Ex Parte Cronce

Board of Patent Appeals and Interferences

Sep 17, 2008

10675598 (B.P.A.I. Sep. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte DONALD T. CRONCE
______________

Appeal 2008-3878
Application 10/675,598
Technology Center 1700
_______________

Decided: September 16, 2008
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 9 and 12 through 20 in the
Office Action mailed December 29, 2006, and subsequent refusal to allow
claim 18 as amended in the Amendment filed March 13, 2007 that was
entered in the Advisory Action mailed April 3, 2007. 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2006).

Appeal 2008-3878
Application 10/675,598
We affirm the decision of the Primary Examiner.
Claims 1 and 12 illustrate Appellant’s invention of an article marking
system, and are representative of the claims on appeal:
1. A power generating system, comprising:
a decomposition chamber;
a solid impellant material containing at least one of a peroxide and a
superoxide;
a solvent in the decomposition chamber to liquefy and chemically
decompose the solid impellant material, thereby releasing thermal energy;
a power generator to convert the thermal energy into at least one of
mechanical energy and electrical energy; and
a power transmission to transfer the converted energy for performing
work.
12. A process for releasing energy in an energy source, comprising:
providing a decomposition chamber containing a solvent;
dissolving a solid impellant material containing at least one of a
peroxide and a superoxide;
solubilizing the solid impellant material in the solvent to liquefy and
chemically decompose the solid impellant material into a liquefied peroxide
for releasing thermal energy;
converting the thermal energy into at least one of mechanical energy
and electrical energy; and
transferring the converted energy for performing work.
The Examiner relies upon the evidence in these references (Ans. 3):
Russell US 4,867,902 Sep. 19, 1989
Rusek US 6,255,009 B1 Jul. 3, 2001
Appellants request review of the ground of rejection of claims 1
through 9 and 12 through 20 under 35 U.S.C. § 103(a) as unpatentable over
Rusek in combination with Russell advanced on appeal. Ans. 3; App. Br. 6.
2
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Application 10/675,598
Appellant argues the claims as a group. App. Br. in entirety. Thus,
we decide this appeal based on independent claims 1 and 12. 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
The principal issue in this appeal is whether the Examiner has carried
the burden of establishing a prima facie case in the ground of rejection
advanced on appeal which, of course, turns on the issues addressed below.
Considering first claim 1, we determine the plain language of this
claim specifies a system comprising at least any system of apparatus
components capable of generating power comprising at least any manner of
decomposition chamber apparatus component capable of accommodating in
any manner the dissolution and decomposition of any solid impellant1 into
thermal energy; any manner of power generator apparatus component
capable of converting the thermal energy into at least one of mechanical and
electrical energy; and any manner of power transmission apparatus
component apparatus component capable of transferring the mechanical or
electrical energy to perform any manner of work. We determine the solid
impellant material and the solvent capable of liquefying the impellant
constitute materials on which the system of apparatus components performs
work in generating power and thus, do not confer a structural limitation on
the claimed system. See, e.g., In re Otto, 312 F.2d 937, 939-40 (CCPA
1963); In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952) (“[T]here is no
patentable combination between a device and the material upon which it
works.”); In re Young, 75 F.2d 996 (CCPA 1935); In re Smith, 36 F.2d 302,

