Ex Parte Elrod

Board of Patent Appeals and Interferences

Jul 31, 2006

10084829 (B.P.A.I. Jul. 31, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte DON ELROD
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Appeal No. 2006-1022
Application No. 10/084,829
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ON BRIEF
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Before GARRIS, KRATZ, and FRANKLIN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal which involves claims 7-19, 21-26, 28-30 and 34-53.
The subject matter on appeal relates to a fabric, which has antimicrobial or chemical
detoxification properties, produced in accordance with a method comprising the steps of (1)
treating a fabric with ozone to form peroxide groups, (2) decomposing the peroxide groups with
an iron catalyst to form oxygen radicals, and (3) grafting a polymerizable monomer to the
oxygen radicals on the fabric surface, wherein the monomer or a derivative thereof provides the
Appeal No. 2006-1022
Application No. 10/084,829

aforementioned antimicrobial or chemical detoxification properties. The monomer may be a
carboxylic acid which is ultimately oxidized to a regenerable percarboxylic acid that provides the
antimicrobial or detoxifying properties. This appealed subject matter is adequately represented
by independent claims 23 and 34 which read as follows:
23. An antimicrobial fabric produced in accordance with a method comprising the steps
of:

treating a fabric with ozone to form peroxide groups on the fabric;

decomposing the peroxide groups with an iron catalyst to form oxygen radicals; and

grafting a polymerizable monomer to the oxygen radicals on the fabric surface, wherein
the grafted fabric comprises a disinfectant that is the polymerizable monomer or a derivative of
the polymerizable monomer.

34. A protective fabric for protection against chemicals produced in accordance with a
method comprising the steps of:

treating a fabric with ozone to form peroxide groups on the fabric;

decomposing the peroxide groups with an iron catalyst to form oxygen radicals;

grafting a carboxylic acid to the oxygen radicals on the fabric surface; and

oxidizing the carboxylic acid to a regenerable percarboxylic acid, wherein the
percarboxylic acid is covalently bonded to the fabric to provide the protection against chemicals.

The reference set forth below is relied upon by the examiner as evidence of anticipation
and obviousness.
Calcaterra et al. (Calcaterra) 4,810,567 Mar. 7, 1989
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Application No. 10/084,829

All of the appealed claims1 are rejected under 35 U.S.C. § 102(b) as being anticipated by
or under 35 U.S.C. § 103(a) as being unpatentable over Calcaterra.
We refer to the Brief (i.e., the Supplemental Brief filed September 12, 2005) and the
Reply Brief (also filed September 12, 2005) and to the Answer for a complete discussion of the
opposing viewpoints expressed by the appellant and by the examiner concerning the above-noted
rejections.
OPINION
For the reasons set forth in the Answer and below, we will sustain each of these
rejections.
The appellant’s primary and repeatedly advanced argument is expressed on page 8 of the
Supplemental Brief as follows:
Appellant claims a fabric having a monomer grafted to the fabric. Calcaterra
discloses a fabric having a copolymer grafted to the fabric. Since a copolymer
is not the same as a monomer, Calcaterra fails to disclose each and every
limitation claimed by Appellant in independent claims 23 and 34.

Like the examiner, we find that Calcaterra discloses forming an antimicrobial fabric via a
process which includes grafting a monomer onto the fabric (e.g., see lines 13-30 in column 2 and
the paragraph bridging columns 6 and 7). Contrary to the appellant’s afore-quoted argument,
this process step corresponds to the grafting process language of product-by-process claims 23
and 34 (which are the only independent claims on appeal). We appreciate that Calcaterra’s
ultimate product is in the form of a graft copolymer. However, this fact does not render the

1 Notwithstanding a typographical error in listing the rejected claims on page 3 of the Answer, it is apparent that all
claims on appeal have been rejected over the Calcaterra reference (e.g., see page 1 of the Supplemental Brief filed
September 12, 2005).
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Appeal No. 2006-1022
Application No. 10/084,829

examiner’s § 102 and § 103 rejections improper since a graft copolymer product is not excluded
by the aforementioned claims. This latter point is most clearly evinced by claim 14 which
depends from independent claim 23 and which expressly recites “providing a polymerizable co-
monomer along with the monomer to form a copolymer” (emphasis added).
The appellant further argues that “Calcaterra does not disclose a fabric having sufficient
peracid to detoxify pesticides as claimed by Appellant in claims 21 and 38” (Supplemental Brief,
page 8). In this regard, the appellant acknowledges the examiner’s position that the reference
teaches a chain terminator in the form of percarboxylic acid (e.g., see lines 34-53 in column 8).
Nevertheless, it is the appellant’s contention that “the small amount of –00H used as a chain
terminator of the copolymer attached to the fabric of Calcaterra is not sufficient to provide
effective biocidal activity or effective chemical weapon or pesticide detoxification”
(Supplemental Brief, page 9).
As properly explained by the examiner in her answer, the deficiency of the appellant’s
contention is that the claims under consideration do not contain any requirements as to the
amount of percarboxylic acid which must be present or the amount of antimicrobial or
detoxification activity which must be exhibited by the percarboxylic acid. That is, the claims
encompass a fabric having the smallest possible amount of percarboxylic acid and antimicrobial
or detoxification activity exhibited thereby. Under these circumstances, it is reasonable and
appropriate for the Patent and Trademark Office to require that the appellant prove that the
percarboxylic acid of Calcaterra’s fabric does not necessarily and inherently possess the
antimicrobial and detoxification properties required by the claims under review. See In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) and Ex parte Levy, 17 USPQ2d
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Application No. 10/084,829

1461, 1463-64 (Bd. Pat. App. & Inter. 1990) No such proof has been advanced on the record of
this appeal.
Finally, the appellant argues that “the –OOH terminator disclosed by Calcaterra does not
form a peracid” (Supplemental Reply Brief, paragraph bridging pages 5-6). According to the
appellant, “a peracid must have (1) the –OOH group (2) bonded to a carbon and (3) an oxygen
bonded with a double bond to the same carbon” (id.). Though not expressly stated, the premise
of this argument is that patentee’s –OOH terminator does not include an oxygen bonded with a
double bond to the same carbon as the –OOH group and therefore is not a peracid. This
argument is unpersuasive because its aforementioned premise is incorrect. The accepted
definition of a peracid does not require the presence of such a double bond oxygen (e.g., see
Hawley’s Condensed Chemical Dictionary, 14th Edition, page 847).
For the reasons set forth above and in the answer, it is our ultimate determination that the
examiner has established a prima facie case of unpatentability which the appellant has failed to
successfully rebut with argument or evidence to the contrary. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We hereby sustain, therefore, the examiner’s
§ 102 and § 103 rejections of all appealed claims based on Calcaterra.
The decision of the examiner is affirmed.
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Appeal No. 2006-1022
Application No. 10/084,829

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(iv)(effective Sept. 13, 2004).
AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Beverly A. Franklin )
Administrative Patent Judge )

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