Ex Parte Mao et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10379850 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AARON D. MAO,
SAMUEL L. ANTONIO, and
POM HYARE
____________

Appeal 2009-009856
Application 10/379,850
Technology Center 1700
____________

Decided: March 24, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 26. Claims 27 through 52, the
other pending claims in the above-identified application, stand withdrawn
from consideration as being drawn to non-elected subject matter. We have
jurisdiction under 35 U.S.C. § 6 and § 134.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a process system as shown
in Figure 1 below:

Figure 1 shows a process system comprising a process chamber 12 having
an interior wall surface 15 combusting an effluent containing, for example,
silane compounds from a semiconductor manufacturing facility 24 in the
presence of an oxidant from an oxidant source 28 to produce a discharge gas
32 depleted in hazardous and toxic components (Spec. 7 and 9, paras. 0049
and 0056 to 0058). Disposed in the process chamber 12 is a flexible
elongate abrading element 14 with one end 22 being free ended and the other
end 16 being attached to a drive motor 18 energized by a power supply line
20 for a rotational movement within the process chamber 12 to suppress
deposition and accumulation of particulate solids on the interior surface 15
of the process chamber 12 (Spec. 4, para. 0009 and Spec. 7, para. 0050).
According to page 9, paragraph 0059, of the Specification:
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As a result of the abrading whipping of the interior wall
surface by the freewire [flexible elongate abrading] element, the
interior wall surface of chamber 12 is maintained substantially
free of solid deposits, thereby permitting the service life of the
chamber between successive maintenance events to be
significantly lengthened, so that process uptime is increased, in
relation to a corresponding effluent treatment system lacking
the surface cleaning capability of the present invention.

The flexible elongate abrading element 12 is defined as “a wire, fiber,
filament, cord, strand, ribbon, chain (linked or otherwise segmented article),
whip, or other elongate member that is deployed in a free-end arrangement”
(Spec. 5, para. 0043). The flexible elongate abrading element 12 must be
made of a material that flexes and bends so that the entire or almost entire
length of the abrading element 12 can be used as the abrading surface
against the interior wall surface 15 of the process chamber 12 upon being
rotated by the drive motor 18 (Spec. 6, para. 0044, Spec. 9, para. 0059, and
Fig. 1). The flexible elongate abrading element 12 is illustrated as having
“an elongate contacting surface of sufficient length to concurrently engage a
substantial portion of the longitudinal length of” the interior surface of the
process chamber 12 as recited in claim 1 (Fig. 1). The sufficient length of
the flexible elongate abrading element 12 is defined as 20 to 50% longer
than the longitudinal dimension of the process chamber (Spec. 6, Para.
0045). For the flexible elongate abrading element 12 to concurrently engage
a substantial portion of the longitudinal length of the interior wall surface 15
of the process chamber 12 as shown in Figure 1, the entire or almost entire
length of the flexible elongate abrading element 12 must serve as an
elongate abrading contacting surface against the interior wall surface 15 of
the process chamber 12 (Fig. 1).
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Details of the appealed subject matter are recited in the broadest claim
on appeal, claim 1, reproduced from the Claims Appendix to the Appeal
Brief (“App. Br.”) filed April 30, 20081 as shown below:
1. A process system comprising:

a process chamber arranged for flow of gas therethrough, and
including a gas-contacting surface having a longitudinal length, wherein the
gas is susceptible to the presence or generation of particulate solids;

a motive driver arranged to provide a rotational driven movement
output; and

a flexible abrading element having an elongate contacting surface of
sufficient length to concurrently engage a substantial portion of the
longitudinal length of the gas-contacting surface, the abrading element being
free-ended at a first end thereof and coupled at a second end thereof to the
motive driver, for rotational driven movement of the abrading element so
that the elongate contacting surface of the abrading element engages said
gas-contacting surface during said rotational driven movement to abradingly
remove particulate solids therefrom.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 2 of the
Answer. (“Ans.”) dated October 29, 2008:
Alonso 5,819,354 Oct. 13, 1998
Lee 6,604,257 B1 Aug. 12, 2003
Appellants request review of the following Examiner’s grounds of
rejection set forth in the Answer:
1) Claims 1, 10 through 21, and 23 through 26 under 35 U.S.C.
§ 102(b) as anticipated by Alonso; and

