Ex Parte Giacobbe

Board of Patent Appeals and Interferences

May 28, 2009

10874079 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte FREDERICK W. GIACOBBE
______________

Appeal 2008-5811
Application 10/874,079
Technology Center 1700
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Decided:1 May 28, 2009
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Before CHARLES F. WARREN, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 59 through 71 and 73 in the Office Action

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the “Decided” date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5811
Application 10/874,079
mailed February 21, 2007. The Examiner subsequently refused to allow
claims 71 and 73 as amended in the Amendment filed June 20, 2007 as
entered in the Office Action mailed June 29, 2007, which Amendment also
canceled claim 72. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2007).
We affirm the decision of the Primary Examiner.
Claim 59 illustrates Appellant’s invention of a method of cooling an
item, and is representative of the claims on appeal:
59. A method of cooling an item comprising:
a) contacting said item with a mixture wherein said mixture
comprises:
1) a heavy gas further comprising ay least one member selected from
the group consisting of:
i) nitrogen;
ii) argon; and
iii) carbon dioxide; and
2) a light gas further comprising at least one member selected from
the group consisting of:
i) hydrogen; and
ii) helium;
b) contacting said item with said mixture wherein said contacting
further comprises at least one member selected from the group consisting of:
1) direct contact;
2) indirect contact; and
3) combinations thereof; and
c) adjusting, either intermittently or continuously, a composition of
said mixture contacting said item.

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The Examiner relies upon the evidence in these references (Ans. 3): 2
Halvorson 5,624,507 Apr. 29, 1997
King 6,109,064 Aug. 29, 2000
Appellant requests review of the following grounds of rejection
advanced on appeal by the Examiner (App. Br. 9):
claims 59 through 70 and 73 under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Halvorson (Ans.
3); and
claims 65 through 71 under 35 U.S.C. § 103(a) as unpatentable over
Halvorson in view of King (Ans. 4).
Appellant argues the claims as a group and further argues independent
claims 59 and 73 as a group with respect to the first ground of rejection.
App. Br., e.g., 13, 16, and 17. Appellant argues independent claim 71 as
representative of the claims rejected in the second ground of rejection. App.
Br. 18. Thus, we decide this appeal based on claims 59 and 71. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Issue
The dispositive issues in this appeal are whether Appellant has shown
that the evidence in Halvorson alone and as combined with King does not
support the Examiner’s finding of prima facie anticipation and conclusion of
prima facie obviousness3 with respect to the claimed method of cooling an
item as encompassed by claim 59 and of prima facie obviousness with

