Kenneth Horvath

Patent Trials and Appeals Board

Feb 26, 2021

2020002487 (P.T.A.B. Feb. 26, 2021)

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.
15/612,948 06/02/2017 Kenneth Horvath 59291.0200 6855
95996 7590 02/26/2021
Zeman-Mullen & Ford, LLP
233 White Spar Road
Prescott, AZ 86303
EXAMINER
CLEVELAND, TIMOTHY C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
02/26/2021 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):
ktopolewski@zmfiplaw.com
lzemanmullen@zmfiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH HORVATH
Appeal 2020-002487
Application 15/612,948
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 11–18, and 20–25. We have
jurisdiction. 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor Kenneth
Horvath. Appeal Br. 1.
Appeal 2020-002487
Application 15/612,948

2
CLAIMED SUBJECT MATTER
The claims are directed to devices used to generate chlorine dioxide,
which the Specification discloses can be used “as an oxidizer or disinfectant
for treating and/or eliminating smoke odors, mold, viruses, bacteria, fungi,
and other pathogenic microorganisms, as well as pests such as insects and
rodents that are destructive and/or carry disease.” Spec. ¶ 1; see also id. ¶ 3.
Claim 1 is illustrative of the claimed subject matter, and is reproduced
below with key limitations italicized for emphasis:
1. A device for use with chemicals to generate chlorine dioxide
comprising:
a housing having a top, a bottom, a front, and a back;
at least one tray having a plurality of compartments contained therein
capable of retaining one or more chemicals for generating chlorine dioxide
wherein the tray is capable of being retained with an interior of the housing;
and
a fan in communication with the interior of the housing located at the
front of the housing and positioned at an upward angle relative to the front of
the housing.
Appeal Br. 15 (Claims App.) (emphasis added).
STATEMENT OF THE CASE
The Examiner rejects all claims on appeal––claims 1–9, 11–18, and
20–25––under 35 U.S.C. § 103 as unpatentable over Aoyagi2 and Martens.3
The Examiner finds that Aoyagi discloses all the elements of independent
claim 1 except for the limitation requiring the tray to have “a plurality of
compartments contained therein,” and the fan’s location “at the front of the
housing.” Final Act. 2–3.

2 US 6,363,734 B1, issued April 2, 2002.
3 US 4,583,686, issued April 22, 1986.
Appeal 2020-002487
Application 15/612,948

3
To address the first difference, the Examiner turns to Martens, which
the Examiner undisputedly finds discloses a tray for dispensing volatile
liquids which has a plurality of compartments. Id. at 3. Based on the
combined disclosures of Aoyagi and Martens, the Examiner undisputedly
determines that the skilled artisan would have substituted Aoyagi’s container
for that disclosed in Martens “for the purpose of using a disposable container
which includes structure to prevent vapor from being dispensed prior to
opening and use.” Id.
To address the second difference, the Examiner determines “it would
have been within the ambit of one of ordinary skill in the art to have
rearranged the structures of the apparatus, such as the fan being positioned at
the front of the housing at an upward angle, without creating any new or
unexpected result.” Id.
OPINION
We address the claims separately to the extent they are so argued by
Appellant. 37 C.F.R. §41.37(c)(1)(iv).
Claim 1
Appellant first argues that the claimed device “is not intended for use
in areas occupied by humans” but that Aoyagi’s device, an air conditioning
system, functions differently because it restricts concentrations of chlorine
dioxide gas “to around 0.33 ppm, a density which is harmless to humans.”
Appeal Br. 8. This argument is unpersuasive because it is well-settled that
“the patentability of apparatus or composition claims depends on the
claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
Appeal 2020-002487
Application 15/612,948

4
2002); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a
device does.”). Appellant’s argument that the claims do not recite an
intended use, “but instead points out the different function [the claim]
performs as compared to the prior art” is likewise unpersuasive of reversible
error in the rejection. Appeal Br. 9. Language in an apparatus claim
directed to its function or operation that does not structurally limit the
apparatus components or patentably differentiate the claimed apparatus from
a prior art apparatus, does not support its patentability. See In re Lampert,
245 F.2d 253, 256 (CCPA 1957) (stating that one “cannot rely on a method
concept to in any way limit or distinguish such [apparatus] claims over the
art.”); In re Otto, 312 F.2d 937, 939 (CCPA 1963) (recognizing “the
impropriety of relying on a method concept to distinguish a structural claim
over the prior art”). Here, there is nothing in the claim that structurally
limits the device to functions to be performed only in areas uninhabited by
humans or animals.
Appellant also argues that the Examiner erroneously determined that
the skilled artisan would have found it obvious to rearrange Aoyagi’s fan to
be “located at the front of the housing” as claimed. Appeal Br. 9. In support
of this argument, Appellant asserts that chlorine dioxide “is much heavier
than air” and that “the claimed structure and the function it performs are
different from Aoyagi.” Id. To provide some context for our discussion of
this argument, we provide an annotated Figure from Aoyagi which illustrates
how the Examiner mapped Aoyagi’s “front” housing and “back” housing
vis-à-vis Aoyagi’s fan.
Appeal 2020-002487
Application 15/612,948

5

Annotated Figure 1 of Aoyagi illustrates an air conditioning system with
housing 1, and identifies the “back” of the housing as the left wall, the
“front” of the housing as the right wall, tray 12, and fan 26 as mapped to
claim 1 by the Examiner. Aoyagi, Fig. 1, 2:9–33, 4:16–23, 50–28; see Final
Act. 2 (mapping the “back” of Aoyagi’s housing to the left side which
contains air inlet 20); see also Advisory Act. 2 (identifying the vertical
upward direction of air as “90 degrees relative to the front of the housing,”
which would be the right side as depicted in Figure 1); Ans. 6 (identifying
compressor 24 as being at the bottom of the housing).
Appeal 2020-002487
Application 15/612,948

6
Claim 1 requires the fan to be “located at the front of the housing,”
but the meaning of this limitation is ambiguous. Appeal Br. 15 (emphasis
added). Specifically, it is unclear whether the fan must be located, e.g.,
within the front wall of the housing, or merely closer to the front of the
housing than the back of the housing to meet this limitation.4 The particular
circumstances of this case, however, do not compel us to undertake
“considerable speculation” regarding this limitation which would then
prevent us from properly considering the merits of the obviousness rejection
because Appellant’s arguments do not identify reversible error in the
rejection regardless of which of these constructions we apply. Cf. In re
Steele, 305 F.2d 859 (CCPA 1962); see Ex parte Saceman, 27 USPQ 2d
1472, 1474 (BPAI 1993) (considering the merits of an obviousness rejection
after determining a single claim term is indefinite).
Here, the prior art Aoyagi fan appears close to the top wall of housing
1 as mapped by the Examiner, and is also located closer to the housing’s
front wall than the back. Aoyagi, Fig. 1. If the limitation “located at the
front of the housing” means that the fan must be within the front housing
wall, Appellant’s argument is unpersuasive because there are only a finite
number of predictable options for fan placement––e.g., the front, back, top,
or bottom of Aoyagi’s four-walled housing. As the Supreme Court stated in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007),
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable

4 Should prosecution continue, we leave it to the discretion of the Examiner
to determine whether the phrase “located at the front of the housing,” recited
in each independent claim 1 and 14, meets the definiteness standard under
35 U.S.C. § 112(b).
Appeal 2020-002487
Application 15/612,948

7
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Absent some evidence that placing Aoyagi’s fan in one of the available
locations (e.g., within the front housing) would yield an unpredictable or
unexpected result, we discern no error in the Examiner’s determination that
rearranging Aoyagi’s fan placement to be “located at the front of the
housing” would have been obvious. Final Act. 3.
The other possible reasonable construction we see here––i.e., that
“located at the front of the housing” means the fan is located closer to the
housing’s front wall than the back––appears to require no modification to
Aoyagi’s fan placement to arrive at the claimed subject matter.5 Aoyagi,
Fig. 1. Thus, under that construction, Appellant’s argument regarding
Aoyagi’s ability to perform a certain function vis-à-vis the claimed device is
moot. Appeal Br. 8–10; Catalina Mktg. Int’l, Inc., 289 F.3d at 809; Hewlett-
Packard Co., 909 F.2d at 1468.
Thus, under either of these constructions, Appellant’s argument does
not reveal reversible error in the obviousness rejection over the combined
disclosures of Aoyagi and Martens. We, therefore, sustain the Examiner’s

5 This particular construction appears more reasonable to us than requiring
the fan to be located within a front housing because dependent claim 11
further requires that the fan lie “adjacent to an opening in the front of the
housing.” It is unclear how claim 11 further narrows claim 1 if the fan is
already within the front housing wall. We leave it to the discretion of the
Examiner to determine whether claim 11 further limits the scope of claim 1
from which it depends in accordance with 35 U.S.C. § 112(d).
Appeal 2020-002487
Application 15/612,948

