Ivanv.Mendenhall et al.

Patent Trials and Appeals Board

Nov 26, 2019

13799559 - (D) (P.T.A.B. Nov. 26, 2019)

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.
13/799,559 03/13/2013 Ivan V. Mendenhall 8952A-000362/US 2066
114325 7590 11/26/2019
Harness Dickey (Autoliv)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
FELTON, AILEEN BAKER
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
11/26/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IVAN V. MENDENHALL and BRADLEY W. SMITH

Appeal 2019-001528
Application 13/799,559
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
RAE LYNN P. GUEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Primary Examiner’s final decision to reject claims 1–3, 5–10, 12–16, 21, and
23–27.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “Autoliv ASP, Inc.” (Application Data Sheet
March 13, 2013), which is also identified as the real party in interest (Appeal
Brief filed March 16, 2018 (“Appeal Br.”) at 1).
2 See Appeal Br. 9–25; Reply Brief filed November 30, 2018 (“Reply Br.”)
at 2–9; Final Office Action entered October 19, 2017 (“Final Act.”) at 2–5;
Examiner’s Answer entered October 2, 2018 (“Ans.”) at 3–7.
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I. BACKGROUND
The subject matter on appeal relates to a gas generant composition,
which may be used in passive inflatable restraint systems (Specification filed
(“Spec.”) ¶¶ 1–5, 26). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief, as follows:
1. A gas generant composition comprising:
a fuel;
an oxidizer comprising basic copper nitrate; and
an endothermic slag-forming component comprising
aluminum hydroxide having an average particle size diameter
of greater than or equal to about 150 μm, wherein the gas
generant composition has a maximum flame temperature at
combustion (Tc) of less than or equal to about 1,900K
(1,627°C).
(Appeal Br. 26 (emphasis added)).
II. REJECTION ON APPEAL
Claims 1–3, 5–10, 12–16, 21, and 23–27 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Zhou et al.3 (“Zhou”) in view of
Ochi et al.4 (“Ochi”) (Ans. 3–7; Final Act. 2–5).
III. DISCUSSION
1. Grouping of Claims
The Appellant provides various arguments under separate sub-
headings identified by certain groups of claims (Appeal Br. 9–25). We
address claims separately from claim 1, which we select as representative,
only to the extent that the arguments in support of separate patentability

3 US 2007/01119530 A1, published May 31, 2007.
4 US 5,656,793, issued August 12, 1997.
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comply with 37 C.F.R. § 41.37(c)(1)(iv). Absent such an argument in
support of separate patentability, all claims stand or fall with claim 1. In this
regard, we emphasize that merely pointing out what a claim recites and
providing a skeletal argument that the prior art references do not disclose or
suggest certain claim limitations are not arguments that require our separate
consideration. In re Lovin, 652 F.3d 1349, 1356–57 (Fed. Cir. 2011).
2. The Examiner’s Position
The Examiner finds that Zhou describes a composition for use in an
air bag including a fuel such as guanidine nitrate, basic copper nitrate, a slag
forming agent such as aluminum hydroxide and iron oxide, and other
additives (Ans. 3 (citing Zhou ¶¶ 36, 109, 115, 144). The Examiner
acknowledges that Zhou’s composition differs from the claimed composition
in that Zhou does not disclose the particle size of the slag forming agent (i.e.,
aluminum hydroxide) (id.). To resolve this difference, the Examiner relies
on Ochi, which was found to teach the use of a compound such as aluminum
hydroxide having a size of less than 300 µm as a flame coolant in a
composition for use in an air bag (id. (citing Ochi col. 5, ll. 15–45 and col. 8,
ll. 45–53)). Based on these findings, the Examiner concludes that “[i]t
would have been obvious to one having ordinary skill in the art . . . to use
the larger particle size of the slag [forming] agent as taught by Ochi since
Ochi suggests that it will improve the performance of the air bag
composition” (id.). Alternatively, the Examiner asserts that “[i]t [would]
also [have been] obvious to vary the parameters of the gas generating
composition to achieve a desired result” and that “[i]t is well-settled that
optimizing a result effective variable is well within the expected ability of a
person of ordinary skill in the subject art” (id.).
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3. The Appellant’s Contentions
The Appellant contends that Zhou and Ochi “collectively fail to
establish a prima facie case of obviousness, because neither reference
teaches or otherwise suggests the claimed cool burning gas generant
compositions comprising the endothermic slag-forming component with the
specific average particle diameter size of greater than or equal to 150 µm”
(Appeal Brief 10). The Appellant argues that Zhou teaches compositions
having combustion temperatures higher than those recited in claim 1 (e.g.,
2,036°K to 2,168°K) (id. at 11 (citing Zhou Tables 9 and 10)). As for Ochi,
the Appellant acknowledges that Ochi teaches a flame coolant formed of
aluminum hydroxide having a particle size of less than 300 µm but argues
that “[n]owhere does Ochi teach using aluminum hydroxide as a slag
forming agent for cool burning gas generants” and that “Ochi’s gas generant
compositions are entirely distinct from those claimed or those described in
Zhou” (id. at 11–12).
The Appellant urges that although aluminum oxide formed from the
aluminum hydroxide during combustion could be considered as a slagging
agent in high combustion temperature gas generants, “it was highly
unanticipated that aluminum oxide/aluminum hydroxide could function as a
slagging agent in the claimed cool burning formulations” (id. at 12).
According to the Appellant, “[t]his is because aluminum oxide is present in a
solid form during and after combustion, thus contravening conventional
understanding of the mechanism of slag formation for gas generants in an
airbag system” (id. (citing Declaration of Ivan V. Mendenhall filed July 5,
2017 (“Mendenhall Declaration” or “Mendenhall Decl.”) ¶¶ 6–7). The
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Appellant urges that “prior to the claimed invention, aluminum hydroxide
would not be considered a suitable candidate by a person having ordinary
skill in the art for a slag forming component for a cool burning gas generant
having a maximum flame temperature at combustion (Tc) of less than or
equal to about 1,900K (1,627°C)” (id. at 13). The Appellant also posits that
“[i]t was surprising and unexpected that fewer large-sized aluminum
hydroxide particles would be more effective at slagging as compared to
more small-sized particles in a cool burning gas generant” and that
where aluminum hydroxide is used as the endothermic slag-
forming component with distinct particles sizes (50% particle
size distributions of 87 μm and 158 μm, respectively) in a gas
generant that contains copper (as basic copper nitrate oxidizer),
an unexpected and substantial difference in tank wash values
(total particulate escaping the combustion filter) is observed so
that the improvement with a large particle size ranges from 64%
up to 87%.
(Id. at 14, 19–20 (citing Mendenhall Decl. ¶¶ 7–10 and Spec. ¶¶ 57–65
(Examples 1 and 2))). In the Appellant’s view, the Examiner failed to
consider the proffered evidence in support of nonobviousness (id. at 22–24).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Zhou describes a gas generating composition for use in an air bag,
wherein the composition has, inter alia, a low combustion temperature
(Zhou ¶ 14; Abstract). Specifically, Zhou discloses that the composition
comprises (a) a fuel component in the form of at least one specified
guanidine derivative (e.g., nitroguanidine (NQ)), (b) a specified basic metal
nitrate such as basic copper nitrate (BCN), and (c) a binder and/or slag-
forming agent (id. ¶¶ 36–38, 108–109). Zhou teaches that the binder and/or
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slag-forming agent includes various materials such as a metal hydroxide
(e.g., aluminum hydroxide) (id. ¶¶ 115–116, 144). Furthermore, Zhou
describes working examples in which the gas generating composition
includes nitroguanidine (NQ) fuel, basic copper nitrate (BCN), sodium salt
of carboxymethylcellulose (CMCNa), and aluminum hydroxide (id. ¶¶ 230,
240 (Table 7, Examples 47–49)).
Zhou does not provide the combustion temperature (Tc) data for the
compositions containing aluminum hydroxide as described in Examples 47–
49. Nevertheless, a person having ordinary skill in the art would have drawn
a reasonable inference from Zhou’s teachings as a whole that the combustion
temperature (Tc) would vary depending on the compositional makeup.
Specifically, Zhou discloses some gas generating compositions (e.g., those
that include guar gum binder) having combustion temperatures (Tc) higher
than 1,900° K (id. ¶¶ 242–243 (Tables 9–10, Examples 84–111)), but also
discloses other compositions (e.g., those containing sodium salt of
carboxymethylcellulose and/or Fe2O3) having combustion temperatures (Tc)
lower than 1,900° K—e.g., as low as 1,732° K (id. ¶ 236 (Table 3, Examples
9–17)).
Hence, the key difference between Zhou’s composition and the
claimed composition is in the absence of a disclosure in the prior art of the
aluminum hydroxide having “an average particle size diameter of greater
than or equal to about 150 μm,” as recited in claim 1. As the Examiner
concludes, however, Ochi bridges this gap.
Ochi also discloses a gas generator for an air bag having a low
combustion temperature (Ochi, col. 1, ll. 10–12; col. 2, ll. 18–22).
Specifically, the gas generator contains hydrazodicarbonamide (HDCA) as a
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reducing agent, oxoacid salt as an oxidizing agent such as a metal nitrate,
and a flame coolant such as a metal (e.g., Al) hydroxide to cool the
generated gas by causing an endothermic decomposition reaction (id. at col.
4, ll. 30–57; col. 5, ll. 18–41). According to Ochi, the flame coolant should
have a particular shape and particle size to provide the composition with
optimum combustion, that the flame coolant lowers the combustion
temperature, and that “[i]t is preferable for the flame coolant to have a
particle size of 300 µm or less for satisfactory combustion” (id. at col. 5, ll.
43–45; col. 8, ll. 46–52). In this regard, Ochi explicitly states that “in order
to minimize the amount of cooling agent needed as cooling mechanism or to
minimize the size of the cooling mechanism itself, the range of the gas
generator’s combustion temperature should be about 1300°C to 1500°C” (id.
at col. 6, ll. 14–18).
In a working example, Ochi teaches a gas generator composition
comprising 30% by weight HDCA, 60% by weight Sr(NO3)2, and 10% by
weight Al(OH)3 (id. at col. 14, l. 5–col. 18, l. 50 (id. at col. 17, ll. 1–29,
Table 6, Example 16)). That composition is described as containing “a
flame coolant [i.e., aluminum hydroxide], so that not only was the amount of
the gas generated increased, but the gas temperature [was] lower than in the
Comparative Examples [containing different components]” (id. at col. 17, ll.
61–65).
Given the collective teachings found in Zhou and Ochi as recounted
above, a person having ordinary skill in the art would have understood that a
compound such as aluminum hydroxide is not only a slag-forming agent, but
also a flame coolant that causes an endothermic decomposition—a
characteristic that is consistent with the Appellant’s description for slag-
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forming components (Spec. ¶¶ 1, 33). Although Ochi’s composition is not
identical to that disclosed in Zhou or the claimed composition,5 we conclude
that it is sufficiently similar such that a person having ordinary skill in the
art would have been prompted to use Ochi’s aluminum hydroxide with an
average particle size of 300 µm or less, which would encompass particles
having average particle sizes that fall within the range recited in claim 1, in
Zhou to optimize the combustion and to minimize the amount of cooling
agent needed to achieve a combustion temperature in the range of 1,300°C
to 1,500°C (i.e., 1,573°K to 1,773°K), as disclosed in Ochi.
Having concluded that Zhou and Ochi collectively establish a prima
facie case of obviousness, we next consider the Appellant’s proffered
evidence of secondary considerations in support of nonobviousness. As best
understood, it appears to be the Appellant’s principal position that because
“[a]luminum hydroxide has a melting temperature of about 2288[°]K”
(emphasis added), it would not be suitable for compositions having a
combustion temperature (Tc) of less than or equal to about 1,900°K because
melting would be required at or near the combustion temperature (Appeal
Br. 12–13 (citing Mendenhall Decl. ¶¶ 5–6)). But the Mendenhall
Declaration states that a refractory metal such as Al2O3—not aluminum
hydroxide (i.e., Al(OH)3)—has a melting point of 2,288°K and that, for that
reason, Al2O3 would not be suitable as a “slag forming component/slagging

