DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/24/2025 has been entered.
Current Application Appeal
The applicant filed a Notice of Appeal on 3/18/2020, the applicant filed a 54 page Appeal Brief on 5/18/2020, the Examiner mailed a 20 page Examiner’s Answer on 3/30/2021, the applicant filed a 20 page Reply Brief on 6/1/2021, and The Patent Trial and Appeal Board AFFIRMED the Examiner on 11/16/2022. On page 4 the PTAB wrote “we affirm the Examiner’s prior art rejection of claims 1-17 for the reasons the Examiner presents.” On page 8 the PTAB wrote “there is a basis for one skilled in the art to reasonably expect that the prior art reactive additization components react with harmful agents to degrade them into harmless byproducts as claimed.”
Parent Application Appeal
The current application is a continuation of parent application 12/811,618, filed 12/17/2010, now abandoned. All of the current claims are rejected with the same prior art applied, appealed, and affirmed, in parent application 12/811,618.
In application 12/811,618, the applicant filed a Notice of Appeal on 6/26/2015, the applicant filed a 51 page Appeal Brief on 8/26/2015, the Examiner mailed a 15 page Examiner’s Answer on 1/26/2016, the applicant filed a 23 page Reply Brief on 2/26/2016, and The Patent Trial and Appeal Board AFFIRMED the Examiner on 5/9/2017. On page 5 the PTAB wrote “Upon consideration of the evidence relied upon by the Examiner and Appellants in light of each of Appellants’ contentions, we affirm the Examiner’s rejection of claims 16, 18-20, 23, 24, 27, 28, and 32-35 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Fish, Doughty, and Bohringer substantially for the reasons set forth in the Final Action, Advisory Action, and the Answer.”
In the Appeal Brief the appellant incorrectly asserted that Fish is only concerned with removing ethylene gas (to prevent the ripening of fruit) and removing odor from diapers. In response, on page 6 the PTAB wrote “Notwithstanding Appellants’ arguments to the contrary at pages 21, 23, and 26 of the Appeal Brief, Fish does not limit its gases causing a negative effect to ethylene gas or limit its protective articles to diapers.”
In the Appeal Brief the appellant also incorrectly asserted that the protective material taught by the cited prior art would fail to have “protective function” with regard to chemical and biological poisons and noxiants. In response, on pages 9-10 the PTAB wrote “Under these circumstances, notwithstanding Appellants’ arguments to the contrary, we find no harmful error in the Examiner’s determination that the collective teachings of Fish, Doughty, and Bohringer would have led one of ordinary skill in the art to employ a multilayered construction comprising a nonwoven fabric layer, a porous film (membrane) or textile fabric comprising adsorbent/catalytic components (e.g., zinc oxide, copper oxide and sulfates of zinc or copper), and an adsorbent layer based on activated carbon for making masks in medical applications as recited in claims 16 and 34, with a reasonable expectation of not only successfully removing, neutralizing and/or adsorbing noxiant, odorants and toxicant substances, such as ammonia (NH3) and sulfides (e.g., H2S), but also successfully removing, neutralizing and/or adsorbing other toxicant substances, such as HCN, Cl2, SO2 and organic vapors including that of CCl4, as well as biological poisons and noxiants.”
In the Appeal Brief the appellant also incorrectly asserted that the Fish does not mention using the materials to remove, neutralize, and/or adsorb chemical and biological poisons. On page 10 the PTAB wrote “In so contending, Appellants ignore the collective teachings of Fish, Doughty, and Bohringer. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). As indicated supra, Doughty and Bohringer teach that the materials used by Fish are also useful for removing, neutralizing, and/or adsorbing chemical and biological poisons, in addition to removing ammonia and sulfides, which are also known as odorous and toxic substances.”
