Ex Parte McLean et al

Patent Trial and Appeal Board

Sep 19, 2016

12654651 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/654,651 12/28/2009
23117 7590 09/21/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
David D. McLean
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.
JAR-3691-1879 5794
EXAMINER
KITT, STEPHEN A
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID D. MCLEAN and RY AN L. DEAR
Appeal2015-000405
Application 12/654,651
Technology Center 1700
Before JEFFREY T. SMITH, RICHARD M. LEBOVITZ, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims comprising flame guard and exhaust
system for use in a combustion deposition depositing system. The Examiner
finally rejected the claims as obvious under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 134. The Examiner's rejection is affirmed-in-
part.
STATEMENT OF CASE
Claims 1-18 stand rejected by the Examiner. Final Rej. 2. Appellants
appeal from the final rejection. Claim 1 is representative and reads as
follows:
1. A flame guard and exhaust system for use in a combustion
deposition depositing system for forming a coating on a
Appeal2015-000405
Application 12/654,651
substrate via at least one flame of at least one burner, the flame
guard and exhaust system comprising:
an external baffle;
an internal baffle spaced apart from the external baffle,
the internal baffle to be closer than the external baffle to the at
least one burner;
an exhaust duct located over the external and internal
baffle; and
first and second walls to be respectively provided at
opposing ends of the at least one burner and joining the external
baffle to the internal baffle so as to form a continuous boundary
of the exhaust duct such that air that flows into the duct must
pass between the external baffle and internal baffle,
wherein the external baffle is sized and positioned to (1)
reduce an amount of air flow into a deposition area proximate
to the at least one flame during operation of the combustion
deposition depositing system and (2) serve as a most external
wall of the exhaust duct, and
wherein the internal baffle is sized and positioned to ( 1)
at least partially confine the deposition area to the area
immediately under the at least one burner face during operation
of the combustion deposition depositing system and (2) provide
an internal wall of the exhaust duct.
REJECTION
There are three independent claims on appeal: claims 1, 9, and 18.
All the rejected claims are drawn to a combustion deposition depositing
system for forming a coating on a substrate via at least one flame of at least
one burner. The claims each comprise "[a] flame guard and exhaust system"
comprising internal and external baffles. The system further comprises:
first and second walls to be respectively provided at opposing
ends of the at least one burner and joining the external baffle to
the internal baffle so as to form a continuous boundary of the
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Application 12/654,651
exhaust duct such that air that flows into the duct must pass
between the external baffle and internal baffle.
Independent claim 9 requires "a burner configured to create a flame"
to accomplish combustion deposition with the flame. A burner with a flame
is not a part of independent claim 1 and 18. Claims 1 and 18 are directed to
only the flame guard and exhaust system.
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) (pre-
AIA) as obvious in view of Bartholomew et al. (U.S. Pat. No. 6,056,824,
patented May 2, 2000) ("Bartholomew") and Wojak (U.S. Publ. Pat. App.
No. 2006/0127599Al, publ. June 15, 2006). Final Rej. 2.
The Examiner found that Bartholomew describes a guard and exhaust
system with all the limitations of claims 1, 9, and 18. Final Rej. 2-3. The
Examiner found that Bartholomew's guard and exhaust system was for a
chemical vapor deposition ("CVD") injector, not for a flame of a burner
utilized in combustion deposition. Id. at 3. For this feature, the Examiner
relied upon the teaching in Wojak of a torch burner with a flame. Id. The
Examiner determined that it "would have been obvious for one of ordinary
skill in the art to use the torch of Wojak as the gas injector of Bartholomew
et al., because Wojak teaches that the use of a combustion torch for
combustion CVD is well known (par. 65)." Id.
Appellants contend that the Examiner did not provide a sufficient
reason to have combined Bartholomew with Wojak. Appeal Br. 10.
Appellants also argue that Bartholomew does not describe "first and second
walls to be respectively provided at opposing ends of the at least one burner
and joining the external baffle to the internal baffle so as to form a
continuous boundary of the exhaust duct." Id. at 14--16.
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Appeal2015-000405
Application 12/654,651
Claims 1 and 18
The preamble of claims 1 and 18 recite that the "flame guard and
exhaust system" is "for use in a combustion deposition depositing system for
forming a coating on a substrate via at least one flame of at least one
burner." The body of claims 1 and 18, however, do not require a flame
burner.
"Preamble language that merely states the purpose or intended use of
an invention is generally not treated as limiting the scope of the claim."
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). However,
the preamble is regarded as limiting if it recites essential structure that is
important to the invention or necessary to give meaning to the claim. NTP,
Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305---06 (Fed. Cir. 2005),
cert. denied, 546 U.S. 1157, 126 S. Ct. 1174 (2006). In this case, we have
not been directed to evidence that the preamble is a "necessary and defining
aspect of the invention" rather than simply being "an introduction to the
general field of the claim." On Demand Mach. Corp. v. Ingram Indus., 442
F.3d 1331, 1343 (Fed. Cir. 2006). Consequently, we treat claims 1and18 as
directed to a "flame guard and exhaust system" without regard to a flame
burner because a burner is not required by the claims.
Appellants dispute the Examiner's finding Bartholomew describes a
guard and exhaust system with a wall joining the internal and external
baffles as required by the claims. Appeal Br. 14.
The Examiner identified two alternative structures in Bartholomew as
meeting the limitation of "walls ... joining the external baffle to the internal
baffle so as to form a continuous boundary of the exhaust duct."
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Appeal2015-000405
Application 12/654,651
First, the Examiner found that the shield bodies ( 140c,d) in
combination with the side walls (164) or end walls (162) form a continuous
boundary of the exhaust duct of Bartholomew's shield, as required by the
independent claims. Answer 8; Final Rej. 2.
Second, the Examiner found that the shield bodies (140c,d), walls
(164), and exhaust path (68) in Bartholomew's shield shape the air moving
into the vent and form a continuous boundary as required by the claims. Id.
With respect to this finding, the Examiner erred because the claim requires a
"wall" and it is not reasonable to read a wall to be formed from an exhaust
path, which is an empty space. Consequently, we tum to the issue of
whether side wall 164 or end wall 162 of Bartholomew's shield are "joining
the external baffle to the internal baffle [Bartholomew's shield bodies] so as
to form a continuous boundary of the exhaust duct."
We begin with describing Bartholomew's shield. Bartholomew
teaches a protective shield for a gas injector in CVD processing.
Bartholomew, Abstract. Fig. 16 of Bartholomew shows the elements
referred to by the Examiner in setting forth the basis of the rejection. Fig. 16
is reproduced below, with labels added to identify elements of it.
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Appeal2015-000405
Application 12/654,651
:::.x~~:r~~~: ~.~:-').~fa.~·~
-~ .'~~::,~. ,~
Fig. 16 is a cross-sectional view of a shield assembly (Bartholomew,
col. 5, 11. 12-13) showing shield bodies 140a,b which serve as internal
baffles, shield bodies 140c,d which serve as external baffles, side walls 164,
exhaust path 50 between the internal and external baffles, and exhaust path
68 between the side wall 164 and external baffles 140c,d. The end wall 162
is not shown in Fig. 16.
The claims require the "first and second walls to be respectively
provided at opposing ends of the at least one burner and joining the external
baffle to the internal baffle so as to form a continuous boundary of the
exhaust duct such that air that flows into the duct must pass between the
external baffle and internal baffle" (emphasis added). The Examiner found
side wall 164, on each side, is a "wall" joining the internal and external
baffles. Answer 8. However, Fig. 16 does not show side wall 164 forming a
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Appeal2015-000405
Application 12/654,651
continuous boundary with the external batlle 140c,d. As argued by
Appellants, there is an exhaust path 68 between side wall 164 and the
external baffles 140c,d. Fig. 4 shows the same configuration where the side
walls (64) are separated from the external baffle (40c,d). Consequently, side
wall 164 does not meet the recited limitation.
Fig. 20A, containing end wall 162, was also referenced by the
Examiner as showing the required continuous boundary formed by the walls.
Final Rej. 2. Fig. 20A is reproduced below (with labels added):
FIG_20A
~r-.x~t p~:~:~ ;.,-:,~·:.:·..:· ~-:-~ ;n~;.~'"~~= ~.~,-:~::
')i ~::"'.:-..~·~bid~-~ ~>:»:·;"~::-)3~:•!•:· :;)f F~~} --t~~-
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Appeal2015-000405
Application 12/654,651
Fig. 20A shows end wall 162, on each side, forming a "continuous
boundary" with the internal and external baffles (positioned in recesses 190
and 189, respectively). Bartholomew, col. 19, 11. 10-24. See also Fig. 4
reproduced below showing first and second end walls 62 on either side of
gap 46.
