Ex Parte Cocolios et al

Patent Trial and Appeal Board

May 31, 2016

12522996 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/522,996 07/13/2009
40582 7590
American Air Liquide, Inc,
Intellectual Property Dept.
9811 Katy Freeway
Suite 100
Houston, TX 77024
06/02/2016
FIRST NAMED INVENTOR
Panayotis Cocolios
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.
Serie 7308 5023
EXAMINER
HERNANDEZ-DIAZ, JOSE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
IP-USOffice@airliquide.com
Neva.Dare-c@airliquide.com
J us tin.Murray@airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PANA YOTIS COCO LI OS and FREDERIC NOEL 1
Appeal2014-001893
Application 12/522,996
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
26-28, 31-38, and 41--43. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
1 Appellants identify the real party in interest as L' Air Liquide Societe
Anonyme pour L'Etude et L'Exploitation des Procedes Georges Claude. Br.
3.
2 In our opinion below, we refer to the Specification filed July 13, 2009
(Spec.), Final Office Action mailed December 31, 2012 (Final), the Appeal
Brief filed July 1, 2013 (Br.), and the Examiner's Answer mailed September
19, 2013 (Ans.).
Appeal2014-001893
Application 12/522,996
The claims are directed to a method for surface treating polymer
substrates. Claim 26, with the limitation at issue highlighted, is illustrative:
26. A method for the surface treatment of polymer
substrates during which the substrate is subjected to a dielectric
barrier electrical discharge of filamentary type, in a treatment
gas mixture containing at least one carrier gas and one active
gas, at a pressure substantially equal to atmospheric pressure,
wherein the active gas is chosen from the group comprising at
least one linear or branched, monounsaturated or
polyunsaturated hydrocarbon, the residual oxygen content of
the treatment mixture at the start of the method being less than
250ppm.
Claims Appendix, Br. 10 (emphasis added).
The following rejections are subject to appeal: 3
A. The rejection of claims 26-28, 31-38, 41, and 42 under 35 U.S.C.
§ 112 i-f 1 as lacking written descriptive support;
B. The rejection of claims 26-28, 31-38, 41, and 42 under 35 U.S.C.
§ 112 i-f 2 as failing to particularly point out and distinctly claim the
subject matter that is regarded as the invention;
C. The rejection of claims 26-28, 31-36, and 41--43 under 35 U.S.C.
§ 102( e) as anticipated by Goodwin4 as evidenced by Chien;5
D. The rejection of claim 37 under 35 U.S.C. § 103(a) as obvious over
Goodwin, as applied in Rejection C, in view of0kazaki; 6 and
3 We omit canceled claims 39 and 40 from the Examiner's listing of the
rejections.
4 Goodwin et al., US 2008/0118734 Al, published May 22, 2008
("Goodwin").
5 Chien et al., US 2006/0093846 Al, published May 4, 2006 ("Chien").
6 Okazaki et al., US 5,126,164, issued June 30, 1992 ("Okazaki").
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Appeal2014-001893
Application 12/522,996
E. The rejection of claim 38 under 35 U.S.C. § 103(a) as obvious over
Goodwin, as applied in Rejection C, and in view of Cocolios.7
OPINION
Rejections A and B
The focus of the rejection under 35 U.S.C. § 112 i-f 1 as lacking
written descriptive support and the rejection under 35 U.S.C. § 112 i-f 2 as
indefinite is on the language "the residual oxygen content of the treatment
mixture at the start of the method being less than 250 ppm."
Concerning written descriptive support, the Examiner finds a person
of ordinary skill in the art would not have been reasonably apprised that
Appellants had possession of the limitation because "[t]here is no positive
recitation of having the residual content at the start of the method or a pre-
step of assuring such a condition within the specification." Final 2.
Concerning indefiniteness, the Examiner determines that "residual
oxygen content" is unclear in light of the Specification and offers several
alternative meanings. Final 3. The Examiner also determines that "at the
start of the method" further confuses the intended scope of the claim. Final
4.
We agree with Appellants that the claim language is neither indefinite
nor lacking written descriptive support when read in light of the
Specification. The Specification describes a treatment process using "a
carrier gas, and also one particular active gas, in the absence of oxygen or in
any case in the presence of an extremely reduced residual oxygen content."
Spec. 5: 10-18. The Specification further defines the residual oxygen
7 Cocolios et al., US 2003/0075432 Al, published Apr. 24, 2003
("Cocolios")
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Appeal2014-001893
Application 12/522,996
content of the treatment mixture as being less than 250 ppm. Spec. 6: 13-16.
The Specification also attributes the good results of the process as due at
least in part to the absence of oxygen in the treatment atmosphere. Spec.
7: 15-21. The Specification also states that 02 is unwanted even in low
concentration because it results in undesirable reactions, and it is essential to
limit the oxygen content to a minimum value. Spec. 7:23-36. The
Specification as a whole indicates that Appellants' use of the phrase
"residual oxygen content of the treatment mixture at the start of the method
being less than 250 ppm" merely sets an upper limit on the amount of
oxygen (02) that can be present as an unwanted impurity in the treatment
gas. This treatment gas will be necessarily present at the start of the method
of treating as it is necessary to the treating process.
We do not sustain the Examiner's rejections under 35 U.S.C. 112 i-fi-f l
and2.
Rejection C
The limitation regarding the residual oxygen content is also at the
center of the dispute regarding the anticipation rejection over Goodwin as
evidenced by Chien. Compare Br. 6-8 with Final 5 and Ans. 11. Appellants
do not argue the claims separately. We select claim 26 as representative for
resolving the issue on appeal.
Claim 26 requires a treatment gas containing at least one carrier gas
and one active gas. The Examiner finds that Goodwin teaches a treatment
gas containing gaseous ethylene or propylene as the active gas and a carrier
gas of any inert gas or mixture of inert gas such as helium alone. Final 5.
Appellants argue that the Examiner's finding is based on inherency;
specifically that the absence of a disclosure of oxygen means oxygen is not
present. Br. 6-7. Appellants then point out that Goodwin teaches
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Appeal2014-001893
Application 12/522,996
embodiments that may use oxygen and argues that one skilled in the art
would not necessarily find that little or no oxygen is present in the treating
atmosphere. Br. 7-8.
As found by the Examiner, Goodwin teaches a treatment gas in which
the carrier gas is preferably "helium alone." Goodwin if 79. The fact that
Goodwin teaches alternative embodiments that may include oxidizing or
reducing gas, does not somehow negate the teaching of solely using helium.
The presence of other embodiments does not overcome the fact that a
preferred embodiment anticipates. Cf In re Sivaramakrishnan, 673 F.2d
1383, 1384--85 (CCPA 1982). Moreover, Goodwin teaches that under
reducing conditions, the method may be used to form oxygen-free coatings.
Goodwin if 80. This is further evidence that the embodiment including
reducing gas is oxygen-free.
Appellants have not identified a reversible error in the Examiner's
anticipation rejection.
Rejections D and E
The Examiner adds further prior art references to show that additional
limitations found in claims 37 and 38 are unpatentable as obvious.
Appellants do not advance any arguments against the additional findings or
conclusions of the Examiner, but instead argue that the additional prior art to
Okazaki and Cocolios fails to remedy the deficiency they argue is present in
the anticipation rejection. For the reasons we state above, Appellants have
not identified a reversible error in the obviousness rejections.
DECISION
The decision of the Examiner is affirmed.
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Appeal2014-001893
Application 12/522,996
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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