1 Appellants disclose that “[a]n impellant is a chemical which contains
energy releasable by decomposition without combustion.” Spec. 6:8-9.
3
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Application 10/675,598
303 (CCPA 1929)(“It might be argued that the invention here consists in a
combination of extra length carbons with the old machine, and that such a
combination is patentable. It will be borne in mind that it has been long
established that a person may not patent a combination of device and
material upon which the device works, nor limit other persons from the use
of similar material by claiming a device patent.”).
The plain language of claim 12 specifies any process for releasing
energy from any energy source comprising at least the steps of, among other
things, dissolving any solid impellant material containing at least any
amount of one of any peroxide and any superoxide, in any solvent that will
liquefied and chemically decompose the solid impellant to release thermal
energy in any manner of decomposition chamber apparatus component;
converting the thermal energy in any manner into at least one of mechanical
and electrical energy; and transferring the converted energy in any manner
for performing work.
In both of these claims, the transitional term “comprising” opens the
claims to encompass other system and process apparatus components, steps,
and materials. See, e.g., Vehicular Technologies Corp. v. Titan Wheel Int’l
Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000); Genentech Inc. v. Chiron Corp.,
112 F.3d 495, 501 (Fed. Cir. 1997); In re Baxter, 656 F.2d 679, 686 (CCPA
1981) (“As long as one of the monomers in the reaction is propylene, any
other monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”).
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Appeal 2008-3878
Application 10/675,598
There is no dispute that Rusek would have disclosed to one of
ordinary skill in this art the apparatus components specified in claim 1 and in
claim 12, as these claims are interpreted above. Ans. 3-5 and 8; App. Br. 8.
We determine that Rusek would have otherwise disclosed to one of
ordinary skill in this art the conversion of an aqueous solution containing
hydrogen peroxide as impellant to superheated steam comprising water
vapor and oxygen, that is, to thermal energy, in a methods of generating
mechanical and electrical power from that thermal energy using apparatus
components of a power generation system. Rusek, e.g., col. 1, ll. 23-30,
col. 2, ll. 47-51, col. 3, l. 14 to col. 6, l. 36, and Figs. 1-2.
We determine that Russell would have evinced that
[i]t is well known in the art to use alkali metal and alkaline
earth metal peroxide and superoxide chemicals as oxygen
sources. Methods for releasing the oxygen have included
introducing the chemical into a water containing reactor. For
example, potassium superoxide is well known to react
vigorously and almost instantly with water to evolve heat and
oxygen with potassium hydroxide as the by-product.
Russell col. 1, ll. 14-21; see also col. 1, ll. 22-28 and 31-33. Russell further
evinces it was known in the art with respect to source respirators and
rebreathers that “[i]n the case of potassium superoxide enough exotherm
heat is created to require external heat exchanges on the potassium
superoxide canisters. Russell col. 1, ll. 46-49.
We determine that Russell would have disclosed to one of ordinary
skill in this art that the microencapsulation of solid oxygen generating
compounds, such as potassium peroxide and superoxide, in a water
swellable capsule material controls the reactivity of these compounds with
respect to the generation of heat when mixed with water. Russell, e.g.,
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Appeal 2008-3878
Application 10/675,598
col. 1, ll. 5-11, col. 2, ll. 21-27, and col. 4, ll. 31-55. The micro-
encapsulation material absorbs moisture which permits additional moisture
to permeate the wall of the capsule and react with the oxygenating
compound as well as rupture the wall of the capsule for further exposure to
moisture, thus controlling the release rate of heat and oxygen. Russell, e.g.,
abstract and col. 3, l. 6 to col. 4, l. 30.
We determine the combined teachings of Rusek and Russell, the scope
of which we determined above, provide sufficient evidence supporting the
Examiner’s case that the claimed invention encompassed by claims 1 and 12,
as we interpreted this claim above, would have been prima facie obviousness
to one of ordinary skill in the power generating arts familiar with power
generating methods and systems that use impellants to generate thermal
energy. Considering first the power generating system of apparatus
components specified in claim 1, there is no dispute that Rusek alone, prima
facie, teaches power generating systems that fall within the claimed system.
Turning now to claim 12, we agree with the Examiner that, prima
facie, one of ordinary skill in this art armed with knowledge in the art would
have exchanged the aqueous hydroperoxide impellant used to generate
thermal energy and oxygen by Rusek with aqueous solutions of solid
peroxides and superoxides known in the prior art to generate thermal energy
and oxygen as evinced by Russell in the reasonable expectation that the
aqueous solid peroxide solutions would act as impellants and be converted
into mechanical and electrical energy in Rusek’s power generation systems.
Ans., e.g., 3-4, 5-6, and 12:12-14.
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Application 10/675,598
Accordingly, on this record, prima facie, one of ordinary skill in this
art routinely following the combined teachings of Rusek and Russell would
have reasonably arrived at the claimed inventions encompassed by claims
1 and 12, including all of the limitations thereof arranged as required therein,
without recourse to Appellants’ Specification. See, e.g., KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007) (“when a patent claims a
structure already known in the prior art that is altered by mere substitution of
one element for another known in the field, the combination must do more
than yield a predictable result”); In re Siebentritt, 372 F.2d 566,
567-68 (CCPA 1967) (express suggestion to interchange methods which
achieve the same or similar results is not necessary to establish
obviousness); see also In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”
(citations omitted)); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“ [T]he
test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)
(“Having established that this knowledge was in the art, the examiner could
then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”).
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Appeal 2008-3878
Application 10/675,598
Upon reconsideration of the record as a whole in light of Appellants’
contentions, we are of the opinion that Appellants have not successfully
rebutted the prima facie case. We cannot subscribe to Appellants’
contentions that one of ordinary skill in this art would not have combined
Rusek with the knowledge in the art as evinced by Russell because Russell
teaches away from the combination by disclosing microencapsulating the
solid peroxide and superoxides in order to control the release of thermal
energy therefrom. App. Br. 8-9. Indeed, Russell makes clear that one of
ordinary skill in this art would have known that whether the solid peroxide
and superoxide is combined with water per se as known in the prior art or in
the form of breath moisture, the solid material will react to release thermal
energy and oxygen. Thus, this person would have further readily recognized
that the solid peroxides and superoxides would act as impellants when
combined with water in the same manner as an aqueous solution of hydrogen
peroxide, releasing thermal energy which can be converted to mechanical
and electrical energy in Rusek’s power generation systems. Accordingly,
one of ordinary skill in this art would have combined the references on the
basis of the release of thermal energy from the aqueous impellant systems
disclosed therein, leading this person to use the prior art solid peroxides and
superoxides in combination with water in place of Rusek’s hydrogen
peroxide solutions.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Rusek and Russell with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed
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Application 10/675,598
invention encompassed by appealed claims 1 through 9 and 12 through 20
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED

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