Ex Parte Birch et al

Patent Trial and Appeal Board

Sep 26, 2014

11992454 (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER HUGH BIRCH and MICHAEL ROGER CZERNIAK
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Appeal 2012-008542
Application 11/992,454
Technology Center 3700
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Before JILL D. HILL, LISA M. GUIJT, and MICHAEL L. WOODS,
Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Peter Hugh Birch and Michael Roger Czerniak (“Appellants”) seek
our review under 35 U.S.C. § 134 of the final rejection of claims 1, 2, 5–7,
10–14, 16, 17, 20–22, and 24–29. Br. 3. Claims 3, 4, 8, 9, 15, 18, 19, 23,
and 30 have been cancelled. Id. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
The Appellants’ invention is directed to a system and method of
pumping gas. Spec. 1, l. 3. Independent claim 1 is illustrative and is
reproduced below with emphasis on the contested claim limitations.
1. A method of pumping a gas stream containing a
condensable species and a light gas, the method comprising the
steps of:
conveying the gas stream to a multistage vacuum pump
having an inlet stage and an exhaust stage downstream from the
inlet stage; and
adding to the gas stream upstream of or at the inlet stage
a purge gas heavier than the light gas, the purge gas being
selected so as to inhibit migration of the light gas from the
exhaust stage towards the inlet stage and to inhibit condensation
of the condensable species within the pump,
wherein when the light gas has a flow rate of at least 20
slm, the purge gas is added to the gas stream at a rate of at
least 10 slm.

THE REJECTIONS
The Examiner has rejected (see Answer 4–11):
(i) claims 1, 6, 7, 10–14, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Naito (JP 2003-155989, published May 30, 2003
(translated in English)) in view of Brenner (US 5,356,275, issued Oct. 18,
1994); and
(ii) claims 2, 5, 17, 20–22, and 24–29 under 35 U.S.C. § 103(a) as
being unpatentable over Naito, Brenner, and further in view of Suzuki (US
6,471,497 B2, issued Oct. 29, 2002).
ANALYSIS
The Appellants have not presented arguments for the patentability of
claims 2, 6, 7, 10–14, 16, 17, 20–22, and 24–29 apart from claim 1. See Br.
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7–13. Therefore, we select claim 1 as the representative claim to decide the
appeal of the rejection of these claims, with claims 2, 6, 7, 10–14, 16, 17,
20–22, and 24–29 standing or falling with claim 1. See 37 C.F.R. §
41.37(c)(1)(vii) (2011).
Claim 1
The Examiner determines that Naito discloses the claimed method of
pumping a gas stream containing a condensable species and a light gas, and
adding a purge gas to inhibit condensation, but fails to specifically disclose
the claimed flow rates for the light gas and purge gas. See Answer 4–7. The
Examiner determines that Brenner discloses controlling the flow rate of a
purge gas in order to provide the best control and that “[f]inding the
optimum flow rate of the light gas and the purge gas requires only routine
skill in the art, and produces predictable results.” Id. at 8 (citing Brenner,
col. 1, ll. 50–61).
In response, the Appellants first argue that neither Naito nor Brenner
disclose a purge gas that is heavier than a light gas. See Br. 7–8. The
Appellants contend that because neither Naito nor Brenner are directed
towards solving the problem of gas migration, that “it is not reasonable [for
the Examiner] to say that Brenner implies the weight-relationship between
the purge gas and the light gas.” Id. at 8 (emphasis added).
In the Final Office Action and in the Answer, the Examiner explains
that Brenner, through an internally-cited patent, discloses a pump used for
evacuating hydrogen gas bi-product formed during the aluminum etching
process. See Final Act. (mailed February 22, 2011) 16 (citing Brenner, col.
1, ll. 21–34 and Electromechanical Design Handbook 13–15); see also
Answer 17. In making this finding, along with the finding that Brenner and
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Naito both disclose nitrogen purge gas, the Examiner does not imply, but
instead explicitly identifies disclosure supporting nitrogen purge gas and
hydrogen light gas. See Answer 17 (citing Brenner, col. 1, ll. 22–47). The
Examiner completes his finding that the prior art discloses a purge gas that is
heavier than a light gas in finding that hydrogen is inherently lighter than
nitrogen. Final Act. 16–17; Answer 17.
As the Appellants have not specifically addressed or otherwise
identified error in the Examiner’s finding, we are not persuaded by the
Appellants’ argument that neither Naito nor Brenner disclose a purge gas
that is heavier than a light gas, as recited in claim 1. See Br. 7–8.
The Appellants also argue that it was improper for the Examiner to
“call the claim[ed flow rate] limitation an obvious, routine exercise, merely
because it involves discovering optimum workable ranges.” Br. 9.
Appellants contend that “[s]ince Naito fails to connect the relationship
between the light gas flow rate and [the] purge gas flow rate to the reduction
of backward gas migration and condensation, . . . it do[es] not recognize the
flow-rate relationship as a cause-effective variable.” Id.
The Examiner found that both Naito and Brenner disclose adding
purge gas to a light gas in a pumping system “in order to inhibit
condensation.” Answer 18. The Examiner also found that “BRENNER
recognizes the need to control the flow rate of the purge gas to inhibit
condensation.” Id. at 18–19 (citing Brenner, col. 1, ll. 51–61 and col. 3, ll.
36–47) (emphasis added). Accordingly, the Examiner correctly found that
the claimed flow rates are result effective variables. See id. Based on these
findings, the Examiner determined that “[f]inding the optimum flow rate of
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the light gas and the purge gas requires only routine skill in the art, and
produces predictable results.” Id. at 19.
We agree with the Examiner and note that the prior art expressly
suggests controlling the flow rate of the purge gas to reduce condensation.
See, e.g., Brenner, col. 1, ll. 8–61 and col. 3, ll. 36–47. We also note that the
Appellants have not identified any evidence to persuasively support an
argument that the claimed ranges are “unexpectedly good.” See In re
Antonie, 559 F.2d 618, 620 (CCPA 1977). Therefore, even though the prior
art may not explicitly disclose the problem of gas migration, the prior art
would have suggested experimenting with the flow rates to reduce
condensation, thereby arriving at the claimed rates. See In re Boesch, 617
F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the
art.”)
For these reasons, we are not apprised of error in the rejection of
claim 1 and sustain the rejection under 35 U.S.C. § 103(a) as being
unpatentable over Naito in view of Brenner. Furthermore, we sustain the
rejection of claims 2, 6, 7, 10–14, 16, 17, 20–22, and 24–29, which stand or
fall with claim 1, as discussed above.
Claim 5
The Appellants argue that claim 5 is allowable for the same reasons as
claim 1, discussed supra, and also state that Suzuki “does not cure the
deficiencies of Naito and Brenner, namely failures to anticipate or make
obvious ‘adding to the gas stream upstream of or at the inlet stage a purge
gas . . . . ’” Br. 11–12 (emphasis added).
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The Examiner found that Naito discloses “a purge gas supply . . .
upstream of or at the inlet stage.” Answer 6 (citing Naito, Figs. 3 and 4,
Abstract, and paras. 4, 5, and 13–15).
The Patent Rules require more substantive arguments in an appeal
brief than a mere recitation of a claim element and a naked assertion that the
corresponding element was not found in the prior art. 37 C.F.R. §
41.37(c)(1)(vii) (2007); see also In re Lovin 652 F.3d 1349, 1357 (Fed. Cir.
2011). We find that the Appellants’ statement does not point out, with any
specificity, the reason why Naito does not disclose adding a purge gas
upstream of or at the inlet stage, as recited in claim 5 and as found by the
Examiner. Therefore, the Examiner was correct in finding that Naito
discloses “a purge gas supply . . . upstream of or at the inlet stage,” as
recited in claim 5. Answer 6 (citing Naito, Figs. 3 and 4, Abstract, and
paras. 4, 5, and 13–15).
Therefore, we sustain the rejection of claim 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Naito, Brenner, and Suzuki.

SUMMARY
The Examiner’s decision to reject claims 1, 6, 7, 10–14, and 16 under
35 U.S.C. § 103(a) as being unpatentable over Naito in view of Brenner is
affirmed.
The Examiner’s decision to reject claims 2, 5, 17, 20–22, and 24–29
under 35 U.S.C. § 103(a) as being unpatentable over Naito, Brenner, and
further in view of Suzuki is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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