In the Appeal Brief the appellant also incorrectly criticized citation to Doughty asserting that Doughty teaches an activated carbon adsorbent impregnated with metal compounds, rather than a membrane containing metal compounds that remove, neutralize and/or adsorb chemical and biological poisons. On page 10 the PTAB wrote “In so contending, Appellants again ignore the collective teachings of Fish, Doughty, and Bohringer. In re Merck & Co., 800 F.2d at 1097. As indicated supra, Doughty teaches using sulfates of zinc or copper, in addition to the zinc oxide and copper oxide used in the membrane (porous substrate) of Fish, in its porous substrate (including a porous activated carbon substrate) to not only more effectively remove, neutralize and/or adsorb the specific gases taught by Fish, but also remove, neutralize and/or adsorb other toxicants such as HCN, Cl2, SO2 and organic vapors including that of CCl4, some of which are used by military (in its nerve gas), industries, and medical communities See also Doughty, col.l, 11. 37-38. Although Doughty prefers including such oxides and sulfates in a porous activated carbon substrate as pointed out by Appellants, Bohringer teaches against impregnating metal compounds in the porous activated carbon substrate and recommends using an adsorptive layer based on activated carbon, without the metal compounds, as part of a multilayered construction that also includes a top layer made of a nonwoven material and an intermediate layer comprising catalytically active metal compounds as indicated supra. Bohringer also teaches that the metal compounds, such as copper, silver, and zinc, their ions and their salts for adsorbing toxic and odorous gases, taught by Fish and Doughty, also function as a catalytic component for removing or neutralizing chemical and biological poisons and can be used with a layer made of the same materials (polyolefin, polyurethane, or polyester) used to form the film (porous membrane substrate) layers taught by Fish as indicated supra.”
In the Appeal Brief the appellant also incorrectly asserted that the applied prior art does not suggest using the amount of the metal compounds recited in independent claim 16, 32, and 35. On pages 10-11 the PTAB wrote “However, as the Examiner correctly finds, Doughty discloses that the metal compounds can be used in the amount recited in a porous substrate for the purpose of removing, neutralizing and/or adsorbing odorants and toxicants such as ammonia (NH3), H2S, HCN, Cl2, SO2, and organic vapors including that of CCl4. Final Act. 5, citing Doughty, col. 5,11. 14-55. Doughty also teaches that “[t]hese formulations [of the metal compounds] may be varied depending on the particular application and/or performance characteristics desired.” Doughty, col. 5,11. 23-25. Moreover, both Fish and Bohringer teach using the metal compounds as adsorbents and/or catalysts for the purpose of removing, neutralizing and/or adsorbing odorants and toxicants and/or chemical and biological poisons and noxiants as indicated supra and page 12 of the Answer. Thus, we concur with the Examiner that one of ordinary skill in the art would have been led to employ the desired or optimum amounts of the metal compounds, such as those recited in claims 16, 32, and 35, in the porous substrate (membrane) and/or textile fabric taught by Fish and Bohringer. In re Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.”); In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”)”
In the Appeal Brief the appellant also incorrectly asserted that the material taught by the applied prior art would not inherently provide the specifically claimed protective function (the ability to react with and degrade a chemical poison or noxiant). On page 12 the PTAB wrote “However, as discussed supra and at page 12 of the Answer, the collective teachings of Fish, Doughty, and Bohringer would have suggested using the catalytic/absorbent metal compounds and activated carbon adsorbent layer to remove, neutralize and/or adsorb odorants and toxicants and/or chemical and biological poisons and noxiants as required by claims 16 and 34.”
In the Appeal Brief the appellant also incorrectly asserted that Fish and Doughty are not from analogous arts. On pages 12-13 the PTAB wrote “However, we are not persuaded by this contention. This “analogous art” test raises the question of whether Fish and Doughty are so unrelated to the claimed subject matter that a skilled artisan would not have looked to them in arriving at the claimed subject matter. Under the analogous art test, the Examiner must show that “a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem of which the inventor was concerned [from the judgment of a person having ordinary skill in the art] in order to rely on [that] reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). As indicated supra, the Specification states that the claimed functional protective material is useful “in the manufacture of protective materials of any kind (such as, for example, protective suits, protective gloves, protective shoes and other protective apparel pieces and also protective covers, for example for medical transports, tents, sleeping bags and the like)[,]” which are suitable for the military and/or civil sectors. Spec. 1,11. 19-29 (emphasis added). This broad description of the claimed subject matter includes the face masks taught by Fish and Doughty as indicated supra and pages 10-11 of the Answer. In other words, we find no error in the Examiner’s finding that Fish and Doughty are from the same field of Appellants’ endeavor. In any event, as discussed supra and page 11 of the Answer, Fish and Doughty are also directed to using the metal compounds and activated carbon in removing, neutralizing, and/or adsorbing odorant, noxiant, and/or toxic substances. Thus, we concur with the Examiner that a person having ordinary skill in the art interested in removing, neutralizing, and/or adsorbing odorant, noxiant, and/or toxic substances would have at least looked to the disclosures of Fish and Doughty. Stated differently, Fish and Doughty are reasonably pertinent to the particular problem of which the inventors were concerned from the perspective or judgement of one of ordinary skill in the art.”
In the Appeal Brief the appellant also incorrectly asserted that one of ordinary skill in the art would not have had a reasonable expectation of success in removing, neutralizing and/or adsorbing odorants and toxicants. On pages 13-14 the PTAB wrote “However, as discussed supra and at page 13 of the Answer, the collective teachings of Fish, Doughty, and Bohringer would have provided a reasonable expectation of success. Although Appellants rely on paragraphs 7, 9, 10, 11, and 13 of the McQuigg Declaration of record and paragraphs 6, 8, and 10 of the Bohringer Declaration of record to show that one of ordinary skill in the art would not have had a reasonable expectation of success, they focus on Fish and Doughty individually, rather than viewing the collective teachings of Fish, Doughty, and Bohringer as discussed supra. In other words, we find no harmful error in the Examiner’s determination in giving little or no weight to the opinions provided in the McQuigg Declaration and the Bohringer Declaration inasmuch as they did not take into consideration the collective teachings of the applied prior art, i.e., the totality of the evidence of record relied upon by the Examiner. See, e.g., Velander v. Gamer, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”)”
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over USPN 7,794,737 to Fish in view of USPN 5,492,882 to Doughty in view of USPAP 2007/0181001 to Bohringer.
Claims 1, 3, 11, 14, 16 and 17, Fish discloses a protective apparel comprising a functional protective material comprising a multilayered construction including a woven fabric supporting material and a membrane bonded to said supporting material wherein the membrane is endowed with zinc oxide particles and copper oxide particles (see entire document including column 5, lines 16-24, column 6, lines 41-67, and column 11, lines 31-58).
Fish discloses that the invention relates to not only removing odors but also to removing gases, while not necessarily odorous, that cause a negative effect (column 1, lines 23-29). Both Fish and Doughty relate to absorbent products (e.g., face masks) that remove harmful gases (column 11, lines 31-38 of Fish and column 5, lines 56-67 of Doughty). Fish does not appear to specifically mention the membrane including copper carbonate, silver, zinc carbonate, ammonium dimolybdate, and TEDA, but Doughty discloses that it is known in the art that copper oxide and copper carbonate are functionally equivalent, zinc oxide and zinc carbonate are functionally equivalent, silver and molybdenum oxides such as ammonium dimolybdate are effective at removing a large number of toxic materials, and that TEDA provides cyanogen chloride protection (column 1, lines 36-48, column 4, lines 14-60, column 5, lines 25 and 26, and column 7, lines 3-8). Doughty discloses that “a combination of zinc and/or copper carbonates or oxides, zinc and/or copper sulfates or zinc and copper with sulfate, and molybdenum or its oxide can provide effective universal chromium-free filtering of Types A, B, E and K agents,” silver is effective at removing “a large number of toxic materials” such as arsine and phosphione, and that TEDA provides “cyanogen chloride protection” (column 1, lines 36-48, column 4, lines 14-60, column 5, lines 25 and 26, and column 7, lines 3-8). Doughty further discloses that “The addition of (copper and zinc) sulfates provides adsorption capacity beyond that provided by the zinc carbonate (or oxide) and copper carbonate (or oxide)” (column 4, lines 42-46). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include copper carbonate, copper sulfate, zinc carbonate, zinc sulfate, silver, TEDA, and ammonium oxide, in the membrane of Fish, motivated by a desire to provide the membrane with protection from a large number of toxic materials.
