Ex Parte Garrett

Patent Trial and Appeal Board

Aug 27, 2013

11490817 (P.T.A.B. Aug. 27, 2013)

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.
11/490,817 07/21/2006 Michael Ernest Garrett HG 40 3741
27956 7590 08/28/2013
KLAUS J. BACH
4407 TWIN OAKS DRIVE
MURRYSVILLE, PA 15668
EXAMINER
SHEARER, DANIEL R
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
08/28/2013 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 MICHAEL ERNEST GARRETT
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Appeal 2011-010205
Application 11/490,817
Technology Center 3700
________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010205
Application 11/490,817

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1 and 29-35. App. Br. 2. Claims 2-28 have been
canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to systems for dispensing
substances from containers and, more particularly, to such systems
employing a very simple but effective two phase solid/gas
adsorption/desorption mode of operation.” Spec. 1:7-9. Sole independent
claim 1 is illustrative of the claims on appeal and is reproduced below:
1. A dispensing system for dispensing a product from a
canister, comprising a solid/gas arrangement in which the gas is
adsorbed onto the solid under pressure and desorbed therefrom
when the pressure is released and in which the solid comprises
an activated carbon storage compartment and the gas comprises
at least one of nitrogen, oxygen or mixtures thereof including
air, carbon dioxide, nitrous oxide and argon, the storage
compartment having valve means to allow the gas adsorbed
onto the carbon to be desorbed for generating a pressure in the
canister and effect product dispense wherein the activated
carbon has been held from the time of its production under a
blanketing gas atmosphere which does not prevent the gas to be
adsorbed from occupying the adsorption sites of the activated
carbon in the storage compartment.

Appeal 2011-010205
Application 11/490,817

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REFERENCES RELIED ON BY THE EXAMINER
Lo US 4,049,158 Sep. 20, 1977
Carruthers
1
US 6,743,278 B1 Jun 1, 2004

THE REJECTION ON APPEAL
1. Claims 1 and 29-35 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Lo and Carruthers. Ans. 4.

ANALYSIS
Appellant argues independent claim 1 and dependent claims 29-35
together stating that independent patent protection for the dependent claims
“is not sought so that they stand and fall with claim 1.” App. Br. 2.
Claim 1 includes the limitation that “the activated carbon has been
held from the time of its production under a blanketing gas atmosphere” so
as to not prevent the gas to be adsorbed from occupying the adsorption sites
on the activated carbon and not be blocked therefrom. The Examiner
primarily relies on Lo for the limitations of claim 1 but acknowledges that
“Lo does not specifically disclose that the activated carbon has been held
under a blanketing gas atmosphere from the time of its production.” Ans. 4.
However, the Examiner relies on Carruthers for disclosing this limitation.
Ans. 4. The portion of Carruthers relied on by the Examiner is as follows:
During activation of carbon to form activated carbon, the pores
are widened at elevated temperature in the presence of a non-
oxidizing gas such as nitrogen, followed by exposure to an
oxidizing gas such as oxygen or steam for a short duration, and
then cooling in a non-oxidizing atmosphere.

1
The Examiner abbreviates Carruthers as “Carr.” Ans. 4. Appellant follows
suit but we do not.
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Application 11/490,817

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Ans. 4 citing Carruthers 9:3-7. The Examiner concludes (by paraphrasing
this section and also Carruthers 9:7-11) that it would have been obvious “to
have utilized activated carbon which was cooled after production in a non-
oxidizing gas atmosphere in the dispensing system of Lo in order to ensure
the activated carbon has a high level of micropore volume and hence a
greater capacity for gas absorbance.” Ans. 4.
Appellant does not dispute Carruthers’ teaching the use of a non-
oxidizing atmosphere surrounding the activated carbon during cooling and in
fact, indicates that “[t]his represents a standard form of manufacture as
largely set forth in the present specification.” App. Br. 6 referencing Spec.
14:10-13. Instead, Appellant contends that “[e]ven if the carbon were to be
kept in an inert atmosphere during the whole cooling process, there is still no
teaching of the present invention . . . of the critical need to maintain a
blanketing atmosphere thereafter and until the carbon is incorporated into a
canister.” App. Br. 6 (emphasis added).
The Examiner notes that “claim 1 does not necessitate maintaining the
activated carbon under a blanketing atmosphere until the carbon is
incorporated into a canister.” Ans. 5. Instead, the Examiner notes that
“[c]laim 1 simply states that the activated carbon has been held ‘from the
time of its production’ under a blanketing gas atmosphere” and that “[t]here
is no endpoint to the timeline established by appellant’s claim 1.” Ans. 5.
Appellant purports to distinguish claim 1 from the Examiner’s
suggested combination based on activity occurring after the time of
production of the activated carbon without this subsequent activity being so
expressed in the claim. While Appellant’s Specification describes this
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Application 11/490,817

