Ex Parte Coffey et al

Patent Trial and Appeal Board

May 31, 2017

12570822 (P.T.A.B. May. 31, 2017)

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.
12/570,822 09/30/2009 Brendan Coffey 4375-700USC1 1894
58687 7590 06/02/2017
DUBOIS, BRYANT, & CAMPBELL, LLP
303 Colorado Street
Suite 2300
AUSTIN, TX 78701
EXAMINER
HEYAMOTO, AARON H
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
06/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
BWIESE@DBCLLP.COM
ALUNDSTEN @ DBCLLP.COM
SSTERLING@DBCLLP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENDAN COFFEY, ROBERT JOHN GORDON,
DONALD R. SCHROPP JR., and
KRZYSZTOF CZESLAW KWIATKOWSKI
Appeal 2016-0000551
Application 12/570,8222
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of
claims 1—19, 21—24, and 26—38. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.
1 Our Decision considers Appellants’ Appeal Brief (“Appeal Br.,” filed
Apr. 14, 2015) and Reply Brief (“Reply Br.,” filed Sept. 8, 2015), as well as
the Examiner’s Final Office Action (“Final Act.,” mailed Dec. 4, 2014) and
Answer (“Ans.,” mailed July 8, 2015).
2 Appellants identify HEATGENIE, INC. as the real party in interest.
Appeal Br. 2.
Appeal 2016-000055
Application 12/570,822
CLAIMED SUBJECT MATTER
The claimed invention “relates to precisely controlled solid-state
thermite reaction compositions and incorporation of those compositions into
an integrated heating device for various applications such as heating of
prepared foods or beverages in their containers.” Spec. 12. Claims 1,11,
22, and 30 are the independent claims on appeal. Claim 30, reproduced
below, is illustrative of the claimed subject matter:
30. A heating device comprising:
a heating chamber defining an interior space for
receiving and storing a substance to be heated;
a reaction chamber disposed adjacent to the interior space
of the heating chamber;
a solid-state thermite reaction composition disposed
within the reaction chamber such that it is physically isolated
from and in thermal communication with the interior space of
the heating chamber, the composition comprising a mixture of a
fuel component, an oxidant, an accelerant, and a thermal
diluent, wherein the accelerant is substantially evenly
distributed throughout the composition prior to activation of a
reaction; and
an activator mechanism connected to either the reaction
chamber or the heating chamber such that the activator
mechanism is in communication with the reaction composition;
wherein the reaction composition is inert until the
activator mechanism is actuated.
The Examiner relies on the following prior art in rejecting the claims
REFERENCES
on appeal:
Epstein
Trumble et al.
Fontaine et al.
US 3,527,201
US 4,043,314
US 4,462,823
Sept. 8, 1970
Aug. 23, 1977
July 31, 1984
2
Appeal 2016-000055
Application 12/570,822
Lamond et al. US 4,835,524 May 30, 1989
Campana US 5,374,289 Dec. 20, 19943
Domey US 6,029,651 Feb. 29, 2000
Tenenboum et al. US 6,267,110 B1 July 31, 2001
Scudder et al. US 2005/0198969 Al Sept. 15,2005
Bolmer et al. US 2007/0261692 Al Nov. 15,2007
Nielson et al. US 2008/0229963 Al Sept. 25, 2008
Grunberg et al. US 2009/0090353 Al Apr. 9, 2009
Chen et al. US 7,578,895 B1 Aug. 25, 2009
Coffey et al.
(“Coffey ’859”)4
US 2009/0293859 Al Dec. 3, 2009
Pitz et al. US 2010/0260491 Al Oct. 14, 2010
Coffey WO 2007/120168 A2 Oct. 25, 2007
(“Coffey ’ 168”)5
REJECTIONS
I. Claims 1—3, 5, 6, 8—13, 15, 16, 19, 22, 30, and 34 are rejected under
35 U.S.C. § 103(a) as unpatentable over Epstein, Coffey ’859, and
Bolmer.6
3 The Examiner refers to Campana as “Compana.”
4 The Examiner refers to Coffey ’859 as “Coffee ‘859” or “Coffee.”
5 The Examiner refers to Coffey ’168 as “Coffee ’168.”
6 The heading of the rejection lists claims 1—3, 5, 6, 8, 9, and 22, but the
body of the rejection discusses claims 1—3, 5, 6, 8—13, 15, 16, 19, 22, 30, and
34. Final Act. 4—12. We consider the omission of certain claims from the
heading of the rejection to be a minor oversight, and we understand the
rejection includes claims 1—3, 5, 6, 8—13, 15, 16, 19, 22, 30, and 34, which is
consistent with Appellants’ understanding of the claims subject to this
rejection (Appeal Br. 6).
