Ex Parte Li et al

Board of Patent Appeals and Interferences

Apr 5, 2010

10875173 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RUI LI, YUKI IKUSHIMA, TOSHIKAZU SUZUKI,
TAKAYUKI TOMARU, TAKAKAZU SHINTOMI, and
TOMIYOSHI HARUYAMA
____________________

Appeal 2009-007773
Application 10/875,173
Technology Center 3700
____________________

Decided: April 5, 2010
____________________

Before LINDA E. HORNER, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Rui Li et al. (Appellants) seek our review under 35 U.S.C. § 134 of
the final rejection of claims 1-14. An oral hearing was held on March 11,
2010. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-007773
Application 10/875,173

2
SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention pertains to a cryogenic cooling
apparatus, which, according to Appellants, can prevent vibration from being
transmitted from the refrigerator components (such as the compressor) to the
cryostat or the object being cooled in the cryostat. See Spec. 1:5-10, 15-24.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A cryogenic cooling apparatus, comprising:
a cryostat in a form of a first container
having a first base member and a first top flange
member connected to and covering the first base
member;
a support stage in a form of a second
container having a second base member and a
second top flange member connected to and
covering the second base member, the support
stage being disposed over the cryostat such that the
second base member surrounds the first base
member and the second top flange member is
positioned over the first top flange member; and
a low-vibration stage, secured to and
disposed in the cryostat, for supporting a load of an
object to be cooled, the low-vibration stage being
disposed between the first top flange member and
the object to be cooled,
wherein the cryostat and the support stage
rest on a support surface independently of each
other.

Appeal 2009-007773
Application 10/875,173

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Venuti US 4,363,217 Dec. 14, 1982
Averill US 4,394,819 July 26, 1983
Tugal US 4,835,972 June 6, 1989
Saho US 5,181,385 Jan. 26, 1993
Boolchand US 5,327,733 July 12, 1994
Herd US 5,363,077 Nov. 8, 1994
Inoue US 5,966,944 Oct. 19, 1999

The following Examiner’s rejections are before us for review:
1. Claims 1-14 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
2. Claims 1, 2, 9, and 13 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Boolchand;
3. Claims 1 and 6 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Averill;
4. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boolchand and Venuti;
5. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boolchand and Inoue;
6. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Averill and Tugal;1
7. Claims 8 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boolchand and Saho;

1 Appellants incorrectly identified Boolchand as the primary reference
applied in the obviousness rejection of claim 7. App. Br. 5, 14. The correct
reference is Averill. Final Rej. mailed Apr. 17, 2008, at 8; Ans. 10.
Appeal 2009-007773
Application 10/875,173

4
8. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boolchand and Tugal; and
9. Claims 11 and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boolchand and Herd.

ISSUES
The Examiner rejected the claims for failing to comply with the
written description requirement. The Examiner found that the claim term
“container” does not appear in Appellants’ Specification and concluded that
the broadest reasonable interpretation of that term encompasses any structure
of any shape capable of containing something. Ans. 3, 12. The Examiner
maintains that the original application does not enable the full scope of a
claim encompassing a container of any shape, and therefore does not
reasonably convey that Appellants had possession of the claimed invention.
See id. at 12-13. Appellants contend that the original Figure 1 adequately
discloses the claimed subject matter. See App. Br. 6-8. Thus, the first issue
on appeal is whether the Examiner erred in finding that Appellants’ original
application fails to reasonably convey possession of the recited containers of
Appellants’ claims.
Appellants contend that the Examiner erred in finding that Boolchand
discloses the claimed cryostat. App. Br. 10. The Examiner found that
Boolchand’s structure comprising components 93 (found to be the claimed
first top flange member) and 40 (found to be the first base member)
corresponds to the claimed cryostat. Ans. 4-5, 14-15. Thus, the second
issue on appeal is whether Boolchand’s components 93 and 40 constitute the
cryostat of Appellants’ claims.
Appeal 2009-007773
Application 10/875,173

5
The Examiner found that Averill anticipates claim 1. Ans. 5-7, 15-16.
Appellants contend that Averill fails to teach each and every limitation of
claim 1. App. Br. 11-12. Thus, the third issue on appeal is whether the
Examiner erred in finding that Averill discloses every limitation of claim 1.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The ordinary meaning of “cryostat” is “[a]n apparatus used to
provide low-temperature environments in which operations may be carried
out under controlled conditions.” MCGRAW-HILL DICTIONARY OF
SCIENTIFIC AND TECHNICAL TERMS 489 (5th ed. 1994).
2. Appellants’ Specification describes the cryostat 30 as the
structure containing the object 8 to be cooled, and distinguishes the cryostat
from the refrigeration equipment (Appellants’ “refrigerator 10”) that cools
the cryostat. See, e.g., Spec. 1:5-13; 4:19-21; 7:12 - 8:4; fig. 1.
3. Appellants’ Specification describes, and the Figures depict, a
cryostat 30 sitting on vibration-free mechanism 56 (e.g., a rubber sheet)
placed on the ground, with the top flange 31 located at the upper part of the
cryostat. E.g. Spec. 7:12-13; figs. 1-3. The support stage 50 is shown
mounted over the cryostat 30, with the support stage top flange 51 at the
upper part of the support stage and above the cryostat. Spec. 9:5-10; figs. 1-
3. The refrigerator cold head 18 is depicted as secured to the support stage,
and mounted above the cryostat. Spec. 7:20-24; figs. 1-3. According to
Appellants, the disclosed configuration – with the cold head supported
Appeal 2009-007773
Application 10/875,173

