Ex Parte KHANDELWAL et al

Patent Trial and Appeal Board

Feb 28, 2019

14654075 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/654,075 06/19/2015
26096 7590 03/04/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Manish KHANDELW AL
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.
67715-045 PUSl 3992
EXAMINER
KURPLE,KARL
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANISH KHANDEL WAL, SHAMP A KANDOI,
DREW BRADLEY STOLAR, SUSAN G. YAN, and
STEVEN M. NELSON
Appeal2018-005444
Application 14/654,075
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
March 27, 2017 decision finally rejecting claims 7-15 ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Doosan Fuel Cell America, Inc. is identified as the real party in interest
(Appeal Br. 2).
Appeal2018-005444
Application 14/654,075
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to a material deposition device,
sometimes known as a cloud tower (Spec. ,r 3). The material deposition
device is used to deposit micron sized particles onto a target (Spec. ,r 1 ).
Details of the claimed invention are shown in independent claim 7, which is
reproduced below from the Claims Appendix to the Appeal Brief:
7. A material deposition device, comprising:
a support surface configured to support a substrate;
a primary tower that defines an enclosed interior space
having a first volume, the primary tower having one end
received adjacent the support surface, the one end of the
primary tower having at least one dimension that establishes a
first deposition area within the interior space for depositing
material on the substrate on the support surface;
a source of vacuum that establishes a vacuum within the
interior space that draws material toward the support surface;
and
a tower insert configured to be received in the interior
space, the tower insert selectively establishing a second, smaller
volume in the interior space, the tower insert having at least one
edge that, when received adjacent the support surface,
establishes a second, smaller deposition area within the interior
space for depositing material on the substrate on the support
surface.
2
Appeal2018-005444
Application 14/654,075
REJECTIONS 2
I. Claims 7-9 and 16-17 are rejected under 35 U.S.C. § I02(b) as
anticipated by Goller. 3
II. Claims 10 and 11 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Goller in view of Duncan. 4
III. Claims 12-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Goller in view of Yamada. 5
DISCUSSION
Rejection I. "A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation." In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In
this instance, Appellant contends, inter alia, that Goller does not disclose a
system in which the tower insert "establishes a second, smaller deposition
area ... for depositing material on the substrate on the support surface" as
recited in claim 7 (Appeal Br. 4--5). The Examiner's pertinent findings in
this regard are based on Goller's FIG. 2, which is reproduced below:
2 The rejections under 35 U.S.C. § 112 which were set forth in the Final
Action were withdrawn as described in the Advisory Action mailed July 21,
2017.
3 Goller et al., US 4,233,181, issued November 11, 1980.
4 Duncan, US 3,545,996 B2, issued December 8 9, 1970.
5 Yamada et al., US 2005/0059246 Al, published March 17, 2005.
3
Appeal2018-005444
Application 14/654,075
Goller's FIG. 2 is a simplified plan view, partly schematic, showing its
automated electrode fabrication apparatus.
The Examiner finds that Goller's cloud chamber 112 corresponds to
the claimed primary tower, while pyramid-like chamber 118 corresponds to
the claimed tower insert, and substrate 116 corresponds to the claimed
substrate (Final Act. 4). As disclosed by Goller, the bottom edge 120 of
pyramid-like chamber 118 "fits tightly against the outside edge 122 of ...
substrate [116]" (Goller 6:6-8). Accordingly, as argued by Appellant,
Goller's apparatus does not provide a tower insert which "establishes a
second smaller deposition area within the interior space for depositing
material on the substrate on the support surface" because Goller's "tower
insert" (i.e., the pyramid-like chamber) covers the entire surface of the
substrate, so that it cannot define a second smaller deposition area relative to
what is defined by the primary tower (Appeal. Br. 5, citing Goller 6:6-7).
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Appeal2018-005444
Application 14/654,075
The Examiner does dispute that Goller's pyramid-like chamber covers
the entire surface of the substrate. Instead the Examiner responds by stating
that the broadest reasonable interpretation of the claim term "deposition
area" includes the volume or three dimensional space of the cloud chamber.
Therefore, according to the Examiner, Goller's cloud chamber 112 can
include some deposition area (i.e. empty space) which is greater than that
surface area covered by pyramid-like chamber 118.
The Examiner's position is not supported by the claim language,
which plainly states that the "deposition area" is for "depositing material on
the substrate." Accordingly, the three dimensional space inside Goller's
cloud chamber 112 does not permit a finding that cloud chamber 112 defines
a first deposition area which is larger than the deposition area defined by the
pyramid-like chamber 118.
Thus, Appellant has shown reversible error in the Examiner's finding
of anticipation. With regards to the obviousness rejections, the Examiner
does not rely on the secondary references to show that the tower insert
establishes a second smaller deposition area. Accordingly, while we do not
address the arguments raised by Appellant but not specifically discussed
above, we reverse those rejections as well.
CONCLUSIONS
We REVERSE the rejection of claims 7-9 and 16-17 under
35 U.S.C. § 102(b) as anticipated by Goller.
We REVERSE the rejection of claims 10 and 11 under
35 U.S.C. § 103(a) as unpatentable over Goller in view of Duncan.
5
Appeal2018-005444
Application 14/654,075
We REVERSE the rejection of claims 12-15 under
35 U.S.C. § 103(a) as unpatentable over Goller in view of Yamada.
REVERSED
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