Ex Parte Flynn et al

Board of Patent Appeals and Interferences

Oct 20, 2009

10637608 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK FLYNN and MICHAEL SPRAGUE
____________

Appeal 2008-005615
Application 10/637,608
Technology Center 1700
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Decided: October 20, 2009
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Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-005615
Application 10/637,608

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2-4, 7-11, 47-53, and 59 (Appeal Brief resubmitted on December 6,
2007, hereinafter “App. Br.”; Examiner’s Answer mailed on April 8, 2008,
hereinafter “Ans.” 3; Final Office Action mailed on December 20, 2005).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ claimed invention relates to a hydrogen composition
comprising hydrogen and a specified odorant (selenium compound)
(Specification, hereinafter “Spec.,” ¶¶ [03], [05] and appealed claim 2).
According to Appellants, the odorant alleviates safety concerns in the event
of hydrogen leakage (Spec. ¶ [03]).
Claim 2 on appeal reads as follows:
2. A hydrogen composition comprising: hydrogen; and
an odorant, said odorant having a vapor pressure greater than
0.5 psi and having a smell detectable at less than 1 ppm by a
human nose, wherein said odorant is a selenium compound.

The Examiner relied upon the following as evidence of
unpatentability:
Prentice 1,643,954 Oct. 4, 1927
Rasmussen 4,496,639 Jan. 29, 1985
Baugh 4,656,038 Apr. 7, 1987
Borschel 5,221,545 June 22, 1993
Schrauzer 2002/0197304 A1 Dec. 26, 2002
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Ecalle (FR ‘622)1 FR 2 645 622 A1 Oct. 12, 1990

The Examiner rejected the claims under 35 U.S.C. § 103(a) as follows
(Ans. 5-6):
I. Claims 2-4, 7-11, 47-53, and 59 as unpatentable over FR
‘622 in view of Prentice;
II. Claims 2, 7-11, and 59 as unpatentable over FR ‘622 in
view of either Borschel or Rasmussen;
III. Claims 2, 3, 7-11, 47-49, 52, and 59 as unpatentable over
FR ‘622 in view of Schrauzer; and
IV. Claims 2, 4, 7-11, 50, 51, 53, and 59 as unpatentable over
FR ‘622 in view of Baugh.

ISSUES
The Examiner found that FR ‘622 describes an industrial hydrogen
composition comprising hydrogen and an odorous compound such as a
mercaptan, a thiophane, or a product known as “TBM,” which is added for
the purpose of leak detection (Ans. 5, 7-8). The Examiner further found that
each of the other prior art references (Prentice, Borschel, Rasmussen,
Schrauzer, and Baugh) teaches that various selenium compounds are known
to exhibit odor (id. at 5-6). Based on these findings, the Examiner
concluded that one of ordinary skill in the art would have found it obvious to
use a selenium compound (in lieu of, e.g., mercaptan) as the odorous

1 We refer to the EAST Version of the Abstract dated October 14, 2004 and
the English language translation of April 2008, both of which were entered
into the record by the Examiner.
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compound in FR ‘622 with the reasonable expectation that these compounds
would be interchangeable as suitable odorous compounds (Ans. 5-6).
Appellants contend that the Examiner’s rejections are in error because
FR ‘622 “only describes using sulfur compounds as odorants” and not any
odorous compound (App. Br. 7). Appellants further assert that the Examiner
erred because the rejections combine references that are dissimilar from each
other (id. at 8, 15, 22, 28, and 33-34).
Thus, the dispositive issues are:
Have Appellants shown reversible error in the Examiner’s factual
finding that the disclosure of FR ‘622 is not limited to the enumerated sulfur
compounds?
Have Appellants shown reversible error in the Examiner’s
obviousness rejections because they are each based on a combination of
dissimilar references?

