Ex Parte Mayer

Board of Patent Appeals and Interferences

Oct 30, 2007

10278662 (B.P.A.I. Oct. 30, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM N. MAYER
____________

Appeal 2007-3165
Application 10/278,662
Technology Center 3700
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Decided: October 30, 2007
____________

Before CHUNG K. PAK, PETER F. KRATZ, and JEFFREY T. SMITH.
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 10, 14, and 21 through 23. Claims 11
through 13, 15 through 18, and 24, the other claims pending in the above-
identified application, were objected to as being dependent upon a rejected
base claim, but were indicated to be allowable if rewritten in independent
form including all of the limitations of the base claim and any intervening
claims (Final Office Action 3). We have jurisdiction pursuant to 35 U.S.C.
§ 6.
Appeal 2007-3165
Application 10/278,662

I. STATEMENT OF THE CASE
The subject matter on appeal is directed to a shipping container for
temperature-sensitive goods (Specification 4). This appealed subject matter
is somewhat similar to those in the Appellant’s related Applications
10/411,847 filed April 23, 2003 (Appeal No. 2007-4116) and 10/440,859
filed May 19, 2003 (Appeal No. 2007-0403). Details of the appealed subject
matter are recited in representative claims 10 and 21 reproduced below:
10. An apparatus for shipping an article under controlled temperature
conditions, comprising:

a. a first volume sized for containment of said article, and a first
enclosure surrounding said first volume; said first enclosure having a
double-walled construction with a second volume sealed between said
double walls;

b. a phase change material at least partially filling said second
volume;

c. at least one relief vent into said second volume through one of said
double walls, said relief vent having the characteristic of equalizing the air
pressure between the second volume and the exterior of said enclosure, and
the further characteristic of being impervious to the passage of said phase
change material; and

d. a plurality of insulating walls surrounding said first enclosure, at
least one of said plurality of insulating walls being removable to provide
access to the interior of said first enclosure.

21. A container defining a retention chamber for shipping
articles contained within the retention chamber under controlled
temperature conditions, comprising:

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a. an outer layer of an insulating material having a first uniform
thickness except at any corners or edges wherein the thickness of the
outer layer is at least as great as the first uniform thickness, and
completely surrounding the retention chamber, and

b. an inner layer of a phase change material having a second
uniform thickness except at any overlapping corners or edges wherein
the thickness of the inner layer is at least as great as the second
uniform thickness, and completely surrounding the retention chamber.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references (Answer 2):
Bruce 5,050,387 Sep. 24, 1991
Gano 6,502,417 B2 Jan. 7, 2003
Wessling 6,718,776 B2 Apr. 13, 2004

The Examiner has rejected the claims on appeal as follows:
1) Claims 10 and 14 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Bruce and Wessling (Answer 3);
2) Claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Bruce and Gano (Answer 4); and
3) Claim 23 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Bruce, Gano, and Wessling (id).
The Appellant appeals from the Examiner’s decision rejecting claims
10, 14, and 21 through 23 under 35 U.S.C. § 103.

II. ISSUES
1. Would a person having ordinary skill in the art have been led to
provide Wessling’s pressure relief vent in Bruce’s compartment
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containing a phase change material (cooling medium) to relieve
pressure within the meaning of 35 U.S.C. § 103?
2. Would a person having ordinary skill in the art have been led to
design Bruce’s inner layer of a phase change material (cooling
medium) to have workable or optimum thicknesses, such as a
desired uniform thickness, to maintain an optimum temperature for
a given shipping article or foodstuff within the meaning of 35
U.S.C. § 103?

