Wednesday, August 21, 2013

CHALMER overcomes rejection over Bayless reference

from Ex parte Chalmer

We agree with the Appellants that the Examiner’s rejections are not
well founded.

Bayless describes biologically-based gas cleaning systems for
reducing emissions from fossil burning units (i.e., removing carbon containing
compounds from a flowing gas stream). Col. 1, ll. 26-29; col. 2,
ll. 39-41. In particular, Bayless teaches the use of a membrane having
photosynthetic microbes, such as algae and cyanobacteria, deposited thereon
as the filtration media.
Col. 2, ll. 41-43. Bayless states that the membrane
should be an inorganic material, such as plastic, to avoid problems with
fungi growth. Furthermore, Bayless teaches that the membrane “must be
composed of a material that suits the specific microbe used, being non-toxic
to the microbe and supporting adhesion,” that “[i]t is essential that microbes
supplied to the growth surface . . . be able to grow in the attached state,” and
“[t]he growth surface . . . needs to provide reliable structural integrity when
exposed to the flue gas environment.” Col. 4, ll. 12-22.

KSR is cited, in favor of the appellant,

Thus, while Budahazi does disclose woven fabrics as a filter, it is in
the context of a filter suitable for purifying plasmid DNA. The Examiner,
however, has not directed us to sufficient evidence
that Budahazi’s woven
fabric filter would be suitable in a flue gas environment and possess the
characteristics explicitly required by Bayless. Absent additional evidence,
the Examiner’s analysis fails. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (“a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.”).


The Examiner’s argument based on an “obvious to try” rationale, page
4 of the Answer, is misplaced because Bayless merely provides general
guidance as to the selection criteria for the filter media, rather than a finite
number of identified, predictable solutions. KSR, 550 U.S. at 421. “[W]here
the prior art, at best, ‘[gives] only general guidance as to the particular form
of the claimed invention or how to achieve it,’ relying on an ‘obvious-to-try’
theory to support an obviousness finding is ‘impermissible.’” In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1073 (Fed. Cir. 2012) (internal citations omitted).


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