Ex Parte Burns et al

Patent Trial and Appeal Board

Jan 31, 2014

11479493 (P.T.A.B. Jan. 31, 2014)

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.
11/479,493 06/30/2006 Sean P. Burns 5702-01126 9313
46510 7590 01/31/2014
L.C. BEGIN & ASSOCIATES, PLLC
510 HIGHLAND AVENUE
PMB 403
MILFORD, MI 48381
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
01/31/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEAN P. BURNS, DEBORAH L. HORDOS, and
JASON NEWELL
____________

Appeal 2013-001277
Application 11/479,493
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
DONNA M. PRAISS, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under 35
U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 8, 13,
and 15 through 21. A hearing was held on January 16, 2014. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “gas generating systems,
and to autoignition compositions employed in gas generator devices for

1 Appellants identify the real party in interest as Automotive Systems
Laboratory, Inc. (See Appeal Brief filed June 14, 2012 (“App. Br.”) at 3.)
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automotive restraint systems[.]” (Spec. 1, ll. 8-9.) ”[G]as generator devices
are typically provided with an autoignition composition that in the event of a
fire, ignites responsive to a desired threshold temperature. . . . to inhibit or
prevent the likelihood of an explosive event.” (Spec 1, ll. 15-18.)
According to page 1, lines 22-26, of the Specification, “carboxylic acid in
combination with potassium chlorate typically provides a desired
autoignition temperature of 200 degrees Celsius or less[,]” but “sometimes
decompose[s]” due to their tendency to absorb moisture.
To inhibit the decomposition problem associated with such
autoignition composition, a desiccant is said to be included. (Spec. 1, ll. 30-
34 and 2, ll. 10-20.) “Exemplary desiccants are activated or hydrated
calcium sulfate (DRIERITE®), clay, silica gel, calcium oxide, and zeolites
or molecular sieves.” (Spec. 2, ll. 27-28.)
Details of the appealed subject matter are recited in illustrative claims
1, 13, 19, and 212 reproduced from the Claims Appendix to the Appeal Brief
as shown below:
1. A gas generator comprising:
a nitrogen-free auto-ignition composition consisting essentially of an

2 All arguments not specifically and timely raised in the principal Appeal
Brief are considered waived absent a showing of good cause. In re Hyatt,
211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first
raised in the brief to the Board is waived on appeal); Ex parte Nakashima,
93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause.”).
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alkali metal chlorate as an oxidizer provided at about 25-75
weight percent, and a carboxylic acid as a fuel provided at
about 25-75 weight percent, said percentages stated by weight
of the total composition; and
a desiccant in operable communication with said nitrogen-free auto-
ignition composition,
wherein said nitrogen-free auto-ignition composition auto-ignites at a
temperature equal to or below 200[o]C, and, wherein said
nitrogen-free auto-ignition composition when heat aged for 648
hours at 107[o]C does not react with aluminum in a sealed
container.

13. A nitrogen-free autoignition composition consisting of:
an alkali metal chlorate as an oxidizer provided at about 25-75 weight
percent;
a fuel consisting of D,L-tartaric acid and succinic acid provided at
about 25-75 weight percent; and
a desiccant provided at about 5-35 weight percent, said percentages
stated by weight of the total gas generant composition.

19. A gas generator comprising :
a nitrogen-free auto-ignition composition containing potassium
chlorate as an oxidizer provided at about 25-75 weight percent,
and DL-tartaric acid as a fuel provided at about 25-75 weight
percent, said percentages stated by weight of the total
composition; and
a desiccant in operable communication with said composition,
wherein said nitrogen-free composition when aged for 648 hours at
107[o]C does not react with aluminum within a sealed container.

21. A gas generator comprising:
a nitrogen-free auto-ignition composition consisting of an alkali metal
chlorate as an oxidizer provided at about 25-75 weight percent,
and one or more carboxylic acids as a fuel provided at about 25-
75 weight percent, said percentages stated by weight of the total
composition;
and
a zeolite in vapor communication with said composition.

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(See App. Br. 31-33 (Claims App’x).)
Appellants seek review of the Examiner’s rejection of claims 1
through 8, 13, and 15 through 21 under 35 U.S.C. § 103(a) as unpatentable3
over the combined disclosures of Barnes4 and Yamato.5 (App. Br. 8 and the
Examiner’s Answer mailed August 14, 2012 (“Ans.”) at 3.)

