Ex Parte Wahi

Patent Trial and Appeal Board

Sep 23, 2016

12475690 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/475,690 0610112009
33766 7590 09/26/2016
COHEN & HILDEBRAND, PLLC
2409 CHURCH ROAD
CHERRY HILL, NJ 08002
FIRST NAMED INVENTOR
AshokWahi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TRUTEK-012 3973
EXAMINER
NGUYEN, NYCA T
ART UNIT PAPER NUMBER
3764
MAILDATE DELIVERY MODE
09/26/2016 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
Exparte ASHOK WAHI
Appeal2015-000003
Application 12/475,6901
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-24. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 According to the Appellant, Trutek Corp. is the real party in interest.
Appeal Br. 2.
Appeal2015-000003
Application 12/475,690
Claimed Subject Matter
Claims 1 and 7 are the independent claims on appeal. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A permeable mask that is worn over a user's nose and mouth
that is essentially impermeable to harmful contaminants, said
mask comprising a coating made from application of a cationic
or anionic agent.
Rejections
We have added a new ground of rejection for claims 1-6 under
35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant (i.e., Appellant) regards as the invention. Infra.
The following Examiner's rejections are before us for review.
I. Claims 1---6 are rejected under 35 U.S.C. § l 12(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
II. Claims 1-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wahi et al. (US 6,844,005 B2, iss. Jan. 18, 2005,
hereinafter "Wahi") and Messier (US 2006/0144403 Al, pub. July 6, 2006).
III. Claims 11-13, 15-17, 19, 21, 22, and 24 are rejected under
35 U.S.C. § 103(a) as unpatentable over Wahi, Messier, and Rolf
(US 2004/0071757 Al, pub. Apr. 15, 2004).2
2 The Examiner has withdrawn the rejection of claim 24 under 35 U.S.C.
§ 103(a) as unpatentable over Wahi, Messier, and Rolf. Ans. 2; see also
Final Act. 11. The Examiner has added a new ground of rejection for
claim 24 under 35 U.S.C. § 103(a) as unpatentable over Wahi, Messier, and
Rolf. See Ans. 2-3. The new ground of rejection for claim 24 includes
different reasoning as compared to the withdrawn rejection.
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Application 12/475,690
IV. Claims 14 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wahi, Messier, Rolf, and Lubnin et al. (US 6,897,281 B2,
iss. May 24, 2005, hereinafter "Lubnin").
V. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wahi, Messier, Rolf, and Beerse et al. (US 6,294,186 Bl, iss. Sept. 25,
2001, hereinafter "Beerse").
VI. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wahi, Messier, Rolf, and Seitz, Jr. et al. (US 6,861,397 B2, iss. Mar. 1,
2005, hereinafter "Seitz").
ANALYSIS
New Ground of Rejection
Independent claim 1, in part, recites:
A method of making a permeable mask that is worn over
a user's nose and mouth essentially impermeable to harmful
contaminants, said method comprising:
a) coating the mask with a formulation comprising an
agent with cationic or anionic properties;
b) using the agent to establish an electrostatic field in the
vicinity of the mask by merely coating the mask with the agent
without having to apply an electrostatic charge.
Appeal Br., Claims App.
Claim 1 is indefinite because it recites claim language that is
inconsistent. Put simply, the requirement of step "b" that recites "without
having to apply an electrostatic charge" is inconsistent with the recitations of
step "a" and the remainder of step "b" that requires an application of an
electrostatic charge. We come to this determination based on the following
findings:
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Application 12/475,690
• coating a mask with an agent, as set forth in step "a," is tantamount
to applying an agent to the mask;
• the agent, as set forth in step "a," comprises cationic or anionic
properties and as such, the agent includes either positive or
negative charges; 3
• the term "electrostatic" describes that which pertains to electric
forces or charges in a state of rest; 4
• the agent, comprising cationic or anionic properties, includes
electrostatic charges; and
• applying the agent to the mask having positive or negative charges
is tantamount to applying an electrostatic charge to the mask.
This last finding is inconsistent with the recitation of step "b" that recites
"without having to apply an electrostatic charge." Appeal Br., Claims App.
(emphasis added). In other words, "merely coating the mask with the
agent," as required by claim 1, is tantamount to applying an electrostatic
charge. As such, the claim recitation of "merely coating the mask with the
agent without having to apply an electrostatic charge" is inconsistent and
indefinite.
3 A "cation" is defined as "any positively charged atom or group of atoms
(opposed to anion)" and an "anion" is defined as "any negatively charged
atom or group of atoms (opposed to cation)." DICTIONARY.COM
UNABRIDGED, ("cation," def. 2, http://www.dictionary.com/browse/
cation), ("anion," def. 2, http://www.dictionary.com/browse/anion), (last
visited Sept. 16, 2016).
4 This finding is quoted from US Patent Application Serial Number
10/161,821 (Spec. para. 40), which is incorporated by reference in the
Specification of this Application at page 1, lines 14--16.
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Application 12/475,690
Further, we note that step "b," i.e., "using the agent to establish an
electrostatic field in the vicinity of the mask by merely coating the mask
with the agent without having to apply an electrostatic charge," is also
inconsistent with the Specification, which states, "[t]he [p]resent [i]nvention
applies an electrostatic charge to the mask." Spec. 3, 11. 3--4 (emphasis
added). Additionally, we note that the Specification incorporates by
reference US Patent Application Serial Number 10/161,821 (Spec. 1,
11. 14--16). This application provides definitions for "electrostatic" and
"electrostatic field," however the definitions provided are consistent with the
basis of this rejection. 5
Based on the foregoing, we reject independent claim 1 and claims 2-
6, which depend from claim 1, under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant (i.e., Appellant)
regards as the invention. This NEW GROUND OF REJECTION is pursuant
to our authority under 37 C.F.R. § 41.50(b).
5 US Patent Application Serial Number 10/161,821 at page 12, paragraph
40, with added emphasis, states:
The term "electrostatic" describes that which pertains to electric
forces or charges in a state of rest. An object may be considered
"electrostatically charged", and therefore called an "electrostatic
material" or an "electrostatically charged mass", if it is in the
condition of having such a stationary charge. The "electrostatic
field'' is the region surrounding this charge and in which another
charge experiences a force. The "electrostatic charge density"
refers to the quantity of static electric force, either per unit area
or per unit volume.
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Application 12/475,690
Rejection I
As previously discussed, independent claim 1 recites, "using the agent
to establish an electrostatic field in the vicinity of the mask by merely
coating the mask with the agent without having to apply an electrostatic
charge." Appeal Br., Claim App. (emphasis added). The Examiner
determines that the emphasized recitation "narrows the scope of the claim in
such a way that was not supported by the original disclosure." Final Act. 3.
In response, the Appellant contends that
there is express disclosure in the specification[, at page 3, lines
8-1 7 ,] that the mere application of the cationic and anionic
liquids to . . . the mask alone is sufficient to produce the
electrostatic field. Accordingly, such electrostatic field is created
simply when applied to the surface, and thus not requiring
application of an electrostatic charge to be created.
Appeal Br. 5-6. The Appellant also points to disclosure in US Patent
Application Serial Number 10/161,821, which is incorporated by reference
by the instant Specification and defines various terms relevant to the subject
matter of claim 1. Appeal Br. 6; supra, n.5. The Appellant's contention is
not persuasive.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. See Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
As discussed above, the present application states "[t]he [p]resent
[i]nvention applies an electrostatic charge to the mask." Spec. 3, 11. 3--4
(emphasis added). We also note that page 3, lines 8-17 of the instant
Specification discloses that cationic and anionic liquids are applied to the
mask, which is tantamount to applying an electrostatic charge to the mask.
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Application 12/475,690
As such, we determine that the written description fails to disclose "using
the agent to establish an electrostatic field in the vicinity of the mask by
merely coating the mask with the agent without having to apply an
electrostatic charge," as recited in claim 1.
Thus, we sustain the Examiner's rejection of independent claim 1 and
claims 2---6, which depend from claim 1, as failing to comply with the
written description requirement.
Rejection II
Independent claim 1 and dependent claims 2-6
In view of our determination that claims 1-6 are indefinite, it follows
that the prior art rejection of these claims must fall because it is necessarily
based on a speculative assumption as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862---63 (CCPA 1962). It should be understood,
however, that our decision in this regard is proforma and based solely on
the indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.
