Ex Parte Quincy et alDownload PDFPatent Trial and Appeal BoardOct 31, 201411639867 (P.T.A.B. Oct. 31, 2014) 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. 11/639,867 12/15/2006 Roger B. Quincy III KCX-1212 (64103007US01) 5468 22827 7590 11/03/2014 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER ABDUR RAHIM, AZIM ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 11/03/2014 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 ROGER B. QUINCY III and ROBERT D. WRIGHT ____________ Appeal 2012-010640 Application 11/639,867 Technology Center 3700 ____________ Before JOHN C. KERINS, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Roger B. Quincy III and Robert D. Wright (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 17–24 and 26–29. Claims 1–16, 25, and 30 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-010640 Application 11/639,867 2 THE INVENTION Appellants’ invention is directed to a cooling device. Independent claim 17, reproduced below with emphasis added, is illustrative: 17. A cooling device, comprising: a shell member having an outer face and an inner face disposed against a surface to be cooled in use of said device, said shell member defining an interior space; a cooling substrate combination disposed within said interior space, said cooling substrate comprising a first absorbent web of porous material having a first cooling composition applied thereto in a dried substantially film-like network distributed throughout said web, said cooling composition comprising a cooling agent that is activated by contact with an aqueous liquid and a hydrophobic agent present in an effective amount to inhibit wetting of said web and prolong a cooling reaction generated when said substrate is contacted with the aqueous liquid; an aqueous liquid source disposed within said interior space and separated from said first cooling substrate by a barrier member; and said device activated by manual manipulation to breach said barrier member causing liquid from said liquid source to move within said interior space to contact and activate said first cooling composition whereby a cooling reaction is generated. THE REJECTIONS The Examiner has rejected: (i) claims 17–19, 24, 26, 28, and 29 under 35 U.S.C. § 102(b) as being anticipated by Joseph (US 6,484,514 B1, issued Nov. 26, 2002); Appeal 2012-010640 Application 11/639,867 3 (ii) claims 20–23 under 35 U.S.C. § 103(a) as being unpatentable over Joseph; and (iii) claim 27 under 35 U.S.C. § 103(a) as being unpatentable over Joseph in view of Stone (US 6,701,720 B1, issued Mar. 9, 2004). ANALYSIS Claims 17–19, 24, 26, 28, and 29--Anticipation--Joseph The Examiner finds that Joseph discloses a cooling device having a cooling substrate combination including a first absorbent web of porous material, porous sheet 254, which has a first cooling composition, solid cooling component 244, applied thereto in a dried, substantially film-like network distributed throughout the absorbent web, as called for in independent claim 17. Ans. 5. Appellants traverse the rejection on the basis that solid cooling component 244 of Joseph is neither a film-like network nor is distributed throughout the absorbent web. Appeal Br. 4. The Examiner elaborates on the basic finding directed to the claim language “distributed throughout,” taking the position that, as illustrated in Figures 11 and 12 of Joseph, the solid cooling component “is shown to be distributed along porous sheet 254.” Ans. 13. The Examiner further cites to Joseph as describing that the solid cooling component 244 is “contained in a porous sheet 254.” Id. (citing Joseph, col. 8, ll. 4042). The Examiner maintains that these disclosures evidence that “solid second component 244 is distributed throughout porous sheet 254.” Id. The Examiner’s position is crystallized in the statement that “the phrase ‘contained in’ is interpreted as being ‘throughout.’” Id. at 14. Appeal 2012-010640 Application 11/639,867 4 The Examiner’s interpretation is unreasonably broad, in view of how the term “distributed throughout” would be understood by persons of ordinary skill in the art. Appellants point to passages from the Specification evidencing that the term implies that the cooling composition “impregnates and permeates throughout the porous material,” and that the “film-like network is generally continuous across the surface of the web 12, but is ‘rough’ or contoured in that it also penetrates into the spaces between the fibers and ‘bridges’ the fibers.” Appeal Br. 5 (quoting Spec., p. 3, ll. 11– 15); Appeal Br. 10 (quoting Spec., p. 16, ll. 2–7). In contrast, Figures 11 and 12 of Joseph evidence that the solid cooling component is held (contained) within porous, liquid permeable compartments that are noted as preferably having pore sizes smaller than the particles of the solid cooling component. Joseph, col. 8, ll. 2–3, ll. 10–11; Figs. 11, 12. This would not be regarded by the person of ordinary skill in the art as a solid cooling component distributed throughout the porous web. In addition, although the Examiner states that the solid cooling component is in the form of a substantially film-like network, no explanation is provided as to how the configuration illustrated in Figures 11 and 12 or any other configuration illustrated in Joseph would be regarded by persons of ordinary skill in the art as a film-like network. This is not self-evident from viewing the drawings, and the Examiner has pointed to nothing in the text of Joseph in support of this position. All the Examiner does is criticize claim 17 as “not positively claim[ing] the shape of the film like network and how the film-like network is distributed throughout the web.” Ans. 1415. In doing so, the Examiner has effectively, and improperly, disregarded the claim limitation. Appeal 2012-010640 Application 11/639,867 5 Accordingly, we do not sustain the rejection of claim 17 as being anticipated by Joseph. Claims 18, 19, 24, 26, 28, and 29 depend from claim 17, and the rejection of those claims as being anticipated by Joseph is also not sustained. Claims 20–23--Obviousness--Joseph Claims 20–23 depend directly or indirectly from claim 17. The Examiner’s position relative to the alleged obviousness of the limitations presented in claims 20–23 does not remedy the deficiencies noted above with respect to the Joseph patent. The rejection of claims 20–23 is thus not sustained for the reasons identified above. Claim 27--Obviousness--Joseph/Stone Claim 27 depends from claim 17. The Examiner does not rely on Stone to remedy the above-noted deficiencies noted above with respect to the Joseph patent. The rejection of claim 27 is thus not sustained for the reasons identified above. DECISION The rejection of claims 17–19, 24, 26, 28, and 29 as being anticipated by Joseph is reversed. The rejection of claims 20–23 as being unpatentable over Joseph is reversed. The rejection of claim 27 as being unpatentable over Joseph in view of Stone is reversed. Appeal 2012-010640 Application 11/639,867 6 REVERSED llw Copy with citationCopy as parenthetical citation