FINDINGS OF FACT (FF)
1. FR ‘622 describes the use of an odorous gaseous product such
as a mercaptan, a thiophane, or a product known as “TBM” for
the purpose of detecting industrial hydrogen leaks (Abstract;
Translation at 2; Claim 1).
2. Prentice, which relates to compositions for “defensive or
offensive projection” (p. 1, ll. 2-3), teaches that various
compounds including mercaptans and selenides are odorous (p.
2, ll. 6-10).
3. Rasmussen, which relates to treatments for enhancing the
performance of polycrystalline ceramic electrolytes, teaches
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that hydrogen selenide, while toxic, exhibits “a strong odor so
that any leaks can be easily detected” (col. 1, ll. 48-56; col. 4, ll.
21-24).
4. Baugh, which relates to compositions for repelling animals,
teaches that methyl selenide or dimethyl selenide exhibits an
offensive odor to various animals including deer, rabbits, mice,
dogs, gophers, and prairie dogs (col. 5, ll. 40-50).
5. Borschel teaches that sodium selenite has been used as a
component in nutritional products but that its interaction with
other components creates hydrogen selenide, which has a
repugnant odor (col. 1, ll. 28-44).
6. Schrauzer teaches that selenium is an essential trace element
that is the functional component of several important enzymes
and even recognized as an anticarcinogen (¶ [0001]).
7. Schrauzer states that selenols have an unpleasant odor (¶
[0021]).

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show reversible error in the
Examiner’s rejections. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed. Cir.
2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
The Supreme Court of the United States explained “that when a patent
claims a structure already known in the prior art that is altered by mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007). The Court further stated that “[w]hen a work is
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available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one.” Id. at
417.

ANALYSIS
In their opening Brief, Appellants have not argued for the separate
patentability of any claim. Accordingly, we confine our discussion to
claim 2. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants do not contest the Examiner’s factual findings that
Prentice, Borschel, Rasmussen, Schrauzer, and Baugh teach that selenium
compounds are known to exhibit odor – even odor sufficient to facilitate
leak detection (FF 2-5 and 7). Rather, Appellants’ position hinges on the
belief that the disclosure of FR ‘622 is limited to certain sulfur compounds
(App. Br. 6).
We cannot agree with Appellants. As succinctly stated by the
Examiner (Ans. 7-8), the disclosure of FR ‘622 is not limited to mercaptan,
thiophane, or “TBM” (FF 1). To the contrary, the phrase “an odorous
gaseous product . . . such as a mercaptan, a thiophane, or a product known
under the name ‘TBM’” in FR ‘622 (Abstract; emphasis added) would have
indicated to one of ordinary skill in the art that the reference disclosure is in
no way limited to the enumerated compounds but that other suitable odorous
compounds may also be used. Hence, we detect no error in the Examiner’s
conclusion that a person having ordinary skill in the art would have found it
obvious to use a selenium compound (in lieu of, e.g., mercaptan) as the
odorous compound in FR ‘622 with the reasonable expectation that these
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compounds would be interchangeable as suitable odorous compounds, thus
arriving at a composition encompassed by appealed claim 2.
We also find no persuasive merit in Appellants’ contention that the
Examiner’s rejections are in error because the combined references are
“dissimilar” (App. Br. 15, 22, 28, and 33-34). As pointed out by the
Examiner (Ans. 8), Prentice, Borschel, Rasmussen, Schrauzer, and Baugh
are cited to demonstrate that certain selenium compounds are, like the
enumerated sulfur compounds disclosed in FR ‘622, odorous. Merely
asserting that these “secondary” references do not disclose the use of these
odorous selenium compounds in hydrogen compositions does not
demonstrate error in the Examiner’s rejections because, “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one.” KSR,
550 U.S. at 417.
As a final point, Appellants’ arguments concerning the alleged
impropriety of the Examiner’s election of species/restriction requirements
are likewise ineffective to show reversible error as to the rejections because
these arguments relate to petitionable subject matter. See 37 C.F.R. § 1.144.
For these reasons, we uphold each of the Examiner’s rejections.

CONCLUSION
On this record, Appellants have failed to show reversible error in the
Examiner’s factual finding that the disclosure of FR ‘622 is not limited to
the enumerated sulfur compounds.
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Appellants have also failed to show reversible error in the Examiner’s
obviousness rejections by merely asserting that the rejections are each based
on a combination of dissimilar references.

DECISION
The Examiner’s decision to reject:
I. Claims 2-4, 7-11, 47-53, and 59 as unpatentable over FR
‘622 in view of Prentice;
II. Claims 2, 7-11, and 59 as unpatentable over FR ‘622 in
view of either Borschel or Rasmussen;
III. Claims 2, 3, 7-11, 47-49, 52, and 59 as unpatentable over
FR ‘622 in view of Schrauzer; and
IV. Claims 2, 4, 7-11, 50, 51, 53, and 59 as unpatentable over
FR ‘622 in view of Baugh
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

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