III. RELEVANT FACTUAL FINDINGS
1. Bruce discloses a container for storing and transporting foodstuffs
comprising a space 6 adopted to receive the foodstuffs, a double-walled
construction having a compartment 4 surrounding the space 6, a layer of
insulation (8 and/or 2) surrounding the outer wall of the double-walled
construction, including a removable double-walled construction lid 5 (col.2,
ll. 10-49 and Figures 1 and 2).
2. Bruce discloses that the compartment 4 is at least partially filled with
water with or without freezing-point additives (a phase change material)
(col. 2, ll. 16-26).
3. Bruce discloses that the compartment 4 suffers from pressure build-up
which can be minimized by forming a large number of cavities within the
compartment 4 (col. 2, ll. 40-47).
4. Bruce discloses that its container is designed to maintain and hold
foodstuffs at a desired fixed temperature (col. 1, ll. 39-68).
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5. Bruce, by virtue of describing the insulating and cooling functions of
layers of insulating and phase change materials (result effective variables),
implies that the selection of their optimum thicknesses, including the
claimed uniform thicknesses for desired uniform heat transfer, to provide
desired temperature within the interior of its shipping container is well
within the ambit of one of ordinary skill in the art.
6. Wessling discloses a passive thermal control container for
transporting and storing payloads wherein an inner enclosure for storing
payloads and a phase change material is defined by a double-walled
construction having a compartment filled with an insulation material (col. 2,
ll. 58-62, col. 6, l. 32 to col. 8, l. 24, and col. 10, l. 62 to col. 11, l. 10)
7. Wessling discloses (col. 10, l. 65 to col. 11, l. 6) that
at least one, and preferably several, pressure equalization vents
126 that vent the space between the inner and outer enclosures
to prevent a large pressure differential across the walls of the
enclosures. The vent is shown in exploded detail view in FIG.
24. The vent comprises a hole formed through the front lip 83
of the inner enclosure into the space between the enclosures, a
filter 127 of a material that is permeable to gases but
impermeable to liquid….

8. Gano illustrates an insulated food storage having both uniform and
non-uniform thickness layers of insulating and phase change materials (see
Gano, Figures 7 and 12 with its col. 1, ll. 19-36, col. 6, ll. 1-50, and col. 7, ll.
43-67).
VI. PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g., the
problem solved). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18 (1966). “[A]nalysis [of whether the subject matter of a claim is
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385,
1396 (2007), quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336-37 (Fed. Cir. 2006); see also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80 USPQ2d
1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (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.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160
USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom...”); See
also KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396 (2007) (“if a technique
has been used to improve one device, and a person of ordinary skill in the art
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would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill”); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980) (“[D]iscovery of an optimum value of a result effective variable… is
ordinarily within the skill of the art.”).

