Ex Parte Hagiwara et al

Board of Patent Appeals and Interferences

Aug 18, 2009

10006568 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte KOICHI HAGIWARA and JIRO WATANABE 8
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Appeal 2008-002132 11
Application 10/006,568 12
Technology Center 3700 13
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Decided: August 18, 2009 16
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
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SILVERBERG, Administrative Patent Judge. 22
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DECISION ON APPEAL25
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STATEMENT OF THE CASE 27
Having had claims twice rejected, Koichi Hagiwara et al. (Appellants) 28
seek our review under 35 U.S.C. § 134 of the rejection of claims 1, 3, 4, 6, 7, 29
14 and 15. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 30
31
Appeal 2008-002132
Application 10/006,568

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SUMMARY OF DECISION 1
We REVERSE. 2
3
THE INVENTION 4
The Appellants’ claimed invention is directed to the spraying from an 5
injection nozzle of a mixture of a pressurized gas, a pressurized liquid and a 6
granular material onto an object to be cleaned (Spec. 1, 7: ¶¶ [0001] and 7
[0007]). 8
Claim 1, reproduced below, is representative of the subject matter on 9
appeal. 10
1. A cleaning and releasing device for spraying 11
a jet flow onto an object to be cleaned, comprising: 12
an injection nozzle which mixes a 13
pressurized liquid and a pressurized gas in said 14
injection nozzle and injects the pressurized liquid 15
and the pressurized gas; 16
a pressurized liquid flow passage for 17
supplying the pressurized liquid to said injection 18
nozzle; 19
a pressurized gas flow passage for supplying 20
the pressurized gas to said injection nozzle; 21
operating means for supplying and stopping 22
the pressurized liquid to said injection nozzle, said 23
operating means being provided in said injection 24
nozzle or on the flow passage of the pressurized 25
liquid in communication with said injection 26
nozzle; 27
detecting means for detecting supply and 28
stop of the pressurized liquid generated by an 29
operation of said operating means, said detecting 30
means being provided in a position on said 31
pressurized liquid flow passage; 32
a switching valve provided in the flow 33
passage of the pressurized gas and serving to 34
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Application 10/006,568

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supply and stop the pressurized gas to said 1
injection nozzle; and 2
a controller for controlling a switching 3
operation of said switching valve based on a 4
detection signal transmitted from the detecting 5
means; 6
wherein the controller opens said switching 7
valve based on a detection signal transmitted from 8
the detecting means so as to supply the pressurized 9
gas to said injection nozzle when the injection of 10
the pressurized liquid from said injection nozzle is 11
detected by said detecting means; and 12
wherein the controller closes said switching 13
valve based on a detection signal transmitted from 14
the detecting means so as to stop the supply of the 15
pressurized gas to said injection nozzle when the 16
stop of the injection of the pressurized liquid from 17
said injection nozzle is detected by said detecting 18
means. 19
20
THE REJECTIONS 21
The Examiner relies upon the following as evidence of 22
unpatentability: 23
Woodward US 5,312,040 May 17, 1984 24
25
The following rejections by the Examiner are before us for review: 26
1. Claims 7 and 15 are rejected under 35 U.S.C. § 112, second 27
paragraph, as being indefinite for failing to particularly point out and 28
distinctly claim the subject matter which applicants regard as the 29
invention. 30
2. Claims 1, 3, 4, 6, 7 and 14 are rejected under 35 U.S.C. § 102(b) as 31
being anticipated by Woodward. 32
33
Appeal 2008-002132
Application 10/006,568

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ISSUES 1
The issues before us are whether: (1) the Examiner erred in 2
concluding that there is a structural gap in claims 7 and 15 that renders these 3
claims indefinite (App. Br. 12); and (2) the Examiner erred in finding that 4
Woodward describes an injection nozzle that mixes a pressurized liquid and 5
a pressurized gas as called for in independent claims 1 and 6 (App. Br. 15). 6
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ANALYSIS 8
Rejection of claims 7 and 15 under 35 U.S.C. § 112 9
Appellants contend that claims 7 and 15 meet the requirements of 35 10
U.S.C. § 112 for definiteness (App. Br. 12). Appellants further contend that 11
whether a claim is distinguishable from the prior art is not relevant to 12
whether the claim satisfies the requirements of 35 U.S.C. § 112 (App. Br. 13
14). 14
The Examiner found that claims 7 and 15 contain functional 15
limitations that are not commensurate in scope with the structural limitations 16
claimed (Ans. 3, 8). The Examiner further found that “[w]hile features of an 17
apparatus may be recited structurally or functionally, claims directed to an 18
apparatus must be distinguished from the prior art in terms of structure 19
rather than function.” (Ans. 3, 9). 20
We agree with Appellants that whether a claim is distinguishable from 21
the prior art is not relevant as to whether the claim satisfies the requirements 22
of 35 U.S.C. § 112. 23
The Examiner’s position, as we understand it, is that there is a 24
structural gap in claims 7 and 15, because they do not recite the specific 25
structure by means of which the controller controls the supply and stop of 26
the pressurized gas. It appears that the Examiner may be confusing claim 27
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Application 10/006,568

