Ex Parte Glenn et al

Patent Trial and Appeal Board

Mar 27, 2017

12558146 (P.T.A.B. Mar. 27, 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.
12/558,146 09/11/2009 Gregory M. Glenn 0105.08 5858
25295 7590 03/29/2017
USDA, ARS, OTT
5601 SUNNYSIDE AVE
RM 4-1159
REETSVIEIE, MD 20705-5131
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
Robin.McCormick@ars.usda.gov
Kelli. Gantt @ ars .u sda. gov
claudia.hedrick@ars.usda.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY M. GLENN, SYED HUSSAIN IMAM, and
ARTUR KLAMCZYNSKI
Appeal 2016-005279
Application 12/558,146
Technology Center 1700
Before MARKNAGUMO, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s final rejection of claims 1—13 and
15—22, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
1 In this Decision, we refer to the Final Office Action appealed from, mailed
January 15, 2015 (“Final Act.”); the Advisory Action dated March 13, 2015
(“Adv. Act.”); the Appeal Brief dated July 16, 2015 (“App. Br.”); the
Examiner’s Answer to the Appeal Brief dated April 13, 2016 (“Ans.”); and
the Reply Brief dated April 19, 2016 (“Reply Br.”).
2 Appellants identify “US Department of Agriculture, Agricultural Research
Service” as the Real Party in Interest. App. Br. 3.
Appeal 2016-005279
Application 12/558,146
For the reasons set forth below, we REVERSE.
The Claimed Invention
Appellants’ disclosure relates to a charcoal foam heating material that
ignites without the use of charcoal lighter fluid. Spec. 1,11. 4—7; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief
(App. Br. 12) (key disputed claim language in italics):
1. A solid charcoal foam heating material comprising:
a surfactant; and
a charcoal mixture,
wherein the surfactant is combined with the charcoal
mixture to form the solid foam charcoal heating material having
a solid foam porous and permeable structure that facilitates the
flow of oxygen to ignited portions of the charcoal foam heating
material so that the solid charcoal heating material does not
contain petroleum-based lighter fluid or petroleum-based
solvents.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Sterrett et al., US 4.166,749
(hereinafter “Sterrett”)
Wrigley, Jr. US 4,225,318
Bouchard et al., US 4,373,955
(hereinafter “Bouchard”)
Wheeler et al., US 4,957,555
(hereinafter “Wheeler”)
Valle et al., US 5,203,629
(hereinafter “Valle”)
Sep. 4, 1979
Sep. 30, 1980
Feb. 15, 1983
Sep. 18, 1990
Apr. 20, 1993
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Appeal 2016-005279
Application 12/558,146
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—6, 8, 9, 12, 13, 15—19, and 21 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Sterrett. Ans. 3;
Final Act. 3.
2. Claims 10, 11, and 22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Sterrett as applied to claims 1—6, 8, 9,
12, 13, and 15—19 above, and in further view of Bouchard. Ans. 5; Final
Act. 5.
3. Claims 7 and 20 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Sterrett as applied to claims 1—6, 8, 9, 12, 13, and
15—19 above, and in further view of Valle and Wheeler. Ans. 6; Final Act.
6.
OPINION
Rejection 1
The Examiner determines that Sterrett teaches or suggests a charcoal
foam heating material satisfying all of the limitations of claim 1 and that the
reference would have rendered claim 1 obvious. Ans. 3, 4 (Sterrett, col. 2,
11. 12-65; col. 3,11.13-34, col. 5,11. 65-68, col. 6,11. 1-66; col. 1,11. 49-55).
In particular, the Examiner finds that Sterrett teaches low density
cementitious compositions comprised of partially combusted bark particles
and that the combusted bark component has been used in charcoal
briquettes. Id. at 3 (citing Sterrett, col. 2,11. 12—65).
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Appeal 2016-005279
Application 12/558,146
Appellants argue that the Examiner’s rejection should be reversed
because the Examiner has failed to show that Appellants’ claimed invention
would have been obvious to one of ordinary skill in the art in view of the
Sterrett reference. App. Br. 7. Appellants contend that the Examiner has
failed to provide articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. Id. at 3. In particular,
Appellants contend that Sterrett discloses a low density, cementitious
composition for lightweight thermal insulation concretes and fireproofing
(Sterrett, Abstract, col. 1,11. 6—9) and principally argue that the Examiner
has failed to provide sufficient reasoning or an adequate technical
explanation explaining why it would have been obvious for one of ordinary
skill to arrive at Appellant’s claimed charcoal foam heating material based
on Sterrett’s disclosure of an insulating cement and fireproofing material.
App. Br. 7-10.
We agree with Appellants’ arguments in this regard. On the record
before us, we are not persuaded that the Examiner has provided an adequate
technical explanation or identified sufficient evidence to support the
determination that Sterrett teaches or suggests a “charcoal foam heating
material,” as recited in claim 1. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (requiring “reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (holding that the examiner bears the initial burden of establishing a
prima facie case of obviousness).
The Examiner does not identify evidence in the record sufficient to
support the finding that Sterrett teaches or suggests this limitation. The
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Appeal 2016-005279
Application 12/558,146
Examiner’s reliance on Sterrett’s comment at column 4 of the reference
regarding “bark particles” having been previously used in “charcoal
briquettes” (Sterrett, col. 2,11. 58—61), without more, is insufficient to satisfy
the Examiner’s burden in this regard. The mere fact that Sterrett discloses a
component that may have been previously used in charcoal briquettes does
not ipso facto establish that the component constitutes a charcoal foam
heating material, as recited in the claim.
Moreover, as Appellants note (App. Br. 8, 9), Sterrett explicitly
teaches a cementitious composition for thermal insulation concretes and
fireproofing (Sterrett, Abstract, col. 1,11. 6—9), which would seem to be at
odds with claim 1 ’s express recitation requiring that the claimed
composition be a “charcoal foam heating material,” as well as the broadest
reasonable interpretation of the term consistent with Appellant’s
Specification. See Spec. 2,11. 9-13, 4,11. 11—15, 5,11. 2—6 (describing the
charcoal foam as being “ignited,” “burned,” or a “cooking material”); claim
1 (reciting “the solid foam charcoal heating material having a solid foam
porous and permeable structure that facilitates the flow of oxygen to ignited
portions); see also In re Am. Acad. OfSci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (claims must be read in light of the specification).
The Examiner’s assertion that “fireproofing material can also be used
in heating” (Final Act. 7) is conclusory and, without more, insufficient to
sustain the Examiner’s obviousness conclusion and findings in this regard.
See In re Kahn, 441 F.3d at 988 (holding “rejections on obviousness grounds
cannot be sustained by mere conclusory statements”).
The Examiner also does not adequately explain why, based on
Sterrett’s teachings, one of ordinary skill would have arrived at the claimed
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Appeal 2016-005279
Application 12/558,146
invention. As Appellants correctly point out (App. Br. 10), although Sterrett
mentions that combusted bark particles have been used in charcoal
briquettes (Sterrett, col. 2,11. 55—61), Sterrett never describes the combusted
bark particles as “charcoal” or refers to the disclosed cementitious
composition as a “charcoal foam heating material.” Rather, Sterrett actually
distinguishes the combusted bark particles from charcoal (Sterrett, col. 4,11.
13—21) and compares the properties of combusted bark particles to the
properties of charcoal in Table 1 {id. at col. 4,1. 55—col. 5,1. 6), which
shows that the properties of charcoal are materially different from the
properties of the combusted bark particles Sterrett discloses as useful for
cementitious compositions.
We therefore cannot sustain the Examiner’s rejection of claim 1.
Because claims 1—6, 8, 9, 12, and 13 depend from claim 1 and claims 15—19
and 21 each include the same limitation as claim 1, we also cannot sustain
the Examiner’s rejections of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1—6, 8, 9,
12, 13, 15—19, and 21 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sterrett.
Rejections 2 and 3
The foregoing deficiencies in the Examiner’s findings and conclusions
regarding the Sterrett reference are not remedied by the Examiner’s findings
regarding the additional references or combinations of references cited in
support of the second and third grounds of rejection. Accordingly, we also
reverse Rejections 2 and 3.
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Appeal 2016-005279
Application 12/558,146
DECISION
The Examiner’s rejections of claims 1—13 and 15—22 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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