Ex Parte Belcastro et al

Patent Trial and Appeal Board

Sep 13, 2016

11808496 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111808,496 06/11/2007
21839 7590 09/15/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Marc D. Belcastro
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1021238-000866 5475
EXAMINER
HWU,DAVISD
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC D. BELCASTRO and
JEFFREY A. SWEPSTON
Appeal2014-007394
Application 11/808,496
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5, 8-13, 15-23, and 25-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
The claims are directed to an indirectly heated capillary aerosol
generator. Claim 1, reproduced below, illustrates the claimed subject matter:
Appeal2014-007394
Application 11/808,496
1. An indirectly heated capillary aerosol generator comprising:
a capillary tube adapted to form an aerosol when liquid
material in the capillary tube is heated to volatilize at least some
of the liquid material therein; and
a thermally conductive material in thermal contact with
the capillary tube, and wherein the thermally conductive
material has a threaded exterior and is wrapped with a helically
extending heating wire, which has electrical leads attached to it,
and wherein the helically extending heating wire is disposed
along thread grooves of the threaded exterior of the thermally
conductive material with uniform spacing between turns of the
helically extending heating wire.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kelly
Byron
Li
US 5,434,765 July 18, 1995
US 7,128,067 B2 Oct. 31, 2006
US 2004/0203175 Al Oct. 14, 2004
REJECTIONS
The Examiner made the following rejections:
Claims 1-5, 8, 9, 11-13, 15-19, 21-23, and 25-32 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Byron and Li. 1
1 Appellants sought to cancel claims 15, 21, and 28 by an amendment filed
concurrently with the Appeal Br. The Examiner's Answer does not reject
these claims (Ans. 2-3), although the Final Action did. Final Act. 2-3. We
assume for purposes of appeal that these claims are no longer before us, and
we suggest the Examiner issue an Action to enter the Amendment into the
record officially. We also note that claim 22 depends from canceled claim
21, and this claim should be corrected if there is to be further prosecution of
the application before the Examiner.
2
Appeal2014-007394
Application 11/808,496
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Byron, Li, and Kelly.
OPINION
Claims 1-5, 8-14, 16-20, 22-27, and 29-32 are pending. Claims 1,
14, 19, and 24 are independent, and claims 14 and 24 are allowed. The
Appellants argue claims 1-5, 8, 9, 12, 13, 16-18, 22, 23, 29, and 32 as a
group. Appeal Br. 4-8. We select claim 1 as representative, and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants make three arguments to counter the Examiner's rejection
of claim 1 over a combination of Byron and Li. Appellants argue that Byron
discloses a flow passage 23 having a conductive sleeve 26 surrounding the
flow passage 23 rather than a capillary tube and a thermally conductive
material as recited in claim 1. Appeal Br. 5-6. Second, the Appellants
argue that forming helical grooves in the thermally conductive material into
which the heating wire is wound is not merely a matter of obvious design
choice. Instead, Appellants argue that the arrangement provides uniform
spacing of the heating wire and allows the thermally conductive material to
be enlarged to promote even, uniform heating of the capillary tube without
imposing a large electric load upon the source of electrical energy. Appeal
Br. 6-7. Finally, Appellants argue that the transfer tube 10 of Li does not
vaporize and/or cause the solvent to evaporate. Appeal Br. 7. Instead, argue
Appellants, in Li the transfer tube 10 forms hanging droplets of liquid
stream, and the carrier solvent is evaporated as the droplets land on the plate
of the collection device 20. Id. This, Appellants claim, is not the function or
3
Appeal2014-007394
Application 11/808,496
operation as recited in claim 1. We address these issues in tum, although not
in the order Appellants present them.
Byron
The Examiner points out that Byron discloses a heating device that
heats material in a capillary tube. Ans. 2. Byron discloses that his flow
passage 23 is a capillary. Byron 4:27. Further, Byron discloses using heater
27 (Fig. 1) positioned adjacent to the flow passage 23, preferably in a way
that provides a heated zone around the flow passage that maximizes heat
transfer throughout the heated zone. Byron 4:7-11. "The heater 27 heats
the portion of the flow passage 23 to a sufficient temperature to volatilize the
liquid material." Byron 4: 14-16. Byron also discloses an electrically
conductive sleeve 26 which surrounds the flow passage 23, which is
described as preferably being made of copper, aluminum, or the like. Byron
4:43--48. One of ordinary skill in the art would appreciate that these metals
are thermally conductive. In view of the foregoing, we are not persuaded
that Byron does not disclose "a capillary tube and a thermally conductive
material as recited in claim l ,"as Appellants argue. Appeal Br. 6.
Li
Appellants argue that "the transfer tube 10 of Li does not vaporize
and/or cause the solvent to evaporate." Appeal Br. 7. Appellants assert that
instead the transfer tube 10 forms hanging droplets of liquid stream and the
carrier solvent is evaporated as the droplets land on the plate of the
collection device 20. Id. The Examiner finds that Li "teaches a device that
generating [sic] droplet in which the device comprises a capillary tube 10
and a thermally conducted material 16c in thermal contact with [the]
capillary tube wherein the material l 6c is wrapped with a helically extending
4
Appeal2014-007394
Application 11/808,496
heating wire 24 which has electrical leads attached to it." Final Act. 2, Ans.
2. The teaching of Li is used by the Examiner only for replacing Byron's
heating means with a heating wire wrapped helically around the thermally
conductive material. Final Act. 2, Ans. 2. Li teaches wrapping the heating
coil around the stainless steel tubing which in tum surrounds a capillary
tube. 2 Li iii! 66, 85. One of ordinary skill in the art, reviewing Li, would
recognize Li teaches heating the flowing stream while in the transfer tube 10
to cause "evaporation of the solvent from the hanging droplet 30." Li iJ 68.
Li continues:
[a]s the heated liquid exits the transfer tube, it forms a hanging
droplet that clings to the end of the transfer tube outlet 14 by
virtue of surface tension. The overall rate of growth of the
droplet is controlled by two differential parameters: (1) the rate
at which material is added to the droplet, and (2) the rate at
which material is evaporated from the droplet.
Li iJ 73. Accordingly, Appellants are incorrect in their assertion that "the
transfer tube 10 of Li does not vaporize and/or cause the solvent to
evaporate." Appeal Br. 7. For the same reason, Appellants' arguments that
Li does not function or operate as the arrangement recited in claim 1 and that
therefore it would not be obvious to combine Li with Byron (id.) are not
persuasive.
2 We note that Byron also discloses an embodiment comprising a flow
passage of capillary tubing with a helically wrapped heater wire. After
describing a particular, suitable wire, Byron discloses, "The wire was
wrapped in a fashion that produced close, tight coils to ensure good heat
transfer to the flow passage." Byron 15:12-14.
5
Appeal2014-007394
Application 11/808,496
Design Choice
The Examiner found that it was a matter of design choice to form
threads on the exterior of the conductive material in order to securely wrap
the coil around the conductive material, and that Byron's device, as modified
by Li, would still function properly with such an arrangement. Final Act. 2.
The Examiner repeats this position in his Answer and further explains that
"[i]t would have been a matter of design choice to provide thread grooves to
hold the heating coil since the task of heating the material would still be
carried out as intended by the heating device of Byron et al." Ans. 4.
One of ordinary skill in the art would appreciate from Li Figure 3A
that the heating coils can be uniformly spaced, and the emphasis in Li on
heating the capillary tube 10 until just below the solvent boiling point would
suggest that hot spots in the capillary are to be avoided. See Li iii! 66, 68,
73, and 77. Li's description of 20 turns of heating wire along a distance of
2.6 cm. (para. 85) would suggest about 1.3 mm per tum, producing a helical
shape for the heating wire.
Appellants argue that the threaded exterior of the thermally
conductive material is not obvious because "the arrangement provides
uniform spacing of the heating wire about the thermally conductive material,
such that a more even, uniform application of heat to the thermally
conductive material is provided, which is not taught or suggested by either
Byron or Li." Appeal Br. 6-7. 3 As noted above, Byron teaches tightly
3 Appellants also argue that the thread grooves in the thermally conductive
material promote two favorable results: "the thermally conductive material
can be enlarged to promote even uniform heating of the capillary tube" and
do so "without imposing a large electric load upon the source of electrical
energy," citing Specification paragraph 15. Appeal Br. 7. This argument is
6
Appeal2014-007394
Application 11/808,496
wrapping the heater wire around a thermally conductive material, as does Li,
with Li providing a drawing showing uniform spacing and a specific
disclosure of what that spacing can be in practice. Thus, the modification of
adding grooves to the device of Byron, as modified by Li, provides no
unexpected results or change in function to the device, which already
includes uniform spacing of the helically wrapped heating wire. We find
that the Examiner's conclusion that it would have been an obvious design
choice to provide helical grooves on the outside of the thermally conductive
material is supported by articulated reasoning with rational underpinning. In
re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Claim 10
Appellants argue claim 10 separately on the basis that the additional
reference, Kelly, fails to remedy the deficiencies of the Byron and Li
references. Appeal Br. 8-9. As we have found no such deficiency, no error
has been shown in the rejection of claim 10.
Claim 11
Appellants argue claim 11 separately. Appeal Br. 9-10. Claim 11
depends from claim 1 and adds that the thermally conductive material has a
mass that is at least about 10 times a mass of the capillary tube. Id. at
unpersuasive because Specification paragraph 15 compares vaporizers where
the capillary tube is itself conductive and heated by passing electricity
through the capillary tube to vaporizers where the capillary tube is heated
indirectly by a heated thermal mass. In addition, the cited paragraph says
only that uniform winding of the heater wire around a thermal mass allows
accurate temperature control by controlling the electric current. Thus, the
cited paragraph does not relate to the presence or absence of a helical
groove.
7
Appeal2014-007394
Application 11/808,496
Claims App. 2. The Examiner finds that the mass of the thermally
conductive material is a matter of design choice depending on the materials
used. Final Act. 3. The Examiner's Answer repeats this finding (Ans. 3)
and elaborates, saying that because the prior art device (Byron as modified
by Li) generates an aerosol, the masses of the pieces that make up the device
do not matter. Ans. 4.
Appellants make only one substantive argument concerning the
relative masses of the capillary tube and thermally conductive material,
namely, that the thermally conductive material can be enlarged to promote
even, uniform heating of the capillary without imposing a large electric load
upon the source electrical energy. Appeal Br. 9-10. As noted above, Li
points out the importance of uniform heating of a capillary tube (as well as
careful temperature control). Li also discloses a specific example of a
stainless steel support tube around a silica capillary. The exemplary support
tube has an outside diameter of 0.159 cm and an inside diameter of 250 µm,
and the capillary tube has an outside diameter of 185 µm and an inside
diameter of 50 µm. Li iJ 68. One of ordinary skill in the art would recognize
that the cross section of the capillary tube cannot be larger than the area of
the hole in which it is received and could readily calculate that, per unit of
length, the cross-sectional area of the stainless steel support tube is more
than 40 times the cross-sectional area of the hole down its middle.
Therefore the relative masses of the capillary (made of silica) and the
thermally conductive material around it (made of stainless steel) would
exceed the claimed minimum ratio of 10. Given that Li made the design
choice defined in claim 11, we agree that the relative masses of the capillary
and the support tube recited in claim 11 is a matter of obvious design choice.
8
Appeal2014-007394
Application 11/808,496
Accordingly, we are not persuaded of Examiner error in finding the relative
masses of the capillary and surrounding thermally conductive material a
matter of design choice.
Claim 19
Appellants make the same arguments in favor of the patentability of
claim 19 as they made for claim 1. Appeal Br. 10-13. We find them
unpersuasive for the same reasons. Appellants also urge that the Examiner
errs because neither Byron nor Li teaches or suggests forming the thermally
conductive material from two half cylinders as claimed in claim 19. Appeal
Br. 13. This argument does not respond to the Examiner's rejection, which
found the claimed arrangement an obvious design choice. Final Act. 3. For
this reason the argument is unpersuasive. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). Accordingly, we have not been apprised of error and
affirm the rejection of claim 19.
Claim 20
Appellants argue that the Examiner's reliance on Kelly in the rejection
of claim 20 does not cure the alleged deficiencies with the rejection of claim
19. Appeal Br. 14. Because we do not agree with those deficiencies, we
likewise sustain the rejection of claim 20.
Claim 25
Claim 25 depends from claim 1 adding that "the thermally conductive
material has a mass and/or thickness relative to that of the capillary tube
sufficient to heat the capillary tube with less than about 5°C variation along
a heated portion of the capillary tube." Appeal Br. Claims App. 5. The
Examiner finds "it is widely understood that temperatures of heating devices
will vary depending on its [sic] operating conditions and so it would have
9
Appeal2014-007394
Application 11/808,496
been obvious to one having ordinary skill in the art at the time the invention
was made to have made the device withstand a slight temperature variation."
Ans. 5.
As noted above, Li emphasized the need for careful temperature
control. Li ii ii 13, 14, 18 ("close control"), 66, 73 ("carefully controlled"),
7 6. Appellants have not claimed any special or surprising result from the
about 5°C range, only that this results naturally from having a certain
thermal mass surrounding the capillary. Spec. 5. "The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims .... In such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). We
have not been shown error in the Examiner's finding.
Claims 26 and 27
Claim 26 depends from claim 1 adding "wherein the thermally
conductive material in thermal contact with the capillary tube comprises two
half cylinders of metallic material with longitudinally extending semicircular
grooves along a center axis of the two half cylinders, the half cylinders
receiving the capillary tube in the grooves, and end caps are attached to the
opposed ends of the two half cylinders." Appeal Br. Claims App. 5. Claim
27 also depends from claim 1, adding "wherein the thermally conductive
material is a threaded metallic rod having a threaded exterior and end caps
threadedly attached to opposite ends of the threaded metallic rod." Id. The
Examiner has rejected these claims, finding that the device of Byron as
modified by Li "would function properly, since the purpose of the prior art
10
Appeal2014-007394
Application 11/808,496
device is to produce aerosol, which it would do so [sic] with or without the
endcaps." Ans. 5.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
"rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
In this case the Examiner has merely stated that if end caps were
added, the device would still be operative. Ans. 4-5. This is not a sufficient
basis to support a conclusion that it would have been obvious to make the
claimed combination, and we reverse the Examiner's rejection of claims 26
and 27.4
Claim 30
Claim 30 depends from claim 14 which has been indicated allowable.
Accordingly, the rejection of claim 30 is reversed.
4 In the event of further prosecution, we note that Li discloses that fluid from
tubing 16 flows through union 16a and a fitting 16b. Li iJ 61; Fig 1. Fitting
16b is shown in Figure 3 to be an end cap on the thermally conductive
material l 6c.
11
Appeal2014-007394
Application 11/808,496
Claim 31
Claim 31 depends from claim 1 adding that "the thermally conductive
material is electrically non-conductive and has a mass that is at least about
ten times a mass of the capillary tube." Appeal Br. Claims App. 6. The
Examiner rejects claim 31 on the same basis that claim 1 was rejected, and
without further comment. Final Act. 2-3; Answer 2-3. Appellants argue
that electrically non-conductive thermal masses are not shown or suggested
by either of the references relied on. The Examiner bears the initial burden
of factually supporting any prima facie conclusion of obviousness, as
discussed above. Here the Examiner has not made even a conclusory
statement about the subject matter added by claim 31. Accordingly, we do
not sustain the rejection of claim 31.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 8-13,
16-20, 22, 23, 25, 29, and 32 is affirmed. The Examiner's rejection of
claims 26, 27, 30, and 31 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
12