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breadth with indefiniteness. A claim that is broad does not mean that it is 1
indefinite, that is, undue breadth is not indefiniteness. In re Johnson, 558 2
F.2d 1008, 1016 n.17 (CCPA 1977). 3
We find that a person having ordinary skill in the art would 4
understand the subject matter called for in claims 7 and 15. We agree with 5
Appellants that claims 7 and 15 meet the requirements of 35 U.S.C. § 112 6
for definiteness. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 7
1565, 1576 (Fed. Cir. 1986) (holding that the test for definiteness under 35 8
U.S.C. § 112, second paragraph, is whether “those skilled in the art would 9
understand what is claimed when the claim is read in light of the 10
specification.”). 11
We thus conclude that the Examiner erred in rejecting claims 7 and 15 12
under 35 U.S.C. § 112, second paragraph, as being indefinite. 13
14
Rejection of claims 1, 3, 4, 6, 7 and 14 under 35 U.S.C. § 102(b) as being 15
anticipated by Woodward 16
Appellants contend that Woodward does not describe a device which 17
mixes a pressurized liquid and a pressurized gas, as Woodward is directed to 18
a device which supplies either a pressurized liquid or a pressurized gas (App. 19
Br. 15). Appellants further contend that Woodward supplies pressurized gas 20
61 to the nozzle 118 only in response to the pressurized liquid being diverted 21
away from the nozzle 118 to the dump 120 (App. Br. 16). Appellants still 22
further contend that Woodward does not describe the invention as called for 23
in claim 1 (App. Br. 16). Appellants still further contend that in Woodward, 24
(1) the residual liquid moisture referred to in column 7, lines 19-24 is liquid 25
that is left over after the pressurized liquid is diverted away from nozzle 118, 26
(2) that whatever residual moisture remained is not a pressurized liquid, and 27
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(3) mixture of the residual moisture and the gas is not a mixture of a 1
pressurized liquid and a pressurized gas (App. Br. 20). 2
The Examiner found that Woodward (1) describes the structural 3
limitations called for in claim 1, and (2) has the ability to perform the 4
function of mixing a pressurized liquid and a pressurized gas in the injection 5
nozzle (Ans. 9). The Examiner further found that one of ordinary skill in the 6
art guided by the teachings in Woodward would recognize that a pump 7
malfunction while water is flowing through barrel 116 which resulted in a 8
pressure of 500 psi would actuate valve 14 to open inlet 22 and allow 9
pressurized gas to flow into barrel 116 resulting in a mixture of pressurized 10
water and pressurized gas (Ans. 9-10). 11
The ordinary meaning of the word “pressurize” includes “to put (gas 12
or liquid) under a greater than normal pressure.” THE AMERICAN 13
HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000). 14
We find that normal pressure is atmospheric pressure. 15
In order for a fluid or liquid to be pressurized, it must be of greater 16
than normal pressure, that is, greater than atmospheric pressure. 17
Woodward describes that when the jetting is interrupted, that is, when 18
the high pressure fluid stream 33 is directed to the nozzle dump 120, only 19
compressed gas 60 and some residual moisture from the diverted high 20
pressure fluid stream 33 is present in the nozzle 118 (col. 7, ll. 1-24; fig. 4). 21
Therefore, Woodward describes that the compressed gas 60 flows only in 22
the absence of the flow of high pressure fluid stream 33. 23
In Woodward, while the fluid is initially of high pressure, any residual 24
moisture present in the nozzle 118 would not retain that high pressure, that 25
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Application 10/006,568

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is, the residual moisture would not be under greater than normal pressure. 1
Therefore, the residual moisture would not be pressurized. 2
Therefore, we agree with Appellants that in Woodward, a mixture of 3
the residual moisture and the gas is not a mixture of a pressurized liquid and 4
a pressurized gas. 5
Further, in Woodward, it is speculative, at best, as to whether any high 6
pressure fluid would still be in the nozzle when the compressed gas flows 7
through the nozzle 118 during a pump malfunction. 8
Therefore, since Woodward describes that the compressed gas flows 9
only in the absence of the flow of high pressure fluid, the Examiner has 10
erred in finding that Woodward has the ability to mix a pressurized liquid 11
and a pressurized gas in the injection nozzle. 12
Accordingly, Woodward does not anticipate claims 1 and 6. For the 13
same reasons, Reed does not anticipate claims 3, 4, 7 and 14, which depend 14
from claims 1 and 6, respectively. 15
16
CONCLUSIONS OF LAW 17
Appellants have established that the Examiner erred in concluding 18
that claims 7 and 15 were indefinite. Appellants have established that the 19
Examiner erred in finding that Woodward describes an injection nozzle that 20
mixes a pressurized liquid and a pressurized gas as called for in claims 1 and 21
6. 22
23
DECISION 24
The decision of the Examiner to reject claims 7 and 15 under 35 25
U.S.C. § 112, and claims 1, 3, 4, 6, 7 and 14 under 35 U.S.C. § 102(b) over 26
Woodward is reversed. 27
Appeal 2008-002132
Application 10/006,568

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REVERSED 2
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