11610402 (P.T.A.B. Jan. 6, 2015)

Ex Parte Babaev

Patent Trial and Appeal BoardJan 6, 2015

11610402 (P.T.A.B. Jan. 6, 2015)

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. 11/610,402 12/13/2006 Eilaz Babaev 2690 61008 7590 01/06/2015 Bacoustics, LLC 5929 BAKER ROAD SUITE 470 MINNETONKA, MN 55345 EXAMINER BOECKMANN, JASON J ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 01/06/2015 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 EILAZ BABAEV ________________ Appeal 2012-010523 Application 11/610,402 Technology Center 3700 ________________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and THOMAS F. SMEGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s Final rejection dated Nov. 1, 2011 (“Final”) of claims 58‒62, 65, and 66. Br. 2. Claims 1-57 have been canceled and claims 63, 64, and 67‒ 82 have been withdrawn. Br. 15-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to an ultrasound liquid atomization system capable of atomizing liquids.” Spec. ¶ 2. Sole Appeal 2012-010523 Application 11/610,402 2 independent claim 58 is illustrative of the claims on appeal and is reproduced below: 58. An ultrasound atomizer comprising: a. an ultrasound transducer; b. an ultrasound tip having a radial surface between a distal end and a proximal end; c. a radiation surface at the ultrasound tip distal end; d. the ultrasound tip proximal end fastened to the ultrasound transducer; e. a delivery collar having a delivery collar distal end, a liquid receiving orifice and a liquid delivery orifice in fluid communication with the liquid receiving orifice and sufficiently narrow to atomize an exiting pressurized liquid; f. the liquid delivery orifice positioned at a distance from the tip such that said pressurized liquid exiting the liquid delivery orifice as an expanding drop contacts the ultrasound tip before the surface tension of the liquid is broken by the expansion of the drop to permit forming from the drop a liquid conduit between the delivery collar and the ultrasound tip. REFERENCES RELIED ON BY THE EXAMINER Kurokawa US 4,844,343 July 4, 1989 Babaev US 5,076,266 Dec. 31, 1991 THE REJECTIONS ON APPEAL Claims 58, 60‒62, 65, and 66 are rejected under 35 U.S.C. § 102(b) as anticipated by Babaev. Final 3. Claim 59 is rejected under 35 U.S.C. § 103(a) as unpatentable over Babaev and Kurokawa. Final 6. Appeal 2012-010523 Application 11/610,402 3 ANALYSIS The rejection of claims 58, 60‒62, 65, and 66 as anticipated by Babaev Sole independent claim 58 includes the limitation of a liquid delivery orifice that is “positioned at a distance from the tip such that said pressurized liquid exiting the liquid delivery orifice as an expanding drop contacts the ultrasound tip before the surface tension of the liquid is broken by the expansion of the drop to permit forming from the drop a liquid conduit between the delivery collar and the ultrasound tip.” In short, the delivery orifice is positioned with respect to the tip such that the liquid drop exiting the orifice forms “a liquid conduit” between the collar’s delivery orifice and the tip. The Examiner finds that Babaev’s corresponding delivery orifice 17 is “positioned at a distance from” Babaev’s corresponding tip 2. Final 3. (referencing Babaev Fig. 1). More precisely, the Examiner finds that the emerging drop from Babaev’s orifice 17 “will be capable of contacting the ultrasound tip” in the manner claimed (i.e., forming “a liquid conduit” “before the surface tension of the liquid is broken by the expansion of the drop”). Final 3. As if to emphasize, the Examiner further states that “[i]t is noted that since the delivery orifice (17) of Babaev is positioned at a distance from the tip just as in the claimed invention, the device will be capable of preforming” this limitation. Ans. 3. Appellant addresses the “specified placement of the liquid delivery orifice from the ultrasound tip” as claimed and contends that “Babaev does not disclose the outlet of channel 17 is so positioned with respect [to] tip 2.” Br. 12. Appeal 2012-010523 Application 11/610,402 4 Babaev is silent as to the exact distance between the orifice and the tip, and whether “a liquid conduit” is formed as claimed. Babaev does indicate that “a drop or spray of said liquid medium is delivered to the ends” of the tip (Babaev 4:18‒19) but Babaev’s teaching of delivering a drop to the tip is not a disclosure of the distance between the exiting orifice and the tip. Nor does Babaev disclose forming “a liquid conduit” between the two as claimed. Unlike a rejection based on obviousness, a rejection based on anticipation, as here, requires that “each and every element” set forth in the claim be found “either expressly or inherently” in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner appears to be relying on a theory of inherency for disclosing this limitation in that the Examiner finds that “if the correct liquid” was used, the drop would exit as claimed. Ans. 4; see also Br. 11 (“the possible [] existence of an unidentified liquid”). As is well-known, if the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in the cited reference. In order to establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)) (emphasis added). Appeal 2012-010523 Application 11/610,402 5 Here, the Examiner’s reliance on “the correct liquid” to achieve the stated limitation is an indication that the limitation “may result” from that given set of circumstances but not necessarily for other (i.e., “incorrect”) liquids. As indicated supra, this inherency finding by the Examiner is not sufficient for a rejection based on anticipation. We also note the Examiner’s statement that “claim 58 merely requires that the liquid be a ‘pressurized liquid’” and that Babaev’s liquid “is pressurized to some extent.” Ans. 2. This is so, the Examiner reasons, because liquids are “inherently pressurized by the weight of the atmosphere above it as well as the weight of the fluid above the fluid being dispensed.” Ans. 2 (see also Br. 11 addressing the Examiner’s inherent reliance “on gravity”). Following the Examiner’s logic, Appellant’s claim term “pressurized liquid” can then simply be read as “liquid” since gravity inherently pressurizes all liquids. We decline to agree with the Examiner’s analysis since to do so would require us to read the term “pressurized” out of the claim. Accordingly, we do not sustain the Examiner’s rejection of claims 58, 60‒62, 65, and 66 as anticipated by Babaev. The rejection of claim 59 as unpatentable over Babaev and Kurokawa Claim 59 depends from claim 58 and the Examiner’s reliance on Kurokawa does not cure the defects of the Examiner’s analysis discussed supra. Appellant presents no argument rebutting the Examiner’s rejection of claim 59. Nevertheless, the Examiner fails to initially present a prima facie Appeal 2012-010523 Application 11/610,402 6 case of obviousness regarding parent claim 581 and as such, the Examiner’s rejection of dependent claim 59 is reversed. DECISION The Examiner’s rejections of claims 58‒62, 65, and 66 are reversed. REVERSED Klh 1 “During examination, the examiner bears the initial burden of establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).