BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE ANTHONY NATALE Appeal No. 88-4263

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 88-4263

March 31, 1989

HEARD: February 16, 1989



 Request filed May 20, 1985, Control No. 90/001,227, for the Reexamination for Patent No. 4,604,111, issued August 5, 1986, based on application Serial No. 735,716, filed April 20, 1985; and a Continuation of Serial No. 323,730, filed November 23, 1981, abandoned. Particulate Contamination Control Method and Filtration Device.



Harvey B. Jacobson, Jr. et al. for appellant



Primary Examiner--Tim Miles



Before Serota






Steiner and W. Smith












 This is an appeal from the final rejection of claims 1 through 29, which are all of the claims in this reexamination proceeding involving U.S. Patent No. 4,604,111. Claims 1 through 17 are identical to the claims appearing in the patent; claims 18 through 29 were added during prosecution of this reexamination.



 The subject matter on appeal is directed to a method and system for reducing airborne asbestos contamination during the course of asbestos removal from an existing building.



 Claims 1 and 24 are illustrative and read as follows:

   1. A method of establishing a negative pressure environment within an existing building for removing dangerous solid materials from the building, said method comprising:

   (1) defining an enclosed space within said building using existing wall structure to define at least a portion of said enclosed space;

   (2) establishing at least one flow path for air to enter said enclosed space;

   (3) continuously evacuating air from said enclosed space through a filter means to remove dangerous solid materials from said evacuated air and to establish a negative air pressure in said enclosed space so that air exiting said space passes through said filter means; and

   (4) sealing said flow path against air exiting from said air space to the exterior of said enclosed space in the event of loss of negative air pressure in said enclosed space.

   24. A system for establishing a favorable environment for removing dangerous solid asbestos materials from an existing building, said system comprising:

   wall means enclosing a defined air space containing asbestos contamination within said building, said air space also containing airborne asbestos fibers, said wall means including at least one inlet for outside air to enter said air space and an outlet for air filtered by a filter means to exit from said air space;

   filter means for filtering air in said air space;

   high volume air moving means for producing a negative air pressure within said air space and for drawing large volumes of outside air into said air space through said inlet and for moving the large volumes of air through said filter means in advance of moving air through said outlet, thereby reducing the level of airborne asbestos fibers in said air space; and

   sealing means for sealing off said inlet against air exiting from said air space to the exterior of said air space automatically upon loss of negative air pressure in said air space.



  *2 The evidentiary materials relied upon by the examiner in support of his rejections of the appealed claims are:

   A. Patent Owners Statement, paper No. 10, filed herein Oct. 5, 1987, especially pages 11-13;

   B. Affidavit of Thomas Natale, filed herein March 7, 1988 as attachment to paper No. 24, especially paragraph 16 and 29;

   C. Supplemental Affidavit of Anthony Natale, filed herein April 29, 1988 as attachment to paper No. 36, especially paragraph 4;

   D. Affidavit of Norman M Cohn, filed herein March 14, 1988 as attachment to paper No. 29, especially paragraphs 4, 5, 7, 15-19, 22 and 23;

   E. Affidavit of Joseph E. Wilson, filed herein March 14, 1988 as attachment to paper No. 29, especially paragraphs 5, 7 and 16-24;

   F. "Asbestos" book, Vol. 1, pages 279-305, 1979, John Wiley & Sons, Ltd.  (attachment KS to paper No. 9);

   G. "Micro-Trap," published by Asbestos Control Technology, Inc., Maple Shade, N.J. (attachment Q to paper No. 9, pages 13A and 13C-13E;

   H. "Environmental Consulting and Testing Services" report of Evaluation of Asbestos Removal at ... Cinnaminson, N.J., August 26, 1980, Suite 110, Cherry Hill, N.J., pages 1-12 (attachment O to paper No. 9);

   I. Brand Mid-Atlantic, Inc. v. Natale et al., U.S. District Court for the Eastern District of Pennsylvania, Civil Action 86-7093, Defendants' Answers and Objections to Plaintiff's First Set of Interrogatories, Interrogatory and Response No. 22 (attachment D to paper No. 9);

   J. Blueprint, First Floor Plan of U.S. Post Office at Greensboro, N.C., sheet 4 of 7, Bid Invitation No. 129952-80-A-0037, George M. Smart, Architects, Inc., Raleigh, N.C. (Requestor's Document No. 12); and




