Ex Parte Wessling, et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10808677 (B.P.A.I. Sep. 27, 2010)

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.
10/808,677 03/25/2004 Francis C. Wessling, JR. 322101.1030 6200
24504 7590 09/28/2010
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994
EXAMINER
ALI, MOHAMMAD M
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
09/28/2010 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 FRANCIS C. WESSLING, JR. and JAMES M. BLACKWOOD
____________

Appeal 2009-003426
Application 10/808,677
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, 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 2009-003426
Application 10/808,677

STATEMENT OF THE CASE
Francis C. Wessling, Jr. and James M. Blackwood (Appellants) seek
our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims
1-8, 10-13 and 21-27. Claims 9, 14 and 18-20 were canceled previously.
The Examiner has indicated that claims 15-17 are allowable. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE.

THE INVENTION
Appellants’ invention is directed to a phase change material as well as
to methods for employing a phase change material, particularly for use in
maintaining a desired temperature for a biological material. Claim 1,
reproduced below, is illustrative of Appellants’ invention:
1. A phase change material comprising:

a mixture of water and deuterium oxide wherein
the mole fraction of deuterium oxide is selected to
provide a desired phase change temperature in a
range above zero degrees Celsius and below 3.8
degrees Celsius, wherein the mixture is positioned
in close proximity to a biological material such
that a temperature of the biological material is
maintained near the desired phase change
temperature.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1-3, 10-12 and 22-27 under 35 U.S.C. § 102(b) as being
anticipated by Johnson (US 4,191,125, issued March 4, 1980);

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(ii) claims 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over Johnson in view of Douglas-Hamilton (US 4,530,816, issued July 23,
1985);
(iii) claims 5-8 under 35 U.S.C. § 103(a) as being unpatentable over
Hjertstrand (US 4,145,895, issued March 27, 1979) in view of Johnson;
(iv) claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Johnson; and
(v) claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Hjertstrand in view of Johnson.2
ISSUES
Has the Examiner erroneously interpreted and applied the teachings
of the Johnson patent in rejecting certain claims as being anticipated by
Johnson and other claims as being obvious in view of Johnson alone or
in combination with other references?
ANALYSIS
Claims 1-3, 10-12 and 22-27--Anticipation--Johnson
Appellants present the same arguments for patentability for both
independent claim 1 and independent claim 10. Appellants do not separately
argue for the patentability of any of dependent claims 2, 3, 11, 12, and 22-
27.3

2 The rejections of claim 21 on obviousness grounds were identified as new
grounds of rejection in the Examiner’s Answer. (Ans. 7). Appellants filed a
Reply Brief addressing these new grounds, and expressly requested that the
appeal be maintained with the new grounds included. (Reply Br. 4).

3 Appellants purport to group dependent claim 5 with these dependent claims
(Appeal Br. 5), however claim 5 is subject to a different ground of rejection,
as being obvious over Hjertstrand and Johnson. (See Ans. 6).

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At issue in connection with this anticipation rejection is whether the
Johnson patent discloses a phase change material that has a phase change
temperature in the range of above zero degrees and below 3.8 degrees
Celsius. The Examiner’s findings that such a material is disclosed by
Johnson rely on passages at column 2, lines 57-68, and at column 4, lines
33-42. (Ans. 4, 13). Appellants contend that those passages do not support
the Examiner’s finding of anticipation. (Appeal Br. 5-6).
The Johnson patent is directed to a freeze indicating device in the
form of a liquid-containing capsule, in which the liquid, upon reaching its
freezing temperature is intended to change phase from liquid to solid, and
in the general case where the liquid is water, will expand upon freezing
to rupture the capsule to indicate that the capsule has been exposed to a
temperature sufficiently low to freeze the water. (Johnson, col. 1, ll. 5-20).
Johnson discusses that the use of water alone in the capsule had previously
shown to not accurately indicate that the capsule had been exposed to the
normal freezing point of water, i.e., zero degrees Celsius, due to an
undercooling effect that would result in the encapsulated water not freezing
until a temperature as low as -16° C. was reached. (Id. at col. 1, ll. 21-26).
The Johnson patent discloses that the freeze indicator device and the
freezing point of the liquid therein can be fine-tuned so that the problems
associated with the undercooling effect can be overcome, and so that the
device will operate properly (fracture) at a temperature closer to the desired
predetermined temperature. (Id. at col. 1, ll. 42-44; col. 2, ll. 1-4; col. 2, ll.
57-68). Johnson accomplishes this by adding nucleating agents to the liquid,
and by employing a mixture of deuterium oxide and water as the
encapsulated liquid. (Id.).