V. ANALYSES
A. REJECTION OF CLAIMS 10 AND 14 BASED ON BRUCE AND
WESSLING
The Appellant has not disputed the Examiner’s finding that Bruce
teaches the claimed shipping container, except for the claimed pressure relief
vent for its compartment 4 containing water located between a double-
walled construction. (Compare Answer 3, with Br. 4-5). Nor has the
Appellant disputed the Examiner’s finding that Wessling teaches employing
the claimed pressure relief vent for its outer enclosure containing a liquid
insulation material formed between a double-walled construction located in
the same location as the double-walled construction taught by Bruce.
(Compare Answer 3, with Br. 4-5). Rather, the Appellant contends that one
of ordinary skill in the art would not have been led to employ Wessling’s
pressure relief vent in the compartment containing water (a phase change
material) of the shipping container taught by Bruce (Br. 5).
The dispositive question is, therefore, whether a person having
ordinary skill in the art would have been led to provide Wessling’s pressure
relief vent in Bruce’s compartment containing water (a phase change
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material ) to relieve pressure within the meaning of 35 U.S.C. § 103? On
this record, we answer this question in the affirmative.
As indicated supra, Bruce teaches that its compartment containing
water has the drawbacks of pressure build-up. Wessling teaches that its
pressure relief vent is capable of relieving pressure, without allowing liquid
(water) to escape from its compartment. Wessling teaches employing its
pressure relief vent in the context of a temperature-control shipping
container.
Given that the compartments of both Wessling and Bruce are subject
to a problem associated with pressure build-up, we concur with the
Examiner that one of ordinary skill in the art would have been led to employ,
inter alia, Wessling’s pressure relief vent in the water-containing
compartment of the shipping container taught by Bruce, with a reasonable
expectation of successfully solving the pressure build up problem mentioned
in Bruce. DyStar, 464 F.3d at 1361, 80 USPQ2d at 1645 (“The motivation
need not be found in the references sought to be combined, but may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself.”); KSR, 127 S. Ct. at 1740, 82
USPQ2d at 1396 (2007) (“if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill”).
Accordingly, for the reasons set forth in the Answer and above, we
affirm the Examiner’s decision rejecting claims 10 and 14 under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of Bruce and Wessling.
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B. REJECTION OF CLAIMS 21 AND 22 BASED ON BRUCE AND GANO
The Appellant has not disputed the Examiner’s finding that Bruce
teaches the claimed shipping container having an outer layer of an insulation
material and an inner layer of a phase change material (water). (Compare
Answer 4 with Br. 6-8.) Nor has the Appellant disputed the Examiner’s
finding that Bruce illustrates an outer layer of an insulating material having a
uniform thickness, but do not illustrate an inner layer of a phase change
material (water) having a uniform thickness (see also Bruce, Figures 1 and
2). (Compare Answer 4, with Br. 6-8.) Rather, the Appellant contends that
there is no basis to use a uniform thickness for the inner layer of a phase
change material of the shipping container taught by Bruce (Br. 7).
The dispositive question is, therefore, whether a person having
ordinary skill in the art would have been led to design Bruce’s inner layer of
a phase change material to have workable or optimum thicknesses, such as a
desired uniform thicknesses, to maintain optimum heat transfer for a given
shipping article within the meaning of 35 U.S.C. § 103? On this record, we
answer this question in the affirmative.
As indicated supra, Bruce discloses that its container is designed to
maintain and hold foodstuffs at a desired fixed temperature. To this end,
Bruce provides layers of appropriate insulating and phase change materials
to control the level of heat transfer from the outside environment to the
interior environment and to cool the interior environment. Although Bruce
does not specify the thicknesses of its layers of the insulating and phase
change materials (other than illustration), it can be inferred from such
disclosure that the desired temperature can be obtained via, inter alia,
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Application 10/278,662

optimizing thicknesses for the insulation and phase change layers. As such,
we concur with the Examiner that it is well within the ambit of one of
ordinary skill in the art to provide appropriate or optimum thicknesses,
including desired uniform thicknesses for uniform heat transfer, for layers of
insulating and phase change materials for a given foodstuff or article, to
maintain desired temperature within the interior compartment of the
shipping container of the type described in Bruce. Boesch, 617 F.2d at 276,
205 USPQ at 219 (“[D]iscovery of an optimum value of a result effective
variable… is ordinarily within the skill of the art.”); Bozek, 416 F.2d at
1390, 163 USPQ at 549)(“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.’”). This is especially true in this instance since
Gano illustrates in Figures 7 and 12 an insulated food storage having an
interior chamber surrounded by layers of insulating and phase change
materials having both uniform and non-uniform thicknesses.
Accordingly, for the reasons set forth in the Answer and above, we
affirm the Examiner’s decision rejecting claims 21 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Bruce and Gano.
C. REJECTION OF CLAIM 23 BASED ON BRUCE, GANO, AND
WESSLING.
The Appellant has repeated the same arguments discussed above (Br.
8). Accordingly, for the same reasons set forth in the Answer and above, we
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affirm the Examiner’s decision rejecting claim 23 under 35 U.S.C. § 103(a)
as unpatentable over Bruce, Ganno, and Wessling.

VII. ORDER
The decision of the Examiner is affirmed.

VIII. TIME PERIOD
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

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