Ex Parte Hamza et al

Patent Trial and Appeal Board

Mar 29, 2016

11584205 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111584,205
78980 7590
LLNL/Zilka-Kotab
10/20/2006
03/31/2016
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
FIRST NAMED INVENTOR
Alex V. Hamza
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IL-11580/LLNLP049 5886
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
03/31/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX HAMZA, WERGEN BIENER, CHRISTOPH WILD and
ECKHARD WOERNER
Appeal2013-010287
Application 11/584,205
Technology Center 2800
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1-7, 9, 10, 12-18, and 40-56, all the claims pending
in the application. Claims 31-35 are withdrawn. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to "shells of various shapes
with a diamond covering, and more particularly to a method/system for
Appeal2013-010287
Application 11/584,205
producing substantially spherical nanocrystalline diamond shells often
having a desired surface roughness at the nanometer level." Spec. ,-r 3.
Claim 1 is illustrative:
1. An article of manufacture, comprising:
a shell enclosing a hollow volume;
the shell having a polycrystalline diamond film having a
surface roughness less than about 400 nm,
wherein the hollow volume has a length of between
2 mm and about 5 mm along a long dimension, and
wherein the diamond film is capable of isotropic
transmission of sound.
Appellants appeal the following rejections:
RI. Claims 1, 2-7, 9, 10, 13, 14, 16, 17, 40, 42--44, and 56 stand
rejected under 35 U.S.C § 103(a) as being unpatentable over Kley (US
2008/0256850 Al, Oct. 23, 2008). Final Act. 11.
R2. Claims 1, 2, 4--7, and 40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kley; Lunn ("Growth of diamond films
on spherical surfaces by hot filament CVD," Diamond and Related Materials
7, 129-132 (1998)), and Yashiki (EP 0419087 Al, Sep. 4, 1990), or, in an
alternative rejection, as being unpatentable under 35 U.S.C. § 103(a) over
Kley, Lunn, and Ali ("Implementation of the time-modulated process to
produce diamond films using microwave-plasma and hot-filament CVD
systems," Vacuum 71, 445-50 (2003)). Final Act. 15.
R3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kley and Kang (US 6, 132,278, Oct. 17, 2000). Final Act.
20.
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Application 11/584,205
R4. Claims 1-7, 9, 10, 12-18, and 40-56 stand rejected under 35
U.S.C. § 112, first paragraph, as being based on disclosure which is not
enabled. Final Act. 6.
R5. Claims 1-7, 9, 10, 12-18, 40, and 42-56 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement. Final Act. 6-8.
R6. Claims 1-10, 12-18, and 40-56 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which application regards as the
invention. Final Act. 9-10.
Claim Groupings
Based on Appellants' arguments in the Appeal Brief, we will decide
the appeal of the rejections Rl-R3 on the basis of claim 1, as set forth
below. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejections under§ 103 over Kley
Issue 1: Did the Examiner err in finding Kley teaches or suggests "a
shell enclosing a hollow volume ... wherein the hollow volume has a length
of between 2 mm and about 5 mm along a long dimension," as set forth in
claim 1?
Appellants contend "Kley does not disclose the claimed hollow
volume having 'a length between 2 mm and about 5 mm along a long
dimension." App. Br. 26. In response, the Examiner finds "Kley does
disclose said hollow volume to have a length (diameter) of 1.95 mm" (Final
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Application 11/584,205
Act. 12), and to modify Kley to the claimed range "from 2 mm to about
5 mm ... only 0.05 mm or of about 2.5% ... would suffice" (Ans. 11 ). The
Examiner further finds Appellants' "disclosure does not teach why the range
as claimed is critical to the invention." Final Act. 13 (emphasis added). We
agree with the Examiner.
"The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations
omitted). Claimed ranges "may impart patentability to a process if the
particular ranges claimed produce a new and unexpected result which is
different in kind and not merely in degree from the results of the prior art.
Such ranges are termed 'critical' ranges, and the applicant has the burden of
proving such criticality." In re Aller, 220 F.2d 454, 456 (CCPA 1944).
Although Appellants argue "the record does not reflect evidence
supporting the allegation that modifying Kley to encompass the claimed
hollow volume would be 'routine experimentation' under the rule set forth in
In re Antonie, 559 F.2d 618 (CCPQ 1977)" (App. Br. 26), Appellants fail to
provide any explanation how the claimed range of 2 mm to 5 mm is critical
to the invention. To the contrary, Appellants' Specification discloses
"spherical shells of arbitrary sizes to be produced having preferable
diameters rangingfrom about 0.3 mm up to about 10 mm." Spec. i-f 27
(emphasis added). In other words, Appellants' Specification describes shells
of inclusive size with only preferable diameters that range anywhere from
0.3 mm to 10 mm, without specifying any critical range.