6
separately from the cryostat – makes it possible to prevent vibration from
being transmitted from the cold head to the cryostat. See Spec. 10:8-14.
4. Boolchand discloses a substantially vibration-free mounting
system for sample cooling and low temperature spectroscopy. Boolchand,
col. 4, ll. 31-34. The system utilizes two support structures physically
isolated from each other to prevent the transfer of vibrations. Id., col. 4, l.
65 – col. 5, l. 7. The second support structure 40 includes “a somewhat
skeletal, rigid pedestal member 41 having a plurality of pedestal struts 43
. . . ” with pedestal 41 mounted on vibration damping table 45 which has
support legs 47. Id., col. 7, ll. 37-43; fig. 1b. Attachment plate 93 is
mounted to the upper end of the rigid pedestal 41. Id., col. 8, ll. 48-49; fig.
1a. The structure bounded by the attachment plate 93 and support structure
40 (skeletal, rigid pedestal member 41, table 45, and legs 47) is an open-
sided structure that cannot maintain a cold environment within the volume of
that structure. See figs. 1a, 1b.

PRINCIPLES OF LAW
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lily & Co., No. 2008-1248, 2010 WL 1007369, at
*12 (Fed. Cir. Mar. 22, 2010) (en banc). “[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. at *12 (citations omitted). “[T]he
level of detail required to satisfy the written description requirement varies
Appeal 2009-007773
Application 10/875,173

7
depending on the nature and scope of the claims and on the complexity and
predictability of the relevant technology.” Id. at *12 (citing Capon v.
Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The claimed invention
need not be recited in haec verba in the original specification in order to
satisfy the written description requirement. Id. at *13. “[T]he written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
During examination of a patent application, pending claims are
interpreted broadly, see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004), but the construction cannot be “beyond that which
was reasonable in light of the totality of the written description,” In re Baker
Hughes Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987) (citations omitted).

ANALYSIS
1. The rejection of claims 1-14 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement
On the record before us, we cannot agree with the Examiner’s finding
(Ans. 12-13) that Appellants’ disclosure fails to adequately convey to one of
ordinary skill in the art that Appellants had possession of an apparatus
having a cryostat and a support stage each in the form of a container. The
Appeal 2009-007773
Application 10/875,173

8
Examiner acknowledges that Appellants’ Figure 1 discloses a cryostat and
support stage of “a specific shape,” but maintains that the application does
not enable the full scope of claim limitations encompassing a cryostat and
support stage of any shape. Ans. 12. However, the stated ground of
rejection under 35 U.S.C. § 112, first paragraph, is lack of written
description, not lack of enablement. Id. at 3. Written description and
enablement are two separate requirements under the first paragraph of
section 112. Ariad Pharms., Inc., 2010 WL 1007369, at *1, 5. The test for
the sufficiency of the disclosure under the written description requirement is
whether the disclosure reasonably conveys to the ordinary artisan that the
inventor had possession of the claimed subject matter. Id. at *12. Although
the term “container,” read in isolation, may be broad in scope, Appellants’
independent claims 1 and 11-14 do not merely recite two containers but
rather recite “a cryostat in the form of a first container” and “a support stage
in the form of a second container” with each container having a base
member and a top flange member connected to and covering the respective
base member. While the Examiner’s observation that the term “container”
does not appear in the original specification is correct, Appellants’ original
disclosure does describe – primarily through the use of figures – a cryostat
and a support stage each having the form of a container. See, e.g., Spec. 7-9;
Fig. 1 (depicting cryostat 30 and support stage 50). The Examiner has not
adequately explained why Appellants’ disclosure fails to reasonably convey
to one of ordinary skill in the cryogenic cooling art that Appellants had
possession of an apparatus having a cryostat and a support stage in the form
of containers. As such, we cannot sustain the written description rejection.
Appeal 2009-007773
Application 10/875,173

9
If the Examiner intended to reject the claims under the enablement
requirement of § 112, first paragraph, we also cannot sustain the rejection.
The test for compliance with the enablement requirement is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The
Examiner has not adequately explained why one of ordinary skill in the art
would have to engage in undue experimentation in order to practice the
claimed invention.

2. The rejection of claims 1, 2, 9, and 13 under 35 U.S.C. § 102(b) as
being anticipated by Boolchand
We again note that claim 1 recites a “cryostat in the form of a
container” having a base member and a top flange member connected to and
covering the base member. The Examiner construed a cryostat as “an
apparatus for generating a low temperature.” Ans. 13. The Examiner
appears to have construed the phrase “in the form of a container” to refer to
a structure (of any shape) that can contain anything. See Ans. 3-4, 14. The
Examiner’s construction of the claim language is unreasonably broad.
One of ordinary skill in the art reading Appellants’ Specification
would recognize that the recited cryostat is a container in which the low
temperature environment is maintained. See Facts 1-2. The cryostat is a
component separate from the refrigeration equipment (Appellants’
“refrigerator”) that cools the cryostat. Fact 2. It appears that Appellants’
refrigerator, rather than the cryostat, corresponds to the apparatus for
generating a low temperature to which the Examiner refers.
Appeal 2009-007773
Application 10/875,173

10
As mentioned above, the Examiner found that Boolchand’s structure
bounded on the top by element 93 and on the bottom by element 40
corresponds to the claimed cryostat. Ans. 4-5, 14-15. The structure defined
by elements 93 and 40 is little more than a skeletal support frame, which
cannot maintain a cold environment therein. See Fact 4. As such,
Boolchand’s elements 93 and 40 do not constitute the claimed cryostat.
Accordingly, we reverse the rejection of independent claim 1 and its
dependent claims 2 and 9 as anticipated by Boolchand. We also reverse the
Boolchand-based anticipation rejection of independent claim 13, which
contains the same cryostat recitation as claim 1.

3. The rejection of claims 1 and 6 under 35 U.S.C. § 102(b) as being
anticipated by Averill
The Examiner utilizes an annotated version of Averill’s Figure 1 to
help explain the findings underlying the ultimate finding that Averill
anticipates claims 1 and 6. Ans. 7. That annotated figure is reproduced
below:

The annotated Figure 1 depicts a part-schematic, part-sectional side
elevation of Averill’s system with the addition of the Examiner’s
labels for base and flange components. See Averill, col. 4, ll. 11-14.
Appeal 2009-007773
Application 10/875,173

11
It appears that the Examiner has, in effect, found that Averill discloses
Appellants’ cooling apparatus lying on its side with a “top flange” on the
right and two base members extending vertically on the left. See Ans. 6
(finding that “the support stage (2nd flange and 2nd base) being disposed over
the cryostat (1st flange and 1st base, from perspective of looking from right of
figure)”).
However, one of ordinary skill in the art reading the claims in light of
the Specification would understand claim 1 to define an apparatus in which
the cryostat and the support stage are aligned vertically relative to the
support surface (e.g., the ground, see Spec. 8, l. 6-8, 12-13; Fig. 1). For
example, claim 1 recites (with emphasis added):
the second top flange member [of the support stage] is
positioned over the first top flange member [of the cryostat] . . .
wherein the cryostat and the support stage rest on a support
surface independently of each other.
According to the Specification, the configuration shown in the figures
(which depict a vertically aligned cryostat and support stage) allows the
refrigerator’s cold head to be supported over, yet independently from the
cryostat, thereby reducing the transmission of mechanical vibration to the
cryostat. See Fact 3.
Averill does not disclose a cryogenic cooling apparatus configured as
claimed by Appellants. Therefore, the rejection of independent claim 1 and
its dependent claim 6 as anticipated by Averill is reversed.

4. The Obviousness Rejections of Claims 3-5, 7, 8, 10-12, and 14
Claims 3-5, 7, 8, and 10 depend either directly or indirectly from
independent claim 1. Independent claims 11, 12, and 14 recite the same
Appeal 2009-007773
Application 10/875,173

12
cryogenic cooling apparatus as claim 1. See App. Br., claim appendix;
Reply Br. 5. The Examiner rejected claims 3-5, 7, 8, 10-12, and 14 as
obvious over various combinations of references, with either Boolchand or
Averill as the primary reference. See Ans. 7-12. The Examiner does not
rely on the secondary references in any manner that cures the above-
discussed deficiencies of Boolchand and Averill, or adequately articulate
why the claimed subject matter – with the recited cryogenic cooling
apparatus – would have been obvious. See Ans. 8-12, 16. Accordingly, we
are constrained to reverse the obviousness rejection of: claims 3 and 4 over
Boolchand and Venuti; claim 5 over Boolchand and Inoue; claim 7 over
Averill and Tugal; claims 8 and 10 over Boolchand and Saho; claim 12 over
Boolchand and Tugal; and claims 11 and 14 over Boolchand and Herd.

CONCLUSIONS
The Examiner erred in finding that Appellants’ original application
fails to reasonably convey possession of the recited containers of
Appellants’ claims.
Boolchand’s components 93 and 40 do not constitute the cryostat of
Appellants’ claims.
The Examiner erred in finding that Averill discloses every limitation
of claim 1.
DECISION
The decision of the Examiner to reject claims 1-14 is reversed.

REVERSED
Klh
Appeal 2009-007773
Application 10/875,173

13

RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON DC 20036