Ex Parte David et al

Board of Patent Appeals and Interferences

Aug 3, 2010

10293830 (B.P.A.I. Aug. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MOSES MEKALA DAVID, GINA MARIE
BUCCELLATO, JOHN STEVEN HUBERTY, and
SETH M. KIRK
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Appeal 2009-009367
Application 10/293,830
Technology Center 1700
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Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-10 and 12. Claims 3 and 11 have been canceled
and claims 13-22 have been withdrawn from consideration by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention

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Application 10/293,830

The Appellants claim a method for fluorinating a porous article.
Claim 1 is illustrative:
1. A method of fluorinating a porous article comprising:
providing a reaction chamber containing a capacitively-coupled
system comprising at least one grounded electrode and at least one drum
electrode powered by an RF source separated from the grounded electrode
by less than 25 millimeters; generating a fluorine-containing plasma in the
chamber thereby causing an ion sheath to form adjacent to the electrodes;
placing a porous article in the ion sheath of the powered electrode
such that the porous article is in contact with the at least one drum electrode;
and
allowing reactive species from the plasma to react with the article
surface and interior whereby the article becomes fluorinated;
wherein the grounded electrode is substantially parallel to the surface
of the powered electrode and the porous article is positioned between the
electrodes.

The References
Karwoski 4,718,907 Jan. 12, 1988
Hu 5,463,010 Oct. 31, 1995
Yializis 6,441,553 B1 Aug. 27, 2002
Grace 6,603,121 B2 Aug. 5, 2003
(effective filing date May 19, 2000)
David 6,878,419 B2 Apr. 12, 2005
(filed Dec. 14, 2001)
The Rejections
The claims stand rejected as follows: claims 1, 2, 4, 6-10 and 12 under
35 U.S.C. § 103 over Karwoski in view of Grace and Ueno; claim 5 under
35 U.S.C. § 103 over Karwoski in view of Grace, Hu and Yializis; and
claims 1, 2, 4-10 and 12 under the judicially created doctrine of
obviousness-type double patenting over claims 1, 2, 4 and 8-11 of David in
view of Karwoski and Grace.
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OPINION
We reverse the rejections under 35 U.S.C. § 103 and affirm the
obviousness-type double patenting rejection.
Rejections under 35 U.S.C. § 103
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a method for fluorination in a
reaction chamber comprising a grounded electrode substantially parallel to
the surface of a powered drum electrode?
Findings of Fact
Karwoski discloses an apparatus and method for “the deposition of
fluoropolymer coatings on the surfaces of tubular and other substrates to
improve the substrate’s biocompatibility properties” (col. 1, ll. 9-12).
Karwoski obtains a uniform fluorine to carbon ratio by “exploiting a tubular
reactor, controlling gas flow therethrough, and successively exposing
relatively small portions of the surface of the substrate to an RF field to
induce glow discharge” (col. 4, ll. 25-28). The RF field can be generated by
different types of electrodes or a radio frequency coil (col. 10, ll. 31-33).
The successive exposure of small portions of the substrate surface to an RF
field is achieved by surrounding a substrate-containing tubular reactor (50)
with band electrodes (54) or an RF coil mounted on a traveling block (56)
which moves the electrodes (54) or RF coil along the length of the tubular
reactor (50) (col. 8, ll. 15-29; Fig. 3). The substrate within the tubular
reactor can be a planar web (col. 3, ll. 3-7).
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Grace discloses “a method and apparatus for obtaining the proper
surface characteristics of paper supports to promote adhesion of
photosensitive coating materials, image forming layers, non-photosensitive
polymeric coatings or laminates, and/or layers typically coated thereon”
(col. 1, ll. 14-19). Grace passes a paper web between a driven treatment
electrode (16) and a counter electrode (26) having a plasma (18)
therebetween (col. 7, ll. 3, 19, 25-26; Fig. 1). “[T]he surface of the paper
web 12 essentially serves as the electrode in contact with the plasma 18”
(col. 18-20). A dark space, which is “a region wherein the breakdown
voltage is locally higher than in other regions of a plasma-containing
volume”, exists between the paper web (12) and the driven treatment
electrode (16) (col. 7, ll. 2-3, 6-8). The extent of the dark space depends
upon several factors including geometrical factors (col. 7, ll. 22-27). In one
embodiment there is a 2.54 cm gap between a rotating electrode (145), over
which a web (153) passes, and a counter electrode (147) (col. 10, ll. 29-31,
39; Fig. 4).
Ueno discloses “a method for imparting a durably increased capacity
of water absorption and a durably decreased susceptibility to accumulation
of static electricity to a fabric material of or mainly composed of synthetic
fibers” (col. 1, ll. 14-17). Ueno treats the fibers first with a water absorbent
agent and antistatic agent and then by exposure to low temperature plasma
generated in an atmosphere of oxygen or oxygen-containing gaseous mixture
(abstract). The plasma is generated using electrodes which “are not
necessarily installed inside the plasma chamber but may be installed outside
the plasma chamber or may be replaced with a single work coil for high
frequency surrounding the plasma chamber although installation of the
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discharge electrodes inside the plasma chamber is preferable from the
standpoint of obtaining effective results of the low temperature plasma
treatment” (col. 6, ll. 4-11). “[T]he distance between the grounded and
power electrodes is preferably in the range from 1 to 30 cm or, more
preferably, from 2 to 10 cm in order to obtain higher efficiency of the
treatment” (col. 6, ll. 26-30).1
Analysis
The Appellants argue that they use parallel plate electrodes, and that
although Karwoski discloses that different types of electrodes can be used,
Karwoski’s disclosure that the fluorine to carbon ratio could not be
controlled with any precision when parallel plate electrodes were used while
maintaining various gas pressures within a large cylindrical reactor (col. 4,
ll. 57-64) indicates that parallel plate electrodes are unworkable (Br.9). The
Appellants argue that Karwoski appears to teach that each electrode must be
an external electrode surrounding the substrate (Br. 10; Reply Br. 3).
The Examiner argues that one of ordinary skill in the art would have
expected Grace’s internal capacitively coupled electrode system to provide
plasma analogous to that produced using Karwoski’s external capacitively
coupled electrode system and, therefore, would have expected it to produce
analogous results (Ans. 5). The Examiner argues that given Karwoski’s
disclosure that different types of electrodes can be used (col. 10, ll. 31-33),
one of ordinary skill in the art would have substituted Grace’s internal
electrodes for Karwoski’s external electrodes “for their expected efficiencies

1 We need not address Hu or Yializis because the Examiner does not rely
upon them for any disclosure that is relevant to the above-stated issue
(Ans. 14).
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&/or control of the plasma/glow discharge configuration, with optimization
of parameters in order to control dark space, thus plasma space, depending
on particular gases & configurations” (Ans. 9-10).2
The Examiner appears to be arguing that Karwoski’s disclosure that
different types of electrodes can be used (col. 10, ll. 31-33) would have
indicated to one of ordinary skill in the art that any plasma reactor electrode
configuration is suitable. That is not a reasonable interpretation of
Karwoski. Karwoski discloses the use of aluminum strap electrodes or an
external capacitive electrode couple, and then teaches that different types of
electrodes can be used (col. 10, ll. 24-33). It is not clear whether “different”
means different from aluminum strap electrodes and an external capacitive
electrode couple or means “various”. Regardless, Karwoski believes that the
success in obtaining the desired fluorine to carbon ratio uniformity is due to
the use of a tubular reactor, relative movement between the RF field and the
substrate, and the control of polymerization (col. 5, ll. 8-24; col. 9, ll. 45-51).
The Examiner has not provided evidence that Grace’s internal electrode
configuration can provide the desired fluorine to carbon ratio uniformity
obtained using Karwoski’s external electrode configuration with relative
movement between the RF field and the substrate.
The Examiner argues that “Grace et al. provides means of controlling
the glow discharge or the ion sheath and dark space in a means consistent
with desired conditions effective for creating even fluorination” (Ans. 16).
The Examiner, however, has provided no evidence in support of that
argument. Grace discloses a different electrode configuration than that of

2 The Examiner states that Ueno’s disclosure is cumulative to that of
Karwoski and Grace (Ans. 13).
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Karwoski and does not disclose fluorination. The Examiner’s argument that
Grace provides “means consistent with desired conditions effective for
creating even fluorination” (Ans. 16) is vague and merely speculative.
The Examiner argues that Karwoski’s “parallel plate attempt did not
make any attempt to control the location of a glow discharge & how the
substrate interacted therewith” (Ans. 16).
That argument is not persuasive because the Examiner has not
provided evidence that Grace’s plasma reactor can be operated to control the
location of a glow discharge and its interaction with the substrate such that
Karwoski’s desired fluorine to carbon ratio uniformity is obtained.
Thus, the Examiner has not established that one of ordinary skill in
the art would have had an apparent reason to use Grace’s electrode
configuration in Karwoski’s method as proposed by the Examiner. See KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Establishing a prima
facie case of obviousness of an invention comprising a combination of
known elements requires “an apparent reason to combine the known
elements in the fashion claimed”).
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a method for fluorination in a
reaction chamber comprising a grounded electrode substantially parallel to
the surface of a powered drum electrode
Obviousness-type double patenting rejection
The Appellants’ total argument regarding the obviousness-type double
patenting rejection is as follows (Br. 17):
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Appellants have provided, at length, an explanation as to why
Karwoski et al. is inapplicable to the instant invention. The
combination of David and Karwoski is non-obvious in view of the
analysis provided above, showing that Karwoski teaches away from
the present invention, would not function in accordance with the
teachings of the present invention, and fails to teach essential
elements of the claimed invention.

The Appellants have not addressed the Examiner’s explanation as to
why it would have been prima facie obvious to one of ordinary skill in the
art to modify David’s claimed method in view of Karwoski and Grace so as
to arrive at the Appellants’ claimed method (Ans. 15), let alone argue that
the Examiner is incorrect. Thus, the Appellants have not convinced us of
reversible error in the obviousness-type double patenting rejection.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 2, 4, 6-10 and 12
over Karwoski in view of Grace and Ueno and claim 5 over Karwoski in
view of Grace, Hu and Yializis are reversed. The rejection of claims 1, 2, 4-
10 and 12 under the judicially created doctrine of obviousness-type double
patenting over claims 1, 2, 4 and 8-11 of David in view of Karwoski and
Grace is affirmed.
It is ordered that 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).
AFFIRMED

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