Ex Parte 6886553 et al

Board of Patent Appeals and Interferences

Jan 12, 2012

90008869 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/008,869 10/05/2007 6886553 68803(302728?) 1108
24504 7590 01/13/2012
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339
EXAMINER
WILLIAMS, CATHERINE SERKE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HEATMAX, INC.
Patent Owner and Appellant
____________

Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JOSIAH C. COCKS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

2
Heatmax, Inc., the owner of United States Patent 6,886,553 B2
(hereinafter the “’553 Patent1”), appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-4, 8-16, 18, and 19.2 We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM-IN-PART and REVERSE-IN-PART.

STATEMENT OF THE CASE
The current reexamination was ordered based on a Request for Ex
Parte Reexamination filed by William L. Brooks of Edwards, Angell,
Palmer and Dodge, LLP on October 5, 2007 (Order Granting Request for Ex
Parte Reexamination mailed December 10, 2007).
The ’553 Patent states that the invention relates to a self-contained
personal warming apparatus (col. 1, ll. 6-8).
Claim 1 on appeal reads as follows:
1. A self-contained, disposable, single-use heat
generating apparatus, comprising:
a heat generating pack comprising:
a first bag layer having a first surface area;
a second bag layer having a second surface area, said
second bag layer being fixed to said first bag layer, such that
said first bag layer and said second bag layer [defining]define a
pouch therebetween;
a heat generating agent disposed in said pouch, said heat
generating agent arranged and configured to consume air at a

1 The ’553 Patent issued to Daniel H. Yim on May 3, 2005 based on
Application 10/405,668 filed on April 1, 2003.
2 See Appeal Brief filed on February 15, 2011, hereinafter “App. Br.,” 2;
Final Office Action mailed October 15, 2010.
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

3
predetermined air consumption rate in an exothermic reaction;
and
at least one of said first surface area and said second
surface area comprises an air permeable surface area having a
predetermined airflow rate at which air is introduced to said
heat generating agent, said predetermined airflow rate being
arranged and configured to be less than said predetermined air
consumption rate such that said heat generating agent remains
substantially evenly distributed within said pouch, wherein one
of said first surface area and said second surface area comprises
an air permeable surface area and the other of said first surface
area and said second surface area comprises an air impermeable
surface area, wherein said air impermeable surface area
comprises a low coefficient of friction.
(App. Br., Claims App’x. A1.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed March 25, 2011, hereinafter
“Ans.,” 3, 5, 7-11, 13):
Yates 5,928,275 July 27, 1999

Koiso JP 58-92752 June 2, 1983
Ohbiki JP 5-30432 Aug. 4, 1993
Tsuji JP 7-90030 Oct. 4, 1995

The Patent Owner relied upon the following as evidence of non-
obviousness:
Declaration of Uma Ramachandran filed on May 19, 2008 (hereinafter
“Ramachandran Declaration” or “Ramachandran Decl.”).

The Examiner rejected the claims as follows:
I. Claims 1-3, 8-10, 14-16, 18, and 19 under 35
U.S.C. § 102(b) as anticipated by Tsuji (Ans. 5-7);
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

4
II. Claims 1-4, 10, 14, and 18 under 35 U.S.C.
§ 102(b) as anticipated by Ohbiki (Ans. 7-8);
III. Claims 1-3, 8-12, 14-16, and 18 under 35 U.S.C.
§ 102(b) as anticipated by Koiso (Ans. 8-9);
IV. Claims 1-3, 8-10, 12, 14-16, 18, and 19 under 35
U.S.C. § 103(a) as unpatentable over Tsuji (Ans.
9);
V. Claims 1-4, 10, 12, 14, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Ohbiki (Ans. 10);
VI. Claims 1-3, 8-12, 14-16, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Koiso (Ans. 10-11);3
VII. Claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Tsuji or Koiso in view of Ohbiki (Ans. 11);
VIII. Claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Tsuji, Ohbiki, or Koiso, each in view of Yates
(Ans. 11-13); and
IX. Claims 11, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Koiso in view of Tsuji (Ans.
13).4