In the event that it is shown that Fish and Doughty fail to teach or suggest one or more of the other claimed limitations, Bohringer provides motivation. For example, Bohringer discloses that it would have been obvious to one having ordinary skill in the art at the time the invention was made to include silver within the claimed amount, to produce a protective suit that acts against biological noxiants and renders them harmless or destroys chemical noxiants and poisons ([0010], [0015], [0032] and [0034]). Therefore, it would have been obvious to one having ordinary skill in the art to include elemental silver, within the claimed amounts, to produce a protective suit that acts against biological noxiants and renders them harmless or destroys chemical noxiants and poisons.
Fish does not appear to specifically mention the protective material including an activated carbon adsorption layer, but Bohringer discloses that it is known in the art to include a separate activated carbon adsorption layer to provide a protective material with improved ability to adsorb toxic material (see entire document including [0010], [0012]-[0014], [0022] and [0023]). Bohringer specifically discloses that a separate activated carbon layer provides multiple advantages over including carbon with the catalytically active component(s) ([0013] and [0014]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include a separate activated carbon adsorption layer to provide the protective material with improved ability to adsorb toxic material.
Fish does not appear to mention specific weight percentages of the particles but Doughty discloses that it is known in the art to include agents in the amount of up to 20% by weight (column 5, lines 14-55). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include the particles in an amount of up to 20%, because it is conventional and because it is understood by one of ordinary skill in the art that the particle weight percentage determines properties such as absorption ability and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
The material taught by the applied prior art would inherently possess the claimed protective functions with regard to chemical and biological poisons and noxiants. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Regarding the claimed endowment method, the particles are incorporated into a polymer matrix (column 4, lines 38-42). It is the Office’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter.
Claim 2, Fish does not appear to mention specific weight percentages of the particles but Doughty discloses that it is known in the art to include agents in the amount of up to 15% by weight (column 5, lines 14-55). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include the particles in an amount of up to 15%, because it is conventional and because it is understood by one of ordinary skill in the art that the particle weight percentage determines properties such as absorption ability and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claims 4, 12 and 15, Doughty discloses the claimed ratios (column 5, lines 14-55). In addition, it is understood by one of ordinary skill in the art that the ratio of each adsorbent determines the gas adsorbing and/or neutralizing characteristics of the membrane. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to vary the amount of each component, such as claimed, because discovering an optimum value of a result effective variable involves only routine skill in the art.
Claims 5 and 17, the membrane thickness is in the range from 1 to 500 µm (column 5, lines 3-15).
Claim 6, the membrane basis weight is between 0.5 to 100 g/m2 (column 5, lines 3-15).
Claims 7, 13 and 14, regarding the protective material having the claimed water vapor transmission rate at a 50 µm membrane thickness, the claims are silent as to water vapor transmission rate requirements at other membrane thicknesses. Therefore, the claims are rejected in view of the other membrane thicknesses taught by Fish (column 5, lines 3-15). Plus, the current specification discloses that the claimed water vapor transmission rate is obtained by constructing the membrane with micropores (page 19, lines 5-9). Similarly, Fish discloses that the membrane may be constructed with micropores (column 3, lines 1-7). Therefore, the claimed property appears to be inherent. Further still, Fish discloses that the protective material may be used to construct a variety of products (column 11, lines 31-38). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to vary the water vapor transmission rate of the protective material, such as claimed, based on the desired breathability for the intended application and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claims 8, 13 and 14, regarding the protective material having the claimed water vapor transmission resistance at a 50 µm membrane thickness, the claims are silent as to water vapor transmission resistance requirements at other membrane thicknesses. Therefore, the claims are rejected in view of the other membrane thicknesses taught by Fish (column 5, lines 3-15). Plus, although the current specification is silent as to how the claimed water vapor transmission rate is obtained (page 27, lines 7-11), considering the protective material disclosed in the current specification is substantially identical to the protective material of Fish in terms of structure and materials, the claimed property appears to be inherent. Further still, Fish discloses that the membrane acts as a barrier (column 2, lines 65-68) and that the protective material may be used to construct a variety of products (column 11, lines 31-38). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to vary the water vapor transmission resistance of the membrane, such as claimed, based on the desired water vapor protection for the intended application and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claims 9, 13 and 14, regarding the protective material having the claimed barrier effect permeation at a 50 µm membrane thickness, the claims are silent as to barrier effect permeation requirements at other membrane thicknesses. Therefore, the claims are rejected in view of the other membrane thicknesses taught by Fish (column 5, lines 3-15). Plus, although the current specification is silent as to how the claimed barrier effect permeation is obtained (page 27, lines 11-17), considering the protective material disclosed in the current specification is substantially identical to the protective material of Fish in terms of structure and materials, the claimed property appears to be inherent. Further still, Fish discloses that the membrane acts as a barrier (column 2, lines 65-68) and that the protective material may be used to construct a variety of products (column 11, lines 31-38). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to vary the barrier effect permeation of the membrane, such as claimed, based on the desired chemical warfare agent protection for the intended application and because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claim 10, Fish discloses that the material may be protective headgear (face mask) or a protective cover (column 11, lines 31-38).
Response to Arguments
Applicant's arguments filed 6/24/2025 have been fully considered but they are not persuasive.
Applicant’s First Argument
After the examiner was AFFIRMED by the PTAB, the applicant has now filed an RCE and the only substantive amendments to the claims is an amendment to claims 1, 16 and 17 such that the previously claimed elemental silver is no longer optional but rather required to be present in said reactive additization. It is noted that previously present claims already required elemental silver (e.g. claims 3, 4, 11, 12, 14 and 15). The applicant asserts that the prior art fails to teach or suggest including elemental silver. The examiner respectfully disagrees.
Fish discloses that the invention relates to not only removing odors but also to removing gases, while not necessarily odorous, that cause a negative effect (column 1, lines 23-29). Both Fish and Doughty relate to absorbent products (e.g., face masks) that remove harmful gases (column 11, lines 31-38 of Fish and column 5, lines 56-67 of Doughty). Fish does not appear to specifically mention the membrane including copper carbonate, silver, zinc carbonate, ammonium dimolybdate, and TEDA, but Doughty discloses that it is known in the art that copper oxide and copper carbonate are functionally equivalent, zinc oxide and zinc carbonate are functionally equivalent, silver and molybdenum oxides such as ammonium dimolybdate are effective at removing a large number of toxic materials, and that TEDA provides cyanogen chloride protection (column 1, lines 36-48, column 4, lines 14-60, column 5, lines 25 and 26, and column 7, lines 3-8). Doughty discloses that “a combination of zinc and/or copper carbonates or oxides, zinc and/or copper sulfates or zinc and copper with sulfate, and molybdenum or its oxide can provide effective universal chromium-free filtering of Types A, B, E and K agents,” silver is effective at removing “a large number of toxic materials” such as arsine and phosphione, and that TEDA provides “cyanogen chloride protection” (column 1, lines 36-48, column 4, lines 14-60, column 5, lines 25 and 26, and column 7, lines 3-8). Doughty further discloses that “The addition of (copper and zinc) sulfates provides adsorption capacity beyond that provided by the zinc carbonate (or oxide) and copper carbonate (or oxide)” (column 4, lines 42-46). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include copper carbonate, copper sulfate, zinc carbonate, zinc sulfate, silver, TEDA, and ammonium oxide, in the membrane of Fish, motivated by a desire to provide the membrane with protection from a large number of toxic materials.
In the event that it is shown that Fish and Doughty fail to teach or suggest one or more of the other claimed limitations, Bohringer provides motivation. For example, Bohringer discloses that it would have been obvious to one having ordinary skill in the art at the time the invention was made to include silver within the claimed amount, to produce a protective suit that acts against biological noxiants and renders them harmless or destroys chemical noxiants and poisons ([0010], [0015], [0032] and [0034]). Therefore, it would have been obvious to one having ordinary skill in the art to include elemental silver, within the claimed amounts, to produce a protective suit that acts against biological noxiants and renders them harmless or destroys chemical noxiants and poisons.
Plus, the PTAB has already ruled that the same prior art teaches the claimed elemental silver. The current application is a continuation of parent application 12/811,618, filed 12/17/2010, now abandoned. All of the current claims are rejected with the same prior art applied, appealed, and affirmed, in parent application 12/811,618. In application 12/811,618, the applicant filed a Notice of Appeal on 6/26/2015, the applicant filed a 51 page Appeal Brief on 8/26/2015, the Examiner mailed a 15 page Examiner’s Answer on 1/26/2016, the applicant filed a 23 page Reply Brief on 2/26/2016, and The Patent Trial and Appeal Board AFFIRMED the Examiner on 5/9/2017. On page 5 the PTAB wrote “Upon consideration of the evidence relied upon by the Examiner and Appellants in light of each of Appellants’ contentions, we affirm the Examiner’s rejection of claims 16, 18-20, 23, 24, 27, 28, and 32-35 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Fish, Doughty, and Bohringer substantially for the reasons set forth in the Final Action, Advisory Action, and the Answer.” On page 10 the PTAB wrote “In so contending, Appellants again ignore the collective teachings of Fish, Doughty, and Bohringer. In re Merck & Co., 800 F.2d at 1097. As indicated supra, Doughty teaches using sulfates of zinc or copper, in addition to the zinc oxide and copper oxide used in the membrane (porous substrate) of Fish, in its porous substrate (including a porous activated carbon substrate) to not only more effectively remove, neutralize and/or adsorb the specific gases taught by Fish, but also remove, neutralize and/or adsorb other toxicants such as HCN, Cl2, SO2 and organic vapors including that of CCl4, some of which are used by military (in its nerve gas), industries, and medical communities See also Doughty, col.l, 11. 37-38. Although Doughty prefers including such oxides and sulfates in a porous activated carbon substrate as pointed out by Appellants, Bohringer teaches against impregnating metal compounds in the porous activated carbon substrate and recommends using an adsorptive layer based on activated carbon, without the metal compounds, as part of a multilayered construction that also includes a top layer made of a nonwoven material and an intermediate layer comprising catalytically active metal compounds as indicated supra. Bohringer also teaches that the metal compounds, such as copper, silver, and zinc, their ions and their salts for adsorbing toxic and odorous gases, taught by Fish and Doughty, also function as a catalytic component for removing or neutralizing chemical and biological poisons and can be used with a layer made of the same materials (polyolefin, polyurethane, or polyester) used to form the film (porous membrane substrate) layers taught by Fish as indicated supra.”
Applicant’s Second Argument
The Applicant asserts that the applied prior art fails to teach or suggest that upon exposure of the protective apparel to harmful agents including chemical and biological poisons and noxiants, the harmful agents are decomposed so that no harmful agents remain on the protective material after exposure (claim 1). The Applicant also asserts that the applied prior art fails to teach or suggest that upon exposure of the protective apparel to harmful agents including chemical and biological poisons and noxiants, harmful agents in contact with the protective apparel are degraded or neutralized and the resulting protective apparel is suitable for re-use without decontamination (claim 11). The Applicant also asserts that the applied prior art fails to teach or suggest that upon exposure of the protective apparel to harmful agents including chemical and biological poisons and noxiants, harmful agents contacting the protective apparel are fully decomposed for as long as the exposure lasts (claim 14). The Applicant also asserts that the applied prior art fails to teach or suggest that upon exposure of the protective apparel to harmful agents selected from the group consisting of chemical poisons, biological poisons, and noxiants, the protective apparel decomposes the harmful agents, exhibits self-cleaning properties, and is ready for repeated use without decontamination (claim 16). The Applicant also asserts that the applied prior art fails to teach or suggest that the protective apparel fully decomposes any chemical and biological poisons and noxiants contacted (claim 17). The Examiner disagrees.
The current specification teaches that the reactive additization, as a constituent part of the membrane, acts to degrade/decompose/destroy poisonous and/or noxiant agents. The Applicant further discloses on page 27 of the 5/18/2020 appeal brief that “When a protective apparel is constructed with a membrane including the very specific combination of catalytically active components noted above and in each of the dependent claims, the resulting membrane reacts with harmful agents degrading them into harmless biproducts. They are not just segregated, immobilized, or relocated but are fully decomposed into nontoxic materials. The agents cease to exist in their original toxic form.” Considering that the applied prior art teaches a substantially identical product, including substantially identical membrane materials, the product taught by the applied prior art would inherently possess the claimed protective functions with regard to chemical and biological poisons and noxiants. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Plus, The Patent Trial and Appeal Board AFFIRMED the Examiner on 11/16/2022 and on page 4 the PTAB wrote “we affirm the Examiner’s prior art rejection of claims 1-17 for the reasons the Examiner presents.” On page 8 the PTAB wrote “there is a basis for one skilled in the art to reasonably expect that the prior art reactive additization components react with harmful agents to degrade them into harmless byproducts as claimed.”
Regarding Applicant’s citation to MPEP 2141.02(V) and In re Antoine, asserting that the claimed properties were not known at the time of the invention, Applicant’s argument is not persuasive for a plurality of reasons:
1) The Applicant provides no evidence teaching or suggesting that the claimed properties were unknown. It is well settled that unsupported arguments are no substitute for objective evidence. In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974). The burden is on the applicant (not the Examiner) to establish results are unexpected and significant (MPEP 716.02) and the Applicant has failed to show that any results are necessarily unexpected, and unexpected to a degree sufficient to overcome obviousness. For example, the Applicant has failed to show that one skilled in the art would not expect, upon exposure of the claimed product to harmful agents including chemical and biological poisons and noxiants, that harmful agents in contact with the protective apparel would be degraded or neutralized and the resulting protective apparel would be suitable for re-use without decontamination (claim 11).
2) Doughty discloses that the claimed membrane components are “effective for removing, neutralizing and/or scavenging various toxic agents including, but not limited to, HCN, H2S, Cl2, SO2 and NH3” (column 4, lines 31-36). Plus, Bohringer discloses that it is known in the art that catalytically active components “render harmless, or alternatively may destroy, a portion of the chemical noxiants and poisons” [0015]. Bohringer also discloses that the biological noxiants are rendered “harmless or decomposed” ([0017] and [0053]).
3) The PTAB already concluded that the results are not unexpected. In the parent application appeal, the PTAB wrote “Under these circumstances, notwithstanding Appellants’ arguments to the contrary, we find no harmful error in the Examiner’s determination that the collective teachings of Fish, Doughty, and Bohringer would have led one of ordinary skill in the art to employ a multilayered construction comprising a nonwoven fabric layer, a porous film (membrane) or textile fabric comprising adsorbent/catalytic components (e.g., zinc oxide, copper oxide and sulfates of zinc or copper), and an adsorbent layer based on activated carbon for making masks in medical applications as recited in claims 16 and 34, with a reasonable expectation of not only successfully removing, neutralizing and/or adsorbing noxiant, odorants and toxicant substances, such as ammonia (NH3) and sulfides (e.g., H2S), but also successfully removing, neutralizing and/or adsorbing other toxicant substances, such as HCN, Cl2, SO2 and organic vapors including that of CCl4, as well as biological poisons and noxiants.” The PTAB also wrote “In so contending, Appellants ignore the collective teachings of Fish, Doughty, and Bohringer. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). As indicated supra, Doughty and Bohringer teach that the materials used by Fish are also useful for removing, neutralizing, and/or adsorbing chemical and biological poisons, in addition to removing ammonia and sulfides, which are also known as odorous and toxic substances.”
Applicant’s Third Argument
Similar to Appellant’s Second Argument, the Appellant again asserts that the claimed properties are not inherent. The Appellant asserts that the Examiner has failed to provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristics necessarily flow from the teachings of the applied prior art. The Examiner disagrees. As stated above, the current specification teaches that the reactive additization, as a constituent part of the membrane, acts to degrade/decompose/destroy poisonous and/or noxiant agents. The Appellant further discloses on page 27 of the 5/18/2020 appeal brief that “When a protective apparel is constructed with a membrane including the very specific combination of catalytically active components noted above and in each of the dependent claims, the resulting membrane reacts with harmful agents degrading them into harmless biproducts. They are not just segregated, immobilized, or relocated but are fully decomposed into nontoxic materials. The agents cease to exist in their original toxic form.” The technical reasoning that supports the inherency determination is that the applied prior art teaches a substantially identical product, including substantially identical membrane materials. Since the applied prior art teaches a substantially identical product, including substantially identical membrane materials, the product taught by the applied prior art would inherently possess the claimed protective functions with regard to chemical and biological poisons and noxiants. The Appellant has failed to show, or even attempt to show, that the product taught by the applied prior art would lack the claimed properties.
