Ex Parte Lombardi

Patent Trial and Appeal Board

Apr 26, 2016

13159324 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/159,324 06/13/2011
34282 7590 04/28/2016
QUARLES & BRADYLLP
Attn: IP Docket
ONE SOUTH CHURCH A VENUE, SUITE 1700
TUCSON, AZ 85701-1621
John L. Lombardi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
132677.00032 1238
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
04/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. LOMBARDI
Appeal2014-009552
Application 13/159,324
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claim 1, the sole claim on appeal. 1 We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.
Appellant's invention is best illustrated by the sole independent claim
1, reproduced below:
1 Pending claims 2-19 have been withdrawn from consideration. (Final
Act. 1.)
Appeal2014-009552
Application 13/159,324
1. A composition to produce smoke upon combustion,
compnsmg:
a combustion component; and
a smoke formulation;
wherein said composition does not include a thiourea
derivative.
Appellant requests review of the Examiner's rejection of claim 1
under 35 U.S.C. § 102(b) as anticipated by Tracy (U.S. Statutory Invention
Registration No. H233, published March 3, 1987). App. Br. 7; Final Act. 2-
3.
OPINION
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's§ 102(b) rejection of independent claim 1.
Accordingly, we will sustain all of the Examiner's rejection for essentially
the reasons expressed in the Answer and we add the following for emphasis.
Independent claim 1 is directed to a smoke producing composition
comprising a combustion component and a smoke formulation wherein the
composition does not include a thiourea derivative.
The Examiner found Tracy anticipates the subject matter of
independent claim 1 by describing a composition free of thiourea or its
derivatives comprising 50% 1,4-benzenedicarboxylic acid as a smoke
formulation along with a combination of 20% sugar (sucrose) and 30%
2
Appeal2014-009552
Application 13/159,324
potassium chlorate as the combustion component. Final Act 2-3; Ans. 3;
Tracy Abstract; col. 2, 11. 4---6, 45--48; col. 3, 11. 46-60.
Appellant argues "Tracy nowhere teaches a smoke producing
composition that excludes a thiourea derivative, as required by claim 1."
App. Br. 8. Instead, according to Appellant, Tracy expressly teaches the
composition may contain many other materials. App. Br. 8; Tracy col. 3, 11.
36-38, 59-60.
We are unpersuaded by these arguments and agree with the
Examiner's finding of anticipation for the reasons presented by the
Examiner. Ans. 3. Appellant's arguments are premised on Tracy's
disclosure of embodiments containing components other than the claimed
combustion and smoke components. As noted by the Examiner, these
arguments do not take into account the composition expressly disclosed and
exemplified by Tracy that is limited solely to combustion and smoke
components that do not include a thiourea derivative. Ans. 3; Tracy col. 3,
11. 46-60. Thus, Appellant has not adequately explained a patentable
distinction between the claimed compounds and the compounds of the prior
art. Moreover, the claim uses the open-ended transitional claim language
"comprising" which does not exclude additional compounds from the
claimed composition, with the exception of thiourea in the present claim.
Therefore, we affirm the Examiner's rejection of claim 1 under
35 U.S.C. § 102(b) for the reasons presented by the Examiner and given
above.
3
Appeal2014-009552
Application 13/159,324
ORDER
The Examiner's rejection of claim I under 35 U.S.C. § 102(b) as
anticipated by Tracy is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
4