K. Whitfield  3,158,457  Nov. 24, 1964


 The following rejections appear in the Examiner's Answer:

   1. claims 1 through 11 and 13 through 29 stand rejected under 35 U.S.C. 102a, or 102b, and 103 as unpatentable over the Environmental Consulting and Testing Services (ECTS) report 200309-A, dated August 26, 1980 (reference H as listed above) in combination with the public use which occurred at Cinnaminson, N.J. and/or at Morrestown, N.J., (MPEP section 2217) as established at various places on the record as noted herein (see above listing and description of prior art), for example by the Patent Owner's admissions on pages 11-13 of his statement filed October 5, 1987 (reference A as listed above), and by the admissions in response 22 of reference I as listed above, especially as further amplified by the affidavits of Norman M. Cohn (reference D) and Joseph D. Wilson (reference E) filed Mar. 14, 1988 by the patent owner (MPEP sections 2216 or 2258). Further, any or all of the MICRO-TRAP filter publication (reference G), the "Asbestos" book publication (reference F) or the blueprint listed above may be relied on in combination with this rejection in ways to be stated below (page 10 of the Answer); [FN1]



  *3 2. claim 12 stands rejected for the reasons set forth in rejection 1 above, further in view of Whitfield;



 3. claims 1 through 11 and 13 through 15 stand rejected under 35 U.S.C. 102(b) as anticipated by or, alternatively, under 35 U.S.C. 103 as unpatentable over "Asbestos";



 4. claims 1 through 11 and 13 through 29 stand rejected under 35 U.S.C. 103 as unpatentable over "Asbestos" in view of the prior public use that occurred at Cinnaminson or Morrestown, N.J. prior to October 23, 1980; and



 5. claim 12 stands rejected for the reasons set forth in either rejection 3 or 4 above, further in view of Whitfield.



 We reverse each of the examiner's rejections.



Rejection 1


 The rejection of claims 1 through 11 and 13 through 29 as quoted above refers to three separate statutory provisions and is not articulated with particular clarity. At the oral hearing held on February 16, 1989, the examiner was questioned as to the precise statutory grounds of rejection and the theory underpinning the rejection. In response, the examiner stated that the rejection which appears on page 10 of the Answer (rejection 1) is based upon 35 U.S.C. 103. The reference in the statement of the rejection to 35 U.S.C. 102(a) and 35 U.S.C. 102(b) was intended to identify the source of the prior art. In other words, the examiner is relying upon the combination of ECTS and alleged public uses to establish the obviousness of the claimed invention as a whole within the meaning of 35 U.S.C. 103. The additional publications identified as "Micro-Trap" ("G"), Blueprint ("J") and "Asbestos" ("F") appear to be optionally relied upon to amplify the rejection. Stripped of all verbiage, the rejection is basically predicated upon an alleged public use which occurred at Cinnaminson, N.J. and/or at Moorestown, N.J. [FN2] In order to establish the alleged public use, the examiner has relied upon evidentiary material which includes alleged admissions of Patent Owner (appellant herein) and third party affidavits. [FN3]



 The preliminary issue which surfaces is whether this rejection predicated upon a prior public use, as formulated by the examiner, is appropriate in a reexamination proceeding. The examiner contends that the rejection is consistent with Ex parte McGaughey, 6 USPQ2d 1334 (BPAI 1988), inasmuch as the prior public use is "established by admissions in the record, in combination with printed publications ..." (paragraph bridging pages 24 and 25 of the Answer). [FN4]



 The issue resolved in McGaughey was confined to whether prior art established in the patent record by an unequivocal admission may be relied upon to support a rejection during a reexamination proceeding involving that patent. [FN5] The examiner would have us extend the holding in McGaughey by expanding the scope of reexamination proceedings to permit reliance upon prior art established by admissions during a reexamination proceeding and prior art established by admissions in external court proceedings. We need not resolve such issues since, in the situation before us, we find no prior art (public use) established by admissions in this reexamination proceeding or in any external court proceeding.