3
Appeal 2016-000055
Application 12/570,822
II. Claims 4, 14, 17, 19, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Epstein, Bolmer, Coffey ’859, and Tenenboum.7
III. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, and Domey.
IV. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, Tenenboum, and Scudder.
V. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, Chen, and Lamond.
VI. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, Nielson, and Lamond.
VII. Claims 26, 31, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Epstein, Bolmer, Coffey ’859, and Fontaine.
VIII. Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, and Coffey ’168.
IX. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, and Pitz.
X. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, and Coffey ’859, and Grunberg.
XI. Claims 32 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Epstein, Bolmer, Coffey ’859, and Nielson.
XII. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, Fontaine, and Nielson.
7 The Examiner sets forth separate statements for the rejection of claim 4
(Final Act. 12—13) and claims 14, 17, 19, and 21 (id. at 13—15). We
consolidate the statements into a single ground of rejection because they are
each based on the same combination of references.
4
Appeal 2016-000055
Application 12/570,822
XIII. Claim 35 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, and Campana.
XIV. Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Epstein, Bolmer, Coffey ’859, and Trumble.
ANALYSIS
Rejection I
Independent claim 30 requires, inter alia, a solid-state thermite
reaction composition comprising a fuel component, an oxidant, an
accelerant, and a thermal diluent. The Examiner relies on Epstein for
teaching the fuel component and oxidant and relies on Coffey ’859 and
Bolmer for teaching the accelerant and thermal diluent, respectively.
Final Act. 10—12.
Appellants argue that the Examiner’s proposed combination of
Epstein, Coffey ’859, and Bolmer would render the device inoperable for its
intended purpose. Appeal Br. 8—11. As Appellants point out, Epstein
teaches a “dry” reaction system involving a solid-state and pre-mixed
aluminothermic composition (id. at 8), whereas each of Coffey ’859 and
Bolmer teaches a “wet” system, namely a heterogeneous phase chemical
reaction whereby a fluid reacts with a porous matrix of solid reactants
(id. at 8—9). According to Appellants, solid-state systems are highly
compacted and without the structural porosity that would be needed to
permit the introduction of a fluid reactant.
As set forth above, the Examiner is relying on the combined teachings
of Epstein, Coffey ’859, and Bolmer for teaching the components of the
claimed solid-state thermite reaction composition. Final Act. 10—12. Said
5
Appeal 2016-000055
Application 12/570,822
differently, the Examiner is not relying on the fluid reactants of Coffey ’859
and Bolmer for teaching the claimed accelerant and diluent, respectively, nor
is the Examiner proposing to modify Epstein’s solid-state system to include
a fluid component. Consequently, Appellants’ assertion regarding the
inability of a solid-state system to accept a fluid reactant is not relevant to
the Examiner’s proposed combination, and is, therefore, not persuasive.
Appellants further argue that Coffey ’859 teaches away from
Epstein’s use of barium chromate to initiate a reaction. Appeal Br. 10.
According to Appellants, Coffey ’859 teaches specific advantages associated
with using air as a reactant such that a person of ordinary skill would not
combine the teachings of Epstein and Coffey ’859. Id. (citing Coffey ’859
110).
Notably, the Examiner is not proposing to modify the system of
Coffey ’859 to use barium chromate as a reactant. Rather, the Examiner is
proposing to add the accelerant of Coffey ’859 to Epstein’s reaction.
Final Act. 11—12. We fail to see how the disclosure in Coffey ’859
regarding the benefits associated with using air as a reactant would lead a
person away from adding the accelerant to Epstein’s system.
Appellants also argue Coffey ’859 teaches away from using a
chemically-active accelerant with a compressed fuel, i.e., the
aluminothermic mixture of Epstein, and instead recommends using a matrix
or mesh made of an inert material, which is not an accelerant that is
“substantially evenly distributed throughout the mixture,” as claimed.