DISCUSSION
I. Claims 1 through 8, 19, and 20
Having evaluated the evidence of record relied upon by both the
Examiner and Appellants, we find no reversible error in the Examiner’s
decision rejecting claims 1 through 8, 19, and 20 under 35 U.S.C. § 103(a)
as unpatentable over the combined disclosures of Barnes and Yamato. Thus,
we adopt the Examiner’s reasoning directed to rejecting such claims as our
own and add the following primarily for emphasis.
As recognized by both the Examiner and Appellants, Barnes teaches a
gas generator comprising a first gas generating composition containing a
nitrogen-containing fuel (e.g., tetrazole or triazole compound, guanidine
nitrate, ethylene diamine dinitrate and/or similar compounds) and a second
nitrogen-free gas generating composition containing 30 to 65 wt. % of
tartaric acid (carboxylic acid) as a preferred fuel (identified as fuel C) and 35

3 Appellants inadvertently assert that claims 1 through 8, 13, and 15 through
21 stand rejected under 35 U.S.C. § 103(a) as “anticipated” by the combined
disclosures of Barnes and Yamato. (See App. Br. 8 and Ans. 3.)
4 US Patent 5,670,740 issued to Barnes et al. on September 23, 1997
(“Barnes”).
5 US Patent 6,517,647 B1 issued to Yamato on February 11, 2003
(“Yamato”).
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to 70 wt. % of an alkali metal chlorate or perchlorate, such as potassium
chlorate, as an oxidizer. (Compare also Barnes, col. 2, l. 55 to col. 3, l. 15
and col. 4, ll. 39-48 with claims 1, 6, and 7.) The Examiner also correctly
found at page 6 of the Answer that tartaric acid taught by Barnes is DL-
tartaric acid or is at least suggestive of DL-tartaric acid as recited in claims 8
and 19 because tartaric acid is available in limited forms, i.e., D-, L-, or DL-
tartaric acid, and is not defined as an individual enantiomer (D- or L-tartaric
acid). The Examiner further correctly found that Barnes teaches using
individually formed first nitrogen-containing and second nitrogen-free gas
generation compositions, i.e., using two distinct compositions formed by
separately pressing first and second gas generation compositions into two
different tablets or wafers with 0.2 to 0.5 wt % of a known binder or a
known processing aid in a gas generator. (See Ans. 7-8 and Barnes, col. 4, l.
63 to col. 5, l. 20.) The Examiner further found that Barnes teaches
employing about 1 to 5 wt% of a coolant, such as graphite, as a processing
aid as required by claims 4 and 5. (See Ans. 6 and Barnes, col. 4, ll. 31-56.)
Although the Examiner acknowledged that Barnes does not teach
employing a desiccant, such as zeolites, in operable communication with the
nitrogen-free auto-ignition composition as recited in claims 1, 2, 3, and 19,
the Examiner found at pages 3-5 of the Answer that Yamato teaches using
preferably 4 to 30 wt. % of an adsorbent corresponding to the desiccant
recited in the claims on appeal, together with a gas generating composition,
for an automotive restraint system (airbag system) for the purpose of
improving the thermal stability and decomposition inhibition of the gas
generating composition. (See also Yamato, abstract, col. 1, ll. 7-10, col. 2,
ll. 41-50, and col. 5, l. 65 to col. 6, l. 5.) The Examiner further found at page
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5 of the Answer that the preferred adsorbent is zeolite and can be mixed with
the gas generating composition as required by claim 1, 2, and 19 on appeal
or can be used separately from the gas generating composition as required
by claims 1, 3, 19 on appeal. (See also Yamato, col. 5, l. 21 to col. 6, l. 20.)
In regard to the latter, Yamato specifically states (col. 6, ll. 6-42) that:
The gas generating composition of this invention can be
formed by, for example, producing a gas generating agent by a
dry method in which a fuel, an oxidizing agent and the like are
mixed in powdery state or by a wet method in which these are
mixed in the presence of water, an organic solvent or the like,
further mixing the same with an adsorbent and integrally
molding the mixture. However, a preferred embodiment in this
invention is that the gas generating agent and the adsorbent are
separately molded into pellets, beads, a mesh, a powder, a disc
or the like and mixed. Incidentally, when the gas generating
agent and the adsorbing agent are integrally molded, an adverse
effect is sometimes exerted on a combustibility of the gas
generating agent and the like, and this embodiment is therefore
not necessarily preferable. However, this invention does not
exclude such an integral molding of the composition.
…
By the way, the gas generating composition is placed in a
combustion chamber for generating a gas in order to exhibit an
inherent function of gas generation. However, in a continuous
space system within a gas generator, the gas generating agent
and the adsorbent can be placed separately in spaced-apart state.
The “in a continuous space system” means a state in which the
adsorbent can adsorb and keep substances that accelerate
decomposition of a fuel, such as CONH2 radical, NH2 radical,
CO and ammonia generated by the decomposition of the gas
generating agent. Accordingly, it includes naturally one and the
same space and a case in which two spaces defined separately
are linked through communication holes capable of passing a
gas.