5 Contrary to the Appellant’s argument (Appeal Br. 11–12), Ochi’s
composition is similar to the claimed composition because the only
difference between these compositions is that the former may include metal
nitrate such as strontium nitrate as the oxidizing agent (Ochi col. 17, ll. 1–
29, Table 6, Example 16) whereas claim 1 specifies an oxidizer comprising
basic copper nitrate.
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agent” for gas generating compositions with a lower combustion temperature
(Tc) such as 1,400°K (Mendenhall Decl. ¶ 6).6 According to the Declaration,
“it was unexpectedly discovered that aluminum hydroxide having a large
particle size diameter of 150 µm or greater could enhance slag formation in
specific gas generant formulations (comprising copper) that have a
maximum combustion flame temperature of less than or equal to about
1900[°] K” (id. ¶ 7), “[i]t was highly unanticipated that aluminum oxide
formed from aluminum hydroxide during combustion could function as a
slagging agent in these cool burning formulations” (id. (emphasis added)),
and that “it was surprising and unexpected that fewer large-sized particles
would be more effective at slagging as compared to more small-sized
particles, because it was previously believed that melting of aluminum oxide
would need to occur to form slag” (id. ¶ 8 (emphasis added)).
The problem with the Appellant’s position, however, is that aluminum
hydroxide has a much lower melting point (300°C or 573°K) than aluminum
oxide (2,288°K). Claim 1 does not require aluminum oxide or aluminum
oxide prepared from calcination of aluminum hydroxide as the slag-forming
component—it merely recites “an endothermic slag-forming component
comprising aluminum hydroxide” (Appeal Br. 26). Such a slag-forming
component is explicitly disclosed in Ochi, as we found above. Indeed, as the
Examiner finds (Ans. 6), Ochi would have suggested that using aluminum
hydroxide with a particle size of less than 300 µm would lower combustion
temperature—specifically, to a combustion temperature (Tc) to about 1,300–

6 Aluminum hydroxide, Al(OH)3, has a melting point of 300°C
(https://www.chemicalbook.com/ChemicalProductProperty_EN_CB924368
0.htm).
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1,500°C (1,573–1,773°K) (Ochi at col. 5, ll. 18–45; col. 6, ll. 14–18; col. 7,
ll. 31–33; col. 8, ll. 46–52; col. 17, ll. 1–29 (Table 6, Example 16)). As the
Examiner aptly points out, “[n]either [Zhou nor Ochi] mentions an adverse
impact of the inclusion of aluminum hydroxide” but instead provides
explicit motivation to include them (Ans. 6; see also Final Act. 5). Neither
the Appellant nor the Declarant meaningfully addresses the prior art
teachings.
As for the allegation that Examples 1 and 2 of the current
Specification demonstrates unexpected results in terms of tank wash values
(i.e., total particulate escaping the combustion filter) (Appeal Br. 19–20
(citing Mendenhall Decl. ¶¶ 9–10)), we concur with the Examiner that the
Appellant fails to offer a comparison between the claimed subject matter and
the closest prior art (Final Act. 5). According to the Mendenhall
Declaration, Figures 3 and 4 (Comparative Example 1), which are
macroscopic photographs of a slag formed from conventional gas generant
(Spec. ¶¶ 14–15; 57–59), show combustion slag when aluminum hydroxide
having an average diameter of less than or equal to 90 µm is used in a cool
burning formulation having a combustion temperature of about 1,400°K
(Mendenhall Decl. ¶ 9). The Specification states, however, that
Comparative Example 1, which is representative of a prior art composition,
used an aluminum hydroxide with a particle size distribution of 10% 54 µm,
50% 87 µm, and 90% 152 µm (Spec. ¶ 58 (Table 2)) but provides no
information on the actual average particle diameter. Similarly, the
Specification states that Example 2, which is representative of the claimed
invention, used an aluminum hydroxide with a particle size distribution of
10% 115 µm, 50% 158 µm, and 90% 228 µm but provides no information
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on the actual average particle diameter (id.). Therefore, the Declarant’s
statements as to the average particle sizes are not supported by any objective
evidence (e.g., data),7 and, therefore, it is not possible to ascertain whether
Comparative Example 1 and Example 2 are representative of the closest
prior art and the claimed invention, respectively. Here, Ochi would have
suggested using aluminum hydroxide having particle sizes of 300 µm or less
to lower combustion temperatures (Tc), as we found above. But we have not
been directed to any comparison against a composition that is representative
of Ochi’s disclosure (e.g., Ochi’s Example 16). Also, to the extent that Zhou
does not mention average particle sizes, the Appellant must show a
criticality for the specified range defined by “average particle diameter of
greater than or equal to about 150 µm” (Appeal Br. 26), which reads on any
average diameters equal to or greater than about 150 µm, such as 150 µm,
300 µm, or even 1,000 µm. That has not been done. In re Inland Steel Co.,
265 F.3d 1354, 1366 (Fed. Cir. 2001) (“Inland did not offer comprehensive
test results for the magnetic properties of steel produced under the ’574
claims at antimony levels greater than 0.02%.”) (emphasis added).
Under these circumstances, we discern no reversible error in the
Examiner’s determination that the proffered Declaration evidence is
insufficient to rebut the prima facie case of obviousness. Therefore, we
sustain the Examiner’s rejection as maintained against claim 1.
The Appellant also points out what certain dependent claims recite
(e.g., claim 8, which recites amounts for the components) (Appeal Br. 18).
Even if we were to assume that the Appellant’s argument complies with 37
C.F.R. § 41.37(c)(1)(iv) for separate consideration, it fails because the

7 See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
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Appellant does not address the prior art amounts, which fall within the scope
of or overlap the ranges recited in the claims (Zhou ¶¶ 117, 137–138; Ochi
col. 8, l. 53–col. 9, l. 14 and Example 16 (Table 4)). Therefore, we also
sustain the rejection as maintained against these claims.
For these reasons, we uphold the Examiner’s rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Evidentiary
Basis
Affirmed Reversed
1–3, 5–10, 12–
16, 21, 23–27
103(a)  Zhou, Ochi 1–3, 5–10, 12–
16, 21, and
23–27

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