Ex Parte Barnes et al

Board of Patent Appeals and Interferences

Jun 30, 2011

10899452 (B.P.A.I. Jun. 30, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/899,452 07/26/2004 Michael W. Barnes AAI-14365 5375
45483 7590 06/30/2011
AUTOLIV ASP, INC
Attn: Sally J. Brown ESQ
3350 Airport Rd
OGDEN, UT 84405
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
06/30/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL W. BARNES,
IVAN V. MENDENHALL, and
ROBERT D. TAYLOR
____________

Appeal 2009-010053
Application 10/899,452
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-010053
Application 10/899,452

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This is in response to a Request for Rehearing, filed March 14, 2011,
for rehearing of our Decision, mailed on January 11, 2011, wherein we
sustained, inter alia, the following rejections: claims 1 and 5 under § 103(a)
over Serizawa (rejection (2)); claims 1, 8, and 33 under § 103(a) over Zeuner
and Serizawa (rejection (3)); and claims 10, 15, and 20 under § 103(a) over
Taylor and Serizawa (rejection (4)).1
With respect to rejection (2), Appellants argue that the Board
misapprehended or overlooked the fact that Serizawa’s composition is not
substantially identical to the claimed composition as stated at page 12 of the
Decision. (Request 3 and 5). Specifically, Appellants argue that Serizawa’s
composition is required to contain additional ingredients (i.e., ammonium
perchlorate, a chlorine scavenger, and a microcrystalline carbon powder)
that are not required in the claimed composition. Id. Appellants also argue
that their claimed composition excludes ammonium perchlorate and chlorine
scavengers. Id. at 5.
In addition, Appellants argue that Serizawa expressly teaches that in
the absence of ammonium perchlorate the Serizawa composition will
produce substantial amounts of carbon monoxide. Id. at 5-6.

1 We take this opportunity to correct typographical errors made on pages 13
and 16 of the Decision. Page 13 of the Decision reads, in relevant part, “the
burden shifts to Appellants to show that Serizawa’s composition does
produce an effluent gas.” As Appellants correctly point out at page 3 of the
Request, this is clearly a typographical error and should read “the burden
shifts to Appellants to show that Serizawa’s composition does not produce
an effluent gas.” (emphasis added). In addition, page 16 of the Decision
states that claim 24 is the parent claim to claims 8 and 33. This
typographical error is apparent because claim 1 is the parent claim to claims
8 and 33. Therefore, we strike from the Decision our analysis on page 16 of
the Decision regarding claim 24.

Appeal 2009-010053
Application 10/899,452

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We begin by noting that we did not misapprehend or overlook the fact
that Serizawa’s composition is required to contain the additional ingredients
that are not required by claim 1. In this regard, we adhere to our Decision
(Decision 11 and 12) that it is reasonable to believe that the composition
suggested by Serizawa is substantially identical to the claimed composition
since the amount of the additional ingredients (i.e., ammonium perchlorate, a
chlorine scavenger, and a microcrystalline carbon powder) in the aggregate
makes up a minor portion of the composition suggested by Serizawa.
Moreover, we note that Appellants have not shown that any of these
additional components increases the amounts of any of the gases recited in
claim 1 (i.e., hydrogen chloride, carbon monoxide, ammonia, nitrogen
dioxide and nitric oxide). Indeed, contrary to Appellants’ argument,
Serizawa teaches that each of its ammonium perchlorate, chlorine scavenger,
and carbon powder in the amounts relied upon by the Examiner reduces the
amount of carbon monoxide generated by the composition. (Serizawa,
paras. [0013], [0018], [0019], [0027], and [0032]).
In addition, contrary to Appellants’ argument that their claimed
composition excludes ammonium perchlorate and chlorine scavenger, we
note that Appellants’ open-ended transitional claim language “comprising”
does not exclude any additional ingredients such as an ammonium
perchlorate and a chlorine scavenger. Abbot Labs. v. Sandoz, Inc., 544 F.3d
1341, 1360 (Fed. Cir. 2008) (stating that the term “comprising” is “inclusive
or open-ended” and “does not exclude additional unrecited elements or
method steps.”) (internal quotations omitted).
We are unpersuaded by Appellants’ argument that Serizawa expressly
teaches that in the absence of ammonium perchlorate the Serizawa
Appeal 2009-010053
Application 10/899,452

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composition will produce substantial amounts of carbon monoxide. While
Serizawa teaches at paragraph [0013] that the use of a chlorine scavenger in
an amount less than 15 weight percent is likely to generate a large amount
of carbon monoxide, Appellants’ argument is without persuasive merit
because it fails to address the Examiner’s stated case which relies on using
15 weight percent chlorine scavenger. (See Ans. 11).
Appellants also refer to page 10 of their Specification to show that the
claimed particle size of the alkali metal perchlorate (i.e., particles having a
size in excess of 100 microns) is critical (i.e., provides unexpected results).
(Request 6).
It is well settled that Appellants have the burden of showing that the
claimed invention imparts not just any improvement, but an unexpected
improvement. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also In
re Skoner, 517 F.2d 947, 948 (CCPA 1975) (Expected results are evidence
of obviousness just as unexpected results are evidence of unobviousness).
In our case, while Appellants refer to a portion of page 10 of the
Specification to show unexpected results (Request 6), a close reading of that
portion of the Specification reveals that Appellants do not allege the results
are unexpected. The portion argued by Appellants does not indicate the
particle size or amount of alkali metal perchlorate used in the comparative
composition, which according to the Specification does not effect a
reduction in undesirable material in the effluent. The cited portion further
states that alkali metal perchlorate sized as described in the Specification
must be used to effect a reduction in the undesirable material of the effluent.
(Spec. 10).
Appeal 2009-010053
Application 10/899,452

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However, in reference to our above discussion, page 10 of the
Specification further states that the use of an alkali metal perchlorate having
a mean particle size less than 100 microns merely decreases the alkali
metal perchlorate’s effectiveness in reducing the content of the undesirable
gases in the effluent. (Spec. 10, ll. 11-18). In other words, the Specification
appears to disclose that using alkali metal perchlorate with a particle size
less than 100 microns to reduce undesirable material in the effluent would
still remove undesirable material from the effluent but is merely less
effective.2 This evidence fails to establish that the claimed alkali metal
perchlorate size produces unexpected results. We adhere to our decision that
the evidence of obviousness outweighs Appellants’ evidence of non-
obviousness.
With respect to rejections (3) and (4), Appellants refer to and/or repeat
arguments made in connection with rejection (2). (Request 7 and 8). Thus,
we find these arguments to be unpersuasive for the reasons given above.
Appellants argue for the first time that “there has been no established
basis for taking an optional ingredient (e.g., potassium perchlorate) from a
reference composition without also taking required ingredients (e.g.,
ammonium perchlorate and a chlorine scavenger) of that very same
reference composition.” (Request 8). Because Appellants’ argument is not

2 We further note that the only comparative example in the Specification
with data provided is a sample with no alkali metal perchlorate (Spec. 19).
The comparative example is compared to a sample containing 4 wt.%
potassium perchlorate having a 200 micron particle size, which falls within
the claimed particle size range (Spec. 19). Accordingly, there is no objective
evidence that a reduction in undesirable material in effluent does not occur
for alkali metal perchlorate with a particle size of less than 100 microns such
that a particle size greater than 100 microns yields unexpected results.
Appeal 2009-010053
Application 10/899,452

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based upon a recent decision of the Board or Federal Circuit, or made in
response to a new ground of rejection pursuant to § 41.50(b), we decline to
considered such untimely argument. 37 C.F.R. § 41.52(a)(1) to (3) (2010).
Appellants’ request is granted to the extent of reconsideration and
modification of the decision with respect to the above-noted typographical
errors, but is denied with respect to making any other changes therein.

DENIED

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