Ex Parte May

Patent Trials and Appeals Board

May 9, 2019

12541821 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/541,821 08/14/2009
29747 7590 05/13/2019
GREENBERG TRAURIG (L V)
77 West Wacker Drive, Suite 3100
Intellectual Property Department
Chicago, IL 60601
FIRST NAMED INVENTOR
Wayne A. May
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.
088385.000029 4238
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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):
gtipmail@ gtlaw .com
clairt@gtlaw.com
cadanoc@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE A. MA Y 1
Appeal2018-007629
Application 12/541,821
Technology Center 3700
Before DANIELS. SONG, JAMES P. CAL VE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 1-3, 5, 6, 8, 9, 15-19, 21,
and 25-27 in the present application. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a).
We REVERSE.
1 The Appellant identifies the real party in interest as May-Ruben
Technologies, Inc. Appeal Brief ("App. Br.") 1.
Appeal2018-007629
Application 12/541,821
The claimed invention is directed to a binary fluid ejector, i.e., an
ejector that mixes two dissimilar operating fluids, and a method of operating
such an ejector. Abstract; Spec. ,r,r 2, 6. Independent claim 1 is illustrative
of the claimed subject matter and reads as follows:
1. A binary fluid ejector comprising:
an ejector body defining an inlet, an outlet and a throat
between said inlet and outlet, said ejector body operable to
receive both a primary fluid and secondary fluid, said primary
fluid and said secondary fluid being of the same state and
different material and/or chemical properties; and
a supersonic jet nozzle configured to discharge said
primary fluid, said supersonic jet nozzle configured or shaped to
produce a fluid jet stream of primary fluid having a cross-
sectional aspect ratio greater than one thereby increasing an
interfacial surface area between said primary jet stream fluid and
said secondary fluid.
App. Br. 16 (Claims App 'x, emphasis added).
Independent claim 27 is directed to a refrigeration system that
includes a binary fluid ejector. App. Br. 18 (Claims App'x).
REJECTIONS
1. The Examiner rejects claims 1, 3, 5, 6, 8, 9, 15-17, 19, 21, 25,
and 26 under 35 U.S.C. § 103(a) as unpatentable over Garris (US
2006/0239831 Al, pub. Oct. 26, 2006) in view of Bauer (US 4,596,364, iss.
June 24, 1986). Final Act. 2-3.
2. The Examiner rejects claims 2 and 18 under 35 U.S.C. § 103(a)
as unpatentable over Garris and Bauer in view of Seiner (US 5,579,999, iss.
Dec. 3, 1996). Final Act. 9.
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Appeal2018-007629
Application 12/541,821
3. The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Schlichtig (US 3,199,310, iss. Aug. 10, 1965) in view of
Garris and Bauer. Final Act. 10.
ANALYSIS
Rejection 1
The Examiner rejects claims 1, 3, 5, 6, 8, 9, 15-17, 19, 21, 25, and 26
as obvious over Garris in view of Bauer, finding that Garris discloses a
binary fluid ejector as substantially claimed, but fails to disclose a
"supersonic jet nozzle configured or shaped to produce the fluid jet stream
of primary fluid having the cross-sectional aspect ratio greater than one."
Final Act. 2-3, citing Garris ,r,r 3, 17, 19, 42; Figs. 1, 3, 17; see also Final
Act. 12 ( annotated Fig. 1 of Garris). The Examiner relies on Bauer to
remedy this deficiency, finding that Bauer "teaches: the concept of the
nozzle (7) with a cross-sectional aspect ratio greater than one ( see Tables I
and II: Col 7, lines 49-57 through Col 8, lines 1-55 and Col 10, lines 41-51,
wherein aspect ratio (DM) is greater than one)." Final Act. 3. Accordingly,
the Examiner concludes that it would have been obvious to one of ordinary
skill in the art to have
modif1ied] the supersonic jet nozzle of Garris ... in view of
Bauer . . . such that nozzle configured or shaped to produce the
fluid jet stream of primary fluid having the cross-sectional aspect
ratio greater than one in order to positively affect the overall flow
rate capacity of the ejector (Bauer [] - Col 8, lines 16-25).
Final Act. 3--4.
