11021547 (B.P.A.I. Dec. 19, 2011)

Ex Parte Quincy

Board of Patent Appeals and InterferencesDec 19, 2011

11021547 (B.P.A.I. Dec. 19, 2011)

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. 11/021,547 12/23/2004 Roger Bradshaw Quincy III KCX-920 (21075) 3393 22827 7590 12/19/2011 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER CRAIG, PAULA L ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 12/19/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ROGER BRADSHAW QUINCY, III ________________ Appeal 2010-000478 Application 11/021,547 Technology Center 3700 ________________ Before JENNIFER D. BAHR, GAY ANN SPAHN and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000478 Application 11/021,547 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a), from a rejection of claims 37-50, 52-64 and 66-72. Claims 1-36, 51 and 65 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter The claimed subject matter is directed to an odor control coating having a water-soluble polymer and a masking agent whose particles have an average size less than about 35 micrometers. Independent claim 37 is illustrative of the claims on appeal and is reproduced below: 37. A substrate that contains an odor control coating, the odor control coating comprising activated carbon, a binder, and a masking agent, wherein the binder comprises a water-soluble organic polymer and a polymer latex, wherein the polymer latex is sufficiently crosslinked to be substantially insoluble in water, and further wherein the masking agent comprises inorganic particles having an average size less than about 35 micrometers and the average size of the inorganic particles is less than the average size of the activated carbon. References Relied on by the Examiner Doying US 3,091,550 May 28, 1963 Sullivan1 US 4,770,806 Sep. 13, 1988 Chhabra US 2005/0008776 A1 Jan. 13, 2005 Hughes US 2005/0098495 A1 May 12, 2005 1 Sullivan is only cited to show that an 80 mesh screen passes particles of about 180 microns or less, and a 325 mesh screen passes particles of about 42 microns or less (Ans. 5). Appeal 2010-000478 Application 11/021,547 3 The Rejections on Appeal 1. Claims 37-45, 48, 49, 52, 54-60, 62, 63, 66, 68, 69 and 71 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hughes (Ans. 3). 2. Claims 46, 47 and 61 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hughes and Doying (Ans. 8). 3. Claims 50, 53, 64, 67, 70 and 72 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hughes and Chhabra (Ans. 9). ISSUE Has the Examiner provided sufficient evidence and technical reason to show that Hughes teaches an odor control coating having a masking agent with average size particles of less than about 35 microns as recited in both independent claims 37 and 55? ANALYSIS The rejections of claims 37-45, 48, 49, 52, 54-60, 62, 63, 66, 68, 69 and 71 over Hughes Each independent claim on review (i.e., claims 37 and 55) requires a masking agent and the Examiner and Appellant dispute whether Hughes teaches a masking agent (Ans. 4, Br. 5). Assuming arguendo that Hughes does teach a masking agent, the following issue is whether Hughes’ description of the masking agent teaches or suggests the claimed average particle size of “less than about 35 micrometers” (See Br. 7, 10). Hughes teaches various mechanical and chemical steps whereby smaller particles are combined “until the particles are of appropriate size, which is usually greater than 325 mesh” (Hughes ¶ [0021]). The Examiner Appeal 2010-000478 Application 11/021,547 4 relies on the patent to Sullivan for the conversion of 325 mesh to “about 42 microns” and Appellant does not dispute this conversion (Ans. 5). Hughes specifies that a particle size greater than 42 microns is desired because “small particles such as those smaller than 325 mesh are difficult to retain in the filtration device” and “often go to waste” (Hughes ¶¶ [0011] and [0012]). In essence, Hughes’ invention “provides a means for using small filtration particulate matter (<325 mesh)” to generate suitable filtration material (Hughes ¶ [0018]). The Examiner acknowledges that Hughes’ agglomeration can begin with particle sizes as small as “10 nanometers,” i.e., 0.01 microns (Ans. 4 citing Hughes ¶ [0020]). However, the Examiner further acknowledges that “Hughes does not expressly teach the inorganic particles having an average size less than about 35 micrometers,” but that “it would have been obvious to one of ordinary skill in the art to modify Hughes to include the inorganic particles having an average size less than about 35 micrometers” (Ans. 5, see also 12). We disagree with the Examiner. Hughes provides a specific reason for particle sizes larger than 42 microns (i.e. so as to be retained in the filtration device) and one skilled in the art would be specifically directed by Hughes towards particle sizes greater than 42 microns. The Examiner does not explain why one skilled in the art, in view of Hughes, would instead seek the use of smaller particle sizes. Absent such a link, and because the Examiner has not cited any evidence showing that a person of ordinary skill in the art would have appreciated a desire for smaller, not larger, particle sizes at the time of the invention, the Examiner’s articulated reason lacks a rational underpinning. Appeal 2010-000478 Application 11/021,547 5 Accordingly, based on the record before us and because the Examiner’s articulated reasons cannot support the conclusion of obviousness of the subject matter of either of the independent claims, we reverse the Examiner’s rejection of claims 37-45, 48, 49, 52, 54-60, 62, 63, 66, 68, 69 and 71 over Hughes. The rejection of claims 46, 47 and 61 over Hughes and Doying Each of these dependent claims is directed to the further use of “nonionic cellulosic ether.” The Examiner relies on Hughes for the reasons stated above and on Doying to confirm that the use of nonionic cellulosic ether is “well known as binders” (Ans. 8). This teaching by Doying does not remedy the deficiency in the teachings of Hughes. Accordingly, we do not sustain the rejection of claims 46, 47 and 61. The rejection of claims 50, 53, 64, 67, 70 and 72 over Hughes and Chhabra Each of these dependent claims further requires the use of calcium carbonate particles (claims 50 and 64), a colorant (claims 53 and 67), a liquid-permeable substrate (claim 70) and a diaper (claim 72). The Examiner relies on Hughes for the reasons stated above and on Chhabra for disclosing the further limitations of these dependent claims. As above, Chhabra does not remedy the deficiency in the teachings of Hughes. Accordingly, we do not sustain the rejection of claims 50, 53, 64, 67, 70 and 72. CONCLUSION The Examiner has not provided sufficient evidence and technical reasoning to show that Hughes teaches an odor control coating having a Appeal 2010-000478 Application 11/021,547 6 masking agent with average size particles of less than about 35 microns as recited in both independent claims 37 and 55. DECISION The rejections of claims 37-50, 52-64 and 66-72 are reversed. REVERSED mls