Independent claim 7 and dependent claims 8-10
Independent claim 7, recites:
A permeable mask that is worn over a user's nose and mouth that
is essentially impermeable to harmful contaminants, said mask
comprising a coating made from application of a cationic or
anionic agent.
Appeal Br., Claims App.
The Appellant argues that Wahi does not disclose "coating" a
substrate. Appeal Br. 7. Rather, Wahi discloses "a substrate containing the
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topical carrier with a plurality of masses of one or more electrostatic
polymers dispersed through at least a portion thereof." Appeal Br. 7 (citing
Wahi, col. 2, 11. 63---66). The Appellant's argument is not persuasive because
it fails to persuasively explain error in the Examiner's contrary position.
See Ans. 17.
The Appellant makes reference to the subject matter of claim 7 "[a]
permeable mask that is worn over a user's nose and mouth [that is]
essentially impermeable to harmful contaminants." Appeal Br. 7. The
Appellant argues that Wahi only discloses the use of a "topical" application
requiring contact with a user's nose and mouth. Appeal Br. 7. The
Appellant argues Wahi' s use of this topical approach involving a bandage
substrate does not correspond to the claimed invention, which requires use
of a mask "over" a user's nose and mouth. Appeal Br. 7. The Appellant's
argument is not persuasive.
At the outset, we note that the term "over" is not explicitly defined in
the Specification. If the Specification does not assign or suggest a particular
definition to a claim term, it is appropriate to consult a general dictionary
definition of the word for guidance in determining the ordinary and
customary meaning of the claim term as viewed by a person of ordinary skill
in the art. See Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010). An ordinary and customary definition of the term "over," as the term
is understood by a person of ordinary skill in the art consistent with and in
light of the Specification, includes "so as to rest on or cover; on or upon:
Throw a sheet over the bed." DICTIONARY.COM UNABRIDGED
("over," def. 4, http://www. dictionary. com/browse/over (last visited
Sept. 19, 2016)).
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Application 12/475,690
The Examiner explains that Wahi' s bandage, which is adhered to the
skin, is positioned over, and as such, worn over, the nose. Ans. 18 (citing to
Wahi, Fig. 5). 6 The Examiner also explains that in Figure 5 the
topical/electrostatic material is not placed directly on the user's skin. See
Ans. 18. Indeed, as stated in Wahi '488 at column 7, lines 40-45:
product 31 is a bandage material applied around the nasal area
with a cut out or hole therein for nasal passage 3. This has a
normal bandage material as substrate, with an adhesive against
the skin areas and with an electrostatic material in a carrier on
the outer surface of the bandage.
Here, the bandage, as depicted in Figure 5, "covers" the nose, and is also
"on" the nose, and as such, is "over" the nose.
The Appellant argues that Wahi teaches away from being modified by
Messier's teaching of a mask because it changes Wahi's principle of
operation "as a topical nasal application product in contact directly with the
nose." See Appeal Br. 7-8. The Appellant's argument is not persuasive. As
discussed above, a bandage is in contact with the nose and would be
understood by one of ordinary skill in the art to be "over" the nose.
Therefore, Wahi' s principle of operation does not change and as such, Wahi
does not teach away from the Examiner's proposed modification or the
subject matter of claim 7. See also Ans. 18-19.
Thus, we sustain the Examiner's rejection of independent claim 7 and
dependent claims 8-10 as unpatentable over Wahi and Messier.
6 Figure 5 is described with greater detail in US Patent Number 5,468,488,
issued Nov. 21, 1995 (hereinafter "Wahi '488"). This patent is incorporated
by reference in Wahi at column 1, lines 9-14.
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Rejection III
The Examiner rejects claims 11-13, 15-17, 19, 21, 22, and 24 under
35 U.S.C. § 103(a) as unpatentable over Wahi, Messier, and Rolf. In the
Appeal Brief, the Appellant argues the rejection of claim 24. See Appeal
Br. 8-9. Subsequently, the Examiner withdrew the rejection of claim 24 as
provided in the Final Office Action, but provided a new ground of rejection
for claim 24 in the Answer. Although the new ground of rejection for
claim 24 is based on the same references (i.e., Wahi, Messier, and Rolf), the
new ground of rejection includes different reasoning as compared to the
withdrawn rejection. In the Reply Brief, the Appellant argues the new
ground of rejection of claim 24. Reply Br. 2-3.
We understand the Appellant's argument to be solely directed to claim
24, and not to claims 11-13, 15-17, 19, 21, and 22. As such, we sustain the
Examiner's rejection of claims 11-13, 15-17, 19, 21, and 22 as unpatentable
over Wahi, Messier, and Rolf.
As for the new ground of rejection for claim 24, the Appellant argues
the Examiner's rejection of claim 24 fails to include articulated reasoning
with some rational underpinning to modify Wahi' s teaching in Example #4
of using propylparaben (a preservative) in view of Rolfs teaching ofLysine-
HCL (a biocidic agent). Reply Br. 2-3. The Appellant's argument is not
persuasive.
At the outset, we note that claim 24 depends from claims 7, 11, and
17. See Appeal Br., Claims App. The Examiner's rejection of claim 24,
relies on the rejection of claim 17. Ans. 2. And, the Examiner's rejection of
claim 17 relies on the rejection of claim 11. Final Act. 1 O; Ans. 11. The
Examiner rejection of claim 11 includes the following reasoning:
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Application 12/475,690
Wahi ... discloses the addition of antimicrobial agents in
the coating such as Propylparaben. However, Wahi ... in view
of Messier fails to teach wherein the biocidic agent is Lysine-
HCL. Rolf teaches a formulation that discloses Lysine HCL as
an antiviral agent (Page 13 Paragraph [0153] Rolf states a
method for preventing a respiratory infection (as stated in
abstract) which discloses a specific embodiment which includes
Lysine HCL as an antiviral agent). As the applicant does not
disclose any specification as to the special functional preference
of the claimed biocidic agent, it would have been obvious to one
ordinarily skilled in the art to choose from a variety of known
common functional compounds such as Lysine HCL disclosed
by Rolf to destroy bacteria which may be harmful to the user.
Final Act. 9-10. The foregoing reasoning, along with the additional
reasoning provided in the Answer at pages 2-3, provides adequate reasoning
with some rational underpinning to support the conclusion of obviousness
for Examiner's rejection of claim 24. And, the Appellant's argument does
not explain persuasively error in the Examiner's rejection.
Thus, we sustain the Examiner's rejection of claim 24 as unpatentable
over Wahi, Messier, and Rolf.
Rejections IV-VI
The Examiner rejects claims 14, 18, 20, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Wahi, Messier, and Rolf in combination with
Lubnin, Beerse, or Seitz. Final Act. 12-16. The Appellant does not provide
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arguments regarding these grounds of rejection. As such, we summarily
sustain these grounds of rejection.
DECISION
We enter a NEW GROUND OF REJECTION for claims 1---6 under
35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
indefinite pursuant to our authority under 37 C.F.R. § 41.50(b).
We AFFIRM the Examiner's decision rejecting: claims 1---6 under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement (Rejection I); claims 7-10
under 35 U.S.C. § 103(a) as unpatentable over Wahi and Messier
(Rejection II); and claims 11-13, 15-17, 19, 21, 22, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Wahi, Messier, and Rolf (Rejection III).
We REVERSE proforma the Examiner's decision rejecting claims 1-
6 under 35 U.S.C. § 103(a) as unpatentable over Wahi and Messier
(Rejection II).
We SUMMARILY AFFIRM the Examiner's decision rejecting:
claims 14 and 23 under 35 U.S.C. § 103(a) as unpatentable over Wahi,
Messier, Rolf, and Lubnin (Rejection IV); claim 18 under 35 U.S.C.
§ 103(a) as unpatentable over Wahi, Messier, Rolf, and Beerse
(Rejection V); and claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Wahi, Messier, Rolf, and Seitz (Rejection VI).
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(l) provides "Appellant may
file a single request for rehearing within two months from the date of the
original decision of the Board."
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In addition to affirming the Examiner's rejection of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the Examiner ....
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record ....
Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment, or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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