bayless teaches the use of a membrane having
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photosynthetic microbes, such as algae and cyanobacteria, deposited thereon
as the filtration media. Col. 2, ll. 41-43. Bayless states that the membrane
should be an inorganic material, such as plastic, to avoid problems with
fungi growth. Furthermore, Bayless teaches that the membrane “must be
composed of a material that suits the specific microbe used, being non-toxic
to the microbe and supporting adhesion,” that “[i]t is essential that microbes
supplied to the growth surface . . . be able to grow in the attached state,” and
“[t]he growth surface . . . needs to provide reliable structural integrity when
exposed to the flue gas environment.” Col. 4, ll. 12-22.
Budahazi, on the other hand, describes a filtration system for
purifying plasmid DNA. ¶¶ [0009], [0020], [0047]-[0048]. Budahazi states
that woven fabrics having a pore size for retaining insoluble material while
allowing plasmid DNA to pass through are an example of a suitable filter
material for removing impurities from plasmid DNA . ¶ [0048].
Thus, while Budahazi does disclose woven fabrics as a filter, it is in
the context of a filter suitable for purifying plasmid DNA. The Examiner,
however, has not directed us to sufficient evidence that Budahazi’s woven
fabric filter would be suitable in a flue gas environment and possess the
characteristics explicitly required by Bayless. Absent additional evidence,
the Examiner’s analysis fails. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (“a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.”).
The Examiner’s argument based on an “obvious to try” rationale, page
4 of the Answer, is misplaced because Bayless merely provides general
guidance as to the selection criteria for the filter media, rather than a finite
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number of identified, predictable solutions. KSR, 550 U.S. at 421. “[W]here
the prior art, at best, ‘[gives] only general guidance as to the particular form
of the claimed invention or how to achieve it,’ relying on an ‘obvious-to-try’
theory to support an obviousness finding is ‘impermissible.’” In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1073 (Fed. Cir. 2012) (internal citations omitted).
We need not discuss any of the other cited references because they
have not been applied in a manner that would cure the fundamental
deficiency in the Examiner’s proposed combination of Bayless and
Budahazi.

ORDER
The Examiner’s rejections of claims 3-10 and 12-17 are reversed.

REVERSED

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