Ex Parte Latino et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201512813371 (P.T.A.B. Feb. 25, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/813,371 06/10/2010 Joseph S. Latino 4170.JLAT.DV 6849 26986 7590 02/25/2015 MORRISS OBRYANT COMPAGNI, P.C. 734 EAST 200 SOUTH SALT LAKE CITY, UT 84102 EXAMINER NGUYEN, NAM X ART UNIT PAPER NUMBER 1778 MAIL DATE DELIVERY MODE 02/25/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH S. LATINO and STEVEN A. KEYSER ____________ Appeal 2013-003343 Application 12/813,371 1 Technology Center 1700 ____________ Before TERRY J. OWENS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1–30 under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Wainwright 382 (U.S. Patent No. 5,052,382, issued Oct. 1, 1991) and Wainwright 688 (U.S. Patent No. 6,027,688, issued Feb. 22, 2000). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 The Real Party in Interest is AcquiSci Inc. (Br. 1), and copending Appeal No. 2013-003342 is related to this appeal (Serial No. 12/813,861) (Br. 2). Appeal No. 2011-002285 is also identified as a related appeal (Br. 1); the Examiner’s decision in that appeal was affirmed in a decision mailed June 13, 2012 (e.g., Ans. 42). Appeal 2013-003343 Application 12/813,371 2 We AFFIRM. Independent claim 1 below is illustrative of the claimed subject matter (emphasis added): 1. A method for delivering a measurable absorbed- dose of ozone to a fluid, comprising the steps of: (a) transporting to a gas-fluid contacting device through gas-conveying pathways made entirely of ozone-inert material an ozone/oxygen admixture; (b) measuring an amount, a flow rate and an ozone concentration of an ozone/oxygen admixture entering, via pathways made entirely of ozone-inert materials, into a gas-fluid contacting device constructed entirely of ozone-inert materials; (c) measuring an amount, a flow rate, and an ozone concentration of an ozone/oxygen admixture exiting, via pathways made entirely of ozone-inert materials, from a gas-fluid contact device constructed entirely of ozone-inert materials, after the ozone/ oxygen admixture interfaces with a fluid; (d) measuring a fluid flow rate and an amount of a fluid entering a gas-fluid contacting device; (e) measuring the time during which an ozone/oxygen admixture interfaces with a fluid in a gas- fluid contacting device; (f) transmitting measured data to a data acquisition device, including: a measured flow rate, ozone concentration and amount of an ozone/oxygen admixture entering a gas-fluid contact device; a measured flow rate, ozone concentration and amount of an ozone/oxygen admixture exiting a gas-fluid contact device; a measured fluid flow rate and fluid amount entering a gas-fluid contacting device; and, the measured time during which an ozone/oxygen admixture interfaces with a fluid; and (g) calculating an amount of ozone delivered to a gas- fluid contacting device and an amount of ozone Appeal 2013-003343 Application 12/813,371 3 absorbed by an amount of fluid, within a gas-fluid contact device, using measured data transmitted to a data acquisition device. The key limitations in dispute common to each independent method claim (Claims 1, 11 and 21) are “pathways made entirely of ozone-inert materials” and “gas-fluid contact device constructed [or made] entirely of ozone-inert materials.” ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter is unpatentable under § 103 in view of the applied prior art. Accordingly, we sustain the Examiner’s prior art rejections for the reasons explained in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he 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.” Id. at 418. The key limitations in dispute in each independent claim are that the pathways and contact device are made entirely of “ozone-inert materials.” Appeal 2013-003343 Application 12/813,371 4 We are not persuaded by Appellants’ argument that it would not have been obvious to use known ozone-inert material for the gas-conveying conduits because Wainwright 382 and Wainwright 682 do not specify such a material for these conduits, and do not recognize the problem of ozone absorption loss (e.g., Br. 10–14). Likewise, Appellants’ argument that, contrary to the Examiner’s position, Wainwright 688’s use of the word “inert material” for its ozone generator does not encompass an ozone-inert material (Br. 12), is also not persuasive. Appellants also rely on the Latino Declaration, submitted Dec. 27, 2011, in support of these arguments (Br., Evidence App’x). First, a preponderance of the evidence supports the Examiner’s position that Wainwright 688 establishes that use of an ozone-inert material for ozone generator surfaces, as well as for a gas/liquid contacting device, was known (e.g., Ans. 9, 10). A preponderance of the evidence also supports the Examiner’s position that both Wainwright 382 and Wainwright 688 exemplify ozone generators with gas-contacting surfaces made of ozone-inert material (e.g., Ans. 26, 29–30). The Examiner’s determination that one of ordinary skill in the art would have understood that Wainwright 688’s use of the phrase “inert material” encompassed “ozone-inert material” is reasonable, as well as that an ordinarily skilled artisan would have also understood the desirability of making “all ozone-contacting surfaces” of ozone-inert materials is reasonable (Ans. 9, 10). See also, e.g., In re Preda, 401 F.2d 825, 826 (CCPA 1968) (It is well established that in evaluating references it is proper to take into account not only the specific teachings of Appeal 2013-003343 Application 12/813,371 5 the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom). 2 In summary, Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used material that is ozone- inert for all ozone-contacting surfaces of the modified Wainwright 382 / 688 apparatus for the known benefits of such a material (Ans. 30, 47; Br. 10–11). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). To the extent that Appellants present additional arguments for some of the claims on appeal, a preponderance of the evidence supports the Examiner’s position with respect to these claims (Ans. 31–39). Therefore, we affirm the Examiner’s § 103 rejection of all the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED rvb 2 The Examiner also points out as evidentiary “support” that Morita exemplifies the desirability of “all pipes” in an ozone/water distribution system being made of an ozone-inert material (Ans. 42). The Examiner relies upon this evidentiary reference, as well as one other to support the fact that Pyrex was known to be inert to ozone, in the Answer (Ans. 41–42). Appellants do not challenge the Examiner’s findings with respect to these references (no Reply Brief has been filed). Copy with citationCopy as parenthetical citation