Ex Parte Forman et al

Board of Patent Appeals and Interferences

May 30, 2006

10619890 (B.P.A.I. May. 30, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. FORMAN, DAVID T. JENNINGS III
and GIMTONG TEOWEE
____________

Appeal No. 2006-1482
Application No. 10/619,890
____________

ON BRIEF
____________

Before CRAWFORD, LEVY, and NAPPI, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3-5, 7 and 10-15.

We AFFIRM-IN-PART.
BACKGROUND
The appellants' invention relates to firing-readiness
diagnostics of a pyrotechnic device such as an electronic
detonator (specification, page 1).
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Claim 1 is representative of the invention, and is
reproduced as follows:
1. An electronic detonator for use in mining or blasting
and having firing-readiness diagnostics, comprising an igniter
and electronic circuitry configured and/or programmed to perform
one or more firing-readiness diagnostics on said electronic
detonator.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Definition of "Detonator", 3/4/2001, HYDRO CUT, Terminology
and Resource Information, available online @
http://www.hydrocut.com/Terms/D.html and
http://web.archive.orq/web/20010304121751/http://hydrocut.com/
Terms/D.html

Definition of "Initiator", 3/4/2001, HYDRO CUT, Terminology and
Resource Information, available online @
http://www.hydrocut.comserms/Terms/l.html and
http://web.archive.orq/web/20010304121751/http://hydrocut.com/
Terms/l.html

"Miniature Electric lnitiator", L3 Communications, KDI Precision
Products, lnc. 10 April 2003 available online @
http://www.dtic.mil/ndia/2003fuze/schmidt.pdf

EXPLODING BRIDGEWIRES, Technical Discussion, Exploding Bridgewire
(EBW) Detonators, Risi, copyright @ 2000 - www.risi-usa.com,
available online @
http://www.risi-usa.com/0products/8td/page03.html and
http://web.archive.org/web/20010418201121/http://risi-
usa.com/0products/8td/page03.html

CONTINUITY TESTS, 12/10/2000, Integrated Publishing, available
online @
http://www.tpub.com/neets/bookl6/68h.htm and

http://web.archive.org/web/20001210064800/http://www.tpub.com/
neets/bookl6/68h.htm
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Application No. 10/619,890

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Definition of "data integrity", Microsoft Computer Dictionary
Fourth Edition, Microsoft Press, copyright © 1999, Microsoft
Corporation

Claims 1, 3-5, 7 and 10-15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Adams.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the answer (mailed March 15,
2005) for the examiner's complete reasoning in support of the
rejection, and to the brief (filed February 9, 2005) for the
appellants’ arguments thereagainst.
Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of anticipation relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the brief along with the
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examiner's rationale in support of the rejection and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with claim 1.
Appellants' position (brief, page 4) is that Adams is
directed to an igniter for use in gas generators in vehicle
safety program. It is asserted (id.) that a detonator detonates
an explosive, while an igniter for a gas generator is not
intended to detonate an explosive, but rather to trigger the
burning, not detonation, of a gas generant such as is used to
inflate an airbag. Appellants acknowledge (brief, pages 5 and 6)
that Adams discloses “[i]t would also be advantageous to have
similar capabilities for selectively [i.e., simultaneously or
sequentially depending upon selected variables] igniting various
units of reactive materials, such as explosives, in mining or
demolition operations," (col. 1, lines 23-26). However,
appellants submit that Adams does not adequately disclose the
claimed electronic detonator having firing-readiness diagnostics,
because "one of ordinary skill in the art could [not] have
combined [Adams'] description ... with his own knowledge to make
the claimed invention." Appellants add (id.) that the quoted
passage of Adams is nothing more than a general, tangential, and
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non-enabling background comment that has nothing to do with the
rest of the patent's disclosure. Further, appellants discuss the
Tirmizi Declaration (brief, pages 7 and 8).
From our review of Adams, we find, for the reasons which
follow, that Adams anticipates the language of claim 1, as
advanced by the examiner. We begin with claim construction.
Analysis of whether a claim is patentable over the prior art
begins with a determination of the scope of the claim. The
properly interpreted claim must then be compared with the prior
art. Claim interpretation must begin with the language of the
claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.
Cir. 1988). Accordingly, we will initially direct our attention
to appellants' claim 1 to derive an understanding of the scope
and content thereof.
We find that the claim language “for use in mining or
blasting” to be a statement of intended use. Review of the
entire claim reveals that the body of the claim does not rely
upon the language of the preamble for completeness. Rather, the
structural limitations are able to stand alone. Moreover, the
recitation of intended use does not result in a structural
difference between the claimed invention and the prior art.
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From all of the above, we have not given patentable weight
to the language “for use in mining or blasting” as recited in the
preamble of claim 1. In any event, even if we were to give
patentable weight to the preamble, we find that the language of
the preamble is met by Adams. The reference discloses (col. 1,
lines 23-26) that “it would also be advantageous to have similar
capabilities for selectively igniting various units of reactive
materials, such as explosives, in mining or demolition
operations." From the disclosure of igniting explosives in
mining or demolition operations, we agree with the examiner
(answer, page 7) that Adams is useful in mining or blasting.
We are not persuaded by appellants’ assertion (brief, page
4) that Adams does not disclose a detonator because a detonator
detonates an explosive, whereas an igniter for a gas generator
[as in Adams] triggers burning, not detonation of the gas
generant used to inflate an airbag. As noted by the examiner
(answer, page 7), from Adams’ disclosure (col. 1, lines 23-26)
of igniting reactive materials, such as explosives, we find
that the igniter of Adams is also a detonator, as it ignites
(or detonates) reactive materials, causing them to explode. In
addition, we find from Webster’s Collegiate Dictionary, 10th Ed.,
©1996 that “detonator” is defined as “a device or small quantity
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of explosives used for detonating a high explosive.1” Because
the igniter of Adams is a small device that can be used for
igniting explosives in a mining operation, we find that Adams
meets the definition of a detonator.
In addition, we note that in an inflator for an airbag, an
electric current is sent to the detonator, which ignites the
reactive material.2 From the disclosure that the igniter for an
airbag is a detonator, we find that the claim language of a
detonator is met by the airbag inflator of Adams. Accordingly,
we are not persuaded by appellants’ assertion (brief, page 5)
that the rejection does not address the clear structural and
functional differences between a detonator and the ignitor
disclosed by Adams. We add that from the Dictionary definition
and Web article to LemurZone, taken with the disclosure of Adams,
we find that Adams is capable of dual utility as both an igniter
and as a detonator, and that the igniter of Adams acts as a

1A copy of the pertinent page(s) of the Dictionary are attached to our Decision.
2 See the attached document “Inflators in Airbags - Supplemental Restraint
Systems - The LemurZone Airbag pages,” as the Web page existed on June 11, 2000.
A copy of the Web page is attached to our Decision.
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detonator to ignite the reactive gases (as per the LemurZone
article).
Nor are we persuaded by appellants’ assertion (brief, page
6) that Adams does not disclose the claimed electronic detonator
having firing-readiness diagnostics. Adams discloses (col. 4,
lines 64-66) that the controller 59 is an application specific
integrated circuit (ASIC) that provides, inter alia, diagnostic
functions for the igniter. Adams additionally discloses (col. 4,
lines 24-28) that "[t]he controller has diagnostic means for

comparing igniter controller integrity data, energy storage

capacity data, and firing loop (heating means activation

circuitry) integrity data to predetermined limits and generating

fault warning messages and integrity status messages to the ECU."

From these disclosures of Adams, we find that Adams discloses
firing-readiness diagnostics.
Nor are we persuaded by appellants’ assertion (brief, page
6) that col. 1, lines 23-26 of Adams is nothing more than a
general, tangential, and non-enabling background comment that
has nothing to do with the rest of the patent’s disclosure. If
appellants want to assert the non-enablement of the cited portion
of the reference, appellants should provide evidence that the
disclosure would have required undue experimentation by an
artisan in order to make and use the invention. From our review
of the record, we find no convincing evidence that an artisan
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would not be aware how to use the ignitor of Adams for igniting
reactive materials such as explosives in a mine.
Nor are we persuaded by appellants’ assertion (brief,
page 7) that “the incorporation of a hermetically-sealed
automotive-style igniter into a detonator a key advance that
permits the claimed firing-readiness diagnostics to be
implemented - was not within the ordinary skill in the art at
the time.” The automobile ignitor of Adams is sealed and coated
to provide an environmental seal (col. 6, lines 40-49), has
firing-readiness diagnostics, and the reference discloses being
capable of being used as a detonator for explosives in mines.
From this disclosure and the disclosure of the LemurZone article
that the automobile airbag igniter is a detonator, we find that
the incorporation of a hermetically-sealed automotive-style
igniter into a detonator was within the level of skill of an
artisan at the time of appellants’ invention.
Turning to the Tirmizi Declaration, appellants acknowledge
that (brief, page 8) that the Declaration was made in the context
of an obviousness determination in another application.
Appellants assert that the Declaration supports appellants’
contention that there is no adequate or inherent disclosure in
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Adams of a detonator for use in mining and blasting having
firing-readiness diagnostics features as claimed.
From our review of the Declaration, we agree with the
examiner (answer, page 12) that the:
declaration is not related to the instant application
or the Adams Patent. The May 29, 2002 declaration
under 37 CFR 1.132 filed 22 April 2004 is insufficient
to overcome the rejection of claims 1, 3-5, 7 and 10-15
based upon Adams as set forth above because: it refers
only to the system described in the application
referenced by the declaration and not to the individual
claims of the instant application.

We add that the Declaration’s averments regarding the Marshall
and Bailey patents are not relevant because these references are
not applied against the claims. Of note is that the Adams
reference is not referred to in the Declaration. In addition,
the assertions regarding the applied prior art being non-
analogous, and lack of suggestion or motivation, are not relevant
as the rejection is under 35 U.S.C. § 102(b). Although the
Declaration does refer (page 2) to an automotive igniter needing
a smaller diameter to fit within a standard detonator shell, we
note that it is not necessary to bodily combine references. In
addition, there is nothing in the Declaration as to the size of a
“standard detonator shell.” Nor does the Declaration address the
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disclosure in Adams of igniting reactive materials such as
explosives in mines. Accordingly, the Declaration has been given
little weight.
We additionally note that the examiner has relied upon five
additional documents obtained from the Internet, along with a
dictionary definition (answer, pages 3, 4 and 9-11) to support
the examiner’s interpretation of the claim language. Appellants
could have filed a reply brief to rebut the examiner’s assertions
but have not done so. However, because the LemurZone article is
more relevant to the additional documents relied upon by the
examiner, we find them to be cumulative to Adams.
From all of the above, we find that Adams anticipates the
language of claim 1, for the reasons advanced by the examiner, as
amplified by our comments. The rejection of claim 1 under
35 U.S.C. § 102(b) is affirmed.
We turn next to independent claim 12. As claim 12 was
argued together with claim 1, we affirm the rejection of claim 12
for the same reasons.
We turn next to claims 3-5. As these claims have been
argued as a group by appellant, we select claim 3 as
representative of the group. Turning to claim 3, the claim
requires that the igniter includes an ignition element and that
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the electronic circuitry comprises a continuity check module.
Appellants’ position (answer, page 10) is that Adams does not
inherently disclose the continuity check module, as asserted by
the examiner. The examiner responds (answer, page 16) that
although Adams does not specifically disclose a continuity check
module, Adams must be disclosing a continuity check module within
the diagnostic means because if current does not go through the
bridgewire, then the continuity must be bad. The examiner
additionally argues (answer, page 17) to the effect that it is
well known in the art to use current to verify continuity and
(answer, page 16) that Adams does disclose a diagnostic current.