3 The Examiner also refers to United States Patent 5,187,814 to Gold issued
on February 23, 1993 (Ans. 3, 10). Gold, however, was not included in any
of the statements of the rejections. Accordingly, we do not consider it as
part of the evidence supporting the Examiner’s rejections. In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to
support a rejection, whether or not in a ‘minor capacity,’ there would appear
to be no excuse for not positively including the reference in the statement of
rejection.”).
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

5

REJECTIONS BASED ON TSUJI AS A PRINCIPAL REFERENCE
ISSUES
The Examiner asserted that the limitation “surface area comprises a
low coefficient of friction” (claim 1) is interpreted to mean that “the surface
materials and structure are configured such that one can easily slide the [heat
generating] pack into a pocket” (Ans. 4). According to the Examiner,
Tsuji’s rayon non-woven fabric “(3) has an agreeable feeling in the case of
using it as a packet warmer” and “the rayon non-woven fabric will have a
low coefficient of friction since it is disclosed in Tsuji to be inserted into a
pocket during use and the figures show the surface area as being smooth”
(Ans. 6). Alternatively, the Examiner asserted that a person of ordinary skill
in the art would have found it obvious to incorporate “any low coefficient of
friction material including a low coefficient of friction polyethylene or a low
coefficient of friction polypropylene into any one of the devices of Tsuji,
Ohbiki and Koiso as a simple substitution of one material for another” (Ans.
10; emphasis added).
The Patent Owner contends that the Examiner has not demonstrated
that Tsuji anticipates the disputed claim limitation because: (i) the mere fact
that Tusji’s rayon non-woven fabric has an “agreeable feeling” when used as
a packet warmer “does not correspond to providing an air impermeable
surface area that comprises a low coefficient of friction”; and (ii) “[m]erely
exhibiting a smooth surface or texture . . . does not ensure that the surface

4 In our opinion below, our citations to Koiso, Ohbiki, and Tsuji are to the
English language translations found in the record.
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

6
exhibits a low coefficient of friction such as to allow an object to easily slide
into a pocket” (App. Br. 7-8; see also App. Br. 8-10). Specifically, the
Patent Owner argues that surface smoothness alone would not necessarily
result in a surface with “a low coefficient of friction” relative to the pocket
because “[t]he coefficient of friction depends on the materials used and
results from the contact between two surfaces” (Reply Br. 2, filed May 25,
2011; App. Br. 8). Regarding obviousness, the Patent Owner contends that
the Examiner failed to articulate a reason why a person of ordinary skill in
the art would have combined the prior art references in the manner claimed
(App. Br. 17-18).
Thus, the dispositive issues arising from these contentions are:
(1) Did the Examiner demonstrate that a surface area of Tsuji’s
rayon non-woven fabric would necessarily comprise “a low coefficient of
friction,” as recited in the independent claims (e.g., claim 1)?
(2) Did the Examiner articulate sufficient reasoning with some
rational underpinning to support a conclusion that a person of ordinary skill
in the art would have used polyethylene or polypropylene in Tsuji in order to
arrive at a device encompassed by the appealed claims?

FINDINGS OF FACT (“FF”)
1. Figure 3 of the ’553 Patent is reproduced below:
App
Reex
Paten

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t 6,886,55
Fi
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an
su
2. In
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id
su
“T
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3. Th
fo
26
he
02361
Control 9
3 B2
gure 3 abo
aimed war
air perme
rface area
the “DET
BODIM
entifies po
itable for
he air imp
mprise po
ol. 2, ll. 52
e ’553 Pa
llows: “It
exhibits a
at generat
0/008,869
ve depicts
ming appa
able surfa
26 (col. 2
AILED D
ENTS” se
lyethylene
use as imp
ermeable
lyethylene
-53; col. 4
tent define
is preferab
low coef
ing pack .