The claim also requires that the end wall is structured "such that air
that flows into the duct must pass between the external baffle and internal
baffle." Fig. 4, reproduced below, illustrates this function:
F/G_4
End wall 62 (the same as end wall 162 in Fig. 20a) joins the internal
(40a) and external baffles (40c) forming "a continuous boundary of the
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Appeal2015-000405
Application 12/654,651
exhaust duct." The end wall 62, by holding the baffles in place, is
positioned "such that air that flows into the duct must pass between the
external baffle and internal baffle." In other words, exhaust air from the
bottom of the assembly must pass between the internal and external baffles
because of the way the joining end wall 62 holds them in place. Appellants
appear to have interpreted the phrase "must pass" to require that it be the
only air flow passage. Appeal Br. 15. However, Appellants have not
directed us to language in the claim that would require only one air passage
in the shield, and to exclude an air passage between the side walls and
external baffle as shown in Figs 4 and 16.
For the foregoing reasons, we affirm the rejection of claims 1 and 18.
Claims 2--4, 7, and 8, which depend from claim 1, fall with claim 1, because
separate reasons for their patentability were not provided. 37 C.F.R. §
41.37(c)(iv).
Claim 5
Claim 5 further requires "wherein the internal and external baffles are
height adjustable independent of one another." The Examiner found that the
baffles are "clearly capable of being moved vertically independent to one
another." Final Rej. 4. The Examiner stated that because the claims "do not
disclose any specific structure for moving the baffles, it is very broad, and
can be taken to mean for instance, that the system can be dismantled and the
shields can be moved vertically relative to each other by a technician." Id.
We cannot sustain this rejection. As urged by Appellants, the end
wall 162 (see Fig. 4 above) has recesses 189 and 190 which would prohibit
adjustment of the baffles (shields 40a,b and 40c,d). Appeal Br. 17-18. The
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Application 12/654,651
Examiner did not explain how such adjustment would be achieved in view
of their attachment to the end wall. The rejection of claim 5 is reversed.
Claim 6
Claim 6 further comprises "insulation provided to the exhaust duct
and/or the flame guard and exhaust system in its entirety." The Examiner
relied upon the presence of insert gas in the plenums 78, 100 of the shields
of Bartholomew as providing heat insulation. Final Rej. 4.
As argued by Appellants, the Examiner did not establish that the gas
provided by Bartholomew is an insulator. Appeal Br. 18. To the contrary,
the Examiner acknowledged that "heat can be transferred through gas by
convection." Answer 9. However, the Examiner stated-without factual
basis - that "gas barrier is inherently much more insulating than a solid
barrier, therefore since the baffles have inert gas plenums instead of being of
solid construction, they are inherently more insulating than a solid baffle
would be." Id. Because the Examiner reasoning lacked factual basis, we are
compelled to reverse the rejection of claim 6.
Claim 9
Claim 9 requires the presence of a burner in the flame guard and
exhaust system, "wherein the flame guard and exhaust systems are provided
on opposing sides of the burner."
In making an obviousness determination, "it will be necessary ... to
look to interrelated teachings of multiple patents ... and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
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Application 12/654,651
elements in the fashion claimed by the patent at issue." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Examiner found:
It would have been obvious for one of ordinary skill in the art to
use the torch of Wojak as the gas injector of Bartholomew et
al., because Wojak teaches that the use of a combustion torch
for combustion CVD is well known (par. 65) and simple
substitution of one known element for another is not a
patentable advance (MPEP 2143B), nor is trying from a finite
number of possible elements (MPEP 2143E).
Answer 3.
Appellants contend that the Examiner did not provide an adequate
reason as to why the skilled worker would have replaced the injector 14 of
Bartholomew with the oxyacetylene torch 100 of Wojak. Appeal Br. 10.
Appellants argue that replacing Bartholomew's injection with a flame is not
"simple substitution" because "the injector 14 of Bartholomew performs a
different function than the oxyacetylene torch 100 of Wojak." Reply Br. 3.
The Examiner did not provide an adequate reason to combine
Bartholomew with Wojak. Bartholomew is directed to a chemical vapor
deposition system using a gas injector with a shield assembly that provides a
number of different functions, including to provide gas paths and minimize
"recirculation of the reactant gases within the chamber while protecting the
exhaust vent path surfaces." Bartholomew, col. 3, 11. 1-17. The Examiner
did not establish that any of the functions are necessary when Wojak's flame
replaces Bartholomew's injector.
In sum the rejection of claim 9, and dependent claims 10-1 7, is
reversed.
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Application 12/654,651
SUMMARY
The obviousness rejection of claims 1--4, 7, 8, and 18 is affirmed.
The obviousness rejection of claims 5, 6, and 9-17 is reversed.
TIME PERIOD
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-IN-PART
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