Ex Parte Jackson et al

Board of Patent Appeals and Interferences

Jul 15, 2005

10027433 (B.P.A.I. Jul. 15, 2005)

1
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written for publication and is not binding precedent of the Board.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 DELWIN JACKSON and LELAND G. CLOSE
_____________
Appeal No. 2005-1438
Application No. 10/027,433
______________
ON BRIEF
_______________
Before PAK, DELMENDO and JEFFREY T. SMITH, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1 through 5, 8 and
13 through 17, which are all of the claims pending in the above-
identified application.
According to appellants (Brief, page 3), “all of the claims
stand together.” Therefore, for purposes of this appeal, we
select claim 1 from all of the claims on appeal and decide the
Appeal No. 2005-1438
Application No. 10/027,433
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propriety of the examiner’s rejection based on this claim alone
in accordance with 37 CFR § 1.192(c)(7)(2003) and 37 CFR
§ 41.37(c)(1)(vii)(2004). Claim 1 is reproduced below:
1. A method of producing an antimicrobial hard surface
substrate comprising the steps of:
a) providing a hard surface substrate;
b) providing a sol-gel precursor formulation comprising a
host precursor component and at least one metal-containing
antimicrobial agent selected from the group consisting of
metal-containing ion-exchange compounds, metal-containing
zeolites, metal-containing glasses, and any mixtures
thereof;
c) compounding said sol-gel firm precursor formulation to
produce an adhesive sol-gel coating composition;
d) applying said sol-gel coating composition to at least a
portion of said hard surface substrate; and
e) exposing said sol-gel coated hard surface substrate to
a temperature of at most about 800oC to form a finished sol-
gel film-coated hard surface substrate,
wherein said finished substrate exhibits a log kill
rate for Klebsiella pneumoniae of at least 0.5 as measured
under a modified plate contact method being JIS Z2801:2000
utilizing a phosphate buffer solution.
The references relied upon by the examiner are:
Oku et al. (Oku) 5,882,808 Mar. 16, 1999
Deith WO 91/08179 Jun. 13, 1991
(Published World Intell. Prop. Org. Application)
Appeal No. 2005-1438
Application No. 10/027,433
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Claims 1 through 5, 8 and 13 through 17 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Oku and Deith.
We have carefully reviewed the claims, specification, and
applied prior art references, including all of the arguments
advanced by both the examiner and the appellants in support of
their respective positions. This review has led us to conclude
that the examiner’s Section 103 rejection is well founded.
Accordingly, we affirm the examiner’s Section 103 rejection for
the findings of fact and conclusions set forth in the Answer. We
add the following primarily for emphasis and completeness.
Under 35 U.S.C. § 103, the obviousness of an invention
cannot be established by combining the teachings of the prior art
references absent some suggestion or incentive supporting the
combination. See ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). This does
not mean that the cited prior art references must specifically
suggest making the combination. See B.F. Goodrich Co. v.
Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401, 1403,
7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather, the test for
obviousness is what the combined teachings of the prior art
Appeal No. 2005-1438
Application No. 10/027,433
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references would have suggested to those of ordinary skill in the
art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). This test requires us to take into account not
only the specific teachings of the prior art references but also
any inferences which one skilled in the art would reasonably be
expected to draw therefrom. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
With the above obviousness test in mind, we turn to the
examiner’s rejection of claims 1 through 5, 8 and 13 through
17 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Oku and Deith. We note that according to the
appellants (Brief, page 4):
Deith teaches applying a silica-based glaze to a
ceramic substrate by a sol-gel method, as an
alternative to a conventional, high temperature firing
glaze, wherein the glaze is formed by providing a sol-
gel precursor formulation comprising a host precursor
component, allowing the formulation to form a sol-gel,
applying the sol-gel to the substrate and heating at
termperatures of about 500oC to form a finished coating
on the substrate (page 3, lines 12-34; Example).
Appeal No. 2005-1438
Application No. 10/027,433
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We find that Deith further teaches that its sol-gel process is
superior to the conventional high temperature glazing method in
glazing ceramic substrates, such as ceramic tiles or pottery
ware. See pages 1, 3 and 4. We recognize that Deith is silent
as to using the claimed antimicrobial agent in its sol-gel
glazing process.
However, we find that Oku teaches an antibacterial and anti-
fungal glaze composition for ceramic products, such as ceramic
tiles and porcelain. See column 1, lines 8-43 and the abstract.
According to column 4, lines 7-32, of Oku, this antibacterial and
anti-fungal glaze composition can be mixed with a conventional
glaze, inclusive of that described in Deith, and then affixed to
the substrates of the ceramic products via “any conventional
process.” As one of the conventional glazing processes, Oku, for
example, discloses mixing, coating and baking the antibacterial
and anti-fungal glaze composition and the conventional glaze to
form an antibacterial and anti-fungal glaze layer on the ceramic
products (corresponding to the conventional high temperature
glazing method not preferred by Deith). See column 2, lines
8-15, column 4, lines 26-31 and column 5, lines 15-35. The
antibacterial and anti-fungal glaze composition contains, inter
alia, an ion-exchange compound (e.g., aluminum silicate compounds
Appeal No. 2005-1438
Application No. 10/027,433
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and silica gel) carrying silver corresponding to the claimed
