Ex Parte Braun et al

Patent Trial and Appeal Board

Mar 14, 2013

11721077 (P.T.A.B. Mar. 14, 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.
11/721,077 06/07/2007 Norbert Braun 53397 6182
1609 7590 03/14/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
SAHA, BIJAY S
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
03/14/2013 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 NORBERT BRAUN, JORG EILERS and DIRK MULLER
____________

Appeal 2012-000345
Application 11/721,077
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-10. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2012-000345
Application 11/721,077

2
Appellants’ claimed invention is directed to an odorant for hydrogen
gas comprising one or more acrylic acid alkyl esters and acetophenone, an
odorized hydrogen gas containing same, and a process for preparing such an
odorized gas. As Appellants explain (Spec. 2, ll. 1-6):
[t]hese odorants are perceptible even when highly diluted
and because of their exceptionally unpleasant odour they
provoke an alarm association in people in the desired way. The
odorant must not only have an unpleasant and unmistakable
odour but above all must clearly represent a warning odour. The
smell of the odorant and the odorised (fuel) gas must therefore
not be familiar to people from everyday life, e.g. from the
kitchen or home.

Appellants note that hydrogen odorants should be compatible with
catalysts (Spec. 10, ll. 9-13). Appellants report that mixtures of
acetophenone and the acrylic acid alkyl esters have markedly improved
odorizing performance as compared to either component utilized alone
(Spec. 13 and 14).
Claim 1 is illustrative and reproduced below:
1. A nitrogen-free, selenium-free and sulfur-free odorant for
hydrogen gas, comprising
A) one or more acrylic acid C1-C6-alkyl esters;
B) acetophenone;
C) optionally one or more compounds from the group of C3-C4-
aldehydes;
D) optionally one or more antioxidants.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Farbood 6,165,517 Dec. 26, 2000
Appeal 2012-000345
Application 11/721,077

3
Flynn 2004/0031314 A1 Feb. 19, 2004
Kato 2005/0020479 A1 Jan. 27, 2005
Mansfield (as translated) DE 10235752 A1 Feb. 19, 2004

The Examiner maintains the following grounds of rejection:
Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mansfield (DE 1023572 A1) in view of Farbood and
Kato.1
We reverse the stated rejection. Our reasoning follows.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner has
not met that burden substantially for reasons argued by Appellants (App. Br.
4-9, 14, and 15; Reply Br. 1-3).
The Examiner recognizes that Mansfield does not disclose an odorant
composition for gaseous fuel that includes methane that comprises
acetophenone in addition to the acrylic acid alkyl esters of Mansfield (Ans.
5).2 The Examiner turns to Farbood for teaching acetophenone “for its
organoleptic properties in augmenting or enhancing the aroma (Farbood col
2 line 40)” (Ans. 5).
Based on the additional teachings of Farbood, the Examiner maintains
that “it would have been obvious to a person of ordinary skill in the art to

1 The first listed named co-inventor of DE 1023572 is Gerd Mansfield. The
Examiner refers to this reference utilizing the first name of Gerd Mansfield.
2 All of the appealed claims require that the odorant includes acetophenone
in addition to acrylic acid alkyl esters (see independent appealed claims 1, 8,
and 9).
Appeal 2012-000345
Application 11/721,077

4
formulate an odorant (Gerd [Mansfield]) utilizing acetophenone (Farbood)”
because “[o]ne of ordinary skill in the art . . . would have been motivated to
use acetophenone” in order to “to augment the fragrance compositions and
enhance[ ] the effect of odorant in the gas” (id.).
Farbood is not directed to an odorant for a fuel gas containing
methane as Mansfield is concerned with or an odorant for a hydrogen gas as
the appealed claims are directed to (App. Br. 5). Rather, Farbood teaches
that acetophenone “is useful for its organoleptic properties in augmenting or
enhancing the aroma or taste of consumable materials such as food stuffs,
chewing gums, toothpastes . . . and the like” (col. 2, ll. 25-47). The
Examiner has not reasonably explained why one of ordinary skill in the art
would have been led to employ the acetophenone of Farbood, which is
taught to enhance the aroma or taste of the various consumable products
mentioned by Farbood, in combination with the odorant including acrylic
acid alkyl esters of Mansfield for formulating a combined odorant product
for hydrogen gas (App. Br. 6-9; Reply Br. 1-4). In this regard, the
Examiner’s assertion to the effect that the proposed combination would have
been obvious to one of ordinary skill in the art because between Mansfield
and Farbood the acrylic acid alkyl esters and acetophenone are taught begs
the question as to the obviousness of their combination (Ans. 14). After all,
the Examiner has not even established that Farbood is directed to
formulating an odorant composition that could be useful for detecting a
gaseous fuel.
On this record, the Examiner’s proposed modification of Mansfield
appears to be premised on an impermissible use of hindsight after review of
Appellant’s disclosure rather than on a supported reason to modify
Appeal 2012-000345
Application 11/721,077

5
Mansfield based on the disparate teachings of Farbood in combination
therewith. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact
finder must be aware “of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning”; citing Graham v.
John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)). Rejections
based on § 103(a) must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior
art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
The Examiner has not explained how the additional cited Kato
reference remedies the above-noted deficiencies in the stated rejection. As
stated in KSR, 550 U.S. at 418 (2007), “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness” (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
It follows that we do not sustain the Examiner’s obviousness rejection
over the applied prior art.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

Appeal 2012-000345
Application 11/721,077

6

tc