Here, Appellants do not provide persuasive evidence that the claimed
range of 2 mm to 5 mm is critical or would achieve unexpected results when
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Application 11/584,205
applied to the hollow volume. See Woodruff, 919 F.2d at 1578 ("These
cases have consistently held that in such a situation, the applicant must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range."). As such,
Appellants have not met their burden to prove criticality of the claimed
range.
Kley discloses "a spherical shell with an inner diameter of 1.95 mm,
and an outer diameter of 2 mm (or more)." Kley i-f 141. Since Appellants
have not provided persuasive evidence that the claimed 2 mm to 5 mm is
critical, we agree with the Examiner's finding that Kley's spherical shell
inner diameter teaches or suggests the hollow volume of a shell with a length
of between 2mm and about 5mm, as required by claim 1.
For at least these reasons, we are unpersuaded the Examiner erred.
In view of the above discussion, since Appellants have not
demonstrated that the cited art fails to teach or suggest the argued
limitations, the Examiner's 35 U.S.C. § 103(a) rejection RI of independent
claim 1, as well as the rejections of dependent claims 2-7, 13, 14, 16, 17, 40,
42--44, and 56, not separately argued (App. Br. 26, 29 and 30), are sustained.
Rejection under§ 103 over Kley, Lunn, and Yashiki
or in the alternative over Kley, Lunn, and Ali
Appellants have provided no separate arguments towards patentability
for claims 1, 2, 4--7, and 40 (App. Br. 28). Therefore, the Examiner's 35
U.S.C. § 103(a) rejection R2 of claims 1, 2, 4--7 and 40 is sustained for
similar reasons as noted supra.
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Application 11/584,205
Rejection under§ 103 over Kley and Kang
Appellants have provided no separate arguments towards patentability
for claim 4 (App. Br. 29). Therefore, the Examiner's 35 U.S.C. § 103(a)
rejection R3 of claim 4 is sustained for similar reasons as noted supra.
Rejections under§ 112, first paragraph, enablement
Issue 2: Did the Examiner err in finding that claims 1-7, 9, 10, 12-
18, and 40-56 are not enabled?
The Examiner found "the specification, while being enabling for the
diamond shell is a rolling body in ball bearings, pen-points, ornaments, [sic]
fails to reasonable enable the claimed invention for use as an inertial fusion
target for energy production." Final Act. 6.
Appellants contend "none of claims 1-7, 9, 10, 12-18, and 40-56
recite or otherwise require any nuclear fusion reaction, reactor, or conditions
for achieving an inertial confinement fusion reaction." App. Br. 7.
Appellants further contend "describing an article of manufacture for use as
an inertial confinement fusion target does not require actually achieving a
nuclear fusion reaction, controlled or otherwise" (App. Br. 9), and "the
instant specification nonetheless is sufficient to enable one having ordinary
skill in the art to use the claimed invention as an inertial confinement fusion
target" (App. Br. 11 ). We agree with Appellants.
Here, Appellants' claims are directed towards an article of
manufacture comprising a shell enclosing a hollow volume, the shell with a
diamond film around it with roughness characteristics, the shell having
characteristics including size and perforations, wherein the diamond film is
capable of isotropic transmission of sound. While we agree that
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Application 11/584,205
Specification describes one potential application for the diamond shell is
"for use as an inertial fusion target for energy production," we find the
claimed invention is not directed towards achieving fusion reactions.
"The enablement requirement is often more indulgent than the written
description requirement. The specification need not explicitly teach those in
the art to make and use the invention; the requirement is satisfied if, given
what they already know, the specification teaches those in the art enough
that they can make and use the invention without 'undue experimentation."'
Amgen, Inc., v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed.
Cir. 2003). Here, we find that Appellants' Specification teaches those in the
art enough to make and utilize an article of manufacture comprising a
diamond shell enclosing a hollow volume, and the various claimed
characteristics, without undue experimentation.
Therefore, based on the record before us, we find that the Examiner
did err in rejecting claims 1-7, 9, 10, 12-18, and 40-56under§112, first
paragraph. Accordingly we reverse this rejection R4 of claims 1-7, 9, 10,
12-18, and 40-56.
Rejections under§ 112, first paragraph, written description
Issue 3: Did the Examiner err in finding that amended limitations
have no support in the original disclosure?
The Examiner finds that several amended limitations have no support
in the original disclosure. Final Act. 6-8.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
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Application 11/584,205
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). However, the written
description requirement under § 112 does not demand ( 1) any particular
form of disclosure, or (2) the Specification recite the claimed invention
verbatim, although a description that merely renders the invention obvious
does not satisfy the requirement. Ariad at 1352 (citations omitted).
Specifically, the Examiner finds the amended limitation of claim 1
"'wherein the hollow volume has a length of between 2 mm and about 5 mm
along a long dimension'" is not supported by a written description in the
specification as originally filed and hence is new matter." Final Act. 7.
Appellants contend the disclosure "through original claim language supports
the range of between about 0.3 mm and about 5 mm," and "since the
rejection of claim 1 is based on an amendment narrowing a numerical range,
the written description requirement is satisfied so long as the amendment
recites a numerical range within the bounds of the originally disclosed broad
range." App. Br. 13. We agree with Appellants that the original claim range
of 0.3 mm to 5 mm provides adequate written description by encompassing
the newly claimed 2 mm to 5 mm.
The Examiner further finds the "closure comprising diamond-like
carbon as claimed by amendment" of claim 18 "is not supported by a written
description and hence is new matter." Final Act. 7. Appellants contend
paragraph [0041] provides "express support for the limitation." Here,
Appellants' Specification describes "the drill holes can be resealed. This is
done with frozen deuterium or with diamond like carbon applied in the
region of the opening. " Spec. i-f 41 (emphasis added). We agree with
Appellants that Appellants' Specification provides adequate written
description of a closure of the sphere using diamond like carbon.
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Application 11/584,205
The Examiner further finds "the specification-as-originally-filed does
not provide written support for the now claimed 'at least one fill tube
comprising diamond-like carbon forming a glueless joint to the at least one
perforation,"' or the "at least one closure" that recites "to comprise 'a
material selected from the group consisting of deuterium, tritium and
deuterium-tritium,"' which is new matter in claim 9. Final Act. 7-8.
Appellants contend "the express disclosure in paragraph [0046] of the
specification is sufficient to inform one having ordinary skill in the art that
Appellant was in possession of the embodiment recited in claim 9 as of the
date of invention."
Appellants' Specification describes:
Thereby a pipe-like structure of diamond like carbon forms
directly above the opening. This is connected to the diamond
surface without glue or other impurities. Through this pipe-like
structure it is possible to then fill the interior of the sphere with
a gas or liquid combination of deuterium and tritium .. . In such a
manner it is possible to introduce larger quantities of deuterium
and tritium into the hollow body.
Spec. i-f 46 (emphasis added).
We agree with Appellants that Appellants' Specification provides
adequate written description of a "fill tube comprising diamond-like carbon
forming a glueless joint" and a closure with "material selected from the
group consisting of: deuterium, tritium, and deuterium-tritium."
Accordingly, the rejection R5 of claims 1-7, 9, 10, 12-18, 40, and 42-
56 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, is reversed.
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Application 11/584,205
Rejections under§ j j 2, second paragraph
Issue 4: Did the Examiner err in finding claims 1-10, 12-18, and 40-
56 are indefinite?
The Examiner finds the disputed claims are indefinite because they do
not meet the written description requirements. See Final Act. 9-10.
Appellants contend the "disclosure provides sufficient detail for a
skilled artisan to reasonably understand the metes and bounds of grain size
suitable for isotropic transmission of sound." App. Br. 19-20. We agree
with Appellants.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc., v. Safety
Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). We
find that one of ordinary skill in the art would understand what is claimed
("the diamond film is capable of isotropic transmission of sound") when the
claim is read in light of the Specification. We further find that one of
ordinary skill in the art would understand what is claimed when the claims
are read in light of the Specification.
Accordingly, the rejection R6 of claims 1-10, 12-18, and 40-56,
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
application regards as the invention, is reversed.
DECISION
We affirm the Examiner's§ 103(a) rejections Rl-R3.
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Application 11/584,205
We reverse the Examiner's§ 112(a) or pre-AIA § 112, first paragraph,
rejections R4-R5.
We reverse the Examiner's §112(b) or pre-AIA §112, second
paragraph, rejection R6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED IN PART
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