Ex Parte Bass et al

Board of Patent Appeals and Interferences

Feb 13, 2010

10939952 (B.P.A.I. Feb. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAY K. BASS, JOHN F. McENTEE, TIM J. LAZARUK,
MARYAM MOBED-MIREMADI, and BRENT T. TOLOSKO
____________

Appeal 2009-008347
Application 10/939,952
Technology Center 1600
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Decided: February 16, 2010
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 3-24, 26-35, and
37, the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).

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STATEMENT OF THE CASE
The claims are directed to an apparatus for preparing an array of
chemical compounds/biopolymers on the surface of a support. Claims 1 and
4 are illustrative:
1. An apparatus for preparing an array of chemical compounds on the
surface of a support, said apparatus comprising;
two elements that are disposed relative to one another to form a gap
between said elements wherein the width of said gap is sufficient such that a
flow of gas moving outwardly along a perimeter of said gap forms an
aerodynamic seal between said two elements and such that said two
elements are in a movable relationship relative to one another during said
aerodynamic seal and that form a chamber having a controllable interior
environment for preparing said array of chemical compounds and
a mechanism for introducing a gas into said gap.
4. An apparatus according to Claim 1 wherein one of said two
elements comprises a bottom wall and side walls wherein said mechanism
for introducing a gas comprises (i) openings along an upper surface of said
side walls and (ii) a source of said gas.

The Examiner relies on the following evidence:
Brennan US 6,001,311 Dec. 14, 1999
Cerrina et al. US 6,375,903 B1 Apr. 23, 2002

The rejections presented by the Examiner follow:
1. Claims 1 and 3-20 stand rejected under the written description provision
of 35 U.S.C. § 112, first paragraph.
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2. Claims 1, 3, 5-7, 9-15, 17-22, 24, 27-33, 35, and 37 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Brennan.
3. Claims 4, 6, 23, and 24 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Brennan and Cerrina.
We reverse.

Written Description:
ISSUE
Have Appellants established error in the Examiner’s conclusion that
Appellants’ Specification fails to disclose a gap width sufficient to form an
aerodynamic seal?

FINDINGS OF FACT
FF 1. The Examiner finds that “page 8, lines 6-8 and 31-33” of Appellants’
Specification fails to “define or describe a gap width sufficient to form an
aerodynamic seal as newly claimed” (Ans. 3).
FF 2. The Examiner finds that while “page 11, lines 11-16; page 13, lines
20-29; page 18, lines 1-5; and Fig. 1 . . . describe an aerodynamic seal within
the gap and illustrate a gap” since Appellants’ “specification does not define
what is encompassed by the gap width ‘sufficient’ for forming the seal”
(Ans. 10).
FF 3. The Examiner finds that Appellants’ Specification “use[s] the phrase
‘size of the gap’, however the specification does not teach dimensions (e.g.
width) encompassed by the ‘size’… [or] a positional relationship defined by
the ‘width’” (id.).
FF 4. Appellants’ Specification discloses that
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An aerodynamic seal between the top element and the
bottom element is realized by introducing a gas into the gap
between the top element and the bottom element. The pressure
of the gas is dependent on a number of factors including the
size of the gap, the pressure of any gas introduced into the
interior of the chamber formed by the top element and the
bottom element, the velocity of the stages, and so forth.

(Spec. 11: 12-16.)
FF 5. Appellants’ Specification discloses that “[i]n some embodiments
there is a pressure differential from the middle to the edges (both inside and
outside) of the seal, established by the size of the gap, the flow through it
and the width and profile of the sealing surface. . . . [T]he magnitude of this
differential protects against recirculation and entrainment of atmospheric air
by having the remaining seal flow predictably exit the seal gap” (Spec. 13:
20-28).

PRINCIPLES OF LAW
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
“In order to satisfy the written description requirement, the disclosure
as originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). A disclosure provides adequate written
description if it conveys with reasonable clarity to those skilled in the art that
the inventor was in possession of the invention. See id.

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ANALYSIS
The apparatus of Appellants’ claim 1 comprises, inter alia, two
elements separated by a gap that has a width sufficient to allow a flow of gas
moving outwardly along a perimeter of the gap to form an aerodynamic seal
between the elements. In contrast, Appellants’ claim 21 requires two (top
and bottom) elements that are separated by a gap, wherein an aerodynamic
seal between the two elements comprises a flow of gas outwardly along a
perimeter of said gap.
While the Examiner does not dispute that Appellants’ Specification
has written descriptive support for Appellants’ claim 21, the Examiner
asserts that Appellants’ Specification “provides no description of a gap
width ‘sufficient’ for forming an aerodynamic seal. Hence, one of skill in
the art would not understand that Appellant had possession of the claimed
invention at the time of filing” (Ans. 11). In this regard, the Examiner
inquires as to whether the term “‘width’ define[s] the distance between the
top element . . . and bottom element . . . or . . . the distance between side
walls” (Ans. 10-11). We are not persuaded by the Examiner’s inconsistent
position.
While claim 21 does not include a phrase defining the width of the
gap as sufficient to form an aerodynamic seal, there is no doubt that the gap
in claim 21 has a width and that this width is sufficient to form an
aerodynamic seal as required by the claim. As Appellants’ Specification
discloses an aerodynamic seal between two elements is realized by
introducing a gas into the gap between the two elements and that the
pressure of the gas introduced into the gap is dependent upon, inter alia, the
size of the gap (FF 4). Accordingly, if there is adequate written descriptive
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support in Appellants’ Specification for claim 21 then, absent persuasive
reasoning and/or evidence from the Examiner, this same disclosure would
cut against the Examiner’s concern regarding claims 1 and 3-20.
In sum, we find that the Examiner failed to provide a sufficient
evidentiary basis on this record to support his conclusion that Appellants’
Specification fails to provide written descriptive support for the phrase
“wherein the width of said gap is sufficient such that a flow of gas moving
outwardly along a perimeter of said gap forms an aerodynamic seal between
said two elements” (Ans. 3). Accordingly, we agree with Appellants’
contention that a person of ordinary skill in this art reading Appellants’
Specification (see e.g., FF 4 and 5) “would not doubt that the Appellants had
possession of the claimed invention” (App. Br. 13).

CONCLUSION OF LAW
Appellants established error in the Examiner’s conclusion that
Appellants’ Specification fails to disclose a gap width sufficient to form an
aerodynamic seal.
We reverse the rejection of claims 1 and 3-20 under the written
description provision of 35 U.S.C. § 112, first paragraph.

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Anticipation:
ISSUE
Have Appellants established that Brennan fails to teach an apparatus
wherein an aerodynamic seal is formed by the flow of gas moving outwardly
along a perimeter of a gap between two elements as required by Appellants’
claimed invention?

FINDINGS OF FACT
FF 6. For clarity we reproduce Brennan’s Figure 3 below:

“FIG. 3 is a side elevation view, in cross-section of the chemical synthesis
array apparatus of . . . [Brennan’s invention] showing the sweeping action of
the flow of inert gas through the common chamber and showing a cross-
sectional view through the sliders and sliding seals of the nozzle columns”
(Brennan, col. 5, ll. 42-46).
FF 7. The Examiner finds that a gap exists between head assembly (21)
and base (25) of Brennan’s apparatus and that these two elements are in a
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sealed, movable relationship that maintains an aerodynamic seal within the
gap (Ans. 3).
FF 8. The Examiner finds that “[t]he aerodynamic seal is evidenced by the
arrows illustrating gas flow going from left to right in Fig. 3, but not going
down through the reaction sites (#76)” and “is provided by maintaining a
positive pressure within the chamber to control flow through the chamber,
wherein the chamber is relatively small such that the gas flow can ‘sweep or
flush’ the chamber” (Ans. 4).
FF 9. The Examiner finds that the gas flow in Brennan’s apparatus
“sweeps the perimeter because the perimeter is part of the chamber which is
swept. This is evidenced by the fact that if a leak occurs, it escapes along
the edge” (Ans. 12).
FF 10. Brennan teaches that “it is important to normally maintain a
minimum positive pressure inside common chamber 31 at all times during
synthesis which is slightly greater than atmospheric pressure so that the flow
of gas, should a leak occur, would be outward” (Brennan, col. 14, ll. 22-26).

PRINCIPLES OF LAW
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).On appeal to this Board,
Appellants must show that the Examiner has not sustained the required
burden. See Ex parte Yamaguchi, 88 USPQ2d 1606, 1608 and 1614 (BPAI
2008) (precedential).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

ANALYSIS
The Examiner interprets Appellants’ claims as encompassing the
“flow of gas so as to flush or sweep the chamber as taught by Brennan”
(Ans. 4; FF 8-9). In this regard, the Examiner reasons that Appellants’
claims do
[N]ot limit gas flow such that the [sic] flows only to the
perimeter, but encompasses the entire chamber which includes
the perimeter. . . . Gas flow sweeping the chamber, also sweeps
the perimeter because the perimeter is part of the chamber
which is swept. This is evidenced by the fact that if a leak
occurs, it escapes along the edge. If the sweeping did not also
sweep the perimeter, no gas would reach the edge and hence
could not possibly leak.

(Ans. 12; FF 9.) We are not persuaded.
Appellants’ claims require a flow of gas outwardly along a perimeter
of a gap. In Brennan the gas flows along a perimeter of a gap, not outwardly
along the perimeter (FF 6-8). As the Examiner realizes, the gas in
Brennan’s apparatus flows outwardly only if a leak develops in the perimeter
(FF 9-10). Accordingly, we agree with Appellants’ contention that in
Brennan’s apparatus, an outward flow of gas only occurs if a “leak” occurs
and then the “outward flow of gas from a leak . . . would occur at one point
(i.e., the leak site) on the perimeter and not along the ‘length of such a
boundary’” (App. Br. 15).

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CONCLUSION OF LAW
Appellants established that Brennan fails to teach an apparatus
wherein an aerodynamic seal is formed by the flow of gas moving outwardly
along a perimeter of a gap between two elements as required by Appellants’
claimed invention.
The rejection of claims 1, 3, 5-7, 9-15, 17-22, 24, 27-33, 35, and 37
under 35 U.S.C. § 102(b) as being anticipated by Brennan is reversed.

Obviousness:
ISSUE
Have Appellants established that the combination of Brennan and
Cerrina fails to teach an apparatus wherein an aerodynamic seal is formed by
the flow of gas moving outwardly along a perimeter of a gap between two
elements as required by Appellants’ claimed invention?

FINDINGS OF FACT
FF 11. The Examiner relies on Brennan as discussed above (see Ans. 9).
FF 12. The Examiner finds that Brennan fails to teach “the top or bottom
element comprises glass” (id.).
FF 13. The Examiner relies on Cerrina to “teach a device . . . comprising
two elements disposed relative to each other to form a space between
wherein . . . one of the elements comprises glass” (id.).

PRINCIPLES OF LAW
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
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In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On appeal to this
Board, Appellants must show that the Examiner has not sustained the
required burden. See Ex parte Yamaguchi, 88 USPQ2d 1606, 1608 and
1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d 1115, 1118 and
1123 (BPAI 2008) (precedential).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. See also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”). In
sum, the “suggestion test is in actuality quite flexible and not only permits,
but requires, consideration of common knowledge and common sense.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006).
Nevertheless, an invention “composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art. . . . [I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

ANALYSIS
Appellants contend that Cerrina fails to make up for the deficiency in
Brennan discussed above (App. Br. 26). In response, the Examiner asserts
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that “Brennan is not deficient in teaching this element” of the claims” (Ans.
18). We disagree for the reasons set forth above.

CONCLUSION OF LAW
Appellants established that the combination of Brennan and Cerrina
fails to teach an apparatus wherein an aerodynamic seal is formed by the
flow of gas moving outwardly along a perimeter of a gap between two
elements as required by Appellants’ claimed invention.
The rejection of claims 4, 6, 23, and 24 under 35 U.S.C § 103(a) as
unpatentable over the combination of Brennan and Cerrina is reversed.

REVERSED

alw

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