From our review of Adams, we find that the reference
discloses (col. 4, lines 14-16) that “another resistor 60 sets
up a diagnostic current for a controller 59, which is located
on the opposite side of the circuit board." Adams additionally
discloses (col. 5, lines 24-32) that “the controller has
diagnostic means for comparing igniter controller integrity data,
energy storage capacity data, and firing loop (heating means
activation circuitry) integrity data to predetermined limits and
generating fault warning messages and integrity status messages
to the ECU.” From the disclosure of what items the diagnostic
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means checks, we find no disclosure of a continuity check.
Although the examiner is correct that resistor 60 sets up a
diagnostic current for controller 59, which performs the
diagnostic checks, we find no evidence that Adams necessarily
includes a continuity check. Inherency cannot be established by
possibilities or probabilities, but must necessarily flow from
the operation of the device. Because the examiner has not
established that Adams necessarily includes a continuity check
module, we find that the examiner has failed to establish a prima
facie case of anticipation of claim 3. Accordingly, the
rejection of claims 3-5 under 35 U.S.C. § 102(b) is reversed.
We turn next to claims 7 and 15. Because these claims have
been argued together by appellants, we select claim 7 as
representative of the group. Turning to claim 7, the claim
recites that the circuitry verifies that the firing capacitor
has a capacitance above a first value and below a second value.
The examiner’s position (answer, page 5) is that this
feature is inherent in Adams. Appellants assert (brief, page 12)
that there is no clear express disclosure of a capacitance check.
appellants add (id.) that to the extent that the claim language
is construed under 35 U.S.C. § 112, sixth paragraph, Adams does
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not disclose inherently or otherwise such a means for effecting a
capacitance check or equivalent structure.
The examiner responds (answer, pages 18 and 19) that:
a. Adams clearly discloses in column 5 lines
24-32 and 58-65 that the controller has diagnostic
means for comparing energy storage capacity data to
predetermined limits and that controlling the activation
of the igniter includes storing energy on an energy
storage capacitor from a power supply by charging the
energy storage capacitor and comparing energy storage
capacity data to predetermined limits. Surely a
capacitance check must be performed because the amount
of energy a capacitor is capable of storing is directly
related to its capacitance.
b. As explained in section (b)2 above, Adams
resistor (60) sets up a diagnostic current with about
a 75K ohm resister (with a 1% variation). Adams
further discloses the approximate predetermined
value of the capacitor in column 4 lines 59-63 as
"the exemplary...energy storage device...capacitance value
of about 2.2 micro-farads.”
c. With the given capacitance value and a
diagnostic current, the diagnostic means must be
performing a capacitance check as indicated by the
phrase "energy storage capacity data" which would
have an upper and a lower limit in order to determine
its integrity and the minimum and maximum amounts of
energy that may be stored.

We agree. From the disclosure of Adams of storing energy on an
energy storage capacitor by charging the capacitor, comparing
energy storage capacity data to predetermined limits, and
coupling the energy stored on the capacitor to the heating member
device, we agree with the examiner, for the reasons set forth in
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the answer (pages 18 and 19), that Adams discloses verifying that
the firing capacitor has a capacitance above a first value and
below a second value. From all of the above, we are not
convinced of any error on the part of the examiner and find that
Adams anticipates claim 7. The rejection of claim 7 under 35
U.S.C. § 102(b) is affirmed. As claim 15 falls with claim 7, the
rejection of claim 15 under 35 U.S.C. § 102(b) is affirmed.
Claims 10, 11, 13 and 14 have not been separately argued by
appellants that therefore fall with claims 7 and 12, from which
they depend. The rejection of claims 10, 11, 13 and 14 under
35 U.S.C. § 10(b) is affirmed.

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CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 7 and 10-15 under 35 U.S.C. § 102 is affirmed. The decision
of the examiner to reject claims 3-5 under 35 U.S.C. § 102(b) is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

Thomas J. Brindisi, Esq.
Suite B 20 28th Place
Venice, CA 90291

SL/jrg

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