2 We consider these documents: Appeal Brief filed December 20, 2007;
Examiner’s Answer mailed February 5, 2008; and Reply Brief filed April 2,
2008.
3 Alternative grounds of rejection under §§ 102 and 103(a) require separate
consideration under each statutory provision. See, e.g., In re Spada,
911 F.2d 705, 707 n.3 (Fed. Cir. 1990).
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respect to the claimed method of cooling a cylindrical optical fiber in a heat
exchange device as encompassed by claim 71.
Claim Interpretation
In order to consider the issues raised in this appeal, we first interpret
independent claims 59 and 71 by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage in context as they would be
understood by one of ordinary skill in the art in light of the written
description in the Specification unless another meaning is intended by
Appellants as established therein, and without reading into the claim any
disclosed limitation or particular embodiment. See, e.g., In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited
therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We determine that claim 59 specifies, in pertinent part, a method
comprising at least the step of, among other things, adjusting to any extent
the composition of the cooling mixture contacting the item on an intermittent
or continuous basis. We further determine that claim 71 specifies, in
pertinent part, a method comprising at least the step of, among other things,
adjusting to any extent the composition of the cooling mixture entering the
heat exchanger and/or contacting the substantially cylindrical optical fiber
on an intermittent or continuous basis when any measured parameter of the
fiber changes during the cooling process.
Findings of Fact
We find Halvorson evinces it was known in the art that improvements
in the cooling rate “generally can be achieved in two ways: 1) increasing the
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heat transfer coefficient of the coolant, e.g. by increasing the fluid velocity
of the coolant or changing the coolant’s thermal properties, or 2) by
increasing the temperature difference by lowering the temperature of the
cooling fluid.” Halvorson col. 1, ll. 18-23.
We find Halvorson would have described to one of ordinary skill in
this art a batch or continuous cooling step in any method, wherein the item
to be cooled, such as an optical fiber, is contacted with a mixture of helium
and nitrogen or helium and argon. Halvorson, e.g., col. 1, ll. 11-17, col. 1,
l. 63 to col. 2, l. 3, col. 3, l. 49 to 4, l .5, col. 4, l. 38 to col. 5, l. 47, and Figs.
1-4; see Ans. 4. Halvorson would have described the interaction between
the lighter helium gas and the heavier nitrogen and argon gases during
formation of the mixtures with respect to the respective temperature of the
gases in the disclosed insulated vessels as well as the pressure in the vessels
enabling adjustments in the ratio between the two gases in the mixture to
adjust the cooling effect of the gas mixture. Halvorson, e.g., col. 2, l. 2 to
col. 5, l. 40, and Figs. 1-4; see Ans. 4. Halvorson would have described
making the adjustments in the ratio of gases in the composition on a
continuous basis by controlling the parameters of the mixing vessel.
Halvorson, e.g., col. 5, ll. 32-40, and Fig. 4; see Ans. 4.
We find King would have disclosed to one of ordinary skill in this art
a process for cooling optical fiber in a chamber by cooling the air in the
chamber with liquid nitrogen flowing through a heat exchanger. King, e.g.,
col. 2, ll. 31-36; see Ans. 4. King discloses “measuring continuously the
transmission properties of the fiber as it is being treated and using the results
of such measurements to control the rate of cooling and of heating to
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optimize the transmission properties” by controlling the supply of nitrogen
to the heat exchanger. King, col. 1, l. 67 to col. 2, l. 5, and col. 2, ll. 36-65;
see Ans. 5.
Discussion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 59 and 71 the grounds of rejection
advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“‘On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is
submitted by the applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument.”) (citing, inter alia, Spada, 911 F.2d at 707
n.3).
Halvorson: Claim 59
§§ 102(b) and 103(a)
Appellant submits the claimed method is patentable over Halvorson
because Halvorson does not disclose or suggest “adjusting (either
intermittently or continuously) a composition of any component in the gas
mixture.” App. Br. 13-14; Reply Br. 3-4. Appellant argues Halvorson
teaches that “by modifying temperature and/or pressure within a pressure
vessel in which mixing of helium with nitrogen or argon occurs, a different
composition of components within the mixing vessel can be achieved for
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forming a desired heat transfer mixture to be used in a cooling zone.” App.
Br. 14, citing Halvorson col. 3, ll. 49-57, col. 4, ll. 28-31, and col. 5,
ll. 32-40. Thus, Appellants assert Halvorson’s teachings “provide
information as to how to achieve a fluid mixture having precise
concentrations of components by setting operating pressures and/or other
operating conditions within the mixing vessel,” but do not expressly or
implicitly teach modifying the cooling composition. App. Br. 14; Reply Br.
3-4. In other words, “the teachings of Halvorson are directed toward using
the mixing vessel to achieve a precise concentration” of gases in the cooling
composition. App. Br. 14-15, citing Halvorson Figs. 2 and 3; Reply Br. 3-4.
Appellant relies on the same arguments in contending that Halvorson would
not have motivated one of ordinary skill in this art to modify “the fluid
mixture composition entering a cooling chamber for cooling an item once
the desired composition has been achieved.” App. Br 16-17; Reply Br. 4.
We find, as a matter of fact, Halvorson describes to one skilled in this
art all of the elements of claim 57, arranged as required therein, either
explicitly or inherently. See, e.g., In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997), and cases cited therein; Spada, 911 F.2d at 708. We find