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Johnson further discloses that the use of nucleating agents alone
(presumably with the liquid being only water) will still result in the device
freezing at about -4° C., which is indicative that the undercooling effect
is lessened but not eliminated. (Id. at col. 2, ll. 63-65). Johnson thus
additionally proposes that deuterium oxide (D2O), which has a normal freeze
point around 4° C., be added to water to raise the freeze point of the mixture.
(Id. at col. 2, ll. 60-63). Johnson specifically discloses that a mixture of 98%
D2O and 2% H2O will raise the freeze point to approximately 0° C., and that
“[v]arious freeze points between -4° C. and 0° C. may be provided by
adding lesser and lesser amount of D2O below 98%.” (Johnson, col. 2, l. 65-
col. 3, l. 2).
The Examiner maintains that these disclosures in Johnson explicitly
teach “a phase change material having a selectable phase change
temperature in a range between approximately zero degrees Celsius and 3.8
degrees Celsius.” (Ans. 4). However, claims 1 and 10 call for the phase
change material to have a phase change temperature above zero degrees
Celsius, and, in a best case scenario for the Examiner, these teachings of
Johnson disclose providing a phase change material having a phase change
temperature of up to zero degrees Celsius.
The Examiner appears to recognize the tenuousness of relying on
these portions of the Johnson patent as support for the anticipation rejection,
in that the Examiner augments the grounds for rejection in the Answer with
a citation to column 4, lines 40-42, which is part of a discussion of a
working example (Example II) presented in the Johnson disclosure. There,
Johnson reports that, of thirty sample frangible containers provisioned with a
liquid made up of 98% deuterium oxide and 2% water, as well as a

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nucleating agent and a surfactant, 98% of the containers provided an
indication of freeze when held at -1° C. for one hour, and that 75% of the
containers froze between 0.5° C. and -0.5° C. (Johnson, col. 4, ll. 31-42).
The Examiner finds that this amounts to a disclosure of a phase change
material having a phase change temperature that “is equivalent to a phase
change temperature close to a desired temperature above zero degree Celsius
. . .”. (Ans. 4).
We do not agree with the Examiner’s finding that the disclosure of
a subset (75%) of the tested samples having a phase change temperature
between 0.5° C. and -0.5° C. is equivalent to the claimed range. As pointed
out by Appellants, in their use of the phase change material as a temperature
regulator for biological materials, temperatures at and below zero degrees
Celsius can damage the biological materials. (See, e.g., Spec. 4-5).
Even assuming that the disclosure in Johnson Example II is regarded
as a disclosure of a range of phase change temperatures which overlaps
Appellants’ claimed range, we do not find adequate evidence to support
a finding of anticipation. We are guided by the principle that the claimed
subject matter must be disclosed in the reference with sufficient specificity
in order to constitute an anticipation. Atofina v. Great Lakes Chem. Corp,
441 F.3d 991, 999 (Fed. Cir. 2006). In the Atofina case, neither a disclosure
of a broad range of 100-500° C., nor a disclosure of a narrower preferred
range of 150-350° C., was found to anticipate a claimed range of 330-450°
C., despite the former range fully encompassing the claimed range and the
latter range having a degree of overlap with the claimed range. Id. The
Federal Circuit noted, in this respect, that the disclosure of a range is no

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more a disclosure of the end points of the range than it is of each of the
intermediate points. Id.
In the present case, the cited discussion of test results in Johnson
do not identify any particular test specimens among the thirty tested that
exhibited specific phase change temperatures within the claimed range,
i.e., above zero degrees Celsius and below 3.8 degrees Celsius. More
significantly, the ostensible “range” of phase change temperatures of 0.5 to
-0.5° C. finds itself at odds with the more salient disclosure in Johnson that
the range of freezing temperatures that may be obtained is “between -4° C.
and 0° C.” (Johnson, col. 2, l. 68). The Johnson patent thus does not
contain sufficiently specific disclosure of subject matter falling within the
scope of claims 1 and 10. We are mindful, in making this finding, that the
mixture proposed by Johnson (98% D2O, 2% H2O), when viewed in light
of Appellants’ disclosure, possibly would have a phase change temperature
within the claimed range. However, we are constrained to determine what
Johnson discloses to persons of ordinary skill in the art, without taking into
account material found in Appellants’ disclosure.
The rejection of claims 1-3, 10-12 and 22-27 as being anticipated by
Johnson will not be sustained.
Claims 4 and 13--Obviousness--Johnson in view of Douglas-Hamilton
The Examiner relies on the Douglas-Hamilton patent as teaching the
use of a gelatinized ice, and concludes that it would have been obvious to
add a gel material to the phase change material of Johnson, because adding
the gel would increase the thermal capacity of the mixture. (Ans. 6). The
findings and conclusions related to this rejection do not account for the basic
deficiency of the Johnson patent with respect to claims 1 and 10 in failing to

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disclose a phase change temperature within the claimed range. In addition,
we agree with Appellants (Appeal Br. 9) that the Examiner has not
adequately established that persons of ordinary skill in the art would view
increasing the thermal capacity of the mixture in the freeze indicator of
Johnson as a desirable modification. As such, we view the Examiner’s
expressed reason to combine the teachings as lacking in rational
underpinnings.
The rejection of claims 4 and 13 will not be sustained.
Claims 5-8--Obviousness--Hjertstrand in view of Johnson
Claims 6-8 are directed to a method that involves placing a phase
change material close to or in close proximity to a biological material to
maintain the temperature of the biological material at or near a phase change
temperature of the phase change material. The phase change material is
claimed as comprising a mixture of water and deuterium oxide that has a
phase change temperature above zero degrees Celsius and below 3.8 degrees
Celsius. (Appeal Br., Claims Appendix).
The Examiner cites to the Hjertstrand patent as disclosing a method
for placing a phase change material near a biological material to control
the temperature of the biological material. (Ans. 6). The Examiner
acknowledges that Hjertstrand does not disclose using a phase change
material that comprises a mixture of deuterium oxide and water. (Id.). The
Examiner concluded that it would have been obvious to employ the phase
change material of the Johnson patent, which does comprise a mixture of
deuterium oxide and water, in the Hjertstrand container, “because deuterium
oxide enables the container to maintain a temperature range of between -4
and 4 degrees Celsius, with the proper mixture determined through

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experimentation” (Ans. 7).
The Examiner, in this conclusion, appears to be taking the separate
teachings in Johnson that deuterium oxide has a freeze point around 4
degrees Celsius, and that a mixture of deuterium oxide with water can yield
freeze points between -4° C. and 0° C., as a basis for stating that deuterium
oxide enables the maintenance of a temperature range of between -4 and 4
degrees Celsius. However, even if deuterium oxide can perform as
maintained by the Examiner, this is not evidenced in the Johnson patent. As
noted above in the discussion of the anticipation rejection of claims 1 and
10, the explicit disclosure of Johnson does not appear to contemplate being
able to maintain temperatures above zero degrees Celsius. Rather, Johnson
states that a mixture of 98% deuterium oxide and 2% water will result in a
freeze point of about zero degrees Celsius, and that other freeze points lower
than zero degrees, namely between -4° C. and 0° C., may be produced by
adding lesser amounts of deuterium oxide. (Johnson, col. 2, l. 65-col. 3, l.
2).
As such, the Examiner’s expressed reason to combine the teachings of
Johnson with those of Hjertstrand is based upon an erroneous interpretation
of the teachings of Johnson, and not on any rational underpinnings.
Moreover, the Hjertstrand patent, which is concerned with controlling
the temperature of a biological material in the form of blood in a range of
about 1° C. to about 6° C., appears to strongly favor the use of homogenous
chemical substances, including deuterium oxide as one example, in that
more clearly defined solidification/melting temperatures are obtained as a
result of the substances being homogenous. (Hjertstrand, col. 5, ll. 11-17).
While Johnson’s phase change materials are disclosed as aiding in fine-

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tuning of the freezing point of the liquid for its freeze indicator, that
Hjertstrand has itself provided a satisfactory solution for this problem is
indicative that a person of ordinary skill in the art would not consider it to
have been obvious to start modifying Hjertstrand’s temperature control
container with teachings directed to freeze indicators, absent some teaching
that some improvement or benefit would be obtained in making the
combination.
The rejection of claims 6-8 as being obvious, and therefore
unpatentable, over Hjertstrand and Johnson will not be sustained.
Claim 5, which depends from claim 1, is also rejected over this
combination of teachings. For the same reasons noted above, we believe
that the combination relies on an erroneous interpretation of the Johnson
patent, so the rejection will not be sustained as to claim 5, either.
Claim 21--Obviousness--Johnson
Appellants contend that the rejection of claim 21 as being obvious
over Johnson is in error, in that the Examiner’s finding (Ans. 8, last line of
page) that Johnson discloses a biomaterial at column 2, lines 46-63, is not
supported by the Johnson disclosure. We agree with Appellants that the
cited portion of Johnson does not appear to disclose a biological material,
within the meaning of that term as understood by a person of ordinary skill
in the art.
The Examiner’s position here is ambiguous, to say the least. While
contending on the one hand that Johnson discloses the presence of a
biomaterial, intimating that this is considered to meet the claim limitations in
claim 21, the Examiner also states that “Johnson does not explicitly teach . .
. limitation of ‘positioning the phase change mater [sic] close to a biological

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material”, and that “Johnson discloses the invention substantially as claimed
. . . except the specific steps of method of positioning the phase change
material close to a biological material such that a temperature of biological
material is controlled by the phase change material.” (Ans. 8-9).
These statements are followed by some reasoning which appears to
possibly be attempting to establish that since it is well known in the art to
employ phase change materials such as dry ice to control the temperature of
a biological material, it would have been obvious to employ the phase
change material of Johnson for the same purpose. While Appellants do not
expressly assign error to any part of the Examiner’s analysis, we find that we
are unable to sustain the rejection.
The Examiner’s conclusion of obviousness is that, “it would have
been obvious . . . to cool the mixture of deuterium oxide and water to a
temperature range of zero to -3 degree C and position it close to a biological
material such as blood in order to control the temperature of the biological
material.” (Ans. 9). Setting aside that the Johnson device is not disclosed as
being used to regulate the temperature of something, but only to indicate
whether a particular temperature has been experienced, the Examiner’s
conclusion fails to complete the establishment of a prima facie case of
obviousness, in that it does not assert that it would have been obvious to mix
deuterium oxide with water to form a phase change material having a phase
change temperature in a range above zero degrees and below 3.8 degrees
Celsius.
This rejection of claim 21 as unpatentable over Johnson will not be
sustained.

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Claim 21--Obviousness--Hjertstrand in view of Johnson
The Examiner concluded that it would have been obvious:
to combine the container of Hjertstrand et al. to replace thermo
blocks 16 with the phase change material of Johnson to
comprising with selected amount of deuterium oxide and water
as taught by Johnson to maintain temperature of Hjertstrand’s
temperature sensitive material (biological material) in the
disclosed range in order to control the a temperature of the
biological material.
(Ans. 10-11).
This conclusion is based upon the same erroneous interpretation of the
Johnson disclosure as was employed in the rejection of claims 6-8 over the
same combination. In particular, the Examiner found that “Johnson teaches
that by varying the amounts deuterium and water can get temperatures from
-4 to 4 degree C.” (Ans. 10). As discussed above with respect to claims 6-8,
we do not find that Johnson contains such a teaching or disclosure.
For the reasons set forth above in the analysis of the rejection of
claims 6-8, we will not sustain the rejection of claim 21 as unpatentable over
Hjertstrand and Johnson.
CONCLUSIONS
The Examiner’s erroneous interpretation of the teachings of the
Johnson patent has resulted in unsustainable rejections of claims 1-3, 10-12
and 22-27 as being anticipated by Johnson; of claims 4 and 13 as being
unpatentable over Johnson in view of Douglas-Hamilton; of claims 5-8 as
being unpatentable over Hjertstrand in view of Johnson; of claim 21 as being
unpatentable over Johnson; and of claim 21 as being unpatentable over
Hjertstrand in view of Johnson.

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DECISION
The decision of the Examiner to reject claims 1-8, 10-13 and 21-27 is
reversed.

REVERSED
JRG

THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S. E.
SUITE 1500
ATLANTA, GEORGIA 30339-5994

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