Ex parte Friedheim

Board of Patent Appeals and Interferences

Dec 21, 1999

08484019 (B.P.A.I. Dec. 21, 1999)

Application for patent filed June 7, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MAX FRIEDHEIM
__________
Appeal No. 1999-0406
Application 08/484,0191
___________
ON BRIEF
___________
Before ABRAMS, McQUADE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Max Friedheim appeals from the final rejection of claims
1 through 42, all of the claims pending in the application.
We affirm-in-part and enter a new ground of rejection.
The invention relates to a “generator for rapid
Appeal No. 1999-0406
Application 08/484,019
The copies of claims 1 through 42 appended to the2
appellant’s brief (Paper No. 15) contain numerous
inaccuracies.
2
generation of superheated vapor such as superheated steam and
further relates to a method for fabricating means for
generating superheated vapor” (specification, page 1). Claims
1 and 29 are illustrative and read as follows:2
1. A superheated vapor generator for generating
superheated vapor comprising:
a vapor generating volume for entry thereinto of liquid
to be vaporized, said vapor generating volume including at
least one vaporization member, said at least one vaporization
member including a portion for vaporizing contact with said
liquid, said portion defining a plurality of holes, said holes
having substantially circular cross-section.
29. A method for fabricating a vapor generator
comprising the steps of:
(1) providing two thermally conductive parts with hollow
interiors including at least one vaporizing member defining a
plurality of holes, said holes having substantially circular
cross-section; and
(2) welding said parts together to form a sealed vapor
generating chamber.
The items relied upon by the examiner in support of the
appealed rejections are:
Friedheim (Friedheim ‘037) 4,414,037 Nov. 8,
1983
Friedheim (Friedheim ‘556) 5,471,556 Nov. 28,
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Application 08/484,019
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1995
The items relied by the appellant in arguing the appealed
rejections are:
The 37 CFR § 1.132 Declaration of Max Friedheim
filed July 1, 1996 (Paper No. 5).
The 37 CFR § 1.132 Declaration of Max Friedheim
filed February 28, 1997 (Paper No. 8).
The 37 CFR § 1.132 Declaration of Edward Bronzie
filed October 22, 1997 (Paper No. 11).
Claims 1, 2, 4, 11, 14 through 16, 25, 28 through 31 and
41 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Friedheim ‘037.
Claims 3, 5, 12, 17, 18, 26, 27, 32, 33, 40 and 42 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Friedheim ‘037.
Claims 1 through 10, 13, 19 through 24 and 34 through 39
stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 1 through 5 and 37 through 40 of the Friedheim ‘556
Appeal No. 1999-0406
Application 08/484,019
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patent in view of Friedheim ‘037.
Reference is made to the appellant’s brief (Paper No. 15)
and to the examiner’s final rejection and answer (Paper Nos.
10 and 16) for the respective positions of the appellant and
the examiner with regard to the merits of these rejections.
Turning first to the 35 U.S.C. § 102(b) rejection,
Friedheim ‘037 discloses a superheated vapor generator 32 and
a method of making same. As explained in the reference, the
generator
is essentially in the form of metal castings in two
parts and welded together as shown in FIG. 3 at 33
having a shape as shown having an integral opening
as designated at 34 in the figures. . . . The
castings are internally etched, as described to
facilitate flashing. See FIG. 4 and the enlarged
section FIG. 5.
Referring to the etching 33 of the generator,
the final etch is non-uniform in size and produces
cavities that range in size from pinpoint to c"
diameter and depths ranging from 1/32" to shallow.
Non-uniformity of the etched surfaces within the
chamber is crucial for the successful operation of
the steam generator. Liquid on contact with 550 F.
aluminum surfaces will roll and ball up but the
etched surface, as described herein, causes the
liquid to explode (flash) instead and this is what
enables it to create both the steam pressure and the
continuing flow [column 4, lines 12 through 33].
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With additional regard to the method of making the
generator, Friedheim teaches that
[a]fter casting, the inside of the generator
parts are wire brushed and thoroughly cleaned, then
the chambers are internally chemically etched with a
caustic material. The generator halves are filled
with the caustic material and allowed to remain so
over night, at least 8 hours. Sufficient time is
required to thoroughly etch and as deep as possible,
for it is this surface which enables the liquid to
explode (flash) upon contact when pumped into the
chamber [column 2, line 63, through column 3, line
3].
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
Independent claim 1 recites a vapor generator comprising,
Appeal No. 1999-0406
Application 08/484,019
Figure 4 in the Friedheim ‘037 reference does not3
clearly show cavities having a circular cross-section as
asserted by the examiner on page 4 in the answer.
6
inter alia, a vaporization member having a portion defining a
plurality of holes having substantially circular cross-
section. Independent claim 29 recites a method for
fabricating a vapor generator comprising, inter alia, the step
of providing such a vaporizing member. Independent claim 14
recites a vapor generator comprising, inter alia, a chamber
wall defining a plurality of holes having substantially
regular cross-section. The examiner’s determination that
these limitations are met by the etched cavities disclosed by
Friedheim ‘037 (see page 3 in the final rejection and pages 3
and 4 in the answer) is not well founded. The fair teaching
of Friedheim ‘037 as it would be viewed by a person of
ordinary skill in the art is that the etched cavities have
random shapes as shown in Figures 3 through 5, not shapes
which are substantially circular or regular in cross-section
as recited in claims 1, 14 and 29. The mere possibility that3
some of these randomly shaped cavities might inherently have
circular or regular cross-sections is not sufficient to meet
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the limitations in question. As the court stated in In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ
665, 667 (CCPA 1939)):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that
a certain thing may result from a given set of
circumstances is not sufficient. [Citations
omitted.] If, however, the disclosure is sufficient
to show that the natural result flowing from the
operation as taught would result in the performance
of the questioned function, it seems to be well
settled that the disclosure should be regarded as
sufficient.
Thus, Friedheim ‘037 does not meet all of the limitations
in claims 1, 14 and 29. Accordingly, we shall not sustain the
standing 35 U.S.C. § 102(b) rejection of these claims or of
claims 2, 4, 11, 15, 16, 25, 28, 30, 31 and 41 which depend
therefrom.
In addition to not teaching vapor generator holes having
a substantially circular or regular cross-sections, Friedheim
‘037 would not have suggested such holes to one of ordinary
skill in the art. Therefore, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of claims 27 and 40,
which depend from claims 14 and 29, respectively, as being
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Application 08/484,019
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unpatentable over Friedheim ‘037.
We also shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claims 12, 26 and 42 as being unpatentable over
Friedheim ‘037. The subject matter recited in each of these
independent claims encompasses at least two vapor generators.
The examiner’s conclusion that it would have been obvious to
one of ordinary skill in the art “to provide and arrange
multiple vapor generators to produce a bigger volume of heated
vapors since multiple generators would produce more heated
vapors than a single vapor generator” (final rejection, page
4) finds no factual support in Friedheim ‘037.
We shall sustain, however, the standing 35 U.S.C. §
103(a) rejection of claims 3, 5, 17, 18, 32 and 33 as being
unpatentable over Friedheim ‘037.
Finding that Friedheim ‘037 meets all of the limitations
in claims 3, 5, 17, 18, 32 and 33 except for those setting
forth specific depths and widths of the holes, the examiner
has concluded that it would have been obvious to one of
Appeal No. 1999-0406
Application 08/484,019
Webster’s New Collegiate Dictionary (G. & C. Merriam Co.4
1977) defines “holes” as meaning “an opening often forced into
or through a thing” or “a hollow place.”
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ordinary skill in the art “to make cavities or holes
encompassing the claimed depth and width since Friedheim
leaves it to one of ordinary skill in the art to make non-
uniform and randomly chosen depths and width of hole/cavities
for an improved vaporization of liquids” (final rejection,
page 4). In essence, the appellant, relying on the 37 CFR §
1.132 declarations of record, contends that this rejection is
unsound because the etched cavities disclosed by Friedheim
‘037 do not constitute “holes” and because the claimed subject
matter affords new and unexpected results as compared with the
Friedheim ‘037 subject matter.
The appellant’s position here is not persuasive. Under
the ordinary and accustomed meaning of the term, Friedheim’s4
cavities certainly constitute “holes” as broadly recited in
claims 3, 5, 17, 18, 32 and 33 to the same extent that the
appellant’s disclosed structures 22 constitute holes. As for
the
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alleged new and unexpected results, the appellant’s
declarations, taken as a whole, indicate that these results
are afforded by a vapor generator having holes with
substantially circular cross-section. None of the claims in
question, however, requires that the holes be of substantially
circular cross-section. Thus, to the extent that the
appellant’s showing does demonstrate surprising and unexpected
results, it is not commensurate with the actual broad scope of
claims 3, 5, 17, 18, 32 and 33.
Given the totality of the record, by a preponderance of
evidence with due consideration to persuasiveness of argument,
we are satisfied that the differences between the subject
matter recited in claims 3, 5, 17, 18, 32 and 33 and the prior
art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person
having ordinary skill in the art.
As for the obviousness-type double patenting rejection,
the question is whether any claim in the application defines
merely an obvious variation of an invention disclosed and
claimed in the patent. In re Vogel, 422 F.2d 438, 441, 164
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USPQ 619, 622 (CCPA 1970). In considering this question, the
patent disclosure may not be used as prior art. Id.
According to the examiner,
[t]he U.S. Patent ‘556 discloses a vapor
generator surface having randomly defined ridges and
grooves whose height and depth vary substantially
randomly. Friedheim ‘037 discloses a vapor
generator surface having randomly etched cavities
having random diameters and widths. In view of
Friedheim ‘037 who teaches a superheated vapor
generator having cavities, it would have been
obvious to one of ordinary skill in the art to have
[a] vapor generator surface having the combination
of both surfaces having grooves, ridges and
cavities/holes to improve producing superheated
vapors [final rejection, page 2].
This rationale is unsound for at least two reasons. To
begin with, the examiner has improperly relied on the
disclosure of Friedheim ‘556 to support the rejection.
Moreover, Friedheim ‘037 is devoid of any suggestion to
combine grooves/ridges and cavities/holes as proposed by the
examiner. Given these fundamental flaws in the examiner’s
analysis, we shall not sustain the standing obviousness-type
double patenting rejection of claims 1 through 10, 13, 19
through 24 and 34 through 39.
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Finally, the following rejection is entered pursuant to
37 CFR § 1.196(b).
Claim 14, and claims 15, 16, 19 through 25, 27 and 28
which depend therefrom, are rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which fails
to comply with the written description requirement of this
section of the statute.
The test for determining compliance with the written
description requirement 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
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). The content of the drawings may also
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be considered in determining compliance with the written
description requirement. Id.
Claim 14 recites a vapor generator comprising, inter
alia, a chamber wall defining a plurality of holes having
substantially “regular” cross-section. The 37 CFR § 1.132
Declaration of Max Friedheim filed February 28, 1997 (Paper
No. 8) indicates that a “regular” cross-section is meant to
encompass “any regular cross-section such as rectangular or
triangular” (page 2, paragraph 5). There is no basis in the
original disclosure, however, for holes which have a
substantially “regular” cross-section. Thus, the disclosure
of the application as originally filed would not reasonably
convey to the artisan that the appellant had possession at
that time of the subject matter now recited in claims 14
through 16, 19 through 25, 27 and 28.
In summary:
a) the decision of the examiner to reject claims 1, 2, 4,
11, 14 through 16, 25, 28 through 31 and 41 under 35 U.S.C.
§ 102(b) as being anticipated by Friedheim ‘037 is reversed;
b) the decision of the examiner to reject claims 3, 5,
Appeal No. 1999-0406
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12, 17, 18, 26, 27, 32, 33, 40 and 42 under 35 U.S.C. § 103(a)
as being unpatentable over Friedheim ‘037 is affirmed with
respect to claims 3, 5, 17, 18, 32 and 33 and reversed with
respect to claims 12, 26, 27, 40 and 42;
c) the decision of the examiner to reject claims 1
through 10, 13, 19 through 24 and 34 through 39 under the
judicially created doctrine of obviousness-type double
patenting is reversed; and
d) a new rejection of claims 14 through 16, 19 through
25, 27 and 28 is entered pursuant to 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new ground
of rejection shall not be considered final for purposes of
judicial review.”
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
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of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
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§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b).
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JPM/pgg
Joseph R. Evanns
Appeal No. 1999-0406
Application 08/484,019
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Evanns & Walsh
119 N San Vicente BLVD #206
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