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subsequent activity,
2
Appellant does not indicate where such language is
found in claim 1.
We are not inclined to read the limitation of maintaining a blanketing
atmosphere until the carbon is incorporated into a canister from the
Specification into the claim. See Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”). It is Appellant’s burden to precisely define
the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Appellant always has the opportunity to amend the claims during
prosecution, and broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). See In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow
meaning, the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”).
Here, we agree with the Examiner that claim 1 does not clearly
establish an endpoint to the time period during which the activated carbon is

2
“With all adsorbed cases, the blanketing of the carbon is preferably
effected from the time of cooling and is preferably maintained continuously
up to the time of (final) assembly of the canisters in which the dispensing
systems are employed.” Spec. 15:18-21.
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held “under a blanketing gas atmosphere” as claimed. We further agree with
the Examiner that Carruthers does disclose, for at least some time period,
holding the activated carbon ‘“from the time of its production’ under a
blanketing gas atmosphere” as claimed. Ans. 5. Appellant further does not
identify error in the Examiner’s stated rationale to combine Lo and
Carruthers, i.e., “to ensure the activated carbon has a high level of micropore
volume and hence greater capacity for gas absorbance.” Ans. 4, see also
Carruthers 9:7-11.
However, even assuming arguendo that such an endpoint has been
established in claim 1 as argued by Appellant (see, e.g., App. Br. 5-6, Reply
Br. 1-2), Appellant does not persuade us that the Examiner erred in finding
that it would have been obvious from the teachings of Lo and Carruthers
“that the activated carbon could be taken straight from its cooling
environment and placed into a canister.” Ans. 6. Here, Appellant contends
that the Examiner improperly relied on “hindsight” in ascertaining “what can
be done with the activated carbon after its production” since degradation of
the activated carbon during canister assembly, which is addressed by
Appellant, “obviously has not been a consideration in earlier dispensing
systems.” App. Br. 7.
We disagree with Appellant’s assertion of improper hindsight. Lo
clearly discloses a dispensing system in which “gas is adsorbed onto the
solid under pressure and desorbed therefrom when the pressure is released.”
Ans. 5 referencing Lo 5:63 to 6:17. Adsorption is generally understood as
pertaining to the adhesion of a layer of molecules to a surface of a solid
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body,
3
here the activated carbon. Carruthers teaches controlling pore
widening of the activated carbon so as to result in “an increase in micropore
volume.” Carruthers 9:7-11. Hence, Carruthers’ teaches a process that
controls the surface configuration of the activated carbon and, as indicated
supra, adsorption is affected by surface configuration. In view of these
teachings, we are not persuaded the Examiner erred in finding that the
combination of Lo and Carruthers would ensure that “the activated carbon
has a high level of micropore volume and hence a greater capacity for gas
[adsorbance].” Ans. 4. Furthermore, we are not persuaded the Examiner
improperly relied on hindsight as Appellant has not indicated what
knowledge was gleaned only from Appellant’s disclosure. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971).
Appellant also asserts a ‘long felt need’ and ‘recognition in the
industry’ for their accomplishments. App. Br. 5, see also 7. However, these
are merely attorney arguments and Appellant has not provided any evidence
in support of such allegations, nor are these allegations otherwise self-
evident from the record. This is particularly the case since Appellant
acknowledges that the “use of adsorbents, especially activated carbons, to
act as a ‘reservoir’ for the permanent (propellant) gas has long been known.”
App. Br. 4 referencing Lo (“[a]ctivated charcoal is highly preferred because
of its high degree of adsorptivity.” Lo 3:3-4).
In view of the record presented, we do not find Appellant’s
contentions persuasive and as such, we sustain the Examiner’s rejection of
claims 1 and 29-35.

3
See Webster’s New Collegiate Dictionary (1979), at pg. 16.
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Application 11/490,817

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DECISION
The Examiner’s rejection of claims 1 and 29-35 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD