Ex Parte Mayer

Patent Trial and Appeal Board

Oct 22, 2012

12543580 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM N. MAYER
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Appeal 2012-008458
Application 12/543,580
Patent 7,257,963 B2
Technology Center 3700
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Before NEAL E. ABRAMS, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William N. Mayer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 19-36 in reissue application
12/543,580, filed August 19, 2009. The reissue application seeks to reissue
U.S. Patent 7,257,963 B2 (‘963 patent), issued August 21, 2007, based on
application 10/440,859. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-008458
Application 12/543,580
Patent 7,257,963 B2

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THE INVENTION
Appellant’s claimed invention pertains to a temperature controlled
container, such as a shipping container. ‘963 patent, col. 1, ll. 38-52. Claim
19, reproduced below, is representative of the subject matter on appeal.
19. An apparatus defining a retention chamber
and having sequential layers of (i) an inner phase
change material having a melting point, (ii) an
outer phase change material having a melting point
which is different from the melting point of the
inner phase change material, and (iii) a layer of
thermal insulation.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 19, 21, 23, 25, 27, 29, 31, 33, and 35 are rejected under
35 U.S.C. § 251 as being an improper recapture of broadened claimed
subject matter surrendered in the application for the patent upon which the
present reissue is based1;
2. Claims 19, 21, 23, 25, 27, 29, 31, 33, and 35 are rejected under
35 U.S.C. § 251 as being based upon a defective reissue declaration;
3. Claims 31 and 32 are rejected under 35 U.S.C. § 112, second
paragraph2, as being indefinite; and

1 The rejections of claims 20, 22, 24, 26, 28, 30, 32, 34, and 36 under 35
U.S.C. § 251 have been withdrawn. Ans. 4.
2 The Examiner’s Ground of Rejection refers to and quotes from the first
paragraph of § 112. Ans. 7. However, the ground is articulated as one based
upon indefiniteness (id. at 7-8; see also id. at 14) which falls under the
second paragraph of § 112. Appellant recognizes that the rejection is based
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Patent 7,257,963 B2

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4. Claims 19-36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roth (US 6,761,041 B2, iss. July 13, 2004) and Der
Ovanesian (US 5,840,080, iss. Nov. 24, 1998).

OPINION
The Recapture and Defective Reissue Declaration Rejections
Appellant argues the rejected claims as a group. App. Br. 8-9. We
select claim 19 as representative, and claims 21, 23, 25, 27, 29, 31, 33, and
35 stand or fall with claim 19. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
There is no dispute that independent reissue claim 19 is broader than
the patent claims. Appellant acknowledges that reissue claim 19 lacks a
limitation requiring a thermal insulation layer between the two layers of
phase change materials, see App. Br. 8, but argues that he never relied upon
the presence of the feature as a patentable distinction over the prior art. See
App. Br. 8-9; Reply Br. 1-3. The Examiner maintains that Appellant, during
the prosecution that led to the issuance of the ‘963 patent, amended claims
or presented arguments directed to the sequential layering of the layers,
including the insulation layer. See Ans. 5-6 (citing the Amendment of
August 6, 2004, and the Appeal Brief of March 29, 2005). Thus, according
to the Examiner, the insulation layer and the “sequential layering as a
whole” relate to surrendered subject matter and their omission from the
reissue claims constitutes impermissible recapture. See id.

on indefiniteness. App. Br. 9-10. Therefore, the Examiner’s reference to the
wrong paragraph of § 112 is harmless error.
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Patent 7,257,963 B2

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We disagree with the Examiner. Reissue claim 19 retains, with the
exception of the insulation layer between the two phase change material
layers, the sequential layering aspect of issued patent claim 1. Therefore, we
are not persuaded that “sequential layering as a whole” constitutes
impermissibly broadened subject matter. As to the insulation layer itself, the
Examiner has not adequately explained how Appellant surrendered that
feature by amendment. See Ans. 5-6. As to the possible surrender by
argument, we have reviewed the Appellant’s arguments relied upon by the
Examiner – those in the Amendment and the Appeal Brief – but are not
persuaded that Appellant presented arguments concerning the insulation
layer that rise to the level of surrendering a claimed invention lacking that
feature.
However, the Examiner also points to another omitted feature as
constituting improper recapture of surrendered subject matter. Ans. 13-14.
Issued claim 1 of the ‘963 patent recites “wherein the retention chamber is
fully encompassed by the inner phase change material.” This limitation is
not included in reissue claim 19, and the Examiner persuasively explains
how this represents improper recapture of subject matter surrendered by
amendment. Id. Appellant does not address the Examiner’s findings or
conclusion in this regard. Cf. App. Br. 8-9 (Appellant addressing only the
elimination of the limitation of a thermal insulating layer between the layers
of phase change material); Reply Br. 1-3 (Appellant focusing arguments on
the eliminated insulation layer). Rather, Appellant addresses the elimination
of the insulation layer by reference to an argument made during the
prosecution of the parent application, and reiterates that the invention’s
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ability to control the payload retention chamber temperature exclusively by
the temperature of the inner phase change material is “achieved because only
the inner phase change material is in direct contact with the payload
retention chamber.” Reply Br. 2 (responding to the Examiner’s position
regarding an argument made in the Appeal Brief dated Mar. 29, 2005, at 4-
5). The essence of that referenced argument made during the prior
prosecution is that the exclusive control by the inner phase change material
is due to the then-claimed arrangement where the retention chamber is fully
encompassed by the inner phase change material. See App. Br. dated Mar.
29, 2005, filed in Appeal No. 10/440,859, at 4-5. As such, we see no error
in the Examiner’s determination that the “fully encompassed” feature relates
to surrendered subject matter. See Ans. 13-14. As noted by the Examiner,
id., this “fully encompassed” feature has been entirely omitted from reissue
claim 19.
In light of the above, we affirm the Examiner’s rejection of claims 19,
21, 23, 25, 27, 29, 31, 33, and 35 under § 251 for improper recapture of
surrendered subject matter.
The Examiner also rejected those same claims under § 251 as being
based on a defective reissue declaration. Ans. 7. The underlying basis of
the defective declaration rejection is, effectively, the same as that for the
recapture rejection – that the narrow scope of the issued patent claims was
not an error upon which a reissue can be based. Id. at 7, 14. Appellant does
not offer separate arguments directed to this rejection but relies on the
arguments made for the recapture rejection. App. Br. 9. As such, we affirm
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also the Examiner’s rejection of claims 19, 21, 23, 25, 27, 29, 31, 33, and 35
under § 251 as being based upon a defective reissue declaration.
The Indefiniteness Rejection
Claims 31 and 32 call for the difference between the melting points of
the two phase change materials to be “several degrees Celsius.” The
Examiner concluded that these claims are indefinite in that the boundaries of
the claims are unclear due to this quoted phrase, particularly with regard to
the upper limit of the temperature difference. Ans. 7-8, 14.
Appellant contends that the term “several” means more than two (2)
but “fewer than many,” and therefore is a term of degree. App. Br. 9-10.
(citing WEBSTER’S AMERICAN DICTIONARY – COLLEGE EDITION, 2000). As
an initial matter, we agree with the Examiner that construing the upper
boundary as “fewer than many” is not helpful in ascertaining whether the
scope of each of the claims is definite. See Ans. 14. Nonetheless, the
pertinent issue raised by Appellant’s arguments is whether the Specification
discloses to one of ordinary skill in the art adequate standards for
determining the upper boundary of the scope the claim term of degree
“several.” See App. Br. 9-10. We agree with the Examiner’s finding that
the Specification does not provide such a standard. Ans. 7.
Appellant points to the disclosure of an embodiment where the
melting point difference is 4° C, and argues that this constitutes a standard
for measuring the degree of flexibility provided by the term “several.” App.
Br. 9-10 (citing Spec., col. 5, ll. 30-34). We do not find Appellant’s
argument persuasive. The disclosed embodiment is merely one example, not
a standard for evaluating whether a given melting point difference has a
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magnitude of “several degrees Celsius.” We affirm the Examiner’s rejection
of claims 31 and 32 as being indefinite.
The Obviousness Rejection
Appellant argues the rejected claims as a group. App. Br. 10-13. We
select claim 19 as representative, and claims 20-36 stand or fall with claim
19.
The Examiner found that Roth discloses Appellant’s claimed
apparatus, including layers of inner and outer phase change materials and
insulation, except that Roth does not disclose that the two phase change
materials have different melting points. Ans. 8-9. The Examiner further
found that Der Ovanesian teaches: a heat transfer device with two layers of
high thermal capacity phase changing materials; that the two materials may
be different; and that one material may act as a partial insulator prolonging
the cooling effect while maintaining a relatively uniform surface
temperature. Ans. 9. The Examiner reasons that it would have been obvious
to modify Roth’s phase change materials to have different melting points “in
order to prolong the cooling or heating effect while maintaining a relatively
uniform surface temperature for a more even heat exchange in view of the
teaching by Der Ovanesian.” Ans. 9.
Appellant does not dispute the Examiner’s findings underlying the
conclusion of obviousness. See App. Br. 10-12. Rather, Appellant asserts
that neither reference provides a motivation to combine the references and
that one of ordinary skill in the art would not have applied the teaching of
Der Ovanesian to Roth. Id. at 12-13. We do not find Appellant’s arguments
persuasive for the reasons set forth by the Examiner in the response to
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argument section of the Answer. Ans. 14-17. We determine that the
Examiner’s conclusion of obviousness is supported by adequate articulated
reasoning with rational underpinning.
The rejection of claims 19-36 as being unpatentable over Roth and
Der Ovanesian is affirmed.

DECISION
The decision of the Examiner to reject claims 19-36 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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