Ex Parte Bardenshtein et al

Patent Trial and Appeal Board

Oct 31, 2017

12599782 (P.T.A.B. Oct. 31, 2017)

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.
12/599,782 11/12/2010 Alexander Bardenshtein 695752002000 2772
25227 7590 11/02/2017
MORRTSON fr FOFRSTFR T T P
EXAMINER
1650 TYSONS BOULEVARD SINGH, AMIT K
SUITE 400
MCLEAN, VA 22102 ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
EOfficeVA @ mofo.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER BARDENSHTEIN,
HENRIK BINDSLEV, NIELS KREBS, and YUKIHIRO KUSANO
Appeal 2016-006668
Application 12/599,782
Technology Center 3700
Before LYNNE H. BROWNE, GORDON D. KINDER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006668
Application 12/599,782
STATEMENT OF THE CASE
Appellants Alexander Bardenshtein et al.1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision, as set forth in the Final Office
Action dated June 19, 2015 (“Final Act.”), rejecting claims 1—14 and 28.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a method of enhancing a gas-phase reaction
in a plasma using high intensity and high power ultrasonic acoustic waves.
Spec. 1:5—6. Claim 1, the only independent claim on appeal, is reproduced
below with disputed limitations italicized for emphasis:
1. A method of enhancing a gas-phase reaction in a plasma,
comprising:
introducing a flow of a gas to at least one plasma source
before generation of plasma, during the generation of plasma, or
before and during generation of plasma;
creating plasma by the at least one plasma source using the
gas, and;
generating ultrasonic high intensity and high power
acoustic waves having a predetermined amount of acoustic
energy by at least one ultrasonic high intensity and high power
gas-jet acoustic wave generator
wherein said ultrasonic high intensity and high power
acoustic waves are directed so as to propagate towards said
plasma so that at least a part of said predetermined amount of
acoustic energy is absorbed into said plasma,
1 Appellants identify Force Technology and Technical University of
Denmark as the real parties in interest. Appeal Brief, dated November 16,
2015 (“Appeal Br.”),at2.
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Application 12/599,782
a sound pressure level of said generated ultrasonic high
intensity and high power acoustic waves is at least substantially
140 dB, and
an acoustic power of said generated ultrasonic high
intensity and high power acoustic waves is at least substantially
100 W.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Rich US 3,169,507 Feb. 16, 1965
Fujii US 6,391,118 B2 May 21,2002
Chong US 6,554,969 B1 Apr. 29, 2003
Yoshiki JP 2006013903 A Jan. 12, 2006
Mielnik US 7,001,631 B2 Feb. 21,2006
Krebs US 8,399,795 B2 Mar. 19, 2013
Kwang-Seok Choi, Satoshi Nakamljra and Yuji Mlurata, Improvement
of Charging Performance of Corona Charger in Electrophotography by
Irradiating Ultrasonic Wave to Surrounding Region of Corona Electrode, 44
Japanese Journal of Applied Physics 3248 (2005) (hereinafter “Choi”).
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—7, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Choi, Rich, and Fujii.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Choi, Rich, and Fujii and Yoshiki.
3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Choi, Rich, and Fujii and Chong.
4. Claims 12, 14, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Choi, Rich, Fujii, and Mielnik.
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5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Choi, Rich, Fujii, Chong, and Krebs.
6. Claims 1—14 and 28 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1—14 and 29 of U.S.
Patent No. 8,399,795.
Appellants seek our review of these rejections.
DISCUSSION
Rejection 1: The Rejection of Claims 1—7, 9, and 11
as Unpatentable Over Choi, Rich, and Fujii
Appellants argue claims 1—7, 9, and 11 as a group. Appeal Br. 3—10.
We select claim 1 as the representative claim, and claims 2—7, 9, and 11
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds, in part, that Choi discloses (1) creating plasma
by at least one plasma source, and (2) generating ultrasonic high intensity
and high power acoustic waves having a predetermined amount of acoustic
energy by at least one ultrasonic high intensity and high power gas-jet
acoustic wave generator wherein the ultrasonic high intensity and high
power acoustic waves are directed so as to propagate towards said plasma so
that at least a part of the predetermined amount of acoustic energy is
absorbed into the plasma. Final Act. 3^4 (citing Choi Abstract, Section 2,
and Fig. 1). The Examiner also finds that Choi does not disclose that a
sound pressure level of the generated ultrasonic high intensity and high
power acoustic waves is at least substantially 140 dB and an acoustic power
of the generated ultrasonic high intensity and high power acoustic waves is
at least substantially 100 W, but that these missing limitations are taught by
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Rich, which discloses a gas/air jet wave generator with a sound intensity as
high as 160 dB and power on the order of tens or hundreds of watts. Final
Act. 4 (citing Rich 1:9-15, 41—45; 2:34—56), 5.
Appellants contend that the Examiner’s rejection is erroneous for
several reasons. First, Appellants argue that “the claimed ultrasonic
intensity is about 1,000 times as large as Choi’s intensity.” Appeal Br. 4.
However, Appellants are attacking the teachings of Choi individually.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner finds that Rich, not Choi, discloses the claimed power
requirements. Final Act. 4. The Examiner’s rejection proposes to modify
Choi so that it uses Rich’s Hartman gas-jet generator for the recited acoustic
pressure and power level. See, e.g., Final Act. 6, Ans. 11. Appellants do not
address the rejection as articulated by the Examiner, and, thus, do not
identify error by the Examiner.
Second, Appellants argue that there would have been “no reasonable
expectation of success” for “replac[ing] Choi’s transducer with Rich’s
Hartman generator” because Choi’s thin coronal charging wire has a
“diameter of 100 pm” which cannot withstand the Hartman generator’s
power levels. Appeal Br. 5, see also id. at 4—6. Similarly, Appellants argue
that “it is almost impossible to synchronize the vibration of a plurality of
[Choi’s] piezoelectr[]ic transducers, and thus they cannot vibrate a large
volume of the gas efficiently.” Id. at 5.
Appellants’ arguments are not persuasive. “The test for obviousness
is not whether the features of a secondary reference may be bodily
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incorporated into the structure of the primary reference. . . . [rjather, the test
is what the combined teaching of those references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.”); KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”). Here, Rich
does not disclose any problems deploying and using the Hartman wave
generator, or that the generator’s wires and other components are not strong
enough to withstand the generator’s power levels. Consequently, Appellants
do not show that the Examiner’s proposed modification is beyond the skill
of one skilled in the art. Thus, Appellants do not apprise us of error.
Third, Appellants argue that because “Choi does not disclose that
increase in the ultrasonic intensity would increase the charge density of
corona,” “a person of ordinary skill in the art would have had no reason to
increase the ultrasonic intensity level of Choi over its maximum level
(0.1 W), much less to increase it by 1000 times (100 W).” Appeal Br. 6; see
also id. at 6—10. Appellants also argue that, in Choi, “increasing the
ultrasonic intensity would not increase the charge density of corona, because
Choi does not disclose any meaningful effect of increasing the ultrasonic
intensity level on the charge density and because Choi’s FIG. 6 discloses the
saturated effect of increasing the ultrasonic intensity level on the charge
density over its maximum level (0.1 W).” Id. at 10; see also id. at 6—10.
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Thus, Appellants conclude that “a person of ordinary skill in the art would
not have modified Choi’s apparatus to have an ultrasonic intensity level as
high as 100 W.” Id. at 10.
However, Appellants are again attacking the teachings of Choi
individually, rather than addressing the combination of Choi, Rich, and
Fujii. Merck, 800 F.2d at 1097. Here, the Examiner finds that Rich, not
Choi, discloses wave generators for generating high intensity elastic waves
in gaseous media, and having the claimed power requirements. Final Act. 4;
Ans. 11; see, e.g., Rich 1:9—10. The Examiner’s rejection proposes to
modify Choi so that it uses Rich’s Hartman gas-jet generator for the recited
power levels. See, e.g., Final Act. 6, Ans. 11. Appellants do not address the
rejection as articulated by the Examiner or persuasively explain why a
person of ordinary skill in the art would have been unable to modify Choi
and Rich, and, thus, do not identify error by the Examiner.
For the reasons above, the rejection of claim 1 is sustained. Claims 2—
7, 9, and 11 fall with claim 1.
Rejections 2—5: The Rejections of Claims 8, 10, 12—14, and 28
In response to Rejections 2—5, Appellants merely state that “[cjlaims
8, 10, 12, 13, 14, and 28 depend from claim 1.” Appeal Br. 10. Appellants’
argument that the dependent claims recite additional elements that support
patentability is not persuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (37 C.F.R. § 41.37 requires “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Appellants’ conclusory argument does not identify any patentable
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distinctions for the dependent claims, and fails to apprise us of error in the
Examiner’s findings or reasoning.
Thus, the rejections of claims 8, 10, 12—14, and 28 are sustained.
Rejection 6
In the Final Action, claims 1—14 and 28 were rejected on the ground
of nonstatutory double patenting. Appellants state that, on November 10,
2015, they filed an electronic terminal disclaimer. Appeal Br. 10. We
understand that the electronic terminal disclaimer was approved on
November 10, 2015. However, in the Answer, the Examiner states that
every ground of rejection in the Final Action, including this rejection, is
maintained. We understand that this is a typographical error and the
Examiner intended to withdraw this rejection. Accordingly, this rejection is
not before us for review.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—14 and
28 under 35 U.S.C. § 103(a) are AFFIRMED.
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)(iv).
AFFIRMED
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