Ex Parte Wei et al

Board of Patent Appeals and Interferences

Mar 4, 2009

10464942 (B.P.A.I. Mar. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DI WEI, RAKESH RADHAKRISHNAN, and
THOMAS H. VANDERSPURT
___________

Appeal 2008-4922
Application 10/464,942
Technology Center 1700
____________

Decided:1 March 4, 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 1-16, 19, and 202. We have jurisdiction under

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).

2 An amendment after final cancelling claim 18 was entered by the Examiner
(see, Amendment after Final, filed Oct. 30, 2006; Advisory Action, mailed
Nov. 13, 2006).
Appeal 2008-4922
Application 10/464,942

35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to an air purification system. Claim 1 is
illustrative:
1. An air purification system comprising:

a substrate;

a manganese oxide/titanium dioxide coating applied on said substrate,
wherein said manganese oxide/titanium dioxide coating includes manganese
oxide supported on a surface of titanium dioxide, and said manganese oxide
is layered on said surface of said titanium dioxide; and

a light source to activate said manganese oxide/titanium dioxide
coating, wherein said manganese oxide/titanium dioxide coating oxidizes
contaminants that are adsorbed onto said manganese oxide/titanium dioxide
coating when activated by said light source.

The Examiner relies upon the following prior art references in
the rejections of the appealed claims:
Say US 5,790,934 Aug. 4, 1998
Kobayashi US 6,368,668 B1 Apr. 9, 2002
Reisfeld US 2003/0021720 Jan. 30, 2003

Iwao JP 2001-340441 Dec. 11, 2001
(as translated; hereinafter JP 441)

The Examiner rejected claims 1-13, 15, 16, and 19, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Reisfeld, or Say, in view of
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Kobayashi. To reject claim 14 under 35 U.S.C. § 103(a), the Examiner
added JP 441 to the above combinations of prior art references.
The Examiner also provisionally rejected claims 1, 3-5, 6, 7, 10, 12,
and 20 on the ground of nonstatutory obviousness-type double patenting
over claims 1, 6-10, 13, 16, 17, 18, and 20 of copending Application No.
10/736,922.
Appellants have not separately argued claims 1-123, 13, 15, and 19,
and 20 in the first ground of rejection with any reasonable degree of
specificity. Although Appellants have a separate section in their Brief for
each of the independent claims on appeal, i.e., claims 1, 16, and 20, these
sections all rely on the same arguments made with respect to claim 1.
Accordingly, we select claim 1 as representative of the grouping above and
confine our discussion to this selected claim. We will separately address the
rejection of dependent claim 14, as well as the provisional nonstatutory
obviousness-type double patenting rejection.

The § 103 Rejections based on Reisfeld, or Say, in view of Kobayashi
ISSUE
The issue is one of claim construction. Appellants’ only argument is
that these § 103 rejections are improper because Kobayashi fails to disclose

3 Although Appellants presented an argument directed to claims 11 and 12 in
the Appeal Brief, it was withdrawn (Reply Br. 2). The remark presented in
the Reply Brief, directed solely to claim 12, amounts to merely pointing out
the alternative compounds listed in claim 12. A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).

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a manganese oxide “layered on a surface of said titanium oxide” (e.g., App.
Br. 5, 7; emphasis in App. Br.). 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
manganese oxide “layered on a surface of said titanium oxide” as recited in
claim 1?
This issue turns on the broadest reasonable interpretation of the above
noted claim language.

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
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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).
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. As found by the Examiner, the combination of Reisfeld and
Kobayashi, or alternately the combination of Say with Kobayashi, suggests
all the elements set forth in independent claim 1 (e.g., Ans. 3-4, 5-6).
2. Appellants only dispute this finding by contending that the
Examiner has taken an unreasonable interpretation regarding the
photocatalytic material composition of Kobayashi. Specifically, Appellants
contend that Kobayashi does not describe or suggest the claimed manganese
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oxide “layered on titanium dioxide” as recited in claim 1 (e.g., App. Br. 5-7;
emphasis therein).
3. Appellants’ Specification does not include a special definition for
the term “layered on”. Indeed, neither the original Specification nor the
original claims ever use the term “layered on” or the term “layer” per se.
4. The word “layered” is used in Appellants’ Specification only once.
Appellants’ Specification describes a process for making a manganese
oxide/titanium dioxide powder wherein “a titanium dioxide powder layered
with manganese oxide nano-particles is created” (Spec. 7, para. [32];
emphasis added).
5. As found by the Examiner (e.g., Ans. 3, 11), 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 oxide, a “preferred example” being
“manganese oxide” (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; emphasis added)

6. In addition, Kobayashi states:

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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. When
an identical photocatalyst coating composition is coated a
plurality of time, the “coating to form a stacked or multi-
layered coating" refers to the so-called "multi-coating" or
"recoating." In this case, an even coating can be realized.

(Kobayashi, col. 10, ll. 17-30; emphasis added)

ANALYSIS
Appellants’ disagreement with the Examiner’s rejection focuses solely
on the alleged deficiency of Kobayashi as set out in the issue above.
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.
However, Appellants do not provide any credible reasoning or
evidence why the Examiner’s interpretation is unreasonable (App. Br. 5).
The Appellants’ contentions amount to no more than mere allegations that
the reference does not teach the claimed limitation (id.), and that the
Examiner’s interpretation of Kobayashi is “unreasonably broad” (Reply Br.
2). Appellants remark that “[a]t best, Kobayashi disclosed depositing
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particles of a metal or metal oxide onto the photocatalyst particles” does not
show Examiner error (id.). Depositing particles onto other particles can be
interpreted as “layering” the particles, especially in view of Appellants’
Specification which creates a dry powder of titanium dioxide layered with
manganese oxide particles (FF 4).
Moreover, the disclosure of Kobayashi, as pointed out in the Findings
of Fact above (FF 5, 6), supports the Examiner’s interpretation that
Kobayashi describes manganese oxide layered on the surface of titanium
dioxide. There is nothing in the claim to define over the Examiner’s
reasonable interpretation of Kobayashi.
Thus, Appellants have not shown that the Examiner reversibly erred
based on Appellants’ argument that Kobayashi does not disclose or render
obvious a manganese oxide which “is layered on” the surface of titanium
dioxide as recited in claim 1.

The § 103 Rejection of dependent claim 14
The Examiner further relies upon JP 441 to exemplify the obviousness
of having the walls of a housing “lined with a reflective material” as recited
in claim 14 (Ans. 8, 11).
Appellants’ only contention regarding claim 14 is that JP 441 is not
“lined with” reflective members 5a and 5b (App. Br. 10), because members
5a and 5b are depicted as “spaced apart” from the walls of the casing 2
(Reply Br. 2). However, Appellants’ Specification provides no explicit
definition of the term “lined with”. Furthermore, Appellants have failed to
provide any credible reasoning or evidence why the Examiner’s
interpretation of “lined with” is unreasonable.
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Accordingly, Appellants have not shown that the Examiner reversibly
erred based on Appellants’ argument that JP 441 does not disclose or render
obvious a housing with the walls “lined with a reflective material” as recited
in claim 14.
Therefore, we agree with the Examiner’s findings in support of
obviousness for claim 14 based on or Say, Kobayashi, and JP 441.

The Provisional Obviousness-type Double Patenting Rejection
Appellants’ only contention as to the impropriety of this provisional
rejection is that Application No. 10/736,922 “was filed after the filing date
of the present application.” This does not satisfy Appellants’ burden to
show why this rejection is in error. There is no requirement that a
provisional obviousness-type double patenting rejection may only be made
over earlier filed cases.
Accordingly, Appellants have not shown that the Examiner reversibly
erred in making the provisional obviousness-type double patenting rejection
over a later filed application.

ORDER
All of the Examiner’s rejections under 35 U.S.C. § 103(a) on appeal
are affirmed.
The Examiner’s provisional rejection of claims 1, 3-5, 6, 7, 10, 12,
and 20 on the ground of nonstatutory obviousness-type double patenting is
affirmed.
The Primary Examiner’s decision is affirmed.
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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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