7
a plan vie
ratus, in w
ce area 24
, ll. 47-48;
ESCRIPTI
ction, the ’
or polypr
ermeable
surface ar
, polyprop
, ll. 46-48
s the term
le that the
ficient of f
. . to easil

w of a bag
hich the b
and an air
col. 4, ll.
ON OF T
553 Paten
opylene as
surface are
ea 26 of th
ylene, or a
).
“low coef
air imper
riction, su
y slide int
layer 15
ag layer c
impermea
33-36).
HE PREF
t specifica
exemplar
a 26, as fo
e bag laye
ny suitabl
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of the
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ERRED
lly
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llows:
r 15 can
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low the
(not
s
”
s
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4. Ts
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5. Ts
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02361
Control 9
3 B2
own) form
nerating p
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pply amou
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taining pro
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uji’s Figu
uji’s Figu
sclosed wa
r permeab
permeabl
0/008,869
ed in a glo
acks in po
es “a warm
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tains a ca
uration ti
perty and
(pp. 2-3).
res 1 and 2
res 1 and 2
rming app
le film 2, r
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8
ve, sock,
sition, or t
ing appa
en to a he
loric value
me and fur
a good we
are repro
above de
aratus inc
ayon non-
d air impe
belt for ho
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ratus whic
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thermore
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duced belo
pict sectio
luding hea
woven fab
rmeable fi
lding heat
ol. 4, ll. 4
h assures a
ing agent,
properly a
has a good
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nal views
t generatin
ric 3, air
lm 5 (pp.

8-52).
proper
and
nd further
shape
g wearing
of the
g agent 1
6-7).

,
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

9
6. Tsuji teaches that “[t]he rayon non-woven fabric 3 is used for
assuring an agreeable feeling and an appropriate heat insulation
property in the case of using as a pocket warmer” (p. 4).

PRINCIPLES OF LAW
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification . . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Nevertheless, “this interpretation must be consistent with the one that those
skilled in the art would reach.” In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). See also In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed.
Cir. 2000) (explaining that interpretation of claim language must be
“reasonable in light of the totality of the written description.”).
Inherency of a characteristic attributed to a claimed device may not be
established by mere possibilities or probabilities. See, e.g., In re Oelrich,
666 F.2d 578, 581 (CCPA 1981).

ANALYSIS
We begin our analysis with claim construction of the disputed claim
limitation “low coefficient of friction” (claim 1). The ’553 Patent
Specification informs one skilled in the relevant art that the characteristic
“low coefficient of friction” attributed to the air impermeable surface area
allows the heat generating pack “to easily slide into a pocket . . . formed in a
glove, sock, belt for holding heat generating packs in position, or the like”
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

10
(FF 1, 3). While the limitation is arguably broad, the ’553 Patent discloses,
as part of the “DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENTS,” polyethylene and polypropylene as suitable air
impermeable surface area materials (FF 2). Thus, we construe the phrase
“low coefficient of friction” to mean a degree of friction that would
approximate (or not significantly deviate from) the coefficient of friction
that would be present when air impermeable materials such as polyethylene
or polypropylene are placed in contact with materials commonly used to
form pockets.
Having construed the disputed claim limitation, we turn to the
Examiner’s anticipation rejection. The Examiner relied on Tsuji’s
disclosure that the rayon non-woven fabric 3 has an “agreeable feeling in the
case of using it as a pocket warmer” and that the surface topography of the
rayon non-woven fabric 3 appears to be smooth (Ans. 6; FF 4-6). These
findings, however, are insufficient to demonstrate that Tsuji’s rayon non-
woven fabric 3 would inherently or necessarily have a “low coefficient of
friction,” as that term would be understood by one skilled in the relevant art.
In this case, the Examiner failed to identify sufficient evidence establishing
that coefficient of friction depends solely on an “agreeable feeling” and/or
surface smoothness. To the contrary, it would reasonably appear that one of
ordinary skill in the art would have understood that other factors such as the
materials of construction of the contacting surfaces may also affect the
coefficient of friction.
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

11
Because the Examiner’s inherency theory is based on mere
possibilities or probabilities, we cannot uphold any of the rejections that rely
on Tsuji as inherently disclosing the disputed claim limitation.
With respect to obviousness, we agree with the Patent Owner that the
Examiner’s rejection is not well founded. While the Examiner argues that
the use of “a low coefficient of friction polyethylene or a low coefficient of
friction polypropylene” in Tsuji is a matter of “simple substitution of one
material for another” (Ans. 10), the Examiner failed to articulate a reason
with some rational underpinning as to why a person of ordinary skill in the
art would have substituted non-woven rayon with polyethylene or
polypropylene. Here, the Examiner failed to make the requisite factual
findings necessary to show that polyethylene or polypropylene would be
interchangeable with a non-woven rayon for Tsuji’s purposes (FF 6).
Therefore, we cannot affirm the Examiner’s obviousness rejections.

REJECTIONS BASED ON OHBIKI AS A PRINCIPAL REFERENCE
ISSUES
The Examiner asserted that “[w]hile the surface area materials [of
Ohbiki’s apparatus] are not disclosed[,] these materials are considered to
have a low coefficient of friction since they are used in the construction of
the film for the pack as shown in figures 1 through 5 and as shown these
surfaces make a smooth surface area that can easily be slid into a pocket of a
user” (Ans. 7-8). Alternatively, the Examiner asserted that a person of
ordinary skill in the art would have found it obvious to incorporate “any low
coefficient of friction material including a low coefficient of friction
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

12
polyethylene or a low coefficient of friction polypropylene into any one of
the devices of Tsuji, Ohbiki and Koiso as a simple substitution of one
material for another” (Ans. 10; emphasis added).
The Patent Owner contends that the Examiner erred because the
smooth surface area of Ohbiki’s apparatus does not support an inference that
the air-impermeable surface area material has a low coefficient of friction
(App. Br. 11). Regarding obviousness, the Patent Owner contends that the
Examiner failed to articulate a reason why a person of ordinary skill in the
art would have combined the prior art references in the manner claimed
(App. Br. 17-18).
Thus, the dispositive issues are:
(3) Did the Examiner demonstrate that a surface area of Ohbiki’s
apparatus comprises a “low coefficient of friction” as recited in the appealed
claims?
(4) Did the Examiner articulate sufficient reasoning with some
rational underpinning to support a conclusion that a person of ordinary skill
in the art would have used polyethylene or polypropylene in Ohbiki in order
to arrive at a device encompassed by the appealed claims?

App
Reex
Paten

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relie
for th
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8,
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iner has n
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nds solely
With res
iner faile
02361
Control 9
3 B2
ADD
hbiki’s Fig
hbiki’s Fig
at generat
rtion of a
rous film
oven fabri
permeabl
a heat gen
miner’s re
han the rej
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ot identifi
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on surface
pect to ob
d to establ
0/008,869
ITIONAL
ure 1 is re
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porous film
3, a porou
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ould have
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13
FINDING
produced
e depicts
ncluding a
2, a ther
s film wra
impermea
material
ent 9, and
ALYSIS
sed on Oh
sed on Tsu
shown in
limitation
nt evidenc
understoo
ess.
we agree
a facie cas
OF FAC
below:

a containm
non-therm
mally fuse
pping mat
ble film 6
7, a heat s
a through
biki as a p
ji. Again
Ohbiki’s d
(FF 7). H
e establis
d that coe
with the P
e of obvio
T
ent bag fo
ally fuse
d portion
erial 4, a n
, an air-
ealed porti
hole 10 (p
rincipal re
, the Exam
rawings to
owever, th
hing that a
fficient of
atent Own
usness. W
r a
d
of a
on-
on
.18).
ference
iner has
account
e
person of
friction
er that the
hile the

Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

14
Examiner argues that the use of “a low coefficient of friction polyethylene or
a low coefficient of friction polypropylene” in Ohbiki is a matter of “simple
substitution of one material for another” (Ans. 10), the Examiner failed to
articulate a reason with some rational underpinning as to why a person of
ordinary skill in the art would have considered Ohbiki’s materials to be
interchangeable with polyethylene or polypropylene in the context of the
functions and/or purposes disclosed in Ohbiki.
Therefore, we cannot affirm these rejections.

