Ex Parte Busche

Patent Trials and Appeals Board

Jun 3, 2019

14920758 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/920,758 10/22/2015
100926 7590 06/05/2019
LOWENSTEIN SANDLER LLP /AMAT
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
FIRST NAMED INVENTOR
Matthew Busche
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.
36119.408 (L0408) 9160
EXAMINER
CHIEM, DINH D
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW BUSCHE
Appeal2018-007181
Application 14/920,758
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's Final
rejection2 of claims 1 and 10-18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant identifies Applied Materials, Inc. as the real party in interest.
Appeal Brief (filed November 10, 2017) ("App. Br."), 2.
2 Final Office Action (mailed May 2, 2017) ("Final Act."). In this opinion,
we also refer to the Examiner's Answer (mailed May 3, 2018) ("Ans.") and
the Reply Brief (filed July 3, 2018 ("Reply Br.")).
Appeal2018-007181
Application 14/920,758
CLAIMED SUBJECT MATTER
The claims are directed to an optical fiber temperature sensor said to
be used for monitoring high-temperature substrate processing. Spec. ,r 1. 3
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An optical fiber temperature sensor, comprising:
a lead-in fiber including a fiber end; and
a black body emitter fused on the fiber end, the black body
emitter comprising a continuously arcuate profile along its entire
length and including melted high emissivity material included
integrally in melted silica.
App. Br. 10, Claims Appendix.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Wang et al.
("Wang")
Gotthold et al.
("Gotthold")
LeBlanc et al.
("LeBlanc")
Weiner et al.
("Weiner")
US 5,364,186 Nov. 15, 1994
US 6,572,265 B 1 June 3, 2003
US 2012/0147381 Al June 14, 2012
US 2014/0170025 Al June 19, 2014
REJECTIONS
Claims 1 and 11-17 are rejected under 35 U.S.C. 103 as being
unpatentable over Wang in view ofLeBlanc. Final Act. 2.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over
Wang in view ofLeBlanc, and further in view of Weiner. Final Act. 4.
3 Application No. 14/920,758 ("Spec.").
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Application 14/920,758
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over
Gotthold in view of LeBlanc. Final Act. 5.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011)) ("[I]t has long been the Board's practice to require an applicant
to identify the alleged error in the [E]xaminer's rejections."). After having
considered the evidence presented in this Appeal and each of Appellant's
contentions, we are not persuaded that Appellant has identified reversible
error, and we affirm the Examiner's 35 U.S.C. § 103 rejections for the
reasons expressed in the Final Office Action and the Answer. We add the
following primarily for emphasis.
Rejection of Claim 14
Appellant argues that the Examiner reversibly erred in finding the
references teach or suggest a "black body emitter comprising a continuously
arcuate profile along its entire length" as recited in claim 1. More
specifically, Appellant argues that LeBlanc FIG. 7, cited by the Examiner in
support of the rejection, is a mere schematic representation and not "a
4 Appellant does not present separate arguments for claims 10, 17 and 18
and they therefore stand or fall with claim 1. See App. Br. 6 ( arguing that
Weiner which is cited for the rejection of claim 10 does not cure the
deficiencies of Wang), 7 (arguing that Gotthold which cited for the rejection
of claim 18 does not teach or suggest a black body emitter and "LeBlanc
provides no reason to modify the profile shape of a black body emitter"), 8-
9; see also 37 C.F.R. § 4I.37(c)(1)(iv)(2013).
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Appeal2018-007181
Application 14/920,758
depiction of its actual shape." App. Br. 5. The Examiner does not rely on
LeBlanc' s Figure 7 alone. The Examiner relies also on LeBlanc' s Figures 11
and 12 that show a circular/spherical tip. Final Act. 3. Appellant does not
provide any basis to support the assertion that the illustrations in LeBlanc
are inaccurate for any reason. We are also unaware of, and Appellant
provides no citation to any, case law or other legal authority establishing that
illustrations in the prior art should be ignored. In re Mraz, 455 F.2d 1069,
1072 (CCP A 1972) ("We did not mean that things patent drawings show
clearly are to be disregarded."). The test for obviousness is "whether the
teachings of the prior art, taken as a whole, would have made obvious the
claimed invention." In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
Moreover, the obviousness rejection is based on the finding that the
illustrations in LeBlanc would have taught or suggested the "continuously
arcuate" shape to the skilled artisan-which Appellant does not adequately
address. Absent evidence in support of Appellant's argument, we are
unpersuaded that the Examiner reversibly erred in evaluating the teachings
ofLeBlanc.
Appellant also does not dispute the Examiner's finding that Figure 2
of Wang discloses various shapes of a probe tip including bevel, angular,
and arcuate shapes, but argues that each of these shapes "has a substantially
linear portion along the length of each blackbody emitter 10." Compare
Reply Br. 3 ( emphasis omitted), with Ans. 3.
To the extent Appellant's argument is premised on the assertion that
the recited "continuously arcuate profile" excludes "a substantially linear
portion," Appellant does not adequately explain what constitutes such "a
substantially linear portion." See Reply Br. 3. For example, Appellant does
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Appeal2018-007181
Application 14/920,758
not structurally distinguish the recited black body emitter (id.) from FIG.
2(b) of Wang which "shows a blackbody emitter 10 formed on a rounded tip
of the lightpipe 20." Wang 6:63---64. We further note that Appellant does not
dispute the Examiner's finding that Wang teaches "application-specific
designs ... in terms of length-to-diameter ratio of 2: 1 to 5: 1" and therefore a
skilled artisan would know to adjust and rearrange the configuration of the
probe tip shape to arrive at the recited "continuously arcuate profile."
Compare Reply 2-3, with Ans. 3 (citing Wang 7:13-18).
Furthermore, as the Examiner points out, it has been generally held
that ordinarily changes in sizes of shapes of known elements are within the
level of skill in that art, especially in the absence of unexpected results or
criticality. See In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (change in
shape is ordinarily prima facie obvious). Appellant does not dispute the
Examiner's finding that "[t]here is no explanation as to how the claimed
shape provides an improvement over the shapes disclosed by Wang."
Compare Reply 2-3, with Ans. 7; see also App. Br. 5---6. We are therefore
unpersuaded that reversible error has been identified here.
Appellant's argument that ball 1115 of LeBlanc is not a black body
emitter does not persuade us of reversible error because the rejection is
based on the undisputed finding that Wang discloses an optical temperature
sensor having a black body emitter. App. Br. 5; see also Final Act. 2.
Appellant's remaining arguments, directed to whether the recited
"black body emitter does not reflect light received from a light source ... as
does LeBlanc' s sensors" and that LeBlanc provides no reason to modify the
shape of the black body emitter are not persuasive because the arguments do
not address the Examiner's rationale to combine Wang with LeBlanc. App.
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Appeal2018-007181
Application 14/920,758
Br. 6; see also Reply Br. 4 (arguing that the prior art sensor is used for a
different purpose). For example, the Examiner finds that the recited sensor,
as well as the prior art sensors in Wang and LeBlanc all have "a sensing tip
attached to an optical fiber where the sensing tip receives a signal which is
transmitted through the optical fiber." Ans. 5. Because that finding is
reasonable and Appellant has not challenged it, we accept it as fact. See In re
Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964). The Examiner's rationale
that a skilled artisan would have modified the shape of Wang's black body
emitter is therefore supported by undisputed evidence. Final Act. 3; see also
KSR Int'! 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.").
"[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field" - as is the case here for the apparatus claim, "the combination must
do more than yield a predictable result." KSR, 550 U.S. at 416. Appellant in
this case does not argue that the combination provides more than predictable
result and we discern no reversible error in the Examiner's findings in
support of the rejection.
Rejection of Claims 11-15
Claim 11 depends from claim 1 and additionally recites "wherein the
black body emitter comprises a maximum diameter of less than about 500
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Application 14/920,758
microns." 5 Appellants argues that Wang "only disclos[es] very vaguely that
the thickness of the coating that forms the blackbody emitter 'preferably
ranges from tens to hundreds of micrometers'" and "a person of ordinary
skill in the art would not find Appellant's specific ranges obvious from
Wang's vague range of coating thicknesses." App. Br. 7 (citing Wang
10:31-33). Appellant, however, does not support the argument with
evidence. "Attorneys' argument is no substitute for evidence." Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Appellant also does not
address the Examiner's explanation as to how a skilled artisan would have
found the recited dimensions obvious based on Wang's teachings. Compare
Reply Br. 2-5, with Ans. 9-10 (citing Wang 6:44--47, 10:31-35, and 10:6-
20).
We further note that it has been generally held that where the only
difference between the prior art and the claims was a recitation of relative
dimensions of the claimed device and a device having the claimed relative
dimensions would not perform differently than the prior art device, the
claimed device was not patentably distinct from the prior art device.
Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984). No
reversible error has therefore been identified here.
Rejection of Claims 16
Claim 16 depends from claim 1 and additionally recites "wherein the
black body emitter is additionally coated with a metal coating." Appellant
5 Appellant argues claims 11-15 as a who le ( each of claims 11-15 recites a
particular maximum diameter of the black body emitter) (App. Br. 7-8) and
we select claim 11 as representative for the purpose of this appeal. As a
result, claims 12-15 stand or fall with claim 11. See App. Br.; see also 37
C.F.R. § 4I.37(c)(1)(iv)(2013).
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Application 14/920,758
acknowledges that Wang describes that the bulk of the coating material of
the black body emitter is formed by "a mixture of refractory metal oxides"
but argue that it does not teach or suggest the limitation in claim 16. App.
Br. 8 (citing Wang 7:19-26, 7:54). Appellant does not elaborate on this
argument and does not address the specific embodiment of Wang the
Examiner cites in support of the rejection. Compare Reply Br. 2-5, with
Ans. 10 (citing Wang 7:64--8:2). No reversible error has been identified with
regard to claim 16. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[T]he Board [has] reasonably interpreted Rule 41.37 to require 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.").
DECISION
The Examiner's decision is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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