Plus, the Patent Trial and Appeal Board AFFIRMED the Examiner on 11/16/2022 and on page 4 the PTAB wrote “we affirm the Examiner’s prior art rejection of claims 1-17 for the reasons the Examiner presents.” On pages 8-9 the PTAB wrote “Appellant also fails to direct us to any evidence showing Doughty’s reactive additization components do not necessarily or inherently possess the characteristics of the claims reactive additization components.”
Applicant’s Four Argument
The Applicant asserts that there is no motivation to combine Fish and Doughty. The Examiner disagrees. Doughty discloses that “a combination of zinc and/or copper carbonates or oxides, zinc and/or copper sulfates or zinc and copper with sulfate, and molybdenum or its oxide can provide effective universal chromium-free filtering of Types A, B, E and K agents,” silver is effective at removing “a large number of toxic materials” such as arsine and phosphione, and that TEDA provides “cyanogen chloride protection” (column 1, lines 36-48, column 4, lines 14-60, column 5, lines 25 and 26, and column 7, lines 3-8). Doughty further discloses that “The addition of (copper and zinc) sulfates provides adsorption capacity beyond that provided by the zinc carbonate (or oxide) and copper carbonate (or oxide)” (column 4, lines 42-46). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include copper carbonate, copper sulfate, zinc carbonate, zinc sulfate, silver, TEDA, and ammonium oxide, in the membrane of Fish, motivated by a desire to provide the membrane with protection from a large number of toxic materials.
Plus, in the parent application, the PTAB already ruled that there is motivation to combine the references. On pages 9-10 of the parent application decision the PTAB wrote “Under these circumstances, notwithstanding Appellants’ arguments to the contrary, we find no harmful error in the Examiner’s determination that the collective teachings of Fish, Doughty, and Bohringer would have led one of ordinary skill in the art to employ a multilayered construction comprising a nonwoven fabric layer, a porous film (membrane) or textile fabric comprising adsorbent/catalytic components (e.g., zinc oxide, copper oxide and sulfates of zinc or copper), and an adsorbent layer based on activated carbon for making masks in medical applications as recited in claims 16 and 34, with a reasonable expectation of not only successfully removing, neutralizing and/or adsorbing noxiant, odorants and toxicant substances, such as ammonia (NH3) and sulfides (e.g., H2S), but also successfully removing, neutralizing and/or adsorbing other toxicant substances, such as HCN, Cl2, SO2 and organic vapors including that of CCl4, as well as biological poisons and noxiants.”
The Applicant also asserts that Fish is only concerned with removing ethylene gas (to prevent the ripening of fruit) and removing odor from diapers. The Examiner disagrees. Fish very clearly indicates that ethylene gas is merely “One example” of a non-odorous “negative effect” gaseous compound that can be removed by utilizing the invention of Fish (column 1, lines 23-29). The Applicant fails to recognize the plurality of other uses explicitly disclosed by Fish including use of the protective material in “paper mills, chemical plants, oil refineries, hotels and motels, ships, planes and submarines" (column 6, lines 28-40). Clearly, reference to locations such as "chemical plants" and “oil refineries” indicates that the invention of Fish relates to materials that protect against toxic gases and NOT limited to just protection from diaper odor and fruit gases. Fish also discloses that the protection material may be used not only in “personal care products” (e.g. diapers) but also “in medical applications like face masks” (column 11, lines 31-38). Plus, on page 6 the PTAB decision in the parent application the PTAB wrote “Notwithstanding Appellants’ arguments to the contrary at pages 21, 23, and 26 of the appeal brief, Fish does not limit its gases causing a negative effect to ethylene gas or limit its protective articles to diapers.”
The Applicant also asserts that Fish only relates to products (e.g. masks and apparel) in close contact with a user and that one skilled in the art would avoid including the claimed membrane components so that toxic material isn’t transferred to the user. The Examiner disagrees. Doughty specifically discloses use of the claimed components in close contact with a user, such as a mask (column 5, lines 60-67).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached on Monday-Thursday 7am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
Prosecution Insights