Ex Parte Farag

Patent Trial and Appeal Board

Feb 6, 2015

11307947 (P.T.A.B. Feb. 6, 2015)

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.
11/307,947 02/28/2006 TAREK A. Z. FARAG TAREK FARAG 2946
7590 02/06/2015
TAREK FARAG
33W135 BONNIE ST.
ST. CHARLES, IL 60174
EXAMINER
PHASGE, ARUN S
ART UNIT PAPER NUMBER
1756
MAIL DATE DELIVERY MODE
02/06/2015 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 TAREK A.Z. FARAG
____________

Appeal 2012-011484
Application 11/307,947
Technology Center 1700
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and GEORGE C. BEST,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 61–64, 67–73, and 75–80.1 We have
jurisdiction pursuant to 35 U.S.C. § 6.

1 Claims 65, 66, and 74 are not subject to rejection but were withdrawn from
consideration by the Examiner; thus, these claims are not subject to any
rejection that is subject to our review (Final Office Action; Form PTOL 326,
Item 5a). The Examiner’s inadvertent omission of rejected claim 67 in the
list of rejected claims at page three of the Examiner’s Answer is harmless
error because claim 67 is presented as a rejected claim in the body of the
Examiner’s rejection (Ans. 4–5; Final Office Action; Form PTOL 326, Item
7; p. 2). Furthermore, Appellant recognizes this claim as being a rejected
claim in the Appeal Brief (App. Br. 1, 6, 7).
Appeal 2012-011484
Application 11/307,947

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Appellant’s claimed invention is directed to an isotope separation and
purification apparatus and method.
Claim 61 is illustrative and reproduced below:
61. An isotopes separation and purification apparatus
comprising:
i. an electrolytic setup means comprising:
a) a separation container means containing an electrolytic
medium means;
b) an appropriate number of electrodes means disposed at
suitable distances from each other in said electrolytic medium
means;
c) a controllable voltage source means that has
appropriate number of outputs each is connected to one of the
electrodes means;
d) a means to feed the isotopes to be separated; and
e) a means to collect the separated isotopes,
ii. a control means coupled to said controllable voltage
source to control it and generate appropriate voltage on each
electrode to generate electric fields in said electrolytic medium
enough to selectively ionize and apply force on the ions of the
selected isotopes, and
iii. at least one additional separation means acting within
the apparatus to improve the separation,
whereby the ions of the different isotopes will have a net force
on each, different from the other, in the electrolytic medium due
to the effect of all the separation means resulting in excellent
separation.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Lamberton US 2,873,237 Feb. 10, 1959
Jackovitz US 5,183,542 Feb. 2, 1993
Hanak US 6,277,265 B1 Aug. 21, 2001
Van Den Winkel US 2005/0121337 A1 Jun. 9, 2005
Appeal 2012-011484
Application 11/307,947

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The Examiner maintains the following grounds of rejection:
Claim 67 stands rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement. Claims 61, 63,
64, 68, 70, 71, and 76–80 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
obvious over Jackovitz. Claim 75 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jackovitz in view of Van Den Winkel. Claim 69
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Jackovitz in view of Lamberton. Claims 62, 72, and 73 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Jackovitz in view of Hanak.
We reverse the stated rejections. Our reasoning follows.

Written Description Rejection
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph for later claimed subject
matter is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the filing of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim language. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
It is the Examiner’s burden to establish a prima facie case of non-
compliance based on the written description requirement by presenting
evidence or reasons establishing why persons skilled in the art would not
recognize in the original disclosure a description of the invention defined by
the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Appeal 2012-011484
Application 11/307,947

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Rejected claim 67 depends from claim 61. Claim 61 is reproduced
above. Claim 67 further limits claim 61 by requiring that “said additional
separation means are additional electrodes inserted at suitable positions and
applying to them suitable voltages in a way to improve the separation”
(claim 67).
The Examiner maintains that appealed claim 67 runs afoul of the
written description requirement of 35 U.S.C. § 112, first paragraph based on
the afore-reproduced limitation because, in the Examiner’s view, the
Specification, as filed, provides “no mention of how one determines the
suitable positions and the application of suitable voltages in a way to
improve separation” and “[t]he only disclosure of suitable positions appears
to be figure 10 and the discussion of figure 10 on pages 19 and 20 [of the
Specification]” (Ans. 5).
In this regard, the Examiner responds to Appellant’s argument by
further maintaining “when one looks at the claim in question it is unclear
how the equations would translate into the claim as recited” and the
Examiner further asserts that determining “the ‘suitable positions and
applying to them suitable voltages in a way to improve the separation’
without undue experimentation would not be possible” (Ans. 5, 11).
However the original Specification embraces the inclusion of
embodiments wherein multiple membranes and multiple electrodes are
employed in a multi-stage isotope separation unit wherein the electrodes are
maintained at different voltages (e.g., 0 volts, 2 volts, 4 volts, etc.) which
electrodes are described as being selected so that the voltage differences,
among other parameters, contribute to achieving practical separation
differences that allows for the removal of each isotope once it arrives at its
Appeal 2012-011484
Application 11/307,947

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designated separation cell and further that these added electrodes are such
that they “improve controlling the voltage drop between adjacent cells”
(Spec. 19–20; Fig. 10). The Specification discloses “voltage difference
between each consecutive electrode[]” can be “kept at a value just enough to
separate the required isotope” (Spec. 19).
For reasons argued by Appellant and supported by the originally filed
description provided in the Specification and original drawing figures, the
Examiner does not identify any persuasive factual evidence that
substantiates or otherwise satisfactorily explains why at least the above-
noted portions of the subject Application original disclosure do not furnish
reasonable descriptive support for the claimed “additional electrodes
inserted at suitable positions and applying to them suitable voltages in a way
to improve the separation” (Br. 7; Reply Br. 4; Claim 67). Moreover, we
observe that the Examiner has not presented a lack of enablement rejection
and the Examiner has not articulated how the unsubstantiated comments
conclusively asserting that achieving the claimed subject matter “without
undue experimentation would not be possible” has any particular relevance
to the maintained written description rejection of claim 67 in light of the
disclosures set forth in the Specification, as discussed above (Ans. 11).
Accordingly, we reverse the Examiner’s lack of written description
rejection of dependent claim 67 on this appeal record.

Anticipation/Obviousness Rejection over Jackovitz
For each of the stated rejections, the Examiner bears the initial burden
of presenting a prima facie case establishing the non-patentability of the
rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 2012-011484
Application 11/307,947

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Concerning the anticipation prong of the rejection, it is well settled
that in order for the Examiner to carry the burden of establishing a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required by the claim, is found
in a single prior art reference, either expressly or under the principles of
inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
Anticipation is a factual determination. See In re Baxter Travenol
Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990)).
In maintaining the stated anticipation rejection, the Examiner finds
that Jackovitz discloses, inter alia, “a controllable voltage source means
connected to said electrodes means (col. 7, lines 15-37” and “a control
means coupled to said controllable voltage source to control it and generate
appropriate voltage on each electrode to generate electric fields in said
electrolytic medium enough to selectively ionize and apply force on the ions
of the selected isotopes as claimed (see col. 6, lines 13-37)” (Ans. 5, 6).
Appellant argues that Jackovitz does not disclose a control means
coupled to a controllable voltage source in the cited passages; rather,
Jackovitz discloses that “the voltage source 14 applies a constant voltage
between the cathode and anode 11 and 13” and that “when the current
sensed by ammeter 54 falls below the lower limit” of the current limits that a
microprocessor 56 is programmed to maintain, “the microprocessor 56 will
transmit electrical control signals” that will cause “the electronically
operated microvalves 52a and 52b to open” and consequently, “a sufficient
amount of the concentrated, aqueous solution of HC1 contained in the
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Application 11/307,947

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reservoir 48” will be conducted to replenish the cathode and anode chambers
to allow “for the current flowing between the cathode and anode 11 and 13
to increase to the upper limit of the program of microprocessor 56,
whereupon the microprocessor 56 will close the valves 52a and 52b”
(Jackovitz, col. 6, ll. 13–37; Br. 9).
We concur with Appellant in that the Examiner has not established
how the cited passages at column 6 of Jackovitz pertaining to an HC1
replenishment assembly and electrical current control provides a description
of a controller coupled to a controllable voltage source for controlling the
voltage and/ or how the cited electrical current maintaining controller
disclosures of Jackovitz would provide for the claimed function/process
“[to] generate appropriate voltage on each electrode to generate electric
fields in said electrolytic medium enough to selectively ionize and apply
force on the ions of the selected isotopes” as required by the apparatus of
rejected independent claim 61 or the method of rejected independent claim
71.
The Examiner does not separately articulate why the subject matter of
either of the anticipatorily rejected independent claims would have been
obvious, in the alternative, under 35 U.S.C. § 103(a).
In light of the aforementioned shortcomings, we reverse the
Examiner’s anticipation/obviousness rejection of claims 61, 63, 64, 68, 70,
71, and 76–80 over Jackovitz on this appeal record.

Additional Obviousness Rejections
Concerning the separate obviousness rejections of certain dependent
claims over Jackovitz in combination with additional prior art evidence, the
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Application 11/307,947

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Examiner is relying on the anticipation assertions made with respect to the
respective independent claims as a factual predicate on which the separate
obviousness rejections are built upon. It follows that we shall likewise
reverse the additional obviousness rejections as to certain dependent claims
because the underlying anticipation assertion on which the obviousness
rejections are founded is unsound for reasons discussed above.
It follows that we shall reverse the Examiner’s separately stated
obviousness rejections.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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