Application for patent filed December 30, 1993.1
According to applicants, this application is a national stage
application under 35 U.S.C. § 371 of PCT/EP92/00322 filed
Febraury 14, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT ADLER
__________
Appeal No. 96-1225
Application 08/107,6961
___________
ON BRIEF
___________
Before WILLIAM F. SMITH, JOHN D. SMITH, and OWENS,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claim 12 and refusal to allow claims 1, 3, 5-11, 13, 15, 16
and 18-23 as amended after final rejection. These are all of
Appeal No. 96-1225
Application 08/107,696
2
the claims remaining in the application.
THE INVENTION
Appellant claims a process for cleaning workpieces by
placing the workpieces in a pressure tank and contacting them
with a liquefied or supercritical gas which is mechanically
circulated at a velocity which is varied during the cleaning.
Appellant also claims a cleaning apparatus which includes two
cylindrical pressure tanks which each contain an axially-
mounted impeller and which are connected by a conduit system
having therein a pump and heat exchanger. Claims 1 and 12 are
illustrative and read as follows:
1. In a process for cleaning workpieces exhibiting
organic residues, comprising introducing compressed gas under
pressure into a pressure tank loaded with the workpieces, the
improvement wherein a liquefied or supercritical gas having a
temperature is mechanically circulated within the pressure
tank during cleaning of the workpieces whereby the
mechanically circulated liquefied or supercritical gas
exhibits a circulation velocity and said circulation velocity
of said liquefied or supercritical gas is varied during said
cleaning.
12. An apparatus for cleaning workpieces contaminated
with organic residues said apparatus comprising:
a first cylindrical pressure tank containing an impeller
mounted on an axle within said first cylindrical pressure
tank; said first cylindrical pressure tank is connected via
conduits provided with valves with a second cylindrical
Appeal No. 96-1225
Application 08/107,696
3
pressure tank containing an impellar mounted on an axle within
said second pressure tank; one of said conduits is provided
with a pump, and a heat exchanger is positioned in this or
another connecting
conduit wherein said heat exchanger and said pump are
connected with each pressure tank respectively by additional
conduits; and that each pressure tank is connected by means of
additional conduits with one or several storage tanks for
compressed gases.
THE REFERENCES
Nishikawa et al. (Nishikawa) 4,944,837 Jul. 31,
1990
Jackson et al. (Jackson ‘619) 5,213,619 May 25,
1993
(filed Nov. 30,
1989)
Hoy et al. (Hoy) 5,306,350 Apr. 26,
1994
(parent filed Dec. 21,
1990)
Jackson (Jackson ‘189) WO 90/06189 Jun. 14,
1990
(PCT application)
THE REJECTIONS
Claims 1, 3, 5-11, 13, 15, 16 and 18-23 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the
subject matter which appellant regards as the invention.
Appeal No. 96-1225
Application 08/107,696
4
Claims 1, 3, 5-13, 15, 16 and 18-23 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combined teachings
of Jackson ‘189, Hoy, Jackson ‘619 and Nishikawa.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, we
do not sustain these rejections. Under the provisions of 37
CFR § 1.196(b), we enter new grounds of rejection of claims 1,
3, 6, 18 and 22.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner argues (answer, page 4):
In claim 1, the recitation of "mechanically
circulated" is indefinite, because it does not show
how to mechanically circulate the liquefied or super
critical gas. Claim 2 [sic, 1?] is very broad and
it can read on any mechanically circulated means.
In claim 1, line 9, "varied" is indefinite term,
because appellant does not show how the velocity
will be varied.
These rejections clearly are improper. Consequently, we
reverse them without further comment.
Appeal No. 96-1225
Application 08/107,696
5
Rejection under 35 U.S.C. § 103
Because the examiner has not applied any of the
references or combination thereof to the subject matter of any
claim as a whole, we reverse the rejection under 35 U.S.C.
§ 103. See Manual of Patent Examining Procedure § 706.02(j)
(7th ed., July 1998).
New grounds of rejection under 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
Claim 1 is rejected under 35 U.S.C. § 102(b) as being
anticipated by JP ‘189.
During patent prosecution, claims are to be given their
broadest reasonable interpretation consistent with the
specification, and the claim language is to be read in light
of the specification and prior art, as it would be interpreted
by one of ordinary skill in the art. See In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983); In re Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466
Appeal No. 96-1225
Application 08/107,696
The examiner should consider requiring that the2
specification be amended so that it provides clear antecedent
basis for the term "mechanically circulated". See 37 CFR
§ 1.75(d)(1)(1996); Manual of Patent Examining Procedure
§ 608.01(o) (7th ed., July 1998).
6
(CCPA 1976); In re Kroekel, 504 F.2d 1143, 1146, 183 USPQ 610,
612 (CCPA 1974); In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238-39 (CCPA 1971). However, limitations are not to be
read from the specification into the claims. See In re
Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA 1969).
A patent specification "acts as a dictionary when it
expressly defines terms used in the claims or when it defines
terms by implication." Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996).
Appellant’s specification not only does not expressly define
the term "mechanically circulated" recited in claim 1, but
does not mention this term or any similar term. The term2
"mechanically circulated" was added to claim 1 by amendment
(filed September 23, 1994, paper no. 8). The specification
states (page 3, lines 10-13) that the liquefied or
supercritical gas "is circulated in the pressure tank, for
example, by the rotation of a vane-equipped impeller" and that
Appeal No. 96-1225
Application 08/107,696
7
an impeller is a suitable apparatus (page 6, line 35 - page 7,
line 1). The specification, however, does not indicate that
the term "mechanically circulated" in claim 1 is limited to
circulation provided by an impeller. We find no implied
definition of "mechanically circulated" in appellant’s
specification.
Jackson ‘619 states (col. 6, lines 13-17) that acoustic
radiation for practicing his invention "is provided by a high-
powered ultrasonic generator which converts electrical energy
into mechanical energy, or acoustic radiation, via a
piezoelectric transducer." This teaching indicates that at
least some of the energy produced by an ultrasonic generator
is in mechanical form.
The dictionary definition of "circulate" is as follows:
1. To move in or flow through a circle or circuit
2. To
move around, as from person to person or place to
place
3.
To move about or flow freely, as air. 4. To spread
widely among persons or places: DISSEMINATE -vt. To cause to
Appeal No. 96-1225
Application 08/107,696
Webster’s II New Riverside University Dictionary 2643
(Riverside Publishing Co. 1984). A copy of the relevant page
of this dictionary is provided to appellant with this
decision.
8
move about or be distributed. [3]
This term is not limited in meaning to movement in a circle or
circuit but, rather, broadly includes movement from place to
place, which certainly is movement produced when an ultrasonic
generator is used.
For the above reasons, when we give the term
"mechanically circulated" in appellant’s claim 1 its broadest
reasonable interpretation in view of appellant’s specification
and the prior art, we find that this term includes the
movement of fluid provided by an ultrasonic generator.
Appellant argues that ultrasonic energy is not mechanical
(brief, page 7). We are not persuaded by this argument in
view of the teaching in Jackson ‘619 discussed above.
Appellant further argues that the application of ultrasonic
energy produces ultrasonic waves which cause microscopic
excursions of particles of the dense phase gas from their
equilibrium which does not suggest mechanical circulation (see
id.). This argument is not well taken because it is merely an
Appeal No. 96-1225
Application 08/107,696
9
unsupported argument by appellant’s counsel, and such an
argument cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984);
In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979);
In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA
1978); In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646
(CCPA 1974). Appellant provides no evidence as to what
movements of fluid those of ordinary skill in the art
considered to be produced by mechanical circulation, and why
no such movement is provided by an ultrasonic generator.
Appellant argues that Jackson ‘189 does not suggest that
ultrasonic waves produce suction zones and pressurized zones
(brief, page 7). Appellant apparently is arguing that the
formation of such zones is a characteristic of mechanical
circulation. Appellant’s argument is not convincing because
appellant has not established that the term "mechanically
circulated" was considered in the art to require the formation
of suction and pressure zones. Furthermore, Jackson ‘619
(col. 6, lines 47-52) teaches that ultrasonic energy produces
low and high
Appeal No. 96-1225
Application 08/107,696
10
pressure zones, which appear to be suction and pressure zones,
and appellant has not distinguished these zones from the zones
referred to by appellant.
For the above reasons, when we apply JP ‘189 to
appellant’s claim 1 below, we consider the term "mechanically
circulated" in that claim to include the fluid movement
produced by ultrasonic energy.
Jackson ‘189 discloses a process for cleaning workpieces
wherein compressed gas is introduced into a pressure vessel
loaded with workpieces, and the temperature and pressure in
the pressure vessel are adjusted such that the gas becomes a
dense fluid (page 10, line 26 - page 11, line 4; page 12, line
27 - page 13, line 11). The phase of the fluid then is
shifted between liquid and supercritical states by varying the
temperature (page 11, lines 4-9; page 15, lines 21-29). After
completion of each phase shifting step, the temperature is
maintained for a period of time to allow contaminant removal
from the workpieces (page 4, lines 13-17). In one embodiment,
the cleaning is enhanced by applying ultrasonic energy to the
cleaning zone, which agitates the dense phase gas (page 21,
lines 15-18; page 22, lines 10-13). The frequency of the
Appeal No. 96-1225
Application 08/107,696
11
sonic energy preferably is shifted back and forth over the
range of 20-80 kilohertz (page 22, lines 4-6). That is, the
fluid circulation velocity is varied. The use of ultrasonic
energy is effective for enhancing the removal of organic
contaminants from the workpieces (page 22, lines 6-9).
For the above reasons, the process recited in appellant’s
claim 1 is anticipated by JP ‘189.
Claim 3, 6, 18 and 22 are rejected under 35 U.S.C. § 103
as being unpatentable over JP ‘189.
JP ‘189 does not disclose a specific embodiment in which
the fluid is carbon dioxide and the cleaning is enhanced by
use of ultrasonic energy. However, the disclosures that
carbon dioxide is a preferred dense phase gas (page 6, lines
32-34), that supercritical carbon dioxide is effective for
removing organic contaminants from workpieces (page 20, lines
22-23), and that use of ultrasonic energy enhances the removal
of organic contaminants (page 22, lines 6-9), would have
fairly suggested, to one of ordinary skill in the art, use of
supercritical carbon dioxide and ultrasonic energy in
combination to obtain enhanced removal of organic
contaminants. Consequently, the processes recited in
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Application 08/107,696
12
appellant’s claim 3 and 22 would have been prima facie obvious
to one of ordinary skill in the art over JP ‘189.
As for claims 6 and 18, JP ‘189 discloses a system in
Fig. 4 which can be used for either batch or continuous
cleaning (page 14, lines 18-34) and which includes a high
pressure cleaning vessel (12) having an exhaust line (26)
connected to a separator (28) (page 14, lines 20-21; page 15,
lines 14-17). In the continuous mode, dense fluid is
introduced into the cleaning vessel (12) at the same rate that
exhaust dense phase gas is continuously removed through the
exhaust line (26) in order to maintain the pressure in the
cleaning vessel (12) at or above the critical pressure (page
15, lines 23-26). JP ‘189 does not discuss, with respect to
the continuous mode, separating contaminants from the exhaust
dense phase gas and recycling the dense phase gas. However,
regarding the batch mode, JP ‘189 states (page 15, lines 14-
17) that "[t]he exhaust line may be connected to a separator
28 which removes the entrained contaminants from the exhaust
gas thereby allowing recycling of the dense phase gas." This
teaching, combined with the teaching that contaminated dense
Appeal No. 96-1225
Application 08/107,696
13
phase gas is exhausted in the continuous mode (page 15, line
23), would have fairly suggested, to one of ordinary skill in
the art, separating the contaminants from the exhausted dense
phase gas in the continuous mode and recycling the dense phase
gas for the same reason that recycling apparently is used in
the batch mode, i.e., to reduce the amount of fresh dense
phase gas required by the process. JP ‘189 does not disclose
that the recycle gas is conducted through a heat exchanger
before it is returned to the pressure vessel. However, the
teaching in JP ‘189 that the temperature in the pressure
vessel is controlled at the desired temperature above or below
the critical temperature of the cleaning fluid (page 16, lines
16-21) would have fairly suggested, to one of ordinary skill
in the art, adjusting the temperature of the recycled dense
phase gas prior to introducing it into the pressure vessel so
that it would be at the temperature desired in the pressure
vessel.
For the above reasons, the processes recited in
appellant’s claims 6 and 18 would have been prima facie
obvious to one of ordinary skill in the art over JP ‘189.
We do not find in JP ‘189 a disclosure or suggestion of
Appeal No. 96-1225
Application 08/107,696
14
the subject matter of appellant’s claims 5, 7-13, 15, 16, 19-
21 and 23. The examiner points out (answer, page 5) that JP
‘189 discloses that the temperature between temperature
changes is maintained for a predetermined time (page 8, lines
19-23), but does not explain why this disclosure would have
fairly suggested, to one of ordinary skill in the art,
maintaining the temperature constant during the cleaning as
required by appellant’s claims 5, 13, 15, 16 and 19-21. The
examiner states that the limitations of claims 1, 3, 5-13, 15,
16 and 18-21 are disclosed in JP ‘189 and either cites column
numbers and line numbers in the reference or refers us to the
document in general (answer, page 6), but does not
specifically discuss the content of the relied-upon
disclosures.
The examiner should address each limitation of every
rejected claim and specifically explain why the portions of
the references which the examiner relies upon disclose or
suggest each limitation.
DECISION
The rejections of claims 1, 3, 5-11, 13, 15, 16 and 18-23
under 35 U.S.C. § 112, second paragraph, as being indefinite
Appeal No. 96-1225
Application 08/107,696
15
for failing to particularly point out and distinctly claim the
subject matter which appellant regards as the invention, and
of claims 1, 3, 5-13, 15, 16 and 18-23 under 35 U.S.C. § 103
as being unpatentable over the combined teachings of
Jackson ‘189, Hoy, Jackson ‘619 and Nishikawa, are reversed.
Under the provisions of 37 CFR § 1.196(b), new grounds of
rejection of claims 1, 3, 6, 18 and 22 have been entered.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.â€
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
Appeal No. 96-1225
Application 08/107,696
16
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR § 1.196(b)
WILLIAM F. SMITH )
Appeal No. 96-1225
Application 08/107,696
17
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/pgg
Millen, White, Zelano & Branigan
Arlington Courthouse Plaza I, Suite 1400
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