1 The Amendment to the Appeal Brief entitled “RESPONSE AND
AMENDED BRIEF” was filed on August 5, 2008.
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2) Claims 1 through 26 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Lee and Alonso (App. Br. 4 and Reply
Brief (“Reply Br.”) filed December 29, 2008, 3).
Appellants traverse the Examiner’s § 102(b) and § 103(a) rejections,
arguing that Alonso alone, or in combination with Lee, does not teach, nor
would have suggested, the claimed structurally and functionally defined
flexible elongate abrading element (App. Br. 4-8 and Reply Br. 4-9).
ISSUE AND CONCLUSION
The dispositive question is: Has the Examiner demonstrated that
Alonso alone, or in combination with Lee, teaches or would have suggested
the claimed structurally and functionally defined flexible elongate abrading
element placed in a process chamber, with one end being attached to a drive
motor for rotational driven movement and the other end being free ended to
provide the abrading whipping of the interior wall surface of the process
chamber to suppress deposition and accumulation of particulates thereon?
On this record, we answer this question in the negative.

RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Alonso discloses an apparatus for “cleaning ducting that uses
specially configured brushes and tools in conjunction with a flexible shaft”
(col. 1, ll. 4-7).
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2. Alonso’s Figures 1 and 2 illustrate such duct cleaning apparatus as
shown below:

The duct cleaning apparatus 10 shown above includes a flexible shaft
assembly 12 and a duct cleaning tool 14 having “a number of independent
appendages 16 for contacting the inside walls of the duct” (col. 3, ll. 20-27).
3. Alonso teaches (col. 3, ll. 27-52) that:
The flexible shaft assembly 12 generally includes a shaft
18 having a first end 20, a second end 22 and an axis generally
extending along its straightened length. The shaft 18 may [be]
made from flexible wire in any flexible form such as a helical
wire shaft or a snake, but may be any flexible shaft or rod
which can be pushed inside a length of duct (not shown) while
rotating the duct cleaning tool 14 . . . The flexible shaft
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assembly 12 is generally connected to a rotation means (not
shown) which may include a drill, rotor motor, or the like.
The flexible shaft assembly 12 may [have] a leader
segment (not shown). This leader segment (not shown) is
generally a very flexible member for navigating the curve
sections of ducts and is particularly useful in dryer ducting . . .
The leader segment may be a separate flexible shaft assembly
12 or may be an individual leader segment piece (not shown).
The flexible shaft assembly 12 may include a cylindrical
covering 24. The cylindrical covering 24 is a generally flexible
sheath or tubing material which fits over the shaft 18 and
protects the shaft 18, the walls of the duct as well as the hands,
hair and clothing of the user (not shown).
4. Lee teaches
an apparatus . . . for cleaning an exhaust conduit that has
chemical substances deposited on its inside wall by utilizing a
shaft that is equipped with a plurality of scraping elements for
moving in both a radial and a vertical direction to effectively
clean the inside wall of the conduit. The apparatus may
optionally include a plurality of nozzles provided in an upper
portion of the shaft for spraying a fluid for more effectively
cleaning the substances on the inside wall while the scraping
elements frictionally engage the substances. [(See col. 3, l. 61
to col. 4, l. 3.)]

5. Lee’s Figures 3 and 4 illustrate such apparatus as shown below:

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The cleaning apparatus 60 is defined by a shaft 64 with its lower portion 68
mounted to a drive means (motor) 76 for up and down movements and to a
rotary motor 74 for rotating and/or oscillating movements and its upper
portion 66 having fluid nozzles 78 attached to a plurality of scraping
elements 72 for cleaning the inside wall 46 of the exhaust conduit 54 (col. 4,
ll. 7-61).

PRINCIPLES OF LAW AND ANALYSIS
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As stated in Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983):
Anticipation requires the presence in a single prior art
disclosure of all elements of a claimed invention arranged
as in the claim. . . . A prior art disclosure that 'almost' meets
that standard may render the claim invalid under § 103;
it does not 'anticipate.'
A sustainable obviousness rejection must be accompanied by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987). “All
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words in a claim must be considered in judging the patentability of that
claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970).
During examination, all words in a claim are normally given their
broadest reasonable construction consistent with the Specification. In re
Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In
other words, the broadest meaning that can be imputed to the words in a
claim must be reasonable and consistent with the Specification. In re Fout,
675 F.2d 297, 300 (CCPA 1982) (“Claims must always be read in light of
the specification. Here the specification makes plain what the appellants did
and did not invent . . .”); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (“The specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.”)
When the meaning of words in a claim, for example, is either implicit
or explicit in the Specification, such meaning is given. Philips v. AWH
Corp., 415 F.3d at 1321(“the specification is ‘the single best guide to the
meaning of a disputed term,’ and that the specification ‘acts as a dictionary
when it expressly defines terms used in the claims or when it defines term by
implication’”); Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d
1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not provided in
explicit definitional format, 'the specification may define claim terms 'by
implication' such that the meaning may be 'found in or ascertained by a
reading of the patent documents'.”).
Claim 1, as presently written, is directed to a process system
comprising a process chamber, a motive driver, and a flexible abrading
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element disposed in the process chamber, with one of its ends being free
ended and the other end being attached to the motive driver for a rotational
driven movement within the process chamber. The claimed flexible
elongate abrading element is defined at page 5, paragraph 0043, of the
Specification as “a wire, fiber, filament, cord, strand, ribbon, chain (linked
or otherwise segmented article), whip, or other elongate member that is
deployed in a free-end arrangement.”
The claimed flexible abrading element is further recited as having
an elongate contacting surface of sufficient length to
concurrently engage a substantial portion of the longitudinal
length of the gas contacting surface [of the process chamber]
. . . so that the elongate contacting surface of the abrading
element engages said gas-contacting surface during said
rotational driven movement to abradingly remove particulate
solids therefrom. [(See claim 1.)]

The terms “sufficient length” and “a substantial portion of the longitudinal
length” in claim 1 are words of degree and require us to consult the
Specification to define the scope and meaning of the terms. CCS Fitness,
Inc. v. Brunswick Corp., 288 F.3d 1359, 1365-67 (Fed. Cir. 2002) (When the
claim term chosen by a patent applicant deprives a claim of clarity, one must
resort to other intrinsic evidence of a definite meaning); see also Seattle Box
Co. Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984) (“When a word of degree is used the district court must determine
whether the patent’s specification provides some standard for measuring that
degree.”). The claimed sufficient length of the flexible elongate abrading
element is defined at page 6, paragraph 0045, of the Specification as 20% to
50% longer than the longitudinal interior dimension of the process chamber.
The claimed substantial portion of the longitudinal length, as illustrated in
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Figure 1, refers to the entire or almost entire interior longitudinal length of
the process chamber. As shown by Figure 1, for the flexible elongate
abrading element having a sufficient length to concurrently engage a
substantial portion of the longitudinal length of the interior surface of the
process chamber as recited in claim 1, the entire or almost entire “sufficient
length” of the flexible elongate abrading element must serve as an elongate
abrading contacting surface against the interior wall of the process chamber
to suppress deposition and accumulation of particulate solids thereon. See
also Intel Corp. v. U.S. Intern. Trade Comm'n, 946 F.2d 821, 832 (Fed. Cir.
1991) (functional limitations in an apparatus claim are interpreted as
requiring the claimed apparatus to possess the capability of performing the
recited functions).
Having interpreted claim 1 as indicated supra, we now compare the
claimed subject matter with the prior art references, i.e., Alonso and Lee,
relied upon by the Examiner. Upon making such a comparison, we concur
with Appellants that the Examiner has not carried the burden of establishing
a prima facie case of anticipation or obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.”). Specifically, we determine that the Examiner has
not demonstrated that Alonso alone, or in combination with Lee, teaches or
would have suggested a flexible elongate abrading element having a
sufficient length (i.e., 20% to 50% longer than the longitudinal interior
dimension of a process chamber) placed in the process chamber with one of
its ends being attached to a rotating means and the other being free-ended to
provide the abrading whipping (implying the entire or almost entire length of
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the abrading element being an elongate abrading contact surface) of the
entire or almost entire interior wall surface of the process chamber.
Accordingly, we reverse the Examiner’s rejections under § 102 and
§ 103.
ORDER
In view of the foregoing, the decision of the Examiner is reversed.

REVERSED

cam

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