11943865 (P.T.A.B. Nov. 15, 2017)

Ex Parte Ryan et al

Patent Trial and Appeal BoardNov 15, 2017

11943865 (P.T.A.B. Nov. 15, 2017)

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. 11/943,865 11/21/2007 Thomas Anthony Ryan 123450.00401 4245 93724 7590 11/17/2017 Pepper/Calgon Carbon Corporation Suite 5000 500 Grant Street Pittsburgh, PA 15219-2507 EXAMINER DURAND, PAUL R ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 11/17/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketingpgh @ pepperlaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS ANTHONY RYAN, HARRY SHARROCK, and NEIL D. TOWNEND Appeal 2015-008042 Application 11/943,865 Technology Center 3700 Before LYNNE H. BROWNE, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, 5, 8, 10, 11, 13, 14, 21, 22, and 25—27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2015-008042 Application 11/943,865 ILLUSTRATIVE CLAIM As described in Appellants’ Specification, “various embodiments of the present invention [are] directed to a carbon filled pressurized container that provides an alternative to traditional pressurized containers which rely on hydrocarbons or hydroflourocarbons for emissive and novelty aerosols and the like.” Spec. 2. Claims 1 and 13 are independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A container for releasing pressurized contents comprising: a first portion, a second portion defining a release device for the first portion, and a carbon material contained in the first portion wherein said carbon material comprises activated carbon charged with a propellant selected from the group consisting of air, oxygen, nitrogen, carbon dioxide, a noble gas and nitrous oxide, or a combination thereof to give a pressure of about 1 to 15 barg, wherein said activated carbon contains micropores having sizes in the range of about 0.5 nm to about 2.5 nm and has an adsorption enthalpy of less than 25 kJ(mole of adsorbate)'1. THE REJECTIONS Claims 1, 2, 5, 8, 10, 11, 13, 14, 21, 22, and 25—27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Krause et al. (US 2005/0274737 Al; pub. Dec. 15, 2005) and Payne et al. (US 5,340,483; iss. Aug. 23, 1994). Claims 1, 2, 7—9, 21, 22, and 25—27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Ryan et al. (WO 2005/054742 Al; pub. June 16, 2005), Tom et al. (US 5,993,766; iss. Nov. 30, 1999), and Payne. 2 Appeal 2015-008042 Application 11/943,865 Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Krause, Payne, and Lo et al. (US 4,049,158; iss. Sept. 20, 1977). Claims 24 and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Krause, Payne, and Garret (US 2006/0272537 Al; pub. Dec. 7, 2006). Claim 24 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Tom, Payne, and Garret. ANALYSIS Each of independent claims 1 and 13 requires, among other things, “wherein said activated carbon . . . has an adsorption enthalpy of less than 25 kJ (mole of adsorbate)'1.” The Examiner’s rejections do not cite a direct disclosure of activated carbon having an adsorption enthalpy of less than 25 kJ (mole of adsorbate)'1. Instead, the Examiner cites Payne as teaching that “weak bonding or affinity between a compound and a substrate such as activated carbon is desired since it allows for reversal of the binding” (Final Act. 3 (citing Payne 1:27—32)) and “decreasing the enthalpy of adsorption results in a decrease in adsorption strength” (Final Act. 3 (citing Payne 10:10-41)). Based on Payne’s teachings, the Examiner concludes that it would have been obvious to have selected an activated carbon with low adsorption enthalpy to obtain weaker adsorption strength and allow for more complete desorption as taught by Payne. Final Act. 3; accord Ans. 9. Further, the Examiner states that “[regarding the activated carbon having an adsorption enthalpy of less than 25 kJ (mole of adsorbate), it has been held that 3 Appeal 2015-008042 Application 11/943,865 discovering an optimum range of a result effective variable involves only routine skill in the art.” Final Act. 3^4 (citing MPEP 2144.05); accord Ans. 9 (“Payne teaches that the enthalpy of adsorption is a result effective variable and decreasing the enthalpy of adsorption results in a decrease in adsorption strength.”). Appellants contend Payne describes general principles of adsorption of organic contaminants from water onto chitosan, and Appellants argue there is no evidence of record that the general principles described in Payne would be applicable to adsorption of gaseous propellants as recited in claims 1 and 13. Appeal Br. 8, 15. Further, Appellants argue that Krause and Ryan teach maximizing the volume of propellant gas on an adsorbent which is consistent with increasing the enthalpy of adsorption and is inconsistent with selecting an enthalpy range of less than 25 kJ (mole of adsorbate)'1. See Appeal Br. 10, 13, 17, 19. Having considered the Examiner’s rejection in light of Appellants’ arguments and the evidence of record, we agree with Appellants that the Examiner has not sufficiently established that independent claims 1 and 13 would have been obvious in view of the cited prior art. Payne states that “[generally, it has been recognized as an advantage to weakly adsorb a compound to a substrate so that the binding can be subsequently reversed.” Payne col. 1,11. 29—32. Distinct from that general statement, though, the cited portions of Payne’s teachings regarding enthalpy of adsorption describe the importance of increasing adsorption strength. Payne col. 10,11. 10-41; see also Payne col. 1,11. 12—14 (describing “the enzymatic conversion of a weakly adsorbable compound to a strongly adsorbable compound”). Also, Krause and Ryan describe adsorption and release of a 4 Appeal 2015-008042 Application 11/943,865 propellant gas as a function of pressure, but Krause and Ryan are silent regarding the enthalpy of adsorption. See Krause 117 (“As product is expelled during use and the pressure is depleted, gas is released from the adsorbent material to restore the pressure in a container to a desired predetermined level.”); Ryan 13 (“The activated carbon assists in retaining the pressure within the can thereby maintaining efficient and uniform delivery of the gas from the can as the contents are depleted”). The Examiner cites no evidence in Payne, Krause, or Ryan that describes advantages of weakly adsorbing a compound to a substrate as a function of its enthalpy of adsorption. Cf. Ans. 10 (stating “one having ordinary skill would have recognized that the Payne teaching of weak bonding being desired for reversal of the process would be applicable to Krause and Ryan; citing Krause 117); Accordingly, the Examiner has not established that the prior art recognizes the advantages of reducing the enthalpy of adsorption as a result- effective variable, and the Examiner thus has not provided rationally based reasoning supporting the conclusion that selecting an enthalpy range of less than 25 kJ (mole of adsorbate)'1 would have been obvious. Constrained by the record before us, we do not sustain the Examiner’s rejections of independent claims 1 and 13, nor the rejections of dependent claims 2, 5, 8, 10, 11, 14, 21, 22, and 25—27, which include the same error by virtue of their dependencies on claims 1 and 13. 5 Appeal 2015-008042 Application 11/943,865 DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1,2, 5, 8, 10, 11, 13, 14,21,22, and 25-27. REVERSED 6