Ex Parte Lloyd et alDownload PDFPatent Trial and Appeal BoardDec 5, 201613245146 (P.T.A.B. Dec. 5, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/245,146 09/26/2011 Geoffrey Morgan Lloyd P10B416 5575 20411 7590 12/06/2016 The Linde Group 200 Somerset Corporate Blvd. Suite 7000 Bridgewater, NJ 08807 EXAMINER TAI, XIUYU ART UNIT PAPER NUMBER 1759 MAIL DATE DELIVERY MODE 12/06/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEOFFREY MORGAN LLOYD and RODNEY STEWART MASON1 Appeal 2015-006178 Application 13/245,146 Technology Center 1700 Before LINDA M. GAUDETTE, MARK NAGUMO, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1—3, 5—13, 15, and 17.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as Linde AG (Appeal Brief, filed January 14, 2015 (“App. Br.”), 3.) 2 Final Office Action mailed June 2, 2014 (“Final Office Action,” cited as “Final Act.”). 3 No Reply Brief has been filed. Appeal 2015-006178 Application 13/245,146 CLAIMED SUBJECT MATTER The claims are directed to the use of non-thermal gaseous plasmas in therapeutic and oral care applications. (Spec. 12.)4 When a non-thermal plasma is “formed by striking an electric discharge between electrodes in a cell containing a helium atmosphere,” the helium atoms in the cell may be ionized and therefore be used for sterilization or cleaning of a surface. (Id. 13.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of making an active gas, comprising generating within a plasma generator a glow discharge, non-thermal, plasma in a flow of a gas mixture comprising a carrier gas and a more readily ionisable gas, and exposing the flow of the gas mixture to a source of water vapour at or downstream from the generator so as to form the active gas, wherein: a) the carrier gas is helium; b) the more readily ionisable gas is at least one noble gas selected from the group consisting of argon, krypton, and xenon; c) the gas mixture includes up to 40% by volume of the more readily ionisable gas; d) wherein the gas mixture is ejected at a temperature in the range of from 5°C to 40°C; and e) wherein the flow of gas mixture is provided from a pressure vessel containing the gas mixture. (Claims Appendix, App. Br. 17 (emphasis added).) 4 Application 13/245,146, Active Gases & Treatment Methods, filed September 26, 2011. We refer to the 146 Specification,” which we cite as “Spec.” 2 Appeal 2015-006178 Application 13/245,146 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Liu US 8,277,616 B2 Aug. 28, 2007 Morfill5 EP 2 160 081 A1 Mar. 3, 2010 REJECTIONS Claims 1—3, 5—13, 15, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Morfill in view of Liu. (Final Act. 4.) OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Claim 76 In rejecting claim 1 under section 103, the Examiner acknowledges that Morfill does not teach all limitations of claim 1. (Final Act. 4.) For example, the Examiner acknowledges that Morfill “does not specifically teach to expose the flow of the gas mixture of the carrier gas and the additive to a source of water vapor at or downstream of the plasma generator” but finds that Liu provides such teachings and determines that a skilled artisan would have found claim 1 obvious in light of the combined teachings. {Id. at 5.) 5 Morfill is mentioned in the ’146 Specification. (Spec. 14.) 6 Appellants do not present separate arguments for claim 13, it therefore, stands or falls with claim 1. 3 Appeal 2015-006178 Application 13/245,146 On this record, Appellants do not refute much of the Examiner’s findings but argue “a pressure vessel” recited in claim 1 is absent in both Morfill and Liu. (Compare Final Act. 4—5 with App. Br. 10—14.) Morfill discloses a non-plasma apparatus for “would healing” which includes a mixer which “receives the non-ionized carrier gas (e.g., argon) from the carrier gas source 3 and the non-ionized additive from the additive source 4 and mixes these gases.” (Morfill 1153, 58, Figure 1 (cited in Final Act. 4).) Appellants argue that the separate sources of the carrier gas and additive in Morfill are patentably distinguishable from a single supply source — “a pressure vessel containing the gas mixture” as recited in claim 1. (App. Br. 11—12.) Appellants additionally argue that the prior art mixer is patentably distinguishable from “a pressure vessel” as recited. (Id.) From the outset, claim 1, as it is currently written, is an open-ended claim and does not preclude a method having separate sources for the carrier gas and additive prior to mixing. No reversible error has been identified here. While Appellants argue that a mixer and a pressure vessel are different devices, Appellants have not presented factual evidence in support of their arguments. Structures such as machines and articles of manufacture must be distinguished from the prior art on the basis of structure, and where there is reason to believe that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The obviousness analysis “can take account of the inferences and creative steps that a person of ordinary skill in the art 4 Appeal 2015-006178 Application 13/245,146 would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Appellants in this case do not show, for example, that the mixer in Morfill is incapable of operating as “a pressure vessel containing the gas mixture” as recited in claim 1. (App. Br. 11—12.) Appellants do not identify error in the Examiner’s reasonable statement that the prior art mixer “contains substances at a certain pressure which may be different from the ambient pressure” and is therefore capable of functioning as a pressure vessel. (Compare id. at 12 with Ans. 8.)7 Appellants’ unelaborated disagreement cannot substitute for evidence and does not identify reversible error in this aspect of the obviousness analysis. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). With regard to the prior art reference Fiu, Appellants argue that Fiu “does not teach or suggest providing a gaseous mixture from a pressure vessel to the plasma generator.” (App. Br. 14) Based on our analysis of Morfill supra, no reversible error has been identified in this aspect of Fiu. Although Appellants broadly state that the Examiner’s reasoning for combining Morfill and Fiu is incorrect and based on hindsight, Appellants have not explained (supported by factual evidence) why the Examiner reversibly erred here. {Id. at 14—15.) For example, Appellants have not explained why the Examiner reversibly erred in concluding that Fiu’s teaching of using water vapor to “increase the reaction capability of the plasma” would have led a skilled artisan to introduce water vapor into Morfill’s method. {Id. at 14 (citing Final Act. 5).) Appellants therefore have 7 Examiner’s Answer mailed April 13, 2015 (“Ans.”). 5 Appeal 2015-006178 Application 13/245,146 not adequately provided factual evidence to identify reversible error in the Examiner’s “articulated reasoning with some rational underpinning [for] the legal conclusion of obviousness,” KSR, 550 U.S. at 418. Claims 10—11 Claim 10 depends from claim 1 and additionally recites “wherein the pressure of the gas mixture is in the range of from 0.5 to 2 bar.” (Claim Appendix, App. Br. 18.) Claim 11 depends from claim 10 and additionally recites “wherein the pressure of the gas mixture in the generator is in the range from 0.9 to 1 bar.” (Id.) Appellants argue that the Examiner erred because Morfill’s plasma pressure is not the pressure of the gas mixture in the generator as recited in claims 10 and 11. (App. Br. 13.) Because the pressure recited in claim 10 is not specific to the pressure in the generator, no reversible error has been identified with regard to claim 10. Moreover, the Examiner finds that “the plasma generator of Morfill appears to be an open system and adjacent to the surface to be treated” and as a result “the pressures measured on the treated surface as taught by Morfill... are most likely the same as the pressures of the gas mixture within the plasma generator.” (Ans. 8 (citing Morfill | 55, Figures 1—5).) Because Appellants do not refute this fact finding, no reversible error has been identified with regard to the rejection of claims 10 and 11. (Compare App. Br. 8 and Final Act. 6 with App. Br. 13.) Claim 12 Claim 12 depends from claim 1 and additionally recites “in which the concentration of the more readily ionisable gas is less than or equal to 4% by volume.” (Claim Appendix, App. Br. 18.) 6 Appeal 2015-006178 Application 13/245,146 The Examiner acknowledges that Morfill does not disclose specific ratios between the carrier gas and the additive. (Final Act. 7.) The Examiner, however, finds that Morfill teaches “the mixing ratio of the carrier gas and the additive may be adjusted” as well as certain “beneficial effect” of the additive to the plasma treatment. {Id. (citing Morfill || 10, 33).) The Examiner concludes that it would have been obvious for a skilled artisan to “adjust the mixing ratio of the additive gas in the gas mixture in order to optimize plasma generation, thus improving efficiency while using the method of Morfill.” (Final Act. 7.) Appellants argue, without presenting factual evidence, that “adjustment of mix ratio would be impossible” “without the mixer of Morfill.” (App. Br. 13.) Even if that is the case, Appellants do not explain why this assertion supports the patentability of claim 1 which does not exclude a mixer. In addition, “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellants have not shown otherwise (App. Br. 13) and no reversible error has been identified in this aspect of the obviousness analysis. Claims 15 and 17 Claim 15 depends from claim 1 and additionally recites that “the active gas has whitening activity.” Claim 17 depends from claim 15 and additionally recites the limitation, “wherein the whitening activity is tooth whitening activity.” (Claim Appendix, App. Br. 18—19.) Appellants argue that the Examiner engaged in impermissible hindsight by combining Morfill and Liu because (1) MorfilTs disclosure is limited to treatments such as sterilization and (2) Liu discloses adding water 7 Appeal 2015-006178 Application 13/245,146 vapor “to increase the reaction capability of the plasma” and not “improving] plasma generation” as found by the Examiner. (App. Br. 14— 15 (citing Liu 3:33—38).) Appellants, however, do not explain why claims 15 and 17 are patentable over the combined prior art — particularly given that the ’146 Specification provides that it is known in the prior art to use “non-thermal gaseous plasmas [for] ... the cosmetic whitening of teeth[.]” (Compare App. Br. 14—15 with Spec. 12.) As analyzed supra, Appellants do not refute Liu’s teaching of adding water vapor to “increase the reaction capability of the plasma.” (App. Br. 15 (citing Liu at 3:33—38).) Appellants have not identified reversible error (supported by factual evidence) in the Examiner’s “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Argument that a process disclosed by the prior art inherently differs from the claimed process must be supported by more than “bare assertion.” In re Kemps, 97 L.3d 1427 (Led. Cir. 1996). Absent a sufficient showing of factual evidence in support of Appellants’ arguments, no reversible error has been identified here. Claims 2, 3, and 5—9 “[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .” In re Jung, 637 L.3d 1356, 1365 (Led. Cir. 2011). Other than repeating the limitations of each of these claims, Appellants have not presented factual evidence identifying reversible error. (See App. Br. 12.) Our rules require that an Appeal Brief include “arguments” that “shall explain why the examiner erred.” 37 C.L.R. § 41.37(c)(l)(iv). “[M]ere statements of disagreement. . . 8 Appeal 2015-006178 Application 13/245,146 do not amount to a developed argument.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Accordingly, we are not persuaded that the Examiner reversibly erred in rejecting these claims. DECISION The Examiner’s rejection of claims 1—3, 5—13, 15, and 17 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)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation