VÄLINGE PHOTOCATALYTIC AB

Patent Trials and Appeals Board

Feb 2, 2022

2021004616 (P.T.A.B. Feb. 2, 2022)

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. 14/783,493 10/09/2015 Henrik JENSEN 0079846-000012 6908 21839 7590 02/02/2022 BUCHANAN, INGERSOLL & ROONEY PC 1737 KING STREET SUITE 500 ALEXANDRIA, VA 22314-2727 EXAMINER FORREST, MICHAEL ART UNIT PAPER NUMBER 1738 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRIK JENSEN, KARSTEN FELSVANG, and MICHAEL HUMLE Appeal 2021-004616 Application 14/783,493 Technology Center 1700 Before JAMES C. HOUSEL, N. WHITNEY. WILSON, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 2, 4, 5, 7, 8, 10-28, and 31. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Specification filed October 9, 2015 (“Spec.”); the Final Office Action dated June 12, 2020 (“Final Act.”); the Appeal Brief filed November 10, 2020 (“Appeal Br.”); Claims Appendix to Appeal Brief (Claims App.); the Examiner’s Answer dated May 24, 2021 (“Ans.”); and Reply Brief filed July 20, 2021. 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42 (2020). Appellant identifies the real party in interest as Välinge Photocatalytic AB. Appeal Br. 1. Appeal 2021-004616 Application 14/783,493 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a method of applying a NOx degrading composition to a concrete element and a concrete element having NOx degrading properties. Spec. 1, ll. 2-4. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of applying a NOx degrading composition on a concrete element, comprising providing a concrete element having a surface, and applying a composition comprising photocatalytic titanium dioxide particles dispersed in a continuous phase on the surface of said concrete element in an amount that equals or exceeds 100 ml/m2, wherein the composition further comprises a silica compound, wherein the ratio of the silica compound to titanium dioxide particles is between 1:1 to 15:1 wt% in the composition, wherein the continuous phase is water, and wherein said titanium dioxide particles are applied on the surface of the concrete element in an amount of 3 g/m2 or less. Claims App. 1. Independent claim 20, the other independent claim, is directed to a concrete element comprising photocatalytic titanium dioxide particles in an amount equal or less than 3 g/m2. Appeal 2021-004616 Application 14/783,493 3 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection I: Claims 1, 2, 4, 5, 7, 8, 12-22, 24-28, and 31 are rejected under 35 U.S.C. § 103 as unpatentable over Naruse3 and Shi.4 Rejection II: Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Naruse, Shi, and Chen.5 Rejection III: Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Naruse, Shi, and Hassan.6 DISCUSSION Because Appellant’s arguments focus on representative claim 1, we will do the same in our discussion below. The Examiner finds that Naruse teaches claim 1’s method of applying a NOx degrading composition on a concrete element, but does not teach that its method includes applying a composition including photocatalytic titanium dioxide particles dispersed in a continuous phase on the surface of a concrete element in an amount that equals or exceeds 100 ml/m2, and does not teach the titanium particles are applied to the surface of the concrete 3 Naruse et al., JP 2002-338375 A, published Nov. 27, 2002. We refer to the machine translation of record of Naruse as cited by the Examiner. See generally Final Act. 4 Shi, Hui, Efficiency Analysis of Nano-TiO2 Photocatalytic Purification of NOx in Automobile Exhaust, Engineering Tech. 29, 44-45 (2009). 5 CN 101591195 A, published Dec. 2, 2009. We refer to the English- language translation of record of Chen filed by Appellant on January 26, 2017, and cited by the Examiner. 6 Hassan et al., Methods for the Application of Titanium Dioxide Coatings to Concrete Pavement, 5 Int’l J. Pavement Res. Tech. 12-20 (2012). Appeal 2021-004616 Application 14/783,493 4 element in an amount of 3 g/m2 or less. Final Act. 2-3 (Naruse ¶¶ 51, 52, 54, 68-73). The Examiner finds that Shi, like Naruse, teaches a method for applying a NOx degrading composition on a concrete element and the concrete element having NOx degrading properties. Final Act. 3. The Examiner finds that Shi teaches that as the concentration of TiO2 is increased, the photocatalytic reaction efficiency also increased as well but when the amount is increased to a certain degree, the degradation rate of NOx no longer is increased. Final Act. 4 (citing Shi 29). The Examiner also finds that Shi suggests that when considering the economy of engineering applications, lower concentrations of TiO2 should be preferred when the purifications are not significantly different. Id. The Examiner determines that it would have been obvious to one of ordinary skill in the art “to perform a coating of TiO2 particles on to concrete, as disclosed by Naruse, where the amount applied is 3 g/m2 or less since the concentration of TiO2 is a results effective variable on purification efficiency and the lowest concentration with sufficient efficiency should be preferred due to economy.” Final Act. 4. Appellant argues that Shi fails to teach the amount of the NOx degrading composition containing TiO2 particles or the amount of the TiO2 particles applied onto a concrete element. Appeal Br. 5. Appellant further argues that those skilled in the art would have had no reason to apply the claimed amounts of the NOx degradation composition to a concrete element when following the teachings of the cited art. Reply Br. 4. Appellant’s arguments identify reversible error in the Examiner’s rejection. As the Examiner finds, Shi teaches that the concentration of TiO2 Appeal 2021-004616 Application 14/783,493 5 particles in a composition is a result effective variable on purification efficiency and the optimal concentration of TiO2 is 4 wt%. Shi 29. The Examiner, however, has not provided a sufficient reason why one of ordinary skill in the art would have been led to use a concentration of TiO2 less than 4 wt%, the “optimal” concentration of TiO2, absent hindsight. Further, as Appellant argues, Shi fails to teach or suggest that the amount of the composition or the concentration of TiO2 particles applied on the surface of a concrete element are result effective variables. It is well settled that the burden of establishing a prima facie case of unpatentability resides with the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On this record, the Examiner has not met the initial burden of setting forth a prima facie case of obviousness for claims 1, 2, 4, 5, 7, 8, 12-22, 24-28, and 31 under 35 U.S.C. § 103 over Naruse and Shi. Accordingly, we do not sustain the § 103 rejection of those claims. Claims 10 and 11 depend from representative claim 1, and claim 23 depends from claim 20. Because the rejection of those claims are deficient for the same reasons as discussed above, we also do not sustain the rejections of those claims. CONCLUSION The Examiner’s decision to reject claims 1, 2, 4, 5, 7, 8, 10-28, and 31 is reversed. Appeal 2021-004616 Application 14/783,493 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 7, 8, 12-22, 24-28, 31 103 Naruse, Shi 1, 2, 4, 5, 7, 8, 12-22, 24-28, 31 10, 11 103 Naruse, Shi, Chen 10, 11 23 103 Naruse, Shi, Hassan 23 Overall Outcome 1, 2, 4, 5, 7, 8, 10-28, 31 REVERSED