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The gas generating agent referred to by Yamato is not particularly limited,
but includes the first gas generating composition containing nitrogen-
containing fuels taught by Barnes that generates substances for decomposing
fuels. (Compare Yamato, col. 3, l. 11 to col. 4, l. 7 with Barnes, col. 2, l. 55
to col. 3, l. 4.)
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art, reading the collective teachings of Barnes and
Yamato, would have been led to employ the claimed amount of zeolite as
the preferred absorbent separate from the first nitrogen-containing
composition and/or the second nitrogen-free composition in a gas generator
as required by the claims on appeal, with a reasonable expectation of
increasing thermal stability of gas generating compositions. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
As to the claimed functionally defined properties, namely, “wherein
said nitrogen-free auto-ignition composition auto-ignites at a temperature
equal to or below 200[o]C, and, wherein said nitrogen-free auto-ignition
composition when heat aged for 648 hours at 107[o]C does not react with
aluminum in a sealed container” recited in claim 1, “said desiccant is
provided in amounts resulting in a mass differential of about -5.0 to 5.0% of
the composition after heat aging at 107[o]C for 400 hours” in claim 3, and
“wherein said nitrogen-free composition when aged for 648 hours at 107[o]C
does not react with aluminum in a sealed container” recited in claim 19, the
Examiner found, and Appellants have not disputed, that such functionally
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defined properties are inseparable from the gas generating compositions
suggested by the collective teachings of Barnes and Yamato.6 See In re
Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and its properties
are inseparable”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)
(explaining that a chemical composition and its properties are inseparable.)
In other words, Barnes and Yamato, by suggesting the claimed gas
generating compositions, would have necessarily suggested their attendant
functional properties. In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
(“Even if no prior art of record explicitly discusses the [limitation],
[applicants’] application itself instruct that [the limitation] is not an
additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention].”) As
stated by Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985):
The fact that appellant has recognized another advantage[ous
property] which would [have] flow[ed] naturally from
following the suggestion of the prior art cannot be the basis for
patentability when the difference would otherwise have been
obvious.
Moreover, notwithstanding Appellants’ argument to the contrary at pages
12, 13, and 15 of the Appeal Brief, the Examiner correctly found that Barnes
and Yamato would have suggested using two separate gas generating
compositions, i.e., the first gas generating composition containing nitrogen-
containing fuels in the form of a tablet and the second nitrogen-free gas
generating composition in the form of a second tablet, in a gas generator as
indicated supra. The Examiner correctly determined that claims 1 through

6 According to page 1, lines 20-23, page 2, lines 28-30, and page 4, lines 1-
10, of the Specification, the claimed gas generating compositions necessarily
or inherently have the claimed functionally defined properties.
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8, 19, and 20, by virtue of using the transitional term “comprising,” do not
exclude the presence of additional unclaimed components, such as the
unclaimed first gas generating composition containing nitrogen containing
fuels taught by Barnes. Gillette Co. v. Energizer Holdings, Inc. 405 F.3d
1367, 1371-1372 (Fed. Cir. 2005) (“The word ‘comprising’ transitioning
from the preamble to the body signals that the entire claim is presumptively
open-ended.”); In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981) (“As long
as one of the monomers in the reaction is [claimed] propylene, any other
monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”)
On this record, Appellants have not referred to any disclosure in the
Specification that would have disavowed or disclaimed the unclaimed
separate nitrogen-containing gas generating composition suggested by
Barnes and Yamato. See, e.g., Leibel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 906 (Fed. Cir. 2004) (“[T]he claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear intention to limit
the claim scope using ‘words or expressions of manifest exclusion or
restriction’.”) Nor have Appellants identified any limitation in the claims
that would have excluded the unclaimed separate nitrogen-containing gas
generating composition suggested by Barnes and Yamato. In addition,
Appellants have not shown that the terms “consisting essentially of” and
“containing” used in context of “a nitrogen-free auto-ignition composition”
recited in claims 1 and 19, respectively, would have precluded the presence
of the additional nitrogen-containing auto-ignition composition in the form
of a separate tablet suggested by Barnes and Yamato in a gas generator. See,
e.g., In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (explaining that the
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“reasonable interpretation of the claims containing both of the terms
‘comprising’ and ‘consists’ is that the term ‘consists’ limits the ‘said
portion’ language to the subsequently recited numbered nucleotides, but the
earlier term ‘comprising’ means that the claim can include that portion plus
other nucleotides.”)
Furthermore, Appellants have not shown that the terms “consisting
essentially of” and “containing” exclude the presence of a binder and/or a
processing aid in the nitrogen-free auto-ignition composition recited in
claims 1 and 19, respectively. See, e.g., In re Herz, 537 F.2d 549, 551-52
(CCPA 1976) (“[T]he phrase ‘consisting essentially of’ limits the scope of a
claim to the specified ingredients and those that do not materially affect the
basic and novel characteristic(s) of a composition.”). In other words,
Appellants fail to demonstrate that the basic and novel characteristics of the
nitrogen-free auto-ignition composition would be materially changed by the
presence of the binder and/or the processing aid taught by Barnes7 or that the
term “containing” is not synonymous with “comprising” under the broadest
reasonable construction rubric. In fact, the Specification describes
optionally including other constituents, including extrusion aids or
processing additives, in a nitrogen-free auto-ignition composition, thus
implying that such ingredients are not excluded by the term “consisting
essentially of” and “containing” in claims 1 and 19, respectively.
Appellants refer to compositions designated as 9156 containing 45 %
potassium chlorate, 30% D,L-tartaric acid, and 25% desiccant and a
composition designated as 9156DL containing 60% potassium chlorate,
38.5% DL-tartaric acid, 0.5% graphite, and 1.0% fumed silica in the form of

7 See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964).
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a tablet and 5gram of desiccant in a separate tablet form in vapor contact
with the composition designated as 9156DL in Tables 1 and 2 at pages 4 and
6 of the Specification to show unexpected results. (App. Br. 14, 16, and 25.)
However, on this record, as argued by the Examiner at page 11 of the
Answer, Appellants have not carried the burden of showing that the
improved results relied upon are actually unexpected. In fact, Appellants
have not disputed the Examiner’s finding that the alleged improvements
shown in Tables 1 and 2 are expected from the teachings of Yamato.
(Compare Ans. 11 with Reply Brief filed October 15, 2012 (“Reply Br.”) at
1-4.) In particular, the Examiner found, and Appellants have not disputed,
that Yamato teaches employing a desiccant with a gas generating agent to
obtain the same phenomenon relied upon by Appellants as unexpected
results. (Compare Ans. 11 with App. Br. 14-25 and Reply Br. 1-4.)
Accordingly, we determine that on this record, the preponderance of
evidence weighs heavily in favor of obviousness of the subject matter recited
in claims 1 through 8, 19, and 20.
II. Claims 13, 15 through 18, and 21
Having evaluated the evidence of record, including the claim
language, relied upon by both the Examiner and Appellants, we determine
that the Examiner erred in rejecting claims 13, 15 through 18, and 21 under
35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Barnes
and Yamato. Claims 13, 15 through 18, and 21, unlike claims 1 through 8,
19, and 20, require a nitrogen-free auto-ignition composition consisting of
about 25-75 weight percent of an alkali metal chlorate as an oxidizer and
about 25 -75 weight percent of a fuel consisting of D,L-tartaric acid and
succinic acid, and 5-35 weight percent of a desiccant or a nitrogen-free auto-
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ignition composition consisting of about 25-75 weight percent of an alkali
metal chlorate as an oxidizer and about 25 -75 weight percent of one or more
carboxylic acids as a fuel. However, as argued by Appellants at pages 20,
21, and 29 of the Appeal Brief, the Examiner has not demonstrated that the
collective teachings of Barnes and Yamato would have suggested such
nitrogen-free auto-ignition compositions. AFG Indus., Inc. v. Cardinal IG
Co., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001) (“‘[C]losed’ transition phrases
such as ‘consisting of’ are understood to exclude any elements, steps, or
ingredients not specified in the claim.”); see also, In re Gray, 53 F.2d 520,
521 (CCPA 1931) (use of the claim term “consists” is limited to the claim's
enumerated alloy metals without other elements). In particular, the
Examiner did not provide any rationale or reason for excluding the requisite
binder or processing aid from the separate nitrogen-free auto-ignition
composition suggested by Barnes and Yamato. (Compare Ans. 4-15 with
Barnes, col. 5, ll. 4-19.)
Accordingly, we are constrained to agree with Appellants that the
Examiner, on this record, failed to establish a prima facie case of
obviousness regarding the subject matter recited in claims 13, 15 through 18,
and 21 within the meaning of 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given above, it
is
ORDERED that the Examiner’s decision rejecting claims 1 through 8,
19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Barnes and Yamato is AFFIRMED;
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FURTHER ORDERED that the Examiner’s decision rejecting claims
13, 15 through 18, and 21 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Barnes and Yamato is REVERSED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).

AFFIRMED-IN-PART
tc