antimicrobial agent. See column 3, lines 22-32. The above
antibacterial and anti-fungal glaze composition is said to be
useful in meeting the increasing sanitary requirement for ceramic
products, such as ceramic tiles, since “the conventional glaze
does not inherently possess anti-bacterial and anti-fungal
properties . . . . ” See column 1, lines 34-63.
Given the above teachings, we concur with the examiner that
one of ordinary skill in the art would have been led to use the
antibacterial and anti-fungal glaze composition, inclusive of the
claimed antimicrobial agent (e.g., metal containing ion-exchange
compounds) taught by Oku, with a conventional glaze, such as the
one taught by Deith, in the form of a sol-gel, motivated by a
reasonable expectation of successfully obtaining the benefits of
both the sol-gel glazing method taught in Deith and the
antibacterial and anti-fungal glaze composition taught in Oku.
The nature of the problem in the art, i.e., the sanitary problem
associated with ceramic products, such as ceramic tiles, would
also have led one of ordinary skill in the art to employ the
antibacterial and anti-fungal glaze composition taught in Oku in
the sol-gel glazing process described in Deith.
Appeal No. 2005-1438
Application No. 10/027,433
1 Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int.
1985), aff’d. mem., 759 F.2d 1017 (Fed. Cir. 1986) (holding that
the recognition of another advantage flowing naturally from
following the suggestion of the prior art cannot be the basis for
patentability when the difference would otherwise be obvious).
2 We also determine that using an optimum amount of the
antibacterial and anti-fungal composition to have at least the
minium bacterium log kill rate is well within the ambit of one of
ordinary skill in the art since the purpose of using the
antibacterial and anti-fungal composition is to kill a sufficient
number of bacteria to provide a sanitary condition. In other
words, the amount of the composition used or the bacterium log
kill rate are result effective variables. In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980)(“[D]iscovery of an
optimum value of a result effective variable in a known process
is ordinarily within the skill of the art”).
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The appellants do not dispute the examiner’s determination
that the claimed log kill rate for a bacterium, i.e., Klebsiella
pneumoniae, would naturally flow from following the suggestion
of the combined teachings of Deith and Oku.1 Compare the
Answer, page 4, with the Brief in its entirety.2 Rather,
the appellants appear to argue that Oku teaches away from
using its antibacterial and anti-fungal composition in the
sol-gel glazing process described in Deith. See the Brief,
page 5. In support of this argument, the appellants focus
on the examples in Oku, which are directed to a conventional
high temperature glazing method. Id.
Appeal No. 2005-1438
Application No. 10/027,433
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We are not persuaded by this argument. As indicated supra,
Oku is not limited to employing its antibacterial and anti-fungal
composition in the conventional high temperature glazing method.
Oku teaches that the antibacterial and anti-fungal glaze
composition can be used with any conventional glaze, inclusive of
that described in Deith, and can be affixed to the substrate of a
ceramic product via “any conventional [glazing] process,”
inclusive of the sol-gel glazing process described in Deith. Oku
also teaches that its antibacterial and anti-fungal glaze
composition solves the sanitary problem associated with ceramic
products, such as the ceramic tiles described in Deith. Thus,
nothing in Oku teaches away from employing its antibacterial and
anti-fungal glaze composition in Deith’s sol-gel glazing process
used for glazing ceramic products, such as ceramic tiles. In
fact, the recognition of the sanitary problem associated with
ceramic tiles, together with the knowledge of the benefits
offered by both the antibacterial and anti-fugal glaze
composition taught by Oku and the sol-gel glazing process taught
by Deith, would have led one of ordinary skill in the art to
arrive at the claimed subject matter within the meaning of
35 U.S.C. § 103.
Appeal No. 2005-1438
Application No. 10/027,433
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The appellants appear to argue that Deith cannot be properly
combined with Oku since Deith is not from analogous art. See the
Brief, pages 5-6. We cannot agree.
As stated in the court in In re Clay, 966 F.2d 656, 658-59,
23 USPQ2d 1058, 1060 (Fed. Cir. 1992):
Two criteria have evolved for determining whether
prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference
still is reasonably pertinent to the particular problem
with which the inventor is involved.
We find that Deith passes either criteria for analogous art set
forth in Clay. We find that Deith, like Oku and the claimed
subject matter, is directed to glazing or coating hard surfaces,
such as the surfaces of ceramic products. Compare Deith, pages
1-3, with the specification, page 3 and Oku in its entirety.
Thus, we concur with the examiner that Deith is within the
inventors’ field of endeavor. Moreover, we find that Deith, like
the appellants, is directed to employing a low temperature sol-
gel glazing process in order to avoid the high temperature
condition associated with a conventional high temperature glazing
method. Compare Deith, pages 1-3, with the specification, pages
3-4. Thus, we find that Deith is at least reasonably pertinent
to the particular problem with which the inventors were involved.
Appeal No. 2005-1438
Application No. 10/027,433
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Thus, we determine that the evidence of obviousness, on
balance, outweighs the evidence of nonobviousness proffered by
the appellants. Hence, we affirm the examiner’s decision
rejecting all the appealed claims under 35 U.S.C. § 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(effective September 13, 2004; 69 Fed. Reg.
49960 (August 12, 2004); 1286 Off. Gaz. Pat. and TM Office
21 (September 7, 2004)).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
CKP:hh
Appeal No. 2005-1438
Application No. 10/027,433
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