Ex Parte Kramer et al

Board of Patent Appeals and Interferences

Sep 16, 2010

09962671 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LESLIE KRAMER and KEITH FOSEN
____________

Appeal 2009-004921
Application 09/962,671
Technology Center 2600
____________

Before MAHSHID D. SAADAT, KARL D. EASTHOM,
and THOMAS S. HAHN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 begins to run from the “MAIL
DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic
delivery mode) shown on the PTOL-90A cover letter attached to this
decision.
Appeal 2009-004921
Application 09/962,671

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Appellants request reconsideration and modification of our Decision
of March 25, 2010, wherein we sustained the Examiner’s rejection of the
appealed claims under 35 U.S.C. § 103(a).
We have carefully considered the arguments presented by Appellants
in the Request and reviewed our decision. However, those arguments do not
persuade us that our decision was in error in any respect or that we have
overlooked any relevant points in reaching our decision that the Examiner
drew the proper legal conclusion that the claimed subject matter would have
been obvious to one of ordinary skill in the art within the meaning of § 103
in view of the applied prior art.
Appellants assert that our Decision was based on an erroneous
determination of the scope of claim 1 which requires determining “whether
detected environmental attributes comply with predetermined warranty
provisions, which include a probability of munition performance and a range
of environmental conditions warranted by the manufacturer” (Request 2).
Appellants contend that the feature of “warranty provisions . . . warranted by
a manufacturer” does not amount to nonfunctional descriptive material, but
instead constitutes a substantive limitation of the claim (Request 3). In that
regard, Appellants provide extensive explanation regarding how compliance
with the parameters specified in the manufacturer’s warranty ensures that the
purchaser can exercise the provisions of the warranty against the
manufacturer in the event that the munition fails to operate as warranted by
the manufacturer (id.).
Appellants concede that Jaul discloses a process for determining
whether an energetic material is susceptible to cook-off (Request 4).
However, Appellants contend that our finding on page 6 stating that “the
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PNR for the cook-off represents a threshold indicating the level below which
the munition will not cook-off and, in fact, will operate according to the
manufacturer warranty, i.e., remains useable with no cook-off” is in error
(Request 4-5). Appellants argue that Jaul does not compare conditions
associated with the storage of a munition with the “weapon manufacturer’s
warranty provisions” (Request 4).
We disagree because the term “warranty provisions” merely amounts
to a set of values and parameters specified in the manufacturer’s warranty
(see Spec. ¶ [0051]). While the claimed feature of manufacturer’s warranty
provisions may include a variety of parameters related to environmental
conditions to determine whether the munition operates in accordance with
the manufacturer’s specifications, claim 1 merely requires comparing the
detected status information with another set of values. The claim recites
these values as predetermined warranty provisions for assessing operability
of the munition functioning as a threshold which determines compliance
with the warranty provisions. As stated in our Decision (Decision 5-6), the
point of no return (PNR) for the cook-off in Jaul also functions as a
threshold set by the manufacturer, and indicates whether the munition is
simply operable according to the weapon manufacturer’s warranty
provisions if cook-off is not reached. In other words, the collected data is
compared with the threshold value to indicate the level below which the
munition will operate according to the manufacturer warranty, i.e., remains
useable with no cook-off.
We also note that while our Decision was based alternatively on
characterizing the recited term “warranty” as nonfunctional descriptive
material (Decision 6), we did not read the limitation out of the claim, as
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asserted by Appellants (Request 3). Contrary to Appellants’ contentions
(Request 4-5), even if Jaul does not employ the term “warranty,” Jaul
compares the status information with a set of predetermined conditions
related to the time for cook-off for that specific type of munition which is set
by the manufacturer to determine whether the munition is still operable. Our
analysis was consistent with Appellants’ disclosure (Spec. ¶ [0052])
describing that if operated or stored within certain parameters, such as
temperature, humidity, etc., the manufacturer guarantees the operation of the
munition. We found that those parameters represent merely values or
thresholds with which the detected status information is compared. Thus,
Jaul’s warning predictions of cook-off under various conditions constitute an
implied warranty. Alternatively, characterizing these (performance criteria)
conditions as a warranty in apparatus claim 1 does not alter how claim 1
operates, rendering the term “warranty” nonfunctional. In addition, any
disclosed specific performance or conditions warranted by the manufacturer
and the recourses the purchaser may have against the manufacturer do not
structurally or functionally delimit claim 1.
Therefore, based on the foregoing discussions and considering the
teachings of the prior art as a whole supporting the proposed modification of
Powell by Jaul, we remain of the opinion that we did appropriately affirm
the Examiner’s rejection of the claims. Accordingly, we have granted
Appellants’ request to the extent that we have reconsidered our Decision, but
we deny Appellants’ request to modify it.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

Appeal 2009-004921
Application 09/962,671

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DENIED

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