Appeal Br. 11—12 (citing Coffey ’859 146). Appellants’ argument is not
persuasive.
6
Appeal 2016-000055
Application 12/570,822
As the Examiner points out, Coffey ’859 teaches fumed silica and
“some other means of promoting oxygen access to the interior of composite
fuel particles,” i.e., accelerants. Ans. 2 (quoting Coffey ’859 |46).
Although Appellants are correct that Coffey ’859 suggests using a matrix or
mesh of fibrous or inert material instead of fumed silica as an accelerant for
a compressed fuel, Coffey ’859 further teaches that manganese dioxide or
iron oxide can be used to enhance the availability of oxygen and to control
the rate of oxidation. Coffey ’859 |46. Coffey ’859, thus, teaches the use
of chemical accelerants, as opposed to teaching away from them.
Appellants additionally argue Bolmer does not disclose a thermal
diluent that is part of a solid-state reaction composition, as recited in
independent claim 30. Reply Br. 2—\. As Appellants point out, the
Examiner originally relied on Bolmer’s teaching of water as a thermal
diluent, but changed positions in the Answer to rely on Bolmer’s disclosure
of wax for teaching the claimed diluent. Id. at 2—3; Ans. 2, 4. According to
Appellants, Bolmer does not disclose the wax is part of the reaction or a
thermal diluent, but rather teaches the wax is a fusible component that
releases a suppressant composition upon melting. Id. at 3—4, 7—8 (citing
Bolmer || 15, 33, Figs. 1, 3). Appellants’ argument is persuasive. Given
there is no teaching of the wax being part of the reaction, much less a
thermal diluent, the Examiner’s finding that Bolmer teaches the claimed
thermal diluent is inadequately supported.
In view of the foregoing, we do not sustain the rejection of
independent claim 30 and claim 34 depending therefrom. Like independent
claim 30, each of independent claims 1,11, and 22 requires a solid-state
thermite reaction composition including a thermal diluent, and the Examiner
7
Appeal 2016-000055
Application 12/570,822
similarly relies on Bolmer for teaching the thermal diluent. Final Act. 5,8,
10. Accordingly, we do not sustain the rejection of independent claims 1,11
and 22 and dependent claims 2, 3, 5, 6, 8—10, 12, 13, 15, 16, and 19 for the
same reasons as independent claim 30.
Rejections II—XIII
The Examiner does not rely on any of the additional references in a
manner that would cure the deficiency of Bolmer and Rejection I discussed
above. Accordingly, we do not sustain these rejections of claims 4, 7, 14,
17—19, 21, 23, 24, 26—29, 31—33, 35, 37, and 38 for the same reason
discussed above in regard to Rejection I.
Rejection XIV
In rejecting claim 36, the Examiner finds Trumble teaches the use of
clay as a diluent and determines it would have been obvious to modify
Epstein’s disclosure to include Trumble’s diluent to avoid the release of
gaseous products. Final Act. 21 (citing Tmmble 4:49—53). As such,
Trumble’s teaching cures the deficiency of Bolmer and Rejection I discussed
above.
Appellants do not present any argument for claim 36 apart from the
arguments for independent claim 30 and instead rely on its dependency for
patentability. Appeal Br. 14. The arguments for independent claim 30 do
not address the Examiner’s findings regarding Trumble, and, as such, are not
persuasive of error. Accordingly, we sustain the rejection of claim 36.8
8 Although claim 36 depends from independent claim 30,
independent claim 30 is not rejected under 35 U.S.C. § 103(a) as
8
Appeal 2016-000055
Application 12/570,822
DECISION
The Examiner’s decision to reject claims 1—19, 21—24, 26—35, 37, and
38 under 35 U.S.C. § 103(a) is reversed.
The Examiner’s decision to reject claim 36 under 35 U.S.C. § 103(a)
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
unpatentable over Epstein, Bolmer, Coffey ’859, and Trumble. Hence, a
rejection of independent claim 30 under 35 U.S.C. § 103(a) as unpatentable
over Epstein, Bolmer, Coffey ’859, and Trumble is not before us on appeal.
9