Ex Parte Delamarche et al

Patent Trial and Appeal Board

Aug 16, 2013

12748847 (P.T.A.B. Aug. 16, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/748,847 03/29/2010 Emmanuel Delamarche CH920030008US2 6030
48062 7590 08/16/2013
RYAN, MASON & LEWIS, LLP
1300 POST ROAD
SUITE 205
FAIRFIELD, CT 06824
EXAMINER
BARR, MICHAEL E
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
08/16/2013 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 EMMANUEL DELAMARCHE,
DAVID JUNCKER, and HEINZ SCHMID
____________

Appeal 2012-003313
Application 12/748,847
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and PETER F.
KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 2, and 4-20.
We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:

Appeal 2012-003313
Application 12/748,847

2

The Examiner relies upon the following references in the rejection of
the appealed claims:
Mitsumori et al. (Mitsumori) 6,230,722 B1 May 15, 2001
Dornier 6,269,517 B1 Aug. 7, 2001
De Larios et al. (de Lorios) 7,234,477 B2 Jun. 26, 2007

Appellants’ claimed invention is directed to a device and method for
applying a liquid to a surface immersed in an environmental liquid. The
device comprises at least a first conduit for directing a flow of first liquid
toward the surface and a second conduit for directing a second liquid away
from the surface. The first and second apertures of the first and second
conduits are arranged at a distance from each other such that, in operation,
the second liquid comprises substantially the first liquid. First and second
controllers are provided for the first and second conduits, respectively, and
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Application 12/748,847

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wherein the first controller is configured to provide a dispense rate that
results in a laminar flow.
Appealed claims 1, 2, 4, 6-8, and 10-20 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Mitsumori. Dependent claims 5 and
9 are subject to separate rejections under 35 U.S.C. § 103(a) as being
unpatentable over Mitsumori in view of Dornier for claim 5 and Mitsumori
in view of de Larios for claim 9, as set forth by the Examiner in the Answer
(Ans. 5-7).
Appellants argue the claims subject to the anticipation together as a
group with the exception of claim 11. Accordingly, we select claim 1 as the
representative claim on which we decide this rejection as to all of so rejected
claims except for dependent claim 11, which latter claim we consider
separately to the extent separately argued.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we concur with the Examiner that Mitsumori fairly
describes the claimed invention within the meaning of Section 102.
Accordingly, we will sustain the Examiner’s rejection for the reasons set
forth in the Answer, and we add the following primarily for emphasis.
The principal argument advanced by Appellants is that the device of
Mitsumori, which also comprises first and second conduits for applying a
liquid to a surface, does not produce a laminar flow. However, inasmuch as
Mitsumori repeatedly discloses that the device generates a smooth and
uniform flow, we agree with the Examiner that it is reasonable to conclude
that the reference device is fully capable of producing a laminar flow, and
that the reference fairly describes a method of employing such laminar flow.
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Application 12/748,847

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It is well settled that when a claimed apparatus or process reasonably
appears to be substantially the same as a process or apparatus disclosed by
the prior art, the burden is on the applicant to prove that the prior art process
or apparatus does not necessarily or inherently process characteristics
attributed to the claimed process or apparatus. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the
present case, Appellants have presented no convincing argument, let alone
the requisite objective evidence, that the Mitsumori device is incapable of
generating a laminar flow. As acknowledged by Appellants, the term
“laminar” is defined as a flow characterized by smooth motion, and there is
no dispute that Mitsumori teaches a smooth and uniform flow (see Prin. Br.
4, second full para.).
Appellants also maintain that “given the large dimensions in general
of the geometric components of Mitsumori, a laminar flow will not be
achieved due to the large gap of 1 mm between the surface and the device;
the invention of Mitsumori would not result in a laminar flow” (id.)
Appellants further state that it is estimated that Mitsumori’s device produces
a flow having a Reynolds number of 25,000 which indicates turbulent, not
laminar flow. However, Appellants’ estimation falls far short of objective
evidence that the Mitsumori device is incapable of providing a laminar flow.
Also, as pointed out by the Examiner, Mitsumori teaches that the gap
between the device and the surface can be as small as 0.1 mm. While
Mitsumori also discloses that the distance is more preferably from 1 to 2
mm, it is by now axiomatic that a reference disclosure is not limited to its
preferred embodiments. Considering Mitsumori in its entirety, the reference
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Application 12/748,847

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fairly describes a device wherein the gap is only 0.1 mm which, it would
appear from Appellants’ own argument, is fully capable of producing
laminar flow. Also, whether the flow is laminar or turbulent is also
contingent upon the pressure applied, and Appellants’ have advanced no
reason for why Mitsumori is incapable of controlling the pressure to effect a
laminar flow. As found by the Examiner, pumps 33 and 17 of Mitsumori
are, in essence, flow controllers that also function to control the pressure
(Ans. 4 and 5). These latter controller features, including the associated
controllers, of Mitsumori would have been capable of providing for a
dispense rate that can achieve a laminar flow (Ans. 4-5; Mitsumori, col. 13,
ll. 22-52; col. 15, ll. 10-26; col. 16, ll. 16-34). In this regard, it is further
noted that representative claim 1 does not require a device capable of
producing a laminar flow throughout the liquid flow path. Rather, the
controller pump 33 of Mitsumori need only be capable of providing “a
dispense rate that results in a laminar flow” in any area of the flow path of
the device to satisfy the representative claim 1 laminar flow functionality.
Appellants do not substantiate why Mitsumori’s device does not possess
such capability.
As for separately argued claim 11 which calls for a third conduit for
directing a flow of a third fluid which influences the flow of the first fluid in
its flow direction, we find no error in the Examiner’s reasoning that the third
conduit depicted in Mitsumori’s Fig. 5 would necessarily produce a flow
that influences the flow of the first liquid. Appellants have presented no
convincing argument or evidence to the contrary.
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Appellants rely solely on the arguments traversing the Examiner’s
anticipation rejection in contesting the separate obviousness rejections of
dependent claims 5 and 9 advanced by the Examiner (see paragraph bridging
pp. 3 and 4 and paragraph bridging pp. 5 and 6 of Appeal Brief).
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

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