REJECTIONS BASED ON KOISO AS A PRINCIPAL REFERENCE
ISSUE
The Examiner found that Koiso describes every limitation of claims 1-
3, 8-12, 14-16, and 18 (Ans. 8-9). Specifically, the Examiner found that
Koiso necessarily discloses an air-impermeable surface area with a low
coefficient of friction because the reference discloses a smooth film made of
polyethylene or polypropylene – the same materials disclosed as suitable in
the ’553 Patent (Ans. 9, 16-17).
The Patent Owner argues that “[o]ne of ordinary skill in the art will
appreciate that the use of such polymers as polyethylene and polypropylene
does not automatically correspond with providing a low coefficient of
friction material as the coefficient of friction of these polymers depends on
many various parameters such as, for example, the selected film density and
concentration of surface lubricant associated with these polymers” (App. Br.
14). In support, the Patent Owner relies on the testimony found in the
Ramachandran Declaration.
App
Reex
Paten

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8. K
ho
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9. K
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w
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an
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10. K
as
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02361
Control 9
3 B2
e dispositi
id the Exa
r polyprop
riction”?
ADDI
oiso descr
uses an ex
hen contac
oiso’s Figu
oiso’s Figu
herein the
hich are bo
d microsc
rtion (pp.
oiso disclo
suitable m
amachandr
0/008,869
ve issue is
miner err i
ylene wou
TIONAL
ibes an exo
othermic
ted with o
re 1 is rep
re 1 abov
body inclu
nded toge
opic pore
5-6).
ses, inter
aterials fo
an Decl.,

15
:
n finding t
ld reasona
FINDING
thermic b
compositio
xygen in t
roduced b
e depicts a
des air im
ther at the
film 2 that
alia, polye
r the air im
¶ 5).
hat Koiso
bly appea
S OF FAC
ody includ
n, which
he air (p. 1
elow:
n exotherm
permeable
ir peripher
forms an
thylene or
permeab
’s film ma
r to posses
T
ing a bag
generates
).
ic body,
films 1 an
al edges 4
air permea
polypropy
le film (p.
de of
s a “low
that
heat

d 3,
,
ble
lene
4;
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

16
11. The ’553 Patent criticizes pouches having a self-adhesive
layer that “can not be easily inserted into pockets formed
in socks, gloves, mittens, specially designed belts, or the
like for use” (col. 1, ll. 50-53).
12. Uma Ramachandran is an employee of the Patent Owner
(Ramachandran Decl., ¶¶ 1).
13. Ramachandran states (Ramachandran Decl., ¶ 6):
The Koiso reference fails to disclose
providing a low coefficient of friction
material. The use of such polymers as
polyethylene and polypropylene does not
automatically correspond with providing a
low coefficient of friction material as the
coefficient of friction of these polymers
depends on such parameters as the selected
film density and concentration of surface
lubricant associated with these polymers.
The Koiso reference fails to address these
parameters.
14. Ramachandran does not include any experimental tests or
technical explanations or reasoning supporting the
assertions made in the Declaration.
15. Ramachandran fails to identify any specific polyethylene
or polypropylene that would not have “a low coefficient
of friction.” (Ramachandran Decl., ¶ 6)
16. Ramachandran does not testify that Koiso’s product was
manufactured with a typical polyethylene or
polypropylene surface and found to lack the
characteristic of being easily slidable into a pocket.
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

17
PRINCIPLES OF LAW
In In re Best, 562 F.2d 1252, 1255 (CCPA 1977), a predecessor of our
reviewing court explained (internal citations and footnotes omitted; italics
added):
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product .
. . Whether the rejection is based on ‘inherency’ under 35 USC
102, on ‘prima facie obviousness’ under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.

