Stanley Sansone

Patent Trials and Appeals Board

Jul 13, 2021

2021001334 (P.T.A.B. Jul. 13, 2021)

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.
16/255,511 01/23/2019 Stanley A. Sansone 5215
137544 7590 07/13/2021
Stanley Sansone
7822 Sands Point Dr
Houston, TX 77036
EXAMINER
RODRIGUEZ, ANNABETH ELIESSE
ART UNIT PAPER NUMBER
3794
MAIL DATE DELIVERY MODE
07/13/2021 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 STANLEY A. SANSONE

Appeal 2021-001334
Application 16/255,511
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–6, 8–10, 13, 14, and 19–29,
which constitute all the claims pending in this application. See Final Act. 1
(Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest “as
Applicant, Sansone, and pro se inventor.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter relates generally to wearable thermal
devices. See Spec. 1.2 Apparatus claims 1, 8, and 19 are independent.
Claim 1 is illustrative of the claims on appeal and is reproduced below.
1. A wearable thermal device comprising:
at least one containment pack of selected shape;
said at least one containment pack contains a selected
amount of first material;
at least one port is attached to said at least one
containment pack configured to accept a second material; and
said second material is added through said at least one
port to create a chemical reaction when combined with said first
material.
EVIDENCE
Name Reference Date
Van Cleve US 4,676,247 June 30, 1987
Latham US 2002/0103520 A1 Aug. 1, 2002
Hirokane et al.
(“Hirokane”)
US 2014/0358206 A1 Dec. 4, 2014
Maher et al. (“Maher”) US 9,486,354 B2 Nov. 8, 2016
Lewis US 9,504,601 B1 Nov. 29, 2016
REJECTIONS
Claims 1, 8, 10, and 25–29 are rejected under 35 U.S.C. § 102(a)(l) or
102(a)(2) as anticipated by Hirokane.
Claims 4, 5, 14, 19–21, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Hirokane and Maher.

2 Appellant’s Specification lacks both line and paragraph numbering. We
thus reference Appellant’s Specification via page number only.
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Claims 6 and 24 are rejected under 35 U.S.C. § 103 as unpatentable
over Hirokane and Van Cleve.
Claims 13 and 22 are rejected under 35 U.S.C. § 103 as unpatentable
over Hirokane and Latham.
Claims 2 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over Hirokane and Lewis.
ANALYSIS
The rejection of claims 1, 8, 10, and 25–29
as anticipated by Hirokane
Appellant presents arguments for independent claims 1 and 8 together
(see Appeal Br. 4–7) and also presents an additional argument specific to
claim 8 separately (see Appeal Br. 7–8). Regarding dependent claim 10,
Appellant relies on the arguments made with respect to claims 1 and 8. See
Appeal Br. 8). Appellant does not separately argue dependent claims 25–29.
Accordingly, we select claims 1 and 8 for review, with the remaining claims
(i.e., claims 10 and 25–29) standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).
Claim 1
Claim 1 recites “at least one containment pack.” Appellant does not
dispute that “Hirokane’s disclosure and claims are directed to multiple
containers.” Appeal Br. 4. However, Appellant contends that “Applicant’s
apparatus is operable . . . with simply a single container.” Appeal Br. 5; see
also Reply Br. 2. In other words, “Applicant is the first to invent a single
container thermal chemical therapeutic device.” Appeal Br. 6 (“Applicant
seeks a patent on a single containment system”); Reply Br. 2 (“Applicant’s
claim language ‘at least one container’ is inventive.”).
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Appellant contends that “[t]o claim ‘at least one’ means the device
should be operable with one containment pack, not more than one.” Appeal
Br. 5; see also Reply Br. 2. Appellant does not identify where Appellant’s
Specification defines the phrase “at least one containment pack” to mean
operability with only one pack to the exclusion of operability with multiple
packs. Further, Appellant’s Specification lacks any indication that Appellant
has defined “at least one” different from its ordinary and customary meaning
of “one or more,” which is not “only one.” See Ans. 4.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998), “the name of the game is the claim.” Here, as noted
above, Appellant’s claim 1 recites “at least one” containment pack and thus,
whether Hirokane discloses a single container, or multiple containers, or
both, Appellant does not explain how Hirokane’s disclosure fails to meet
this “at least one” limitation. See Ans. 3–5. To be clear, paragraph 40 of
Hirokane discloses “[a] chamber 102 is formed within a decorative chamber
103” while paragraph 9 thereof discloses “at least one reversibly sealable
holding element.” Hence, Appellant’s contention that “Hirokane discloses
other containers” (Appeal Br. 5) is not persuasive that the Examiner erred in
relying on Hirokane for teaching the limitation “at least one containment
pack.”
Appellant also argues that “Hirokane discloses a device configured to
accept a cooling article and water.” Appeal Br. 6; see also Reply Br. 3. In
contrast, “Applicant’s device contains a first material.” Appeal Br. 6.
Hence, as per Appellant, “Applicant’s invention describes a single structure
containing a first material not configured to accept a first material.” Appeal
Br. 6. Appellant’s distinction is without merit because paragraph 40 of
Hirokane clearly discloses chamber 102 into which is introduced “one or
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more water soluble pouches and water.” See also Ans. 6, 7. Hence,
Hirokane also discloses a structure “containing a first material” (i.e., “water
soluble pouches”) as Appellant contends. See also Hirokane ¶ 9.
The Examiner further addresses the limitation that the containment
pack “contains a selected amount of first material.” Final Act. 4. The
Examiner explains that “any amount of housed coolant in the neck member
can be determined as ‘a selected amount.” Final Act. 4; see also Ans. 6
(both referencing Hirokane ¶¶ 9, 40). Appellant disagrees stating “‘Any
amount’ is not the same as a ‘selected amount.’” Reply Br. 3. As noted, the
Examiner references paragraph 9 of Hirokane which teaches use of a
mixture sufficient to “reach[] a temperature of at least about 50º F. (10º C.)
for at least about 10 minutes.” Paragraphs 43 and 44 of Hirokane also
provide guidance as to the amount of cooling/heating that can be obtained
from various solutions. Further, paragraph 37 of Hirokane states, “[t]he
amount of heat that is released or absorbed by the packs depends on the
concentration of water and materials.” Accordingly, we are not persuaded
the Examiner erred in relying on Hirokane for disclosing the limitation of a
containment pack which “contains a selected amount of first material.”
Appellant further addresses the claim 1 limitation of “at least one
port.” See Appeal Br. 7; Reply Br. 4. Appellant contends that the
“Examiners have not shown how Hirokane’s watertight lid anticipates
multiple ports.” Appeal Br. 7; see also Reply Br. 4. In contrast to the
above, it appears that Appellant is presently interpreting “at least one” to
now mean multiple ports and not also a single port. See Reply Br. 4
(“Appellant asserts; ‘at least one port’ is [] a novel element over
Hirokane[]”). There is no dispute that Hirokane discloses port 105 (see
Hirokane Fig. 1), and it is not explained by Appellant how this disclosure of
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this port fails to meet the recited “at least one port” limitation in accordance
with how this phrase is understood. See also Ans. 7. We are not aware of
Examiner error on this point.
Appellant further argues that “Hirokane’s watertight lid is configured
to accept two materials” (Appeal Br. 7) which, Appellant contends,
distinguishes over the limitation of Appellant’s port “configured to accept a
second material” and “said second material is added through said at least one
port.” In other words, as per Appellant, Hirokane “is clear on the
multicomponent (water and cooling articles) placement process.” Appeal
Br. 7. As such, Appellant contends that Appellant’s “at least one port
configured for receipt of a second material is novel and completely unlike
Hirokane.” Appeal Br. 7.
This contention by Appellant presumes only the passing through the
claimed port of a single component, not multiple components as disclosed
by Hirokane (i.e., water and cooling articles). See Hirokane ¶¶ 9, 40. We
disagree with Appellant’s assessment of the limited scope of the port recited
in claim 1. To be clear, the transitional term “comprising” employed in
claim 1 is interpreted by our reviewing court as permitting the inclusion of
elements and/or steps, which are not specifically claimed. See In re Baxter,
656 F.2d 679, 686-87 (CCPA 1981). In other words, the term “comprising,”
means “that adding other elements to the device or method is not
incompatible with the claim.” Realtime Data, LLC v. Iancu, 912 F.3d 1368,
1375 (Fed Cir, 2019). Hence, Hirokane’s disclosure of the passing of other
material through the port is not precluded by the language of claim 1, nor is
such passage of additional material in Hirokane a failure to teach the recited
limitation of the passing of a “second material” therethrough. In other
words, nowhere in claim 1 is there language restricting Appellant’s port to
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the passing of only a single material, while precluding the passing of other
material. See also Ans. 8.
In view of the above, we are not persuaded the Examiner erred in
relying on Hirokane to teach the above claim 1 limitations. We sustain the
Examiner’s rejection of claim 1 as being anticipated by Hirokane.
Claim 8
In addition to the arguments presented above, Appellant further
addresses the claim 8 limitation of adding said second material “through said
at least one port to create a selected amount of thermal mass when combined
with said selected amount of first material.” See Appeal Br. 7. Appellant
contends that Hirokane’s “disclosure contains no reference to ‘thermal
mass’” and “simply states a chemical fact of nature that some unspecified
mixture of cooling components and water will reach a particular temperature
within a certain time frame.” Appeal Br. 7. Appellant contends that
“[n]owhere does Hirokane disclose varying any of the components
Applicant uses to create a thermal mass, or result in a body part reaching a
particular temperature.” Appeal Br. 8.
The Examiner relies on paragraph 9 of Hirokane as teaching this
limitation. See Final Act. 5. Paragraph 9 discusses a “water-soluble pouch”
containing a “cooling article” that, “when mixed with water, the one or more
cooling components and the water provide an endothermic mixture which
reaches a temperature of at least about 50º F. (10º C.) for at least about 10
minutes.” See also Ans. 9. Hirokane paragraph 43 provides examples of the
various water-soluble chemicals that may be used to generate an
“endothermic (cooling)” reaction in order to attain a certain temperature.
Should heating, instead of cooling, be desired, paragraphs 14 and 44 of
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Hirokane provide similar information. In fact, paragraph 14 of Hirokane
specifically describe certain solutions “along with the moles of material and
the mass of material to achieve the 12 kJ of cooling.” See also Ans. 10
(referencing Hirokane ¶¶ 37, 43, and 44.
In view of the above disclosures in Hirokane, we are not persuaded
the Examiner erred in relying on this reference to teach the above claim 8
limitation reciting the combination of first and second material “to create a
selected amount of thermal mass when combined.” See also Ans. 9, 10. We
sustain the Examiner’s rejection of claim 8 as being anticipated by Hirokane.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 8, 10, and 25–29 as being anticipated by
Hirokane.
The rejection of claims 4, 5, 14, 19–21, and 23
as unpatentable over Hirokane and Maher
Appellant presents arguments for independent claim 19 alone (see
Appeal Br. 8–9) and also presents arguments for claims 14 and 20 together
(see Appeal Br. 9–10). We select claims 19 and 20 for review, with the
remaining claims standing or falling therewith.
Claim 19
Independent claim 19 recites “at least one valve attached to said at
least one containment pack.” The Examiner relies on Maher for this
teaching. See Final Act. 8; Ans. 11. Appellant does not dispute Maher’s
teaching on this topic, but contends instead that Hirokane’s three inventors
“had every opportunity and clear view to disclose anything like a valve, yet
they did not.” Appeal Br. 8. Thus, Appellant contends, the employment of a
valve “was not obvious to Hirokane,” and as such, the Examiner’s
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combination of “Maher and Hirokane is unreasonable and not possible.”
Appeal Br. 8–9.
Maher pertains to a similar device and teaches that the inlet and outlet
ports “may include a valve to regulate the flow of cooling fluid into and out
of the bladder.” Maher 8:9–11. This is the stated reason expressed by the
Examiner for combining Hirokane and Maher. See Final Act. 8. Appellant
does not address this reason, only arguing that the inventors of Hirokane
“had every opportunity” to employ a valve, “yet they did not.” Appeal Br.
8. Appellant is not persuasive that the Examiner’s motivation for the
combination of Hirokane and Maher lacks “articulated reasoning with
rational underpinning to support the legal conclusion of obviousness.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we are not
persuaded of Examiner error on this point.
Appellant also argues that “[s]ubstituting Maher’s valve into
Hirokane[’]s structure is no[t] simple, nor an obvious matter.” Reply Br. 4.
However, Appellant does not make clear how it is beyond the ability of one
skilled in the art to add a valve to a fluid pathway. See also Ans. 11, 12.
Further, such inability on the part of a skilled person is not self-evident.
Accordingly, Appellant’s unsupported contentions are not persuasive of
Examiner error.
Appellant further argues that “Maher discloses ports [that] are used
for fluids, not solids or articles” or, as stated another way, “Ma[h]er ports
exchange fluids, not solids nor pouches.” Appeal Br. 9; see also Reply Br. 5
(“[s]tructures, let alone solid material, will not reasonably fit through
Maher[’]s valve”). Appellant provides no evidence or documentation that
Maher’s ports are configured such that only fluids can pass therethrough,
and it is not self-evident that Maher’s ports are restricted in this manner. To
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be clear, Maher teaches the use of a cooling pack 900 that “is a granule-
activation packet that uses a fluid” (water) to “create a cooling fluid.”
Maher 8:20–23. Maher teaches, “[t]he cooling fluid from the cooling pack
900 can then be pumped into the bladder 506 via the inlet port 534.” Maher
8:26–29. It is this port 534 that “may include a valve to regulate the flow of
cooling fluid into and/or out of the bladder 506.” Maher 8:9–11. Again,
despite the teachings of Maher above, Appellant’s unsupported contentions
are not persuasive of Examiner error.
Appellant also contends that “Hirokane[] teaches away from this
unobvious combination.” Reply Br. 5. However, we are not informed
where Hirokane criticizes or otherwise discredits the insertion of a valve
within a fluid pathway.
In view of the above, we are not persuaded the Examiner erred in
relying on Hirokane and Maher to teach the above claim 19 limitation
regarding “at least one port has at least one valve attached to said at least one
containment pack.” We sustain the Examiner’s rejection of claim 19 as
being unpatentable over Hirokane and Maher.
Claim 20
Claim 20 depends from claim 19 and further recites “at least one
biosensor.”3 The Examiner relies on Maher for such teaching. See Final
Act. 8. Appellant does not dispute Maher’s disclosure of “a temperature
sensor 1300A or 1300B or 1300C that measures a body temperature of the
patient.” Maher 9:28–31. Instead, Appellant questions (similar to the
above) “why didn’t the 3 inventors of Hirokane not disclose such an

