Ex Parte Wold

Patent Trial and Appeal Board

Jun 17, 2016

12200503 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/200,503 08/28/2008
72535 7590 06/17/2016
MCCARTER & ENGLISH, LLP STAMFORD
CANTERBURY GREEN
201 BROAD STREET, 9TH FLOOR
STAMFORD, CT 06901
FIRST NAMED INVENTOR
Claude Hayes Wold
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
97661.00026 7813
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
MAILDATE DELIVERY MODE
06/17/2016 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 CLAUDE HA YES WOLD
Appeal2014-009681
Application 12/200,503
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 26-31, 33-36, 38--42, 44 and 46--49. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appellant's invention is directed to a method and system for
providing thermal protection to a heat sensitive device using an endotherm
system. App. Br. 4. Claims 26 and 40 are illustrative of the subject matter
on appeal and is reproduced below:
Appeal2014-009681
Application 12/200,503
26. A method for providing thermal protection to a heat
sensitive device comprising the steps of:
(a) providing an amount of a carbohydrate endotherm
sufficient to effect the required heat absorption, wherein the
carbohydrate endotherm is selected from the group consisting
of at least one of a sugar and a starch;
(b) providing an oxygen scavenger in proximity to the
carbohydrate;
( c) positioning the carbohydrate endotherm and the
oxygen scavenger in proximity to the heat sensitive device, the
oxygen scavenger being effective to establish a substantially
non-oxidizing environment in the vicinity of the carbohydrate
endotherm; and
( d) allowing the carbohydrate endotherm to effect a
desired level of heat absorption to provide thermal protection to
heat sensitive device at least in part based on irreversible
decomposition.
40. A system for providing thermal protection to a heat
sensitive device, comprising:
(a) a support in proximity to the heat sensitive device,
and
(b) a carbohydrate endotherm in a substantially non-
oxidizing environment, wherein the carbohydrate endotherm is
selected from the group consisting of at least one of a sugar and
a starch, said carbohydrate endotherm being adapted to provide
thermal protection to the heat sensitive device at least in part
based on irreversible decomposition thereof, and wherein the
substantially non-oxidizing environment is effected at least in
part based on an oxygen scavenger positioned relative to the
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Appeal2014-009681
Application 12/200,503
carbohydrate endotherm to substantially eliminate oxidizing
reactants.
Appellant requests review of the Examiner's rejection of claims 26-
31, 33-36, 38--42, 44 and 46--49 under 35 U.S.C. § 103(a) as unpatentable
over Hayes '912 (US 2004/0208912 Al, published October 21, 2004) in
view of Hayes '844 (US 6,793,844 B2, issued September 21, 2004) and
Schulenburg (US 2,881,088, issued April 7, 1959). App. Br. 4; Final Act. 2.
OPINION1
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejection of method
claims 26-31, 33-36, 38 and 39 under 35 U.S.C. § 103(a) for the reasons
presented by Appellant. However, we AFFIRM the Examiner's prior art
rejection of system claims 40--42, 44 and 46--49 for the reasons presented by
the Examiner.
Method Claims
Claim 26 is directed to a method of protecting a heat sensitive device
by using a carbohydrate endotherm (sugar or starch) to absorb the heat in a
non-oxidizing environment provided by an oxygen scavenger.
1 Appellant argues the independent claims together but do not present
separate arguments for any of the dependent claims. See Appeal Brief,
generally. Accordingly, we limit our discussion to independent claims 26
and 40 as representative of the respective subject matter of the method and
system before us on appeal. Independent claim 27 and dependent claims
28-31, 33-36, 38 and 39 stand or fall with independent method claim 26 and
dependent claims 41, 42, 44 and 46--49 stand or fall with independent
system claim 40.
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Appeal2014-009681
Application 12/200,503
The Examiner found the combined teachings of Hayes '912 and
Hayes '844 disclose a method of protecting heat sensitive devices using
composites comprising a support having embedded endothermic agents,
such as boric acid (endotherm and oxygen scavenger), through an
irreversible decomposition and a substantially non-oxidizing environment in
the vicinity of the endothermic agent. Final Act. 2-3, Hayes '912 i-fi-129, 37,
41; Hayes '844 Abstract, col. 3, 11. 4, 30-40, 55-65; col. 5, 11. 1-30; col. 14,
11. 40-45. With respect to the use of starch (carbohydrate endotherm), the
Examiner found Schulenburg teaches applying protective agents comprising
starch combined with boric acid to combustible materials such as wall board
or incombustible materials such as metals to protect against fire and provide
heat insulation. Final Act 4; Schulenburg col. 1, 11. 10-40; col. 2, 11. 10-35,
40-71. The Examiner determined it would have been obvious to one of
ordinary skill in the art to modify the method from the combined teachings
of Hayes '912 and Hayes '844 by incorporating a starch endotherm in view
of Schulenburg's disclosed benefits. Final Act. 5.
Appellant argues the Examiner relied on impermissible hindsight in
combining the references to arrive to the claimed invention because the prior
art teaches away from the invention because the record is devoid of any
evidence that work was undertaken to harness the endothermic properties of
carbohydrates in a substantially non-oxidizing environment. App. Br. 5---6,
9. According to Appellant, the Hayes references are directed to non-
carbohydrate endothermic agents and the only disclosure of carbohydrate
(cellulose) is in Hayes '912's laundry list of polymers for the endothermic
agent support material. App. Br. 9, 11-13; Hayes '912 i-fi-137, 39--42; Hayes
'844 col. 3, 11. 56---66. While Schulenburg discloses the use of carbohydrates
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Appeal2014-009681
Application 12/200,503
(starch) as a component of a flame retardant composition, Appellant argues
Schulenburg does not disclose the use of starch or other carbohydrate as an
endotherm without a mixture providing protection for heat sensitive devices.
App. Br. 15; Schulenburg col. 2, 11. 19-28.
We agree with Appellant. The Examiner has not directed us to any
portion of the cited art or presented an adequate technical explanation that
supports the Examiner's determination that one skilled in the art would have
incorporated a starch (carbohydrate) endotherm into the method of Hayes
'912 to protect a heat sensitive device in a non-oxidizing environment.
Thus, we agree with Appellant that, absent impermissible hindsight, the
Examiner has not adequately explained how one skilled in the art would
have combined the teachings of the prior art to arrive to the claimed
invention.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Accordingly, we reverse the Examiner's prior art rejections of claims
26-31, 33-36, 38 and 39 under 35 U.S.C. § 103(a) for the reasons presented
by Appellant and given above.
System Claims (Claim 40)
We AFFIRM.
Claim 40 is directed to a structure comprising a support, a
carbohydrate endotherm and an oxygen scavenger.
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Appeal2014-009681
Application 12/200,503
The Examiner found the combined teachings of Hayes '912 and
Hayes '844 disclose a composite comprising a support having embedded
endothermic agents, such as boric acid ( endotherm and oxygen scavenger.
Final Act. 2-3, Hayes '912 i-fi-129, 37, 41; Hayes '844 Abstract, col. 3, 11. 4,
30-40, 55---65; col. 5, 11. 1-30; col. 14, 11. 40-45. With respect to the use of
starch (carbohydrate endotherm), the Examiner found Schulenburg teaches
applying protective agents comprising starch combined with boric acid to
combustible materials such as wall board or incombustible materials such as
metals to protect against fire and provide heat insulation. Final Act 4;
Schulenburg col. 1, 11. 10-40; col. 2, 11. 10-35, 40-71. The Examiner
determined it would have been obvious to one of ordinary skill in the art to
modify the composite from the combined teachings of Hayes '912 and
Hayes '844 by incorporating a starch endotherm in view of Schulenburg' s
disclosed benefits. Final Act. 5.
We have considered Appellant's arguments with respect to this claim
and agree with the Examiner that the cited art discloses a structure
comprising the components required by the subject matter of independent
claim 40, particularly given that Schulenburg discloses a structure
comprising a support (treated surface) coated with a combination of boric
acid (oxygen scavenger) and starch (carbohydrate endotherm). Final Act.
2-5; see Appeal Brief, generally; Schulenburg col. 2, 11. 13-28, 40-46.
Appellant has not adequately explained patentable distinction between the
claimed structure and the structure disclosed by Schulenburg.
Accordingly, we affirm the Examiner's prior art rejection of claims
40-42 and 44--49 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
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Appeal2014-009681
Application 12/200,503
ORDER
The Examiner's prior art rejection of claims 26-31, 33-36, 38 and 39
under 35 U.S.C. § 103(a) is reversed.
The Examiner's prior art rejection of claims 40-42, 44 and 46-49
under 35 U.S.C. § 103(a) is affirmed.
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)(l).
AFFIRMED-IN-PART
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