8
rejection of claim 1, as well as claims 5–9 and 24 which are not separately
argued.
Claims 2–4
Claim 2 depends from claim 1 and further requires the back of the
housing to include “at least one opening therethrough for enabling air to be
drawn into the interior of the housing.” Claim 3 also depends from claim 1
and further requires that “at least a portion of the back of the housing is
moveable to enable access into the interior of the housing.” Claim 4
depends from claim 3 and recites “wherein the moveable portion of the back
of the housing comprises a door.” Appeal Br. 15 (Claims App.).
Appellant’s arguments regarding these claims reflect a
misunderstanding of the Examiner’s mapping of Aoyagi’s device to that of
the claimed device. Specifically, Appellant states that the Examiner maps
the “back” of Aoyagi’s housing to the side where compressor 24 is located.
Appeal Br. 10. This is incorrect. See Final Act. 2 (mapping the “back” of
the housing to the side with air inlet 20 as depicted in annotated Figure 1,
supra); Ans. 6 (“It is unclear how the Appellant arrived at the conclusion
that the compressor 24 is the ‘back’ of the housing instead of the ‘bottom’ of
the housing as compressor [24] is depicted as being centrally located at the
bottom of the housing in Figure 1.”).
Because Appellant does not identify reversible error in the rejection
of claims 2–4, we sustain the rejection of these claims.
Claims 11–13
Claim 11 depends from claim 1 and further requires the fan to lie
“adjacent to an opening in the front of the housing.” Claims 12 and 13
Appeal 2020-002487
Application 15/612,948

9
depend from claim 11 and require the opening to include an indentation
(claim 12) and to be circular (claim 13).
Regarding claim 11, the Examiner makes no express finding that
Aoyagi’s fan is “adjacent to an opening in the front of the housing” until the
Answer, where the Examiner finds that either “the openings of grill 28 are in
the front of the housing and the fan 24 lies adjacent thereto” or “it would
have been within the ambit of one of ordinary skill in the art to have
repositioned the fan at the front of the housing without altering the operation
of the apparatus.” Final Act. 2–4; Ans. 7.
Appellant asserts that Aoyagi’s fan is not “adjacent to, i.e., next to,
grill 28 which provides the opening.” Appeal Br. 11. Appellant then
challenges the Examiner’s mapping set forth in the Answer. Reply Br. 3–4.
Although Appellant is correct that the Examiner erroneously stated
that Aoyagi’s grill opening 28 is at the “front” of the housing (Ans. 7),
Appellant’s arguments are not persuasive of reversible error in the
obviousness rejection of claim 11. Appellant’s argument that Aoyagi’s fan
is not “adjacent” or “next” to the opening begs the question––how far can
the fan be away from the opening and still be considered “adjacent” within
the meaning of the claim? Aoyagi’s fan, while not abutting or located
within the front of the housing wall, appears to be closer to the front wall of
the housing than to the back wall. Aoyagi, Fig. 1. Because the term
“adjacent” is not defined, e.g., by a precise distance, we are not persuaded
by Appellant’s argument stating that Aoyagi’s fan is not adjacent to, but
“away from” the front of the housing. Appeal Br. 11.
Appellant’s challenge (Reply Br. 4) to the Examiner’s determination
that it would have been obvious to reposition the fan (Ans. 7) is also
Appeal 2020-002487
Application 15/612,948

10
unpersuasive. Appellant provides no evidence to support its assertion that
“repositioning the fan 26 in Aoyagi to sit adjacent to grill 28 . . . would not
compress the air at the top of the housing and would require more time and
energy to pull air from air inlet 20 through grill 28.” Reply Br. 4.
“Attorney’s argument in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Because Appellant has not
shown reversible error in the rejection of claim 11, we sustain that rejection.
Regarding claims 12 and 13, Appellant argues that the Examiner
erroneously concluded that the indentation in and shape of the opening
would have been obvious. Appeal Br. 11. Appellant states Aoyagi discloses
several types of air conditioning systems including portable window units
and central-type systems, each having its own “typical[]” requirements
regarding duct work and drainage of condensate. Id. These arguments are
not persuasive of reversible error because Appellant merely describes what it
believes would be “typical” in such systems and fails to provide evidence for
its assertions. Pearson, 494 F.2d at 1405.
The rejection of claims 11–13 is sustained.
Claims 14–18, 20–23, and 25
Appellant’s arguments regarding these claims rely on an erroneous
mapping of Aoyagi’s device to the claimed device. Compare Appeal Br. 12
(asserting the Examiner mapped the back of the housing to where
compressor 24 is located), with Final Act. 2 (identifying “air inlet 20[] in the
back of the housing”). Such technically erroneous arguments lack merit.
Appellant’s additional assertions regarding claims 22 and 23 are
substantially similar to or identical to those arguments presented for claims
Appeal 2020-002487
Application 15/612,948

11
12 and 13, which we have already found unpersuasive as discussed supra.
We reject those arguments here for the same reasons.
The rejection of claims 14–18, 20–23, and 25 is sustained.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–9, 11–18,
20–25
103 Aoyagi, Martens 1–9, 11–
18, 20–25

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Appeal 2020-002487
Application 15/612,948

12

APJ Initials:
SMM
DMP
LMG

PL Initials:
jagr