Ex Parte Chaleix et alDownload PDFPatent Trial and Appeal BoardMay 23, 201612485552 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/485,552 06/16/2009 23373 7590 05/25/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Daniel CHALEIX 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. Ql 13927 3442 EXAMINER GOLIGHTLY, ERIC WAYNE ART UNIT PAPER NUMBER 1714 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL CHALEIX, PATRICK CROQUET, GERARD BARA VIAN, BERNARD LACOUR, and VINCENT PUECH Appeal2015-000383 Application 12/485,552 Technology Center 1700 Before TERRY J. OWENS, GEORGE C. BEST, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1 and 2 of Application 12/485,552 under 35 U.S.C. § 103(a) as obvious. Final Act. (Oct. 10, 2013). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we REVERSE. 1 The real party in interest is identified as "USINOR." Appeal Br. 2. Appeal2015-000383 Application 12/485,552 BACKGROUND The '552 Application relates to a generator capable of generating a succession of positive and negative voltage pulses that may be used to produce a plasma suitable for cleaning organic contaminants from a metal surface. Spec. 3-5. Claim 1 is representative of the Appellants' claims and is reproduced below: 1. A generator for implementing a process for a continuous cleaning of a surface of a material covered with an organic substance, the generator comprising: a low-voltage power supply having an MOS power transistor and configured to deliver low-voltage pulses at a frequency of 1 to 200 kHz; and a transforming component configured to transform said low-voltage pulses into high-voltage pulses, wherein the MOS power transistor is connected to the transforming component; and wherein the generator is configured to generate an electric field that is pulsed using the high-voltage pulses that comprise a succession of positive and negative voltage pulses, a maximum voltage of the positive pulses u+ being greater than an arc striking voltage Ua and a maximum voltage of the negative pulses u- being, in absolute value, less than the striking voltage Ua. 2 Appeal2015-000383 Application 12/485,552 REJECTIONS Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Spence2 and Meyer. 3 DISCUSSION The Final Action In the Final Rejection, the Examiner found that Spence teaches a generator comprising both a low-voltage power supply configured to deliver low-voltage pulses at a frequency of 100 kHz, and a transforming component capable of being configured to transform the low-voltage pulses into high-voltage pulses. Final Act. 3. The Examiner further found that Spence does not teach a generator where the low-voltage power supply has a MOS power transistor as taught by Meyer; however, it would have been obvious to modify the generator of Spence so that the low-voltage power supply has a MOS power transistor connected to the transforming component to broaden the range of operations possible with the generator. Id. Finally, the Examiner found that because the generator of Spence as modified by the teachings of Meyer is structurally identical to that disclosed by the Applicants, one may presume that "the Spence/Meyer generator is 2 Spence et al., U.S. 6,106,659, Aug. 22, 2000 ("Spence"). 3 Meyer, U.S. 5,443,998, Aug. 22, 1995 ("Meyer"). 3 Appeal2015-000383 Application 12/485,552 fully capable of being configured for use as in the recited mode of operation." Id. Appellants' Contentions In their Appeal Brief, the Appellants make three arguments why the Final Rejection is deficient. First, they argue that neither Spence nor Meyer discloses a generator configured to produce low-voltage pulses. Appeal Br. 8-10. Second, they argue that the Spence/Meyer generator is not configured to generate a succession of positive and negative high-voltage pulses of a certain amplitude and is therefore not inherently identical to the claimed generator. Id. at 10-11. Rather, they contend that Spence teaches a generator that produces a voltage to create "charged plasma species of one charge or the other depending on the voltage bias and electrode configuration used." Id. at 11 (quoting Spence). Third, Appellants contend that the Examiner has not shown any motivation to combine Myer's MOS transistor with Spence's teachings. Id. at 12. Further, even if a person of ordinary skill in the art were so motivated, such person would understand that a MOS transistor can amplify a signal and therefore use the MOS transistor for transforming low voltage pulses into high voltage pulses, rather than as a component of the low-voltage power supply. Id. Moreover, Appellants contend that Meyer concerns only how to produce a MOS transistor and lacks any teaching as to the use of a MOS transistor. Id. The Examiner's Answer In the Answer, the Examiner briefly articulated a second rationale for the notion that Spence teaches a succession of positive and negative voltage pulses. Ans. 7. There, the Examiner noted that "even under the appellants' analysis, Spence '659 at least discloses one embodiment wherein positive 4 Appeal2015-000383 Application 12/485,552 pulses are developed and another embodiment wherein negative pulses are developed." Id. The Examiner then finds that "it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the embodiments since the combination is simply a predictable variation." Id. Analysis "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We first consider the Examiner's contention that the combination of Spence and Meyer teaches a generator that produces a succession of positive and negative voltage pulses. The Examiner set forth the primary basis for this finding in his Answer to the Appeal Brief: Since the generator of the applied art includes all of the presently claimed structural features, it is the base presumption that the generator of the applied art is fully capable of being configured for use as in the recited mode of operation. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the appellant to show an unobvious difference. Ans. 6. In support of this basis of rejection, the Examiner cited, in part, to In re Best. 4 That case provides that, where the cited prior art is identical to the claim at issue, the Patent Office may require the applicant to show that the prior art does not inherently possess the claimed characteristic: Where, as here, the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to 4 562 F.2d 1252, 1254(CCPA1977). 5 Appeal2015-000383 Application 12/485,552 prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d at 1255. Similarly, the Federal Circuit has stated: [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). We will assume, arguendo, that the prior art of record and claim 1 both include a low-voltage power supply and a transforming component, but the Examiner has not established that the presence of common components renders them "substantially identical." Such identity would require that the prior art teach a particular arrangement of components configured to generate the succession of positive and negative pulses required by claim 1. There is no such finding in the record. Nor has the Examiner established that such functionality is inherent to every generator with a low-voltage power supply and a transforming component. "Inherency ... may not be established by probabilities or possibilities." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency requires that the missing descriptive material is "necessarily present" in the prior art. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002). Where the claim includes functional language, the prior art structure must be capable of performing the function without further modification. Cf Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 13 7 6, 13 80 (Fed. Cir. 2011) (rejecting argument that infringement could be 6 Appeal2015-000383 Application 12/485,552 based on a finding that accused product is capable of being modified so as to infringe). Here, the Examiner does not assert that that the cited art can perform the claimed function without modification; rather, he asserts only that the generator disclosed by the cited references "is fully capable of being configured," in such a way as to generate such pulses. This does not establish inherency with regard to the succession of voltage pulses of the specified amplitude and, therefore, the burden to show that the prior art does not teach such characteristics does not shift to the Applicants. The Examiner also set forth a second rationale in support of the rejection in the Answer to the Appeal Brief. Ans. 7. There, the Examiner indicated that one of ordinary skill in the art would be motivated to combine the portion of Spence that teaches a succession of positive pulses with the portion that teaches a succession of negative pulses to arrive at the claimed function. Id. Even if given full effect, such rationale does not lead to the claimed configuration as it does not speak to the magnitude of the voltage pulses. See Claim 1, 11. 9-12. Accordingly, the Board finds that the cited prior art does not teach a generator configured to generate an electric field pulsed by high-voltage pulses that "comprise a succession of positive and negative voltage pulses, a maximum voltage of the positive pulses u+ being greater than an arc striking voltage Ua and a maximum voltage of the negative pulses u-being, in absolute value, less than the striking voltage U a." The Board need not consider the remaining issues raised in Appellants' Appeal Brief. 7 Appeal2015-000383 Application 12/485,552 CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1 and 2 as obvious. REVERSED 8 Copy with citationCopy as parenthetical citation