Klaus Bernau et al.

Patent Trials and Appeals Board

Aug 8, 2019

13823165 - (D) (P.T.A.B. Aug. 8, 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.
13/823,165 03/14/2013 Klaus Bernau TRW(AS022106-US-PCT 8612
26294 7590 08/08/2019
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
FELTON, AILEEN BAKER
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KLAUS BERNAU,1
Christian Bichlmaier, and Sebastian Reichgruber
________________

Appeal 2018-007786
Application 13/823,165
Technology Center 1700
________________

Before ROMULO H. DELMENDO, MARK NAGUMO, and
BRIAN D. RANGE, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Klaus Bernau, Christian Bichlmaier, and Sebastian Reichgruber
(“Bernau”) timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2
of claims 8–10 and 14.3 We have jurisdiction. 35 U.S.C. § 6. We reverse.

1 The real party in interest is identified as TRW Airbag Systems GmbH.
(Appeal Brief, filed 17 October 2017 (“Br.”), 2.)
2 Office Action mailed 14 October 2016 (“Final Rejection”; cited as “FR”).
3 Remaining copending claims 1–7, 11–13, and 15–20 have been withdrawn
from consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal 2018 007786
Application 13/823,165

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OPINION
A. Introduction4
The subject matter on appeal relates to solid propellant pellets said to
be suitable for inflators or pyrotechnical actuators of a vehicle occupant
restraint system (i.e., airbags). (Spec. 1, ll. 9–11.) The ′165 Specification
explains that “[i]n order to permit rapid pressure increases in the inflater an
[sic] as high ratio of the surface to the volume of the solid propellant as
possible is desirable.” (Spec. 1, ll. 16–18.) Granular solid propellants are
known, but the variations in grain sizes are said to lead to variations in
performance (id. at ll. 19–25); and known prior art solid propellant pellets
are said to have only “a limited ratio between the surface and the volume of
the pellet” (id. at ll. 15–16).
Bernau seeks patent protection for solid propellant pellets made by
pressing the propellant into a blank having at least one predefined braking
point dividing the pellet into at least two pieces. The Specification teaches
that, “solid propellant pellets having a small volume and a large surface can
be manufactured which do not have to be pressed individually . . . the
surface-to-volume ratio can be optimized . . . a defined surface-to-volume
ratio of the solid propellant pellets are [sic: is] provided.” (Id. at 2, ll. 14–
19.)

4 Application 13/823,165, Method for producing solid fuel tablets, solid fuel
tablets, gas generator, and module having a gas generator, filed 14 March
2013 as the national stage under 35 U.S.C. § 371 of PCT/EP2011/003917
08/04/2011, claiming the benefit of an application filed in Germany
on 29 October 2010. We refer to the “′165 Specification,” which we cite as
“Spec.”
Appeal 2018 007786
Application 13/823,165

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Claim 8 is representative and reads:
A solid propellant pellet (10[5])
manufactured from
a pressed pellet blank (16) having
at least one predetermined breaking point (18)
by breaking the pellet blank (16) along the at least
one predetermined breaking point (18),
the solid propellant pellet substantially exhibiting the
shape of a cylinder sector having
an upper end face and
a lower end face,
the at least one predetermined breaking point
extending across at least one of
the upper end face and
the lower end face.
(Claims App., Br. 16; some formatting6, and emphasis added.)
The Examiner maintains the following ground of rejection7, 8:
Claims 8–10 and 14 stand rejected under 35 U.S.C. § 103(a) in
view of Horst.9

5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
6 “Where a claims sets for a plurality of elements or steps, each element or
step of the claim should be separated by a line indentation.”
37 C.F.R. § 1.75(i) (2017).
7 Examiner’s Answer mailed 15 June 2018 (“Ans.”).
8 Because this application was filed before 16 March 2013, the effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
9 Albert W. Horst, Jr. and Frederick W. Robbins, Programmed-splitting
solid propellant grain for improved ballistic performance of guns, U.S.
Patent No. 4,581,998 (1986).
Appeal 2018 007786
Application 13/823,165

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B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds that Horst describes, e.g., cylindrical solid
propellant grains 20 having a plurality of slits 26 (FR 2, ¶ 2), as shown in
Figure 3, below.

{Figure 3 shows a cross-sectional view of solid propellant grain 20
with through-slits 26}
The Examiner determines that “it would have been obvious . . . to
form the slits to be a predetermined breaking point since Horst suggests that
the slits can cause the grain to split at a certain time.” (Id. at ¶ 3.)
Horst reveals that, as shown in Figure 6, below, at a predetermined

{Figure 6 shows grain 20 separated into sections 22 along slits 24}
time [during combustion] “grain 20 . . . will split into a plurality of pie-
shaped or wedge-shaped sections or segments when the outer wall of the
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Application 13/823,165

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grain[] 20 . . . regresses through burning to the point where the outer-most
edges of the slits are expose[d].” (Horst col. 8, ll. 8–14.)
According to the Examiner, Bernau objected, prior to the Final
Rejection, that the pellets disclosed by Horst break apart at a certain time
after ignition, not during manufacture. (FR 2, ¶ 4.) The Examiner responds,
“Applicants[’] claims do not require at what time the breaking occurs or
restrict it to be before ignition.” (Id.) Thus, it appears that the Examiner
considers that it would have been obvious to modify the slit grains shown in
Horst, Figure 3, supra. This impression is strengthened by the statement in
the Examiner’s Answer that “[t]he pellet in Horst has the same shape and a
slit through the face as that which is claimed.” (Ans. 3, last full sentence.)
As Bernau points out (Br. 9, 2d para.), the Examiner’s claim
interpretation is not based on what would have been understood by a person
of ordinary skill in the art. The first clause of claim 8 requires that solid
propellant pellet (10) is manufactured by “by breaking the pellet blank (16)
along the at least one predetermined breaking point (18).” (Claims App.,
Br. 16.) In Bernau’s words, “[t]hus claim 8 recites that the breaking of the
pellet blank occurs during the manufacture of the solid propellant pellet.”
(Br. 9, 2d para.) “Pellets” corresponding to those recited in claim 8 exist, if
at all, only during combustion of the solid propellant grains disclosed by
Horst. It is overly strained to call such transitory, reacting objects “articles
of manufacture.”
The solid propellant grains 20, disclosed by Horst and on which the
Examiner relies as evidence of obviousness, do not substantially exhibit the
shape of a cylinder sector, as required by claim 8. Only the sections 22
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Application 13/823,165

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could be said to have that structure, but when they do, they are burning, and
it is overly strained to call such transient structures “solid propellant pellets.”
One issue with the claims on appeal is that, as product-by-process
claims, most of the express structural limitations relate to the starting
pressed pellet blank (16), not to the product solid propellant pellet (10).
A product-by-process claim is a claim to the product, and is met by any prior
art product, no matter how made, that has all the properties recited in the
claim and all properties that arise from the recited process steps. As our
reviewing court explained, “[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” (SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006), quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
However, the Examiner has not come forward with credible evidence and
explanation that Horst describes, or renders obvious, pellets 10 required by
claim 8.
The Examiner makes no findings relevant to the dependent claims that
cure these defects.
We therefore reverse the appealed rejections.
C. Order
It is ORDERED that the rejection of claims 8–10 and 14 is reversed.
REVERSED