Ex Parte Quincy et alDownload PDFPatent Trial and Appeal BoardMay 15, 201511303007 (P.T.A.B. May. 15, 2015) Copy Citation 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. 11/303,007 12/15/2005 Roger B. Quincy III KCX-1121 (21911) 6609 22827 7590 05/15/2015 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER MATZEK, MATTHEW D ART UNIT PAPER NUMBER 1789 MAIL DATE DELIVERY MODE 05/15/2015 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 ROGER B. QUINCY III and EUGENIO G. VARONA ____________ Appeal 2013-004940 Application 11/303,007 1 Technology Center 1700 ____________ Before CHUNG K. PAK, ROMULO H. DELMENDO, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 3, 4, 6–13, 16–20, 35–38, 42–49, 51, and 52. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The sole independent claim 1 is illustrative (emphasis added): 1. A thermal device comprising: a first thermal substrate that comprises an exothermic 1 According to Appellants, the real party in interest is Kimberly-Clark Worldwide, Inc. App. Br. 1. Appeal 2013-004940 Application 11/303,007 2 coating on at least one surface thereof, the exothermic coating containing in a single layer an oxidizable metal in an amount of from about 40 wt. % to about 95 wt. %, a carbon component in an amount from about 0.01 wt. % to about 20 wt. %, a binder in an amount from about 0.01 wt. % to about 20 wt. %, and an electrolytic salt in an amount from about 0.01 wt. % to about 10 wt. %, wherein the binder includes a polymer latex that has a glass transition temperature of about 30°C or less, wherein exposure of the exothermic coating to oxygen and moisture activates an exothermic reaction to generate heat; a moisture-holding layer that contains an absorbent fibrous web including cellulosic fibers; and an aqueous solution contained within the moisture- holding layer that is capable of supplying moisture to the exothermic coating, wherein the aqueous solution comprises one or more solutes, and wherein the solutes comprise a metal salt. The following rejections have been maintained by the Examiner: a. Claims 1, 6, 12, 13, 16–18, 38, 43–49, 51, and 52 are rejected under 35 U.S.C. § 102(b) as being anticipated by Usui 128 (US 6,436,128 B1 issued Aug. 20, 2002); b. Claims 3, 7–11, 19, 20, and 42 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Usui 128 in view of Usui 378 (US 5,879,378 issued Mar. 9, 1999); c. Claims 4 and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Usui 128, in view of Usui 624 (US 2002/0121624 A1 published Sept. 5, 2002); and d. Claims 36 and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Usui 128 with Kumamoto (WO 2004/098470 A1 published Nov. 18, 2004). Appeal 2013-004940 Application 11/303,007 3 Appellants focus the arguments on claim 1 (App. Br. 7-10), and also separately argue dependent claims 7 and 8 (App. Br. 10-12). ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner’s finding that the claimed subject matter of representative claim 1 is anticipated within the meaning of § 102 in view of the applied prior art of Usui 128. Accordingly, we will sustain the Examiner’s § 102 rejection for essentially those reasons expressed in the Answer, including the Examiner’s Response to Argument section, and we add the following primarily for emphasis. “[T]he PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. Appellants do not dispute the Examiner’s findings that Usui 128 includes a thermal substrate comprising an exothermic coating as recited in claim 1 (generally Briefs). There is also no dispute that Usui 128’s water- absorptive layer made of an absorbent fibrous web including cellulosic fibers includes water and metal solutes absorbed from its metal halide and water-containing exothermic gel (id.). Rather, the only issue with respect to the § 102 rejection is whether Usui 128’s water-absorptive layer which includes water and metal halides absorbed from its water-containing Appeal 2013-004940 Application 11/303,007 4 exothermic gel constitutes “an aqueous solution” and “metal salt solutes” present in the moisture-holding layer recited in claim 1 (App. Br. 7–9)? Appellants argue that since there are no aqueous solution and metal salt solutes separate from the absorbed moisture and absorbed metal salt solutes, Usui 128 does not encompass the claimed “aqueous solution” and “metal salt solutes” and further that there is no explanation how this layer supplies moisture to the exothermic composition (id.). These arguments are not persuasive of reversible error in the Examiner’s § 102 rejection. The Examiner explains that the exothermic composition of Usui 128 provides for a solution of metal chloride in water as part of its exothermic composition and that some of this metal chloride solution, according to Usai, is absorbed by its moisture absorbing substrate (Ans. 3, 4). Thus, notwithstanding Appellants’ arguments to the contrary, Usai describes a moisture absorbing substrate that contains water and metal salt solutes as required by claim 1. As pointed out by the Examiner, the claim language does not limit the claimed aqueous solution and metal salt solutes such that they are different from water and metal halides present in Usui 128’s water- absorptive layer as a result of absorbing the metal halide solution of Usui’s exothermic composition (id. at 4). Furthermore, the Examiner determines that since Usui 128’s moisture holding layer is in contact with the exothermic material and is made of the same material , it is reasonable to conclude that this moisture holding layer is also capable of supplying moisture to support the exothermic reaction in Usui 128 (id. at 3, 5). Notably, Appellants have not directed our attention to any persuasive reasoning or credible evidence to establish that the Examiner’s interpretation is unreasonable, nor to any portion of the Specification that provides the Appeal 2013-004940 Application 11/303,007 5 definition for “aqueous solution” or “metal salt” to exclude the absorbed water and/or metal solutes contained in the moisture holding layer of Usui 128. Appellants have also not provided any persuasive reasoning or credible evidence to refute the Examiner’s reasonable determination that Usui 128’s moisture holding layer having absorbed moisture and metal salt solute would be capable of functioning to supply moisture to the exothermic reaction. 2 Thus, a preponderance of the evidence supports the Examiner’s position with respect to claim 1 (Ans. generally). Appellants do not separately argue any of the other claims included in the § 102 rejection. Accordingly, we affirm the Examiner’s anticipation rejection, rejection a. On the other hand, a preponderance of the evidence supports Appellants’ position that the Examiner has not adequately established factual findings to support the conclusion that the specific amounts of metal solute required in dependent claims 7 and 8 would have been prima facie obvious from the combined teachings of Usui 128 and Usui 378 (App. Br. 12). Appellants have not presented any additional arguments specific to the § 103 rejection of claims 3, 9–11, 19, 20, and 42 over Usui 128 and Usui 378; thus we summarily affirm rejection b with respect to these claims. Likewise, Appellants have not presented any additional arguments specific to the remaining § 103 rejections, that is, rejections listed as c and d above. 2 It is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appeal 2013-004940 Application 11/303,007 6 Thus, we also summarily affirm rejections c and d. In conclusion, the Examiner’s §§ 102 and 103 rejections are affirmed with respect to all of the claims on appeal except for dependent claims 7 and 8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED-IN-PART bar Copy with citationCopy as parenthetical citation