Ex Parte Iannicelli

Board of Patent Appeals and Interferences

Jun 17, 2011

11275591 (B.P.A.I. Jun. 17, 2011)

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.
11/275,591 01/18/2006 Joseph Iannicelli 001025.00003 1833
7590 06/17/2011
Joseph Iannicelli
3963 Darien Highway
Brunswick, GA 31525
EXAMINER
GODENSCHWAGER, PETER F
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
06/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH IANNICELLI
____________

Appeal 2010-001010
Application 11/275,591
Technology Center 1700
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/275,591

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3-13. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to compositions for controlling an
exothermic reaction between an oxidizing agent and a reducing agent and
processes for preparing the oxidizing agent. (App. Br. 1). Claim 1 is
illustrative of the subject matter on appeal and is reproduced below:
1. A composition for generating a controlled heat
release, the composition comprising a reducing agent and an
oxidizing agent, wherein the oxidizing agent comprises oxidizer
particles coated with calcium carbonate.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Collins et al. US 4,895,133 Jan. 23, 1990
Steidl et al. US 5,035,230 July 30, 1991
Sabin et al. US 5,984,953 Nov. 16, 1999
Thompson US 2002/0111601 A1 Aug. 15, 2002
STANLEY M. WALAS, CHEMICAL PROCESS EQUIPMENT: SELECTION AND
DESIGN 268 (Butterworth-Heinemann) (1990).
Gary B. Tatterson, Plump Up Your Particles, CHEMICAL PROCESSING,
December 2002,
http://www.chemicalprocessing.com/issues/2002/28.html.

Appellant, App. Br. 3-4, requests review of the following rejections
from the Examiner’s final office action:
Claims 1, 3-5, 10, and 13 stand rejected under 35 U.S.C. § 103(a) over
Steidl in view of Thompson.
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Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) over Steidl in
view of Thompson and Sabin.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) over Steidl in
view of Thompson, Sabin, and Walas.
Claim 11 stands rejected under 35 U.S.C. § 103(a) over Steidl in view
of Thompson and Collins.
Claim 12 stands rejected under 35 U.S.C. § 103(a) over Steidl in view
of Thompson and Tatterson.
OPINION1
The dispositive issue on appeal is: Did the Examiner err in
determining that Thompson would have suggested to a person of ordinary
skill in the art that oxidizer particles coated with calcium carbonate are
suitable for use as an oxidizing agent bound in a binding agent for a
disposable food heater such as described in Steidl?2
After thorough review of the respective positions provided by the
Appellant and the Examiner, we agree with Appellant that the Examiner has
identified insufficient evidence to establish that the combination of Steidl
and Thompson would have rendered obvious oxidizer particles coated with
calcium carbonate are suitable for use in a controlled heat release
composition as required by the subject matter of independent claim 1.
The Examiner found that Steidl describes a composition comprising a
fuel (reducing agent) and an oxidizing agent that are crystals (particles)

1 We will limit our discussion to independent claim 1.
2 A discussion of the Collins, Sabin, Tatterson and Walas references will be
unnecessary for disposition of the present appeal. The Examiner relied upon
these references for describing features not related to the dispositive issue.
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Application 11/275,591

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bound in a binding agent. The Examiner broadly construed the claimed
limitation requiring the oxidizing agent to be coated as encompassing
particles fully encompassed by a binder. The Examiner recognized that
Steidl did not teach oxidizer particles were coated with a lyophobic
(hydrophobic) pigment, specifically calcium carbonate. (Ans. 3). The
Examiner found that Thompson described encapsulating (coating) reactive
materials (biologically-active agents) in calcium carbonate (id.). The
Examiner also found that the teachings of Thompson were also applicable to
Steidl due to a similarity in both references as described in controlled release
of a compound. (Id. at 4). Consequently, the Examiner concluded that
Thompson would have suggested to a person of ordinary skill in the art that
oxidizer particles coated with calcium carbonate are suitable for use as an
oxidizing agent bound in a binding agent for a disposable food heater such
as described in Steidl. (Id.)
Appellant argues, and we agree, that a person of ordinary skill in the
art would not have looked to Thompson for describing an oxidizing agent
suitable for use in a disposable food heater such as described in Steidl.
(App. Br. 7-8). Appellant specifically states:
Thompson describes release systems for a very specific
purpose - controlling the release of a drug into the body over a
period of several months. Neither the compound released (a
drug) nor the environment into which it is released (a living
system) is even remotely related to controlling the release of
oxidizing agents for reaction with a fuel in the environment of a
chemical heater, as in Steidl.
(Id. at 9).

The Federal Circuit has delineated two indicia for indicating whether
prior art references are analogous: (1) whether the art is from the same field
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of endeavor, regardless of the problem addressed, and (2) if the art is not
within the same field of endeavor, whether it is reasonably pertinent to the
particular problem to be solved.3
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed.Cir.1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.” KSR Int’l. Co. v. Teleflex, Inc., 550
U.S. 398, 402 (2007).
In the present case the Examiner has not adequately explained why
the teaching of Thompson would have commended itself to the attention of a
person of ordinary skill in the art concerning the oxidizing agents suitable
for disposable food heaters. The purpose of Steidl, like the claimed
invention, is a composition for generating a controlled heat release. An
inventor considering the problem of looking for a suitable oxidizing agent
for generating a controlled heat release would not have been motivated to
consider a reference such as Thompson which describes implantable medical
devices for controllably releasing a biologically-active agent such as a drug
into a body when making his invention. See Clay, 966 F.2d at 659 (“If [a
reference] is directed to a different purpose, the inventor would accordingly
have had less motivation or occasion to consider it.”).
For the forgoing reasons, the Examiner’s rejections are reversed.

3 There is no dispute that Thompson is from a different field of endeavor
than the invention of Steidl, and the claimed invention.
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ORDER
The rejections of claims 1 and 3-13 under 35 USC § 103(a) as
unpatentable are reversed.
REVERSED

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