Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardAug 11, 201613149085 (P.T.A.B. Aug. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/149,085 05/31/2011 23117 7590 08/15/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Robert A. MILLER 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-3691-2366 1773 EXAMINER SZEWCZYK, CYNTHIA ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 08/15/2016 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 ROBERT A. MILLER, RYAN L. DEAR, and JEFFREY A. JONES Appeal2014-009000 Application 13/149,085 Technology Center 1700 Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellants filed a Request for Rehearing ("Request" or "Req.") under 37 C.F.R. § 41.52 seeking reconsideration of our Decision dated June 2, 2016 (the "Decision"), in which we affirmed the Examiner's rejection of claims 1--4 and 8-19. We DENY the Request. ANALYSIS A Request for Rehearing "must state with particularity the points believed to have been misapprehended or overlooked by the Board." 37 C.F.R. § 41.52(a). It may not rely upon new evidence or new arguments except as permitted by§ 41.52 paragraphs (a)(2) though (a)(4). Id. A Appeal2014-009000 Application 13/149,085 Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief. Mere disagreement with the Board's Decision is not a proper basis for rehearing. The Appellants' Request expresses disagreement with the Board's affirmance of the Examiner's finding that the Ellingboe prior art reference is analogous art. See Req. 1-7. Although the Appellants purport to identify teachings of the references and Specification that the Board allegedly overlooked or misapprehended, significant portions of the Request simply elaborate on the arguments presented in the Appeal Brief, see App. Br. 10, and Reply Brief, see Reply Br. 2--4. In the Appellants' opening Appeal Brief, following an explanation of certain differences between Ellingboe and Veerasamy concerning motivation to combine, the Appellants only briefly addressed the issue of whether Ellingboe is analogous to the claimed invention. See App. Br. 9-10. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), a case upon which the Request relies heavily, was not cited. See App. Br. 9-10. Although the Reply Brief included additional argument regarding analogous art, it cited Klein only for its recitation of the familiar two-prong analogous art test. See Reply Br. 2--4. Nