Ex Parte Cohen

Patent Trial and Appeal Board

Dec 20, 2016

12814439 (P.T.A.B. Dec. 20, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/814,439 06/12/2010 Uri Cohen JA-02 9311
7590
Uri Cohen
4147 Dake Avenue
Palo Alto, CA 94306
05/04/2017 EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
05/04/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URI COHEN1
Appeal 2015-001723
Application 12/814,439
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant timely requests rehearing2 under 37 C.F.R. § 41.41 of our
Decision, entered December 21, 2016 (“Op.”), affirming-in-part and
reversing-in-part obviousness rejections of claims 1—43.
We have reconsidered our Decision in light of Appellant’s comments
in the Request for Rehearing, and we find no error in the disposition of the
rejections.
1 The real party in interest is identified as Uri Cohen (Appeal Brief filed
May 19, 2014 (“App. Br”), 1.)
2 Request for Rehearing, filed February 17, 2017 (“Request”).
Appeal 2015-001723
Application 12/814,439
Claim 1
Obviousness Based On Wen and Tzanavaras
Appellant urges that we misapplied KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) because we did not address whether a skilled artisan
“would stop the analysis” after we found the Examiner’s obviousness
rejection of claim 1 based on Wen and Tzanavaras supported by articulated
reasoning with a rational underpinning. Request 1—2. As we determined in
our Decision, which Appellant does not repute in the Request (see id. at 2—
3), the Examiner has provided “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR,
550 U.S. at 418 {quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
More specifically, the Examiner explained: “One of ordinary skill in
the art would recognize that there is a distinct advantage to using such
electrofilling methods of Tzanavaras with other methods, namely to provide
efficient agitation and replenishment within the features, thus improving
micro-uniformities and allowing a substantial increase of the plating rate.”
Ans. 27; see also Non-Final Act. 4. As we determined in our Decision:
“Neither Appellant nor Mr. Cheung addresses the Examiner’s reasoning that
a skilled artisan would have understood that Tzanavaras’ methods
“providing efficient agitation and replenishment in all areas” may be applied
to modify the method of Wen for an increased plating rate.” Op. 7 (citing
(Non-Final Act. 4)).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner’s § 103(a) rejections. See
37 C.F.R. § 41.37(c)(1) (iv) (2012); see also In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011). Similar to the Appeal Brief, the Request does not
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Application 12/814,439
identify reversible errors but instead repeats the assertion that a skilled
artisan would not combine Wen and Tzanavaras because it would be
redundant as the same result would be obtained using Tzanavaras alone.
Request 1—2 (arguing that the PTAB erred by “stopping the analysis” at the
Examiner’s determination that “combining Wen with Tzanavaras would
improve Wen” because “the same effect would be achieved by Tzanavaras
alone”).
We have considered and weighed declaratory evidence by Mr. Robin
Cheung in support of this assertion. Appellant has not identified a portion of
our Decision that indicates the Cheung Declarations was not properly
considered in resolving obviousness of claim 1 under 35 U.S.C. § 103(a)
over Wen and Tzanavaras. As we stated in our Decision (Op. 7—8), we are
unpersuaded that the purported completeness of Tzanavaras would prevent a
skilled artisan from modifying the teachings of Wen as proposed by the
Examiner.
The Request faults our Decision for failing to consider “whether a
POS1TA . . . would consider whether the same effect [provided by the
combined prior art teachings] would be achieved by Tzanavaras alone”.
Request 2. To the extent that Appellant contends claim 1 is taught by
Tzanavaras alone rather than the combined teachings of Tzanavaras and
Wen, this contention appears to show that claim 1 is obvious over
Tzanavaras alone rather than the combined teaching of Tzanavaras and Wen.
Appellant’s argument that claim 1 is taught or suggested by one — instead of
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two prior art references — certainly cannot show claim 1 is patentably
distinguished from either or both references.
With regard to Appellant’s argument that we erred in failing to
consider the combined teaching of Tzanavaras in view of Wen, the order of
the prior art references does not support patentability. Where a rejection is
predicated on two references, each containing pertinent disclosure, the order
the references are cited is of no significance. See In re Bush, 296 F.2d 491,
496 (CCPA 1961). Patentability is based on the combined teaching as a
whole which we considered and analyzed in our Decision. As stated in our
Decision, a person of ordinary skill in the art would have arrived at claim 1
based on the combined teachings of Tzanavaras and Wen for improved
micro-uniformities and increased plating rate. Op. 7.
Appellant’s “teaching away”3 argument, which is based on the same
premise that the combination of Wen and Tzanavaras would be superfluous
and more expensive than using Tzanavaras alone, was not misapprehended
or overlooked in rendering our Decision (see Request 5—6). , In reaching our
Decision, we considered and weighed the opinion evidence from Mr.
Cheung. Op. 6—9 (finding that Appellant has not adequately presented
evidence in support of the teaching away argument). Because neither
Appellant nor Mr. Cheung provides persuasive evidentiary support from the
prior art references for the teaching away argument, we do not read into a
reference a teaching away from a process where no such discouragement
teachings/language exists. See DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
3 Appellant uses the phrase “implicitly teaching away” for each teaching
away argument.
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Application 12/814,439
Moreover, “just because better alternatives exist in the prior art does not
mean that an inferior combination is inapt for obviousness purposes.” In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Although we considered and
weighed the declaratory evidence by Mr. Robin Cheung in support of this
assertion, given the lack of evidentiary support for how the conclusions of
the declaration were reached, we are unpersuaded that the purported
redundant combination would have led a skilled artisan in a direction
divergent from the path that was taken by Appellant.
Obviousness Based On Merchant, Wen, and Tzanavaras
Appellant urges that the rejection should be reversed because the
Board’s decision did not provide an articulated reasoning to combine
Merchant, Wen, and Tzanavaras for the obviousness rejection of claim 1.
Request 6—7. In the Appeal Brief, Appellant asked for review of the Non-
Final Rejection including the Examiner’s reasoning in combining the
references. App. Br. 47. We in turn reviewed the appealed rejection for
error (including the asserted errors in the rejection based on Merchant, Wen,
and Tzanavaras) based upon the issues identified by Appellant and in light
of the arguments and evidence produced thereon and issued our Decision
accordingly. See, e.g., Op. 11—13. By statute, this Board functions as a
board of review, not a de novo examination tribunal. 35 U.S.C. § 6(b)(1)
(“[t]he [Board] shall ... review adverse decisions of examiners upon
applications for patents ...”); see also Ex parte Frye, Appeal No.
2009-006013, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential) (cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]thas
long been the Board’s practice to require an applicant to identity the alleged
error in the examiner’s rejections.”)).
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We further note that Appellant did not particularly state in the Request
where the argument is in the Appeal Brief that the Examiner failed to
provide an articulated reasoning to combine Merchant, Wen, and Tzanavaras
that Appellant believes we misapprehended or overlooked in rendering our
Decision. See App. Br. 47—61 (disagreeing with the Examiner’s proposed
combination because: Merchant teaches away from Wen as well as claim 1
and Merchant is incapable of fully removing particles; Tzanavaras alone
provides particle removal and “teaches away from” any combination with
Wen; and claim 1 solves unknown problems). Arguments not raised in the
briefs before the Board are not permitted in a request for rehearing. See 37
C.F.R. § 41.52(a)(1) (2015). Therefore, we will not consider Appellant’s
argument on rehearing to the extent it goes beyond the argument timely
raised in the Appeal Brief. We further note that the Examiner has provided a
thorough analysis for the rejection based on Merchant, Wen, and Tzanavaras
— including an articulated reasoning with some rational underpinning in
support of the rejection. Non-Final Act. 9—11.
Appellant again urges that the combined prior art teachings teaches
away because Tzanavaras alone provides all the functionality provided by
the combined teachings with lower cost and higher efficiency. Request 9—
10. As explained with regard to the “teaching away” argument for the
obviousness rejection based on Wen and Tzanavaras supra, although we
considered and weighed declaratory evidence by Mr. Robin Cheung in
support of this assertion, we are unpersuaded that the Examiner erred here.
See Op. 11-13.
Obviousness Based On Tzanavaras, Reynolds, & Busnaina
Appellant again urges that the rejection should be reversed because
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Application 12/814,439
the Board’s decision did not provide an articulated reasoning to combine
Tzanavaras, Reynolds, and Busnaina for the obviousness rejection of claim
1. Request 10-11. As stated earlier, Appellant’s request for an examination
de novo by the Board is not appropriate under our rules and regulations. We
reviewed the appeal of the rejection at issue and issued our Decision based
upon the errors identified by Appellant (including the asserted errors in the
rejection based on Tzanavaras, Reynolds, and Busnaina) and in light of the
arguments and evidence produced thereon. See, e.g., Op. 13—14.
We again note that Appellant did not particularly state where the
particular argument in the Appeal Brief is that states and articulates why the
Examiner failed to provide an articulated reasoning to combine Tzanavaras,
Reynolds, and Busnaina that we misapprehended or overlooked in rendering
our Decision. See App. Br. 73—102 (principally disagreeing with the
Examiner’s proposed combination because: Tzanavaras teaches turbulent
flow whereas Reynolds teaches laminar flow and a skilled artisan would not
know how to combine the references; Tzanavaras alone advantageously
provides all the functionalities of the combined teachings and teaches away
from claim 1 as well as Reynolds and/or Busnaina; Reynolds and
Tzanavaras teaches away from one another; claim 1 solves unknown
problems; and the Examiner engaged in impermissible hindsight).
Arguments not raised in the briefs before the Board are not permitted in a
request for rehearing. See 37 C.F.R. § 41.52(a)(1) (2015). Therefore, we do
not consider Appellant’s argument on rehearing to the extent it goes beyond
argument timely presented in the Appeal Brief. We further note that the
Examiner has provided an analysis for the rejection based on Tzanavaras,
Reynolds, & Busnaina — including an articulated reasoning with some
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rational underpinning in support of the rejection. Non-Final Act. 14—15.
Appellant again urges that the combined prior art teachings teaches
away because Tzanavaras alone provides all the functionality provided by
the combined teachings. Request 12—13. As explained with regard to the
“teaching away” argument for the obviousness rejection based on Wen and
Tzanavaras supra, although we carefully and meaningfully considered and
weighed declaratory evidence by Mr. Robin Cheung in support of this
assertion, we are unpersuaded that the Examiner erred here. See Decision
13-14.
Claims 3. 5. 6. 12. 18-20. 24. 27. 38-40. and 42
Appellant urges that we failed to fully appreciate Appellant’s
evidence regarding Ding. Request 14—15. More specifically, Appellant
argues that we failed to consider that Ding “used the same equipment and
process disclosed by . . . Dordi” without change as well as Mr. Cheung’s
declaratory evidence showing a skilled artisan would not consider Dordi to
be reliable. Id at 14; Cheung Declaration filed September 9, 2013,117. The
Examiner’s obviousness analysis, however, does not rely on Dordi.4
To the extent that Appellant appears to be arguing that Dordi shows
Ding is not enabling because Ding incorporates Dordi in its entirety for a
detailed description of electroplating chemistry (Ding 149), we are not
persuaded that Mr. Cheung’s declaration directed to Dordi — shows Ding is
not enabling for reasons set forth in the Decision.
In conclusion, based on the foregoing, the Request is granted to the
extent that we have reconsidered our Decision, but is denied with respect to
4 Dordi was abandoned before it was published. App. Br. 38.
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making changes to the disposition therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).
DENIED
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