  *4 The alleged admissions relied upon by the examiner appear in reference A and reference I. We have reviewed such evidence and, at best, we find only appellant's acknowledgements of certain activities related to the claimed invention, which activities are characterized as experimental. Note, for example, the following language in reference A:

   During the course of work at Cinnaminson in the summer of 1980, experiments were conducted with taping back the plastic sheets that formed the air lock, thus providing a relatively small opening formed by the slit. This, of course, contrasted with accepted procedures at that time, which required the work area to be sealed as tight as possible (page 11, emphasis supplied).

   Mr. Natale's next asbestos removal project was in Moorestown, New Jersey, a project which began in September 1980 and extended through the end of November. It was there that experiments were first conducted with replacing the air lock by a plastic flap hung over the top of a slit in the plastic work area enclosure to form a flap seal. It is believed that the air inlet at the Moorestown job began simply with a vertical slit in the plastic wall, with horizontal slits at the bottom. It is also believed that experiments were begun with enlarging the air inlet opening to allow far greater volumes of air flow into the work area (page 13, emphasis supplied).



 The response to Interrogatory 22 [FN6] reads in part as follows:

   (a) It is believed that the first complete use of the invention described and claimed in the Natale patent was for testing and experimental purposes beginning in early September 1980 and continuing to mid-December 1980 (emphasis supplied).

   (c) A defined air space within a building was established having at least one inlet of sufficient size to enable relatively large volumes of air to enter the space. The large volumes of air were drawn into the space through the inlet by a filtration unit. The air was then filtered and exhausted from the defined space. A flap seal arrangement was provided at the inlet to prevent air exiting the space when the filtration unit was shut down. [FN7]



 By no stretch of the imagination can the evidence relied upon by the examiner be considered to establish prior art under 35 U.S.C. 102(b) by an unequivocal admission. [FN8] Indeed, appellant has consistently, strenuously and unequivocally denied that the claimed invention was put in public use prior to the critical date. What the examiner has done is extract language which characterizes the activities as experimental and then combined the skeletal remains of the alleged admissions with the third party affidavits made of record by Requestor in the face of conflicting affidavits to establish, for the first time during this reexamination proceeding, the existence of a public use under 35 U.S.C. 102(b). The impropriety of conducting such a fact-finding endeavor to support a rejection predicated upon a prior public use during a reexamination proceeding was recognized in McGaughey. Note the statement of the Board at 6 USPQ2d 1338 which reads as follows:

    *5 This is not to say that the Office (Patent and Trademark Office) has been willing to open reexamination to any type of evidence that is available to the examiner during initial examination. The Commissioner has construed section 305 conservatively. Facts, including admissions which have already been established in the record, have been authorized for use in reexamination proceedings. See 37 CFR 1.106(c) and M.P.E.P. § 2258 (footnote omitted). The PTO has not authorized other types of evidence such as on-sale bars, public use issues or issues relating to fraud (emphasis supplied).



 We hold that the examiner has no authority to engage in a fact-finding endeavor to establish the existence of a public use under 35 U.S.C. 102(b) during a reexamination proceeding. Ergo, we shall not consider the evidentiary material relied upon by the examiner in his endeavor to establish a prior public use.



 The only remaining essential evidence relied upon by the examiner is ECTS. We again refer to the affidavit of Thomas Natale, paragraphs 21 and 22, wherein affiant reveals that the ECTS report was commissioned by appellant to document the work at the Cinnaminson project to satisfy the school district that the job was being performed competently and to document for internal purposes what was done at the job site. A total of only five or six copies of the report were made, three copies of which were sent to the Cinnaminson School District and one to the architect representing the school district.



 A document relied upon as a printed publication must have traversed into the public domain, i.e., it must have been accessible to the public. In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978). The burden of establishing that a document was publicly accessible rests upon the examiner as part of his burden of establishing a prima facie basis for denying patentability. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed.Cir.1988); In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981). In attempting to discharge that burden, the examiner has merely relied upon Requestor's allegations that the ECTS report enjoyed wide distribution as advertising literature rather than proffer objective evidence of public accessibility of the ECTS report. In addition, the examiner would appear to have resorted to speculation as to whether the ECTS report was publicly accessible. In short, the examiner has failed to establish that the ECTS report was publicly accessible and, therefore, available as prior art. The additional references mentioned in the examiner's statement of rejection 1 would appear to be relied upon optionally to buttress the rejection predicated upon a prior public use. We need not, therefore, address the issue of whether the examiner has established that reference G and reference J were printed publications, specifically, accessible to the public.



  *6 We reverse rejection 1 inasmuch as the examiner has not provided the requisite factual basis to support a legal conclusion of obviousness under 35 U.S.C. 103.



Rejection 2


 Rejection 2 is reversed since Whitfield does not cure any of the deficiencies in rejection 1.



Rejection 3


 It is the examiner's position that "Asbestos" describes the invention set forth in claims 1 through 11 and 13 through 15 within the meaning of 35 U.S.C. 102 or, alternatively, would have rendered the claimed invention obvious under 35 U.S.C. 103. A relevant portion of "Asbestos" appears at page 295 and reads as follows:

   The sheet area should be kept below atmospheric pressure by an extract fan fitted with an "absolute" filter so that the direction of the air flow is from the change room to the work zone. It may be necessary to fit ventilation flaps to the tent system at selected locations to improve ventilation in a particular area or where high extraction rates are required.



 The exact nature of the mentioned ventilation flaps and their operation are not apparent. Thus, it cannot be determined from the face of the "Asbestos" reference whether there is a disclosure of the sealing procedure set forth in step 4 of claim 1 or the sealing means appearing in claim 8. We shall not resort to speculation. In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967).



 Apparently cognizant of the shortcomings of "Asbestos," the examiner takes notice

   of the fact that ventilation flaps in a tent system are normally understood to be capable of sealing the openings they control when they are closed (page 21 of the Answer).

This noticed fact was challenged by appellant. Notwithstanding appellant's challenge for evidentiary support, the examiner maintained his position. The examiner's failure to provide objective evidence to support the challenged officially-noticed fact constitutes clear and reversible error. Ex parte Nouel, 158 USPQ 237 (Bd.App.1967). Rejection 3 is, therefore, reversed.



Rejections 4 and 5


 Rejections 4 and 5 are reversed for reasons which are apparent from the reversal of rejections 1 and 3 above.









Saul I. Serota






Arthur J. Steiner






William F. Smith






FN1. The critical date is November 23, 1980.



FN2. ECTS is a report of the work performed at the Cinnaminson project  (Affidavit of Thomas Natale, paragraphs 21 and 22).



FN3. The third party affidavits are contradicted by numerous affidavits submitted by appellant. See the affidavits of Anthony Natale, Thomas Natale, Dr. Peter Frasca, Raymond S. Beck, the supplemental affidavits of Anthony Natale and Thomas Natale and the affidavit of George E. Hall.



FN4. The relevant reexamination statutory provisions are discussed at length in McGaughey and Ex parte Horton, 226 USPQ 697 (BPAI 1985). They include 35 U.S.C. §§ 301, 303 and 305.



FN5. At 6 USPQ2d 1338, the Board stated that

   For purposes of this appeal, we need not and do not consider whether other facts besides admissions established in the record are authorized under section 305.



FN6. Interrogatory 22 was generated during a civil action styled Brand Mid-Atlantic, Inc. v. Anthony Natale, Duall Maintenance Co., t/a Duall, Inc., Microtrap, Inc. v. GPAC, Inc., Civil Action No. 86-7093, filed in the United States District Court for the Eastern District of Pennsylvania on December 5, 1986, which action was settled on December 2, 1987 by an agreement that included a dismissal of the lawsuit. As part of the settlement, the Brand Companies took a license under the Natale patent.



FN7. In the Supplemental Affidavit of Anthony Natale, paragraphs 2 through 5, affiant states that portion (c) which refers to an air inlet of sufficient size to enable relatively large volumes of air to enter the space is believed incorrect.



FN8. It is well settled that experimental activities do not constitute a public use or sale under 35 U.S.C. 102(b). See, for example, City of Elizabeth v. American Nicholson Pavement, 97 US 126 (1877); Barmac Barmer Maschinenfabrik Ag. v. Murata Machinery, Ltd., 731 F.2d 831, 221 USPQ 561 (Fed.Cir.1984); TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 877 (Fed.Cir.1984). Furthermore, payment does not per se create a 35 U.S.C. 102(b) bar. Baker Oil Tools, Inc. v. Geo Vann, Inc. 828 F.2d 1558, 4 USPQ2d 1210 (Fed.Cir.1987).


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