Ex Parte Hordos et al

Patent Trial and Appeal Board

Feb 13, 2014

11789756 (P.T.A.B. Feb. 13, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/789,756 04/24/2007 Deborah L. Hordos 5702-01155 9586
7590 02/14/2014
L.C. Begin & Associates, PLLC
PMB 403
510 Highland Avenue
Milford, MI 48381
EXAMINER
FELTON, AILEEN BAKER
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
02/14/2014 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 DEBORAH L. HORDOS and SEAN P. BURNS
____________
Appeal 2013-002407
Application 11/789,756
Technology Center 1700
____________

Before CHARLES F. WARREN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DECISION ON APPEAL

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Application 11/789,756

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 4, 5, and 10-16. An oral hearing was conducted on
February 6, 2014. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Claim 12 is representative of the claimed invention:
12. A composition comprising:
DL-tartaric acid as a first fuel;
succinic acid as a second fuel; and
potassium chlorate,
wherein said composition is formed by homogeneously dry mixing
said first and second fuel with potassium chlorate.
App. Br. 30 (Claims App’x).
Independent claims 1 and 16 are likewise drawn to a composition
having at least three components (two fuels and a chlorate oxidizer) similar
to those of claim 12, formed by homogeneously dry mixing (see App. Br.
29, 31 (Claims Appd’x)).
The Examiner maintains, and Appellants appeal, the rejection of
claims 1, 4, 5, and 10-16 under 35 U.S.C. § 103(a) as obvious over the
combined prior art of Barnes 9051 and Barnes 7402 (Ans. 4).
Appellants argue the independent claims as a group in the brief (App.
Br. 13-18) and do not separately argue any of the dependent claims, as
Appellants only rely upon the arguments made for the independent claim
grouping (App. Br. 18-27).

1 US 5,567,905 issued Oct. 22, 1996.
2 US 5,670,740 issued Sep. 23, 1997.

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ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ independent claims 1, 12 and 16 is unpatentable over the applied
prior art. We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Answer.
We add the following for emphasis.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” Id. at 417.
In an obviousness analysis, it is appropriate to consider interrelated
teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed. Id. at 417-18.
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
Appeal 2013-002407
Application 11/789,756

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reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d
1260, 1264-65 (Fed. Cir. 1992).
Appellants have not adduced any persuasive technical reasoning or
evidence in response to the Examiner’s reasonable determination that the use
of two known gas generant fuels with a known oxidizer would have been
prima facie obvious, especially as both Barnes references teach multiple
fuels and oxidizers may be present in a gas generant composition (see, e.g.,
Ans. 4, 5; see generally App. Br., Reply Br.).
Appellants contend that since Barnes 905 teaches the use of a wet-
mixed slurry process and Barnes 740 teaches the use of heterogeneous dry
mix, there is no reason to combine the low soluble succinic fuel component
of Barnes 740 with the wet slurry processing of Barnes 905 (App. Br. 15-
17). This is not persuasive, since it fails to consider the prior art as a whole.
One of ordinary skill in the art would have been well aware of the alternative
options of wet slurry processing and dry mix processing as discussed in both
Barnes references (e.g., Barnes 905, col. 1, ll. 49-50 (“When feasible . . .
aqueous processing has advantages.” (emphasis added); Barnes 740 col. 1,
ll. 40-55; col. 4, ll. 63 to col. 5, l. 15). Accordingly, it would have been
within the ordinary skill in that art to have chosen an appropriate mixing
technique for the known fuel components. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR Int’l., 550 U.S.
at 421.
Appellants have also not provided any persuasive technical reasoning
or evidence that forming the gas generant mix as a homogenous dry mix as
recited in the claims results in any unobvious structural differences over the
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dry mixing of the applied prior art.3 In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985).
Unexpected Results
Appellants rely upon the Specification examples and Tables 1-4 of the
Specification to establish that it was unexpected for the claimed combination
of fuel components to achieve an auto-ignition temperature of less than or
equal to 200◦C after heat aging (App. Br. 13-15; Reply Br. 2, 3; see also
claim 1). For the following reasons, that evidence, considered with the
applied prior art, does not support a conclusion of nonobviousness of the
claimed compositions.
First, it is well established that “any superior property must be
unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (2007). It is not enough for the
Appellants to show that the results in the compared examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The Appellants’ Specification does not state that the
results would have been unexpected by one of ordinary skill in the art. The
Appellants have provided mere attorney argument to that effect, and such
arguments of counsel cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315
(CCPA 1979).

3 Indeed, as stated in the Specification, “[t]he compositions may be provided
in granulated form and dry-mixed and compacted in a known manner, or
otherwise mixed as known in the art.” (Spec. 10, last four lines of page,
emphasis added).
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Second, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants’ claims encompass a wide
range of gas generant compositions, with as little as 0.1 weight percent of a
second fuel that may or may not be succinic acid (compare claim 1 to claims
12 and 16), yet the Appellants rely upon only one inventive composition
with 23 wt.% DL-tartaric acid, 15 wt.% succinic acid, 20 wt.% potassium
chlorate and 42 wt.% potassium perchlorate in their comparison (Spec. 11,
Example 1). We find in the evidence of record no reasonable basis for
concluding that the great number of materials encompassed by the
Appellants’ claims would behave as a class in the same manner as the
particular material tested. See In re Lindner, 457 F.2d 506, 508 (CCPA
1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
Accordingly, the Examiner’s position that the Specification evidence
is not commensurate in scope with the claims and does not provide any
evidence that this result was unexpected is well founded (e.g., Ans. 6).
The Examiner properly treated the evidence of obviousness when
considered anew in light of Appellants’ evidence and argument of
unexpected benefits and reasonably determined that such evidence of
obviousness outweighs Appellants’ evidence and argument of
nonobviousness.
The decision of the Examiner 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).
AFFIRMED
kmm