ANALYSIS
The Patent Owner has argued the rejections based on Koiso as a
principal reference on the same or similar grounds (App. Br. 13-16, 19). In
addition, the Patent Owner has not provided any arguments in support of the
separate patentability of any particular claim. Accordingly, we confine our
discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Patent Owner contends that Koiso’s description of a polyethylene
or polypropylene surface material does not anticipate a “low coefficient of
friction” surface material, as recited in claim 1 (App. Br. 14). Specifically,
the Patent Owner relies on Ramachandran’s testimony that the coefficient of
friction of polyethylene or polypropylene depends on parameters such as
film density and surface lubricant concentration and therefore the recited
“low coefficient of friction” characteristic is not necessarily present in the
prior art (App. Br. 14; FF 13).
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

18
We are not persuaded that the Examiner erred. The inventor did not
limit the terms “low coefficient of friction” with any particular numerical
degree of friction either in the claim itself or by way of a definition in the
Specification. Rather, the inventor informed the person of ordinary skill in
the art that the limitation “low coefficient of friction” reads on any degree of
friction, provided that the heat pack “easily slide[s] into a pocket” (FF 3).
Additionally, in describing preferred embodiments, the inventor stated that
any polyethylene and polypropylene – without any limitation as to density or
lubricant content – are non-limiting examples of polymers suitable as air
impermeable surface area materials (FF 2). Koiso plainly describes the
same type of heat pack in the form of an exothermic body that has a
relatively smooth surface topography and includes air impermeable
polyethylene or polypropylene surfaces (FF 8-10). These facts, coupled
with the PTO’s inability to manufacture and/or test products, form a
sufficient basis upon which to shift the burden of proof to the Patent Owner
to show that Koiso’s product would be difficult to slide into a pocket. Best,
562 F.2d at 1255.
The Patent Owner failed to satisfy that burden. Here, the Patent
Owner relied on the Ramachandran Declaration. Ramachandran’s
testimony, however, is that of an interested party and, as pointed out by the
Examiner (Ans. 16-17), is devoid of any supporting experimental evidence
or technical reasoning. For example, the testimony lacks any detailed
explanation or supporting evidence on why it is believed that only
polyethylenes and polypropylenes of a certain film density and surface
lubricant concentration would have a “low coefficient of friction” (FF 12-
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

19
16). Notably, the Declaration lacks any test data or a detailed technical
explanation reasonably demonstrating that Koiso’s heat pack with
polyethylene or polypropylene would be difficult to slide into a pocket (FF
16). Accordingly, Ramachandran’s testimony amounts to mere conclusory
statements, which are entitled to little, if any, weight.
Moreover, we find, as did the Examiner (Ans. 16-17), that
Ramachandran’s testimony is inconsistent with the inventor’s disclosure in
the ’553 Patent. The ’553 Patent plainly teaches the characteristic of being
difficult to insert into a pocket (in the context of prior art pouches that
include a self-adhesive) as undesirable (FF 11). That description reasonably
informs one skilled in the relevant art that the invention described in the
’553 Patent is limited to apparatuses that can easily slide into a pocket. In
describing suitable surface materials for the claimed apparatus, the ’553
Patent places no limitation on the density or the surface lubricant content for
polyethylene or polypropylene (FF 2). Thus, on this record, we do not find
it credible that only certain polyethylenes and polypropylenes having
particular densities and lubricant contents would be suitable, as
Ramachandran would have us believe.
In view of the foregoing, we sustain the rejections based on Koiso as a
principal reference.

DECISION
Rejections I, II, IV, V, VII (Tsuji in view of Ohbiki), and VIII (Tsuji
or Ohbiki in view of Yates) are reversed.
Appeal 2012-002361
Reexamination Control 90/008,869
Patent 6,886,553 B2

20
Rejections III, VI, VII (Koiso in view of Ohbiki), VIII (Koiso in view
of Yates), and IX are affirmed.
Therefore, the Examiner’s decision to reject claims 1-4, 8-16, and 18
is affirmed, but the decision to reject claim 19 is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART & REVERSED-IN-PART

rvb

PATENT OWNER:
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339

THIRD-PARTY REQUESTER:
WILLIAM L. BROOKS
INTELLECTUAL PROPERTY PRACTICE GROUP
EDWARD, ANGELL, PALMER & DODGE LLP
BOX 55874
BOSTON, MA 02205