Ex Parte Wei et al

Board of Patent Appeals and Interferences

Mar 11, 2009

10736922 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DI WEI, THOMAS H. VANDERSPURT, STEPHEN O. HAY,
WAYDE R. SCHMIDT, and TIMOTHY N. OBEE
____________

Appeal 2008-6360
Application 10/736,922
Technology Center 1700
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Decided:1 March 11, 2009
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-14, 17, 18, and 20-47. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6360
Application 10/736,922

The invention relates to a purification system. Claim 1 is illustrative:
1. A purification system comprising:

a substrate having a first surface portion and a second surface portion
adjacent the first surface portion; and

a layered catalytic coating including a first layer of one of
metal/titanium dioxide and metal compound/titanium dioxide applied on
said first surface portion and a second layer of one of titanium dioxide and
metal compound/titanium dioxide applied on said second surface portion.

The Examiner relies upon the following prior art references in
the rejections of the appealed claims:
Kobayashi US 6,368,668 Apr. 9, 2002
Reisfeld US 2003/0021720 Jan. 30, 2003

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:2
claims 1-14, 17, 18, 34, 36, 45, and 46 as unpatentable over
Kobayashi;
claims 7-12, 20, 33, 35, 37, 38, 43, and 44 as unpatentable over
Kobayashi in view of Reisfeld; and
claims 21-32, 39-42, and 47 as unpatentable over Reisfeld in view of
Kobayashi.

The Examiner also provisionally rejected claims 1-14, 17, 18, and 20-
47 on the ground of non-statutory obviousness-type double patenting over

2 The Examiner has withdrawn the final rejections of claim 47 under 35
U.S.C. § 112, first and second paragraphs (Ans. 3).
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Application 10/736,922

claims 1-22, 24-34, 36, and 37 of copending Application No. 10/736,921.
Appellants have not contested this rejection (see, generally, App. Br.; Reply
Br.,). Accordingly, we summarily affirm this rejection.
Appellants have not separately argued claims the claims in the first
ground of rejection with any reasonable degree of specificity. Accordingly,
we select claim 1 as representative of the grouping above and confine our
discussion to this selected claim. We will address the claims in the other
grounds of rejection above to reflect Appellants’ arguments in the Appeal
Brief.
The § 103 Rejection based on Kobayashi
ISSUE
The issue turns on claim construction. Appellants’ only argument is
that this 103 rejection is improper because the Examiner’s rationale that the
claimed arrangement of layers “would have been an obvious matter of
design choice” is not by itself “sufficient to support obviousness” (App. Br.
5). The Examiner’s position, however, also includes an interpretation of
claim 1 wherein both layers recited in claim 1 can be the same material and
thus, claim 1 reads on the teachings of Kobayashi (Ans. 10).
Accordingly, the issue is:
Have Appellants shown that the Examiner reversibly erred in rejecting
the claims because Kobayashi does not disclose or render obvious a layered
catalytic coating as recited in claim 1?
This issue turns on the broadest reasonable interpretation of the claim
language.

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Application 10/736,922

PRINCIPLES OF LAW
Claim Construction
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation”); See also In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
This longstanding principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the
opportunity and responsibility to remove any ambiguity in claim term
meaning by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” Id. at 322.
Although claims are to be interpreted in light of the specification,
limitations from the specification are not to be read into the claims. See In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
An applicant seeking a narrower construction must either show why
the broader construction is unreasonable or amend the claim to expressly
state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir.
1997).
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Application 10/736,922

Obviousness
For a prima facie case of obviousness all the claim features must be
taught or suggested by the applied prior art. In re Royka, 490 F.2d 981, 985
(CCPA 1974).
FINDINGS OF FACTS
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
1. Appellants’ describe that it was known to use titanium dioxide as
a photocatalyst in an air purifier to destroy contaminants (Spec. 1, para. [3]).
Appellants further admit that doped or metal oxide titanium dioxide can
increase the effectiveness of the titanium dioxide photocatalyst; e.g., gold
may be loaded on the titanium dioxide for room temperature oxidation of
carbon monoxide to carbon dioxide (Spec. 1-2, para. [4]).
3. Appellants’ Specification does not include a special definition for
the term “a layered catalytic coating”.
4. Fig. 5 of Appellants’ invention is reproduced below:

Fig. 5 illustrates one embodiment of the invention that includes layers
44 and 46 which are located immediately adjacent each other on the same
substrate (Spec. 13-14, para. [63]; Fig. 5).
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Appeal 2008-6360
Application 10/736,922

5. As found by the Examiner (e.g., Ans. 3-5), Kobayashi describes
that photocatalysts on a substrate, upon irradiation, are useful for
purification of harmful gases (e.g., col. 1, ll. 12-33). Kobayashi describes a
photocatalytic metal oxide that, in a “preferred embodiment”, may be
titanium dioxide (col. 3, ll. 63-66). The photocatalyst coating composition
may further comprise a metal and/or metal oxide, for example, at least one
metal or oxides of the metals, including copper, silver, platinum, cobalt,
iron, nickel, gold, and manganese (col. 5, ll. 53-64).
Kobyashi states:

The addition of the metal or the metal oxide to the photocatalyst
coating composition results in the formation of a film which
can kill bacteria and mold deposited on the surface thereof even
in a dark place.
. . . .
According to a preferred embodiment of the present
invention, the metal and the metal oxide are supported on the
surface of the photocatalytic metal oxide.

(Kobyashi, col. 5, ll. 64-67; col. 6, ll. 13-15)

6. In addition, Kobayashi states:

According to a preferred embodiment of the present invention,
the photocatalyst coating composition may be coated onto the
surface of the substrate so as to form a stacked or multi-layered
coating. Specifically, an identical photocatalyst coating
composition may be coated on the surface of the substrate a
plurality of times. Alternatively, a plurality of different
photocatalyst coating compositions may be provided followed
by successive coating of the plurality of different photocatalyst
coating compositions onto the surface of the substrate.

(Kobayashi, col. 10, ll. 17-26; emphasis added)
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Application 10/736,922

ANALYSIS
Implicit in our review of the Examiner’s obviousness analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997).
Appellants have the burden of showing that the Examiner's
interpretation of the disputed claim language is unreasonable. The Examiner
found that the claim language may be interpreted such that the same material
is used for each layer; that is, each of the first and second layers may be a
“metal compound/titanium dioxide” (Ans. 10). Appellants do not dispute
this finding (generally, App. Br. and Reply Br.). In light of Appellants’ Fig.
5, which shows that the layers may be side by side, we see no structural
distinction in the claimed product between a single layer of one material and
two layers applied side by side of the same material. Hence claim 1 reads on
Kobayashi.
Additionally, the disclosure of Kobayashi, as pointed out in the
Findings of Fact above, supports the Examiner’s interpretation that
Kobayashi describes a first layer of “metal compound/titanium dioxide” on
one surface portion of the substrate and a second layer of the same “metal
compound/titanium dioxide” on a second surface portion of the substrate.
There is nothing in claim 1 to define over the Examiner’s reasonable
interpretation of Kobayashi. Using this claim construction, Kobayashi
anticipates Appellants' claimed invention. Furthermore, Appellants have
failed to provide any credible reasoning or evidence why the Examiner’s
interpretation is unreasonable.
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Application 10/736,922

Since anticipation is the epitome of obviousness, we conclude that,
based on the Examiner’s reasonable claim construction, claim 1 would have
been obvious over Kobayashi. In re Fracalossi, 681 F. 2d. 792, 794 (CCPA
1982).
Moreover, since Kobayashi describes a plurality of the same and/or
different photocatalytic coating layers on a substrate, it would have been
prima facie obvious to choose from amongst the explicitly listed alternative
metal/titanium dioxide and metal oxide/titanium dioxide coatings described
therein. It has been held that a species claim was obvious over a reference
disclosing over 1200 possible combinations of two ingredient types useful in
diuretic compositions, where the claimed combination was but one of those
disclosed. See Merck & Co. v. Biocraft Labs., 874 F. 2d 804, 806-807 (Fed.
Cir. 1989). Neither of the claimed ingredients was listed by the reference as
being preferred. Id. Similar to the situation in Merck, the artisan of ordinary
skill need only make a choice from a list explicitly set forth in the Kobayashi
to select appropriate same and/or different photocatalytic layer
compositions. Thus, in our view, the Examiner properly concluded that one
of ordinary skill would have considered the “layered catalytic coating” of
claim 1 obvious from the explicit teaching, and list, set out in Kobayashi.

The § 103 Rejection based on Kobayashi in view of Reisfeld
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Appeal 2008-6360
Application 10/736,922

ADDITIONAL FINDINGS OF FACT
Appellants’ Fig. 6 is reproduced below:

Appellants’ Fig. 6 depicts two honeycomb filter substrates 58, 60
arranged in series in an air purification system (Spec. paras. [65], [66]). UV
light source 32 activates the photocatayltic coatings located on the
honeycomb filters.
Reisfeld teaches the process of removing or reducing organic
pollutants from a fluid by contacting the fluid with a photocatalytic titanium
dioxide activated by an ultraviolet light source was well known (col. 1, ll.
23).
Reisfeld’s Fig. 1 is reproduced below:

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Appeal 2008-6360
Application 10/736,922

Fig. 1 of Reisfeld exemplifies three honeycomb filter substrates 14,
16, 18 arranged in series in an air purification system.
Reisfeld states “Any suitable structure may be employed, however,
the honeycombed structure . . . is preferred because air pressure is
maintained as air is directed through filter 10” (col. 3, ll. 35-38). Reisfeld
describes that the honeycombed filter elements “include catalytic coating
120 disposed thereon” (col. 3, ll. 38-40). UV lamps 20, 22 activate the
photocatalytic coatings located on the honeycomb filters (see, e.g., col. 3, ll.
39-42).

Claim 35
Claim 35 depends from claim 1 and adds “wherein said substrate is a
honeycomb”. Kobayashi is silent as to the structure of the substrate upon
which the catalytic coating is applied. The Examiner cites Reisfeld3 to
exemplify the known structure of a honeycomb filter substrate (Ans. 6).
Appellants do not dispute the Examiner’s finding that the “selection of
any known equivalent substrates for the photocatalytic fluid purification
would be within the level of ordinary skill in the art”. (App. Br. 5-6).
Rather, they contend that the Examiner’s rejection was conclusory and
provided no motivation for modifying Kobayashi (App. Br. 10). We
disagree.
The use of a honeycomb substrate coated with a photocatalytic
coating as shown in Reisfeld to provide an appropriate substrate for the
photocatalytic coating of Kobayashi would have been prima facie obvious,

3 Reisfeld is commonly assigned to the same assignee, i.e., Carrier
Corporation, as the present appeal.
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since it would have been no more than the predictable use of a known prior
art element for its intended function. See, KSR Int'l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1740 (2007) (The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
Thus, Appellants have failed to show reversible error in the
Examiner’s conclusion of obviousness reached herein.
Claims 20, 37, and 38
Appellants do not separately argue any of these claims. We select
claim 20 to represent this claim grouping.
Appellants argue the motivation given by the Examiner (i.e., “this
would result in the application of Kobayashi’s photocatalytic material to a
photocatalytic fluid purification system”) is merely a goal and is not a reason
for combining the references (App. Br. 6). We disagree.
Reisfeld teaches the process of removing or reducing organic
pollutants from a fluid by contacting the fluid with a photocatalytic titanium
dioxide activated by an ultraviolet light source was well known (col. 1, ll.
23).
The combined teachings of Kobayashi and Reisfeld would have led
one of ordinary skill in the art, through no more than ordinary creativity, to
use the photocatalytic coating layers of Kobayashi as the photocatalytic
coating on the honeycomb porous substrates in the fluid container (e.g., the
air duct) of Reisfeld, for the expected improvements of a metal
oxide/titanium dioxide (and/or metal/titanium dioxide) photocatalytic
coating layer(s) as taught in Kobayashi. See KSR, 127 S. Ct. at 1741 (a
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Appeal 2008-6360
Application 10/736,922

“court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”).
Accordingly, Appellants have not shown error in the Examiner’s
determination of obviousness.
Claims 7-12, 33, 43, and 44
Appellants do not separately argue any of these claims. We select
claim 7, which is dependent upon claim 1, to represent this claim grouping.
Claim 7 adds the limitation of a light source to activate the
photocatalytic coating. Appellants do not rely upon any arguments separate
from those relied upon for independent claim 1. We do not find any of those
arguments persuasive for the reasons set forth above with respect to
independent claim 1.
Therefore, we agree with the Examiner’s findings in support of
obviousness for claims 7-12, 33, 43, and 44 based on Kobayashi and
Reisfeld.
Claims 21-32, 39-42, and 47
Appellants only dispute the Examiner’s determination of obviousness
because the reason cited by the Examiner for combining the references,
“enhancing the photocatalytic fluid purification”, was “only known through
[Appellants’] disclosure” (App. Br. 7). We disagree for the same reasons set
forth above with respect to claim 20.
Claim 27
Claim 27 depends from claim 25 which depends from independent
claim 21 and recites “wherein said second substrate is proximate to an inlet
of the air purification system and said second substrate is distal to said
inlet”.
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Application 10/736,922

We interpret claim 21 such that the first and second coatings recited
therein may be the same coating4. Likewise, the first and second coatings
recited in claim 25 can be the same, as there appears to be no discernable
difference between a “manganese oxide/titanium dioxide” coating and a
“metal oxide doped titanium dioxide” coating wherein manganese is the
metal oxide. Indeed, Appellants’ Specification supports this claim
interpretation (see, e.g., paras. [51] and [66]).
It is undisputed that Reisfeld describes two substrates coated with
titanium dioxide photocatalytic coating, one substrate being closer than the
other to the inlet.
Appellants’ only contention to dispute the Examiner’s determination
of obviousness is that a “mere rearrangement” of the layers of Kobayashi
“wihtout motivation for the particular claimed arrangement” is not sufficient
to establish obviousness (App. Br. 7). This is not persuasive of error in the
Examiner’s rejection.
As set out above, the combined teachings of Kobayashi and Reisfeld
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use the same and/or different photocatalytic coating
layers as taught in Kobayashi as the photocatalytic coating(s) on the three
honeycomb porous substrates in the fluid container (e.g., the air duct) of
Reisfeld, for the expected improvements of a metal oxide/titanium dioxide
(and/or metal/titanium dioxide) photocatalytic coating layer(s) as taught in

4 Appellants did not dispute the Examiner’s reasonable claim interpretation
of similar claim language in claim 1 that the same material can be used for
each layer (compare, e.g., Ans. 10; App. Br. and Reply Br., generally).
Similarly, each of the first and second “coating” of claim 21 may be a “metal
compound/titanium dioxide”.
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Kobayashi. See KSR, 127 S. Ct. at 1741 (a “court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
Accordingly, Appellants have not shown error in the Examiner’s
determination of obviousness of claim 27.
Claim 47
Claim 47 depends from claim 21 and adds limitations similar to those
in claim 1. Appellants’ only argument is that design choice is not an
appropriate rationale to support obviousness (App. Br. 8).
However, once again, the claims are drafted such that the “third layer”
recited in claim 47 may be the same composition as the first and second
coatings recited in claim 21. The coating and third layer located on two
surface portions of the same substrate as encompassed by the language of
claim 47 is indistinguishable from a final product comprising a single layer
of the same material on the substrate (e.g., see Appellants’ Fig. 5).
In any event, we agree with the Examiner’s conclusion of obviousness
for similar reasons as we have expressed with respect to claims 21 and 27
above.
CONCLUSION
Appellants have not shown that the Examiner reversibly erred based
on Appellants’ arguments.
ORDER
All of the Examiner’s rejections under 35 U.S.C. § 103(a) on appeal
are affirmed.
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The Examiner’s provisional rejection of claims 1-14, 17, 18, and 20-
47 on the ground of nonstatutory obviousness-type double patenting is
affirmed.
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
sld

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