The Appellant argues, inter alia, that the applied combination of
Garris and Bauer involve non-analogous art because while the device of
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Application 12/541,821
Bauer works on fluids, it is "functionally different in most other respects."
App. Br. 8. 2 In that regard, the Appellant argues that Bauer's high-flow
oscillator is "designed with small size and low frequencies in mind but no
fluid mixing," and "does not and cannot accomplish the mixing of two fluids
or the compression of a fluid." App. Br. 9. Accordingly, the Appellant
argues that "the Garris invention and the Bauer invention are not analogous
with respect to design, function, purpose, operation, or operating principles."
App. Br. 9. We generally agree with the Appellant.
The test for determining whether a prior art reference is analogous art
1s: "(1) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved." In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992).
The record is somewhat confusing as to the Examiner's position on
analogousness. In the Final Action, the Examiner determined that "[i]n this
case, while Bauer '364 is not necessarily in the instant field of endeavor, the
reference nevertheless, seeks to solve the applicant's same problem of
providing/or utilizing a nozzle with a cross-sectional aspect ratio greater
than one." Final Act. 3. We presume this was the reason why the Appellant
2 We note that the Appellant's argument regarding non-analogousness of
Garris and Bauer is confusing because analogousness is considered in the
context and perspective of the Appellant's claimed invention. Nevertheless,
because Garris is an ejector, and there is no dispute that Garris is clearly
within the Appellant's field of endeavor (compare Spec., Fig. 2 with Garris,
Fig. 1), we understand the Appellant's analogous arguments to be directed to
the invention claimed.
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Appeal2018-007629
Application 12/541,821
focused on the design and operational differences of Bauer in the arguments
in its Appeal Brief. However, in response to the Appellant's arguments, the
Examiner states that "Bauer is in the instant field of endeavor, seeking to
solve the Appellant same problem of maximizing jet nozzle fluid output
speed by design choice of the nozzle with an exit area having cross-section
aspect ratio greater than 1." Ans. 3 (citing Bauer, col. 7, 1. 43---col. 8, 1. 25)
( emphasis added). The Answer not only appears to switch the basis for
determining that Bauer is analogous, but also appears to conflate the two
tests pertaining to analogousness noted above.
Regardless, in considering the record, we find the Examiner's
determination that Bauer is analogous art to be deficient. Firstly, as to the
Examiner's subsequent position in the Answer, we agree with the
Examiner's original assessment set forth in the Final Action that Bauer is not
within the Appellant invention's field of endeavor. The Appellant's field of
endeavor is in the field of ejectors and similar devices that draw out and mix
fluids together through flow of fluid. Title; Spec. ,r,r 2--4. In contrast, Bauer
does not disclose an ejector or a fluid device that functions to mix fluids
together.
As to the position in the Final Action that Bauer is not within the
Appellant invention's field of endeavor, but is nonetheless reasonably
pertinent to the problem confronting the inventor, the Examiner does not set
forth what the problem was or how Bauer is reasonably pertinent to
addressing such a problem. In re Clay, 966 F.2d at 659. Instead, the
Examiner determines that Bauer "seeks to solve the applicant's same
problem of providing/or utilizing a nozzle with a cross-sectional aspect ratio
greater than one." Final Act. 3. However, the Appellant was not seeking to
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Application 12/541,821
solve the "problem of providing ... a nozzle with a cross-sectional aspect
ratio greater than one" as stated by the Examiner. Instead, the recited aspect
ratio greater than one is part of the solution devised by the Appellant to
address the problem.
In the above regard, the record indicates that the Appellant was
seeking to increase the efficiency of a fluid ejector when used to mix two
different fluids together. See Spec. ,r,r 4--5, 17 ("shear turbulence
entrainment ejectors suffer from a high level of irreversible energy loss
associated with viscous turbulence at the interfacial boundary of the two
fluids. While pressure exchange ejectors offer an incremental improvement
in energy efficiency, they are still doublet-fluid devices, i.e. the primary and
secondary fluids are differentiated by phase and/or state, and as such,
operate at marginal performance if applied to a binary-fluid refrigeration
cycle."); see also id. ,r 21 ("the embodiments of the present invention are
capable of performing efficiently with dissimilar fluids at higher entrainment
and compression ratios due to its unique geometry, primary jet morphology
and design philosophy.").
Turning again to the subsequent Answer, the Examiner determined
that Bauer "seek[ s] to solve the Appellant same problem of maximizing jet
nozzle fluid output speed by design choice of the nozzle with an exit area
having cross-section aspect ratio greater than 1." Ans. 3 ( citing Bauer, col.
7, 1. 43----col. 8, 1. 25). However, the Examiner does not direct us to where in
the Appellant's Specification this asserted problem is discussed.
Moreover, even if maximizing jet nozzle fluid output speed was a
problem addressed by the Appellant's invention, it is not apparent how
Bauer is reasonably pertinent to this problem. Bauer is directed to a
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Application 12/541,821
compact fluid oscillator that can be used, for example, to spray water in a
toothbrush. Bauer Abst.; Fig. 18. While the Examiner relies on portions of
Bauer for disclosing an aspect ratio greater than one, this disclosure in Bauer
merely provides a list of oscillator nozzle parameters of which aspect ratio is
one of many, and discloses that dimensional variations "are permitted in
some instances while still resulting in practical operation" of the oscillator,
and that such variations "can cause a wide range of performance changes
such as, for instance, output angle, frequency, waveform, spray distribution,
and flow rate capacity." Bauer, col. 7, 1. 43---col. 8, 1. 25. This disclosure in
Bauer is very vague and generic in nature, and pertains to the oscillatory
operation of the disclosed device. This disclosure does not teach a person of
ordinary skill in the art that providing an aspect ratio greater than one would
attain increased or maximum fluid output speed of a jet nozzle. The
rejection appears to be based on impermissible hindsight.
The Examiner also responds that "Bauer is not cited for teaching the
limitations of mixing two fluids or for the purpose to compress a fluid."
Ans. 3. While it may be correct that Bauer is not cited for mixing two fluids
together, that does not establish that Bauer is analogous art.
The Examiner further asserts that "the aspect ratio of the nozzle exit
area of circular cross-section is recognized as a result-effective variable,
i.e.[,] a variable which achieves a recognized result. In this case, the
recognized result is the desired cross-section to have aspect ratio greater
than l ." Ans. 4 (emphasis added). However, this assertion is conclusory
and lacks reasoning as to why a person of ordinary skill in the art would
have sought to modify the circular nozzle, such as that in Garris, to have an
aspect ratio greater than 1.
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Application 12/541,821
In view of the above considerations, we find that the Examiner has not
sufficiently established that Bauer is analogous art, and we reverse Rejection
1. The remaining arguments submitted by the Applicant in support of
patentability are moot.
Rejection 2
The Examiner rejects claims 2 and 18 as obvious over Garris and
Bauer as applied relative to claims 1 and 16 in Rejection 1, further in view
of Seiner. Final Act. 9-10. The Appellant relies on the same arguments
submitted relative to Rejection 1. App. Br. 13-14. Accordingly, we reverse
Rejection 2 for the reasons discussed above relative to Rejection 1. The
remaining arguments of the Applicant submitted in support of patentability
are moot.
Rejection 3
The Examiner rejects claim 27 as obvious over Schlichtig in view of
Garris and Bauer, finding that Schlichtig discloses a refrigeration system as
substantially claimed, but fails to disclose a "binary fluid ejector having a
supersonic jet nozzle ... configured to discharge a fluid stream ... having a
cross-sectional aspect ratio greater than one of mixed gas." Final Act. 11.
The Examiner relies on the ejector of Garris, as modified by Bauer, in the
manner discussed above relative to Rejection 1, to conclude that the claimed
refrigeration system would have been obvious to a person of ordinary skill in
the art. Final Act. 11.
The Appellant, inter alia, relies on the same arguments submitted
relative to the combination of Garris and Bauer with respect to Rejection 1.
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Application 12/541,821
App. Br. 15. The Examiner's findings relative to Schlichtig do not address
the deficiencies of the combination of Garris and Bauer discussed above.
Accordingly, we reverse Rejection 3 for substantially similar reasons
discussed above relative to Rejection 1. The remaining arguments of the
Applicant submitted in support of patentability are moot.
DECISION
The Examiner's rejections are REVERSED.
REVERSED
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