Halvorson describes to one skilled in the art that the disclosed cooling
composition used in the cooling step of any process will change with
changes in the temperature of the individual gases and pressure during
composition generation on a continuous basis, and thus provides an
embodiment of an insulated vessel which controls several parameters in
addition to the temperature of the helium and nitrogen or argon in preparing
the cooling composition. See above pp. 4-5; see Halvorson Figs. 1 and 4.
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Thus, as the Examiner points out, even if a particular composition is
desired as Appellant contends, one skilled in this art would reasonably infer
from Halvorson that a precise composition would not be continuously
prepared. Ans. 6. In this respect, we interpreted claim 57 to encompass
methods in which the cooling composition is adjusted to any extent on an
intermittent or continuous basis. See above p. 4. In this respect, one skilled
in this art armed with the knowledge in the art acknowledged by Halvorson
(See above pp. 4-5) would further infer that Halvorson’s insulated vessels
would permit adjustment of the cooling composition to change the coolant’s
thermal properties or the temperature of the coolant when operated on a
continuous basis, and thus would be used in this manner to improve the
cooling rate of the cooling step in a method. See, In re Graves, 69 F.3d
1147, 1152 (Fed. Cir. 1995), and cases cited therein (a reference anticipates
the claimed method if the step that is not disclosed therein is within the
knowledge of the skilled artisan). see also, e.g., In re Preda, 401 F.2d 825,
826-27 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” (citation omitted)).
Thus, we are of the opinion Appellant has not shown that the evidence
in Halvorson does not support the Examiner’s finding of prima facie
anticipation and conclusion of prima facie obviousness. With respect to the
latter, it is well settled that “anticipation is the ultimate of obviousness.” See
In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed Cir. 1991), citing In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
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Accordingly, we have again evaluated all of the evidence of
anticipation and of obviousness found in Halvorson with Appellant’s
countervailing evidence of and argument for non-anticipation and
nonobviousness, and based thereon we conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 59 through 70 and 73 would have been anticipated as a
matter of fact under 35 U.S.C. § 102(b), and would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
Halvorson and King: Claim 71
§ 103(a)
Appellant submits the claimed method is patentable over the
combined teachings of Halvorson and King because “[t]here is no disclosure
in King of using a mixture of two or more gaseous components, let alone
adjusting of two or more gas components in gas mixture, during cooling of
the fiber,” and thus, King does not disclose or suggest modifying the heat
transfer fluid mixture. App. Br. 18; Reply Br. 4-5. Appellant argues King
uses only nitrogen as the heat transfer fluid and thus King combined with
Halvorson would not have suggested modifying Halvorson’s composition
based on a measured parameter of an optical fiber being thermally treated.
Reply Br. 5. In this respect, Appellant further argues King controls the
heating rate of the optical fiber by controlling the flow rate of the heat
transfer fluid mixture to the heat exchanger and not the composition of the
heat transfer fluid mixture. Reply Br. 5. Thus, Appellant contends one of
ordinary skill in the art would not have predicted from King that the
composition of the heat transfer fluid mixture can be adjusted to change the
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transmission properties of the optical fiber during cooling of the fiber.
Reply Br. 5.
Contrary to Appellant’s arguments, King teaches that the measured
transmission properties are used to control the rate of cooling as well as of
heating to optimize the transmission properties. While King does this by
controlling the flow of the coolant through the heat exchanger as Appellant
points out, we determine one of ordinary skill in this art armed with the
knowledge in the art acknowledged by Halvorson (See above pp. 4-5) would
have recognized that the cooling step can also be improved by changing the
coolant’s thermal properties or the temperature of the coolant. Thus, the
combined teachings of Halvorson and King would have reasonably
suggested to one of ordinary skill in this art to adjust Halvorson’s coolant
compositions with respect to thermal properties or temperature in response
to the measured property of an optical fiber as suggested by King in order to
provide the cooling necessary to cool and heat the fiber to optimize the
measured properties. See, e.g., KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”); In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“[T]he test [for obviousness] is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”); In re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); see also In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under
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§ 103, all that is required is a reasonable expectation of success.” (citations
omitted)).
Accordingly, we are of the opinion Appellant has not shown that the
evidence in the combined teachings of Halvorson and King does not support
the Examiner’s conclusions of prima facie obviousness.
Therefore, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Halvorson and King with Appellant’s countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 65 through 71 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary 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)(1)(iv).
AFFIRMED

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LINDA K. RUSSELL
INTELLECTUAL PROPERTY DEPARTMENT
AIR LIQUIDE
2700 POST OAK BOULEVARD, SUITE 1800
HOSUTON, TX 77056
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