Ex Parte Arik et alDownload PDFPatent Trial and Appeal BoardDec 3, 201312198257 (P.T.A.B. Dec. 3, 2013) Copy Citation 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. 12/198,257 08/26/2008 Mehmet Arik 225442-3 (GEL8083.004) 3754 62204 7590 12/03/2013 GE Licensing ATTN: Brandon, K1-2A62A 1 Research Circle Niskayuna, NY 12309 EXAMINER HWU, DAVIS D ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 12/03/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MEHMET ARIK, STANTON EARL WEAVER, CHARLES ERKLIN SEELEY, and YOGEN VISHWAS UTTURKAR ____________ Appeal 2012-002579 Application 12/198,257 Technology Center 3700 ____________ Before SALLY C. MEDLEY, BARRY L. GROSSMAN, and MITCHELL G. WEATHERLY, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002579 Application 12/198,257 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-21. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse the decision of the Examiner and enter a new ground of rejection. CLAIMED SUBJECT MATTER The claimed subject matter relates generally to synthetic jets and, more particularly, to a method and apparatus of acoustic noise reduction in a synthetic jet. Spec., para. [0001]. Claim 1, directed to a synthetic jet, claim 11, directed to a method of fabricating a synthetic jet, and claim 16, directed to a system for cooling a device, are the independent claims. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A synthetic jet comprising: a first backer structure; an actuator attached to the first backer structure; and wall member coupled to the first backer structure to form a cavity using a surface of the wall member and a surface of the first backer structure; wherein the wall member has an orifice formed therethrough, and wherein the orifice fluidically couples the cavity to an environment external to the cavity such that a gas passes in and out of the cavity through the orifice when an alternating voltage is applied to the actuator. Appeal 2012-002579 Application12/198,257 3 REFERENCES The Examiner relied upon the following prior art references: Carter US 702,418 Oct. 27, 1987 Abbott US 5,429,302 Jul. 4, 1995 REJECTIONS The following rejections are before us for review: 1. Claims 1-5, 8-15 have been rejected under 35 U.S.C. § 102(b) as anticipated by Carter. (Ans. 4); 2. Claims 6 and 7 have been rejected under 35 U.S.C. § 103(a) as unpatentable based on Carter and Abbott. (Id. at 5); and 3. Claims 16-21 have been rejected under 35 U.S.C. § 103(a) as unpatentable based on Carter. (Id. ). ANALYSIS In relevant part, the Examiner found that Carter discloses “a wall member 16b . . . wherein the wall member has an orifice 90 formed therethrough, and wherein the orifice fluidically couples the cavity to an environment external to the cavity.” Ans. 4. The Examiner clarified this finding in the Advisory Action mailed April 22, 2011, wherein the Examiner stated that “orifice [90] should have been labeled as 98.” Advisory Action, p. 2. Element 98 in Carter is a directional arrow indicating that “the fluid from portion 90 travels in the direction of arrows 98 through perforations 96.” Carter, col. 7, ll. 15-16. The Examiner further clarified this finding by stating that wall member 16b comprises “a cavity 90 and part 86 through which fluid in Appeal 2012-002579 Application12/198,257 4 chamber 90 is discharged through holes 96 [rather than “orifice” 98] of the part 86, and the section of the wall member 16b that leads to each hole is an orifice that fluidically couples the cavity 90 to an environment external to the cavity.” Ans. 6. Appellants assert that “the ‘wall’ identified by the Examiner (i.e., element 16b) does not include the identified ‘orifice 98’ [changed by Examiner to holes 96]1 formed therethrough.” App. Br. 6. Appellants also assert that the wall 16b does not “include any orifice formed therethrough that fluidically couples a cavity [reference numeral 90 in Carter as found by the Examiner] to an external environment,” as called for in claims 1 and 11. Id. This requirement also is in independent claim 16. We agree with Appellants. As shown in Figure 4 of Carter, holes 96 do not pass through the “wall 16b.”2 Holes 96 are in element 86. The Examiner has provided no evidentiary support for the statement that wall member 16b comprises part 86 in Carter. Ans. 6. Indeed, the evidence is to the contrary. Carter discloses that “[a] thin flexible element 86 mounted on a ledge 88 within chamber 17a divides reservoir region 64a of the chamber into a first portion 90 and a second portion 92.” Carter, col. 6, ll. 60-63. Carter also discloses that “[e]lement 86 is provided with perforations 96 which permit the first and second portions of reservoir region 92 to communicate with each other and fluid to pass into portion 92.” Id. at col. 7, ll. 1-4. The 1 Acknowledged by Appellants in the Reply Brief at 2. 2 “Wall 16b,” as found by the Examiner, is shown in Fig.5, not Fig. 4. Reference numeral 16 in Carter refers to a plastic body of cartridge 12. Carter, col. 5, ll. 21-24; col. 7, l. 27. However, Fig. 4 also shows this plastic body. Appeal 2012-002579 Application12/198,257 5 evidence does not support the Examiner’s finding (Ans. 6) that element 86 is part of wall 16b. Thus, wall member 16b of Carter does not have an orifice formed therethrough as required by the independent claims. Accordingly, we cannot sustain the rejections. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection. Claim 1 is rejected as anticipated by the admitted prior art shown in Figure 4 of Appellants’ Specification and described in paragraph [0026] of the Specification. Riverwood Int’l Corp. v. R.A. Jones & Co., Inc. 324 F.3d 1346, 1354 (Fed. Cir. 2003) (“a statement by an applicant during prosecution identifying certain matter not the work of the inventor as ‘prior art’ is an admission that the matter is prior art”); In re Nomiya, 509 F.2d 566, 570-571 (CCPA 1975) (“We see no reason why appellants’ representations in their application should not be accepted at face value as admissions that Figs. 1 and 2 may be considered ‘prior art’ for any purpose.”); In re Garfinkel, 437 F.2d 1000, 1004 n.2 (CCPA 1971) (“From the record we are uncertain whether the type of ‘prior art’ referred to is of the § 102(f) or § 102(g) variety or whether it is of the ‘known … in this country’ type as in § 102(a). What is clear, however, is that appellant has admitted that as to him the information in Kistler is prior art of some type.”). We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the Appeal 2012-002579 Application12/198,257 6 art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Figure 4 of the Specification, labeled “Prior Art,” discloses a backer structure 54; an actuator 60; and a wall 52. Spec., para. [0026].3 The Specification states that element 52 is a “plate.” Id. However, giving the claim term “wall” its broadest reasonable interpretation in light of the Specification as it would be interpreted by one of ordinary skill in the art, we discern no structural difference between a wall and a plate. Wall 52 is coupled to backer 54 by structural element 56. A cavity 58 is formed by wall 52 and backer 54. Wall 52 has an orifice 64 fluidically coupling cavity 58 to an external environment. During operation, control system 62 causes actuator 60 to move periodically in a time-harmonic motion, thus forcing fluid 59 in and out of cavity 58 through orifice 64, causing a jet 66 to emit therefrom. Id. The Patent Trial and Appeal Board is a review body rather than a place of initial examination. Accordingly, we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable over Appellants’ admitted prior art. We leave it to the Examiner to determine the appropriateness of any further rejections based on the admitted prior art or other references. Our decision not to enter a new ground of rejection for all claims shall not be considered any indication of the patentability or unpatentability of the non-rejected claims.4 3 Paragraph [0026] states that “FIG. 4 illustrates a cross-section of one embodiment of a synthetic jet 50 known in the art.” 4 See Manual of Patent Examining Procedure § 1213.02. Under 37 C.F.R. § 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case. Since the exercise of authority Appeal 2012-002579 Application12/198,257 7 DECISION Upon consideration of the record as a whole in light of Appellants’ contentions and the preponderance of relevant evidence, we reverse the Examiner’s decision rejecting claims 1-21. A new rejection of claim 1 under 35 U.S.C. § 102, pursuant to 37 C.F.R. § 41.50(b) has been entered by the Board. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that 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 the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… REVERSED; 37 C.F.R. § 41.50(b) Vsh under 37 C.F.R. § 41.50(b) is discretionary, no inference should be drawn from the decision to exercise that discretion with respect to some but not all of the claims on appeal. Copy with citationCopy as parenthetical citation