3 Claim 14, which depends from claim 8, recites “has at least one
temperature sensor.”
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important feature of a thermal device especially one that delivers thermal
therapy?” Appeal Br. 9; see also id. at 10. Appellant’s focus on Hirokane
(i.e., “[n]o sensors are described or desired by Hirokane”) is not persuasive
that Maher fails to teach such a device. Appeal Br. 10. Nor does Appellant
challenge the Examiner’s reasoning for combining Hirokane and Maher on
this point, i.e., “in order to measure the temperature of a patient and allow
medical personal to monitor and regulate a patient's body system (Maher,
Col. 9, lines 36-38).” Final Act. 9. Further, the Examiner states, “it is not
the Examiner’s position to speculate why certain features are included or
excluded.” Ans. 13.
Appellant also alleges that Hirokane and Maher “don’t disclose where
or how they would attach Maher[’]s temperature sensor.” Reply Br. 5.
However, claim 20 is equally silent as to where or how Appellant requires
the temperature sensor to be applied.
In view of the above, we are not persuaded the Examiner erred in
relying on the combination of Hirokane and Maher to teach the above claim
20 limitation. We sustain the Examiner’s rejection of claims 14 and 20 as
being unpatentable over Hirokane and Maher.
The rejection of (a) claims 6 and 24 as unpatentable over Hirokane and Van
Cleve; (b) claims 13 and 22 as unpatentable over Hirokane and Latham;
and, (c) claims 2 and 9 as unpatentable over Hirokane and Lewis
Appellant presents no arguments attempting to reverse the above three
rejections. Accordingly, we sustain the Examiner’s rejection of these claims
based on the stated combination of references.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 8, 10, 25–
29
102 Hirokane 1, 8, 10, 25–
29

4, 5, 14, 19–
21, 23
103 Hirokane,
Maher
4, 5, 14, 19–
21, 23

6, 24 103 Hirokane,
Van Cleve
6, 24
13, 22 103 Hirokane,
Latham
13, 22
2, 9 103 Hirokane,
Lewis
2, 9
Overall
Outcome
1, 2, 4–6, 8–
10, 13, 14,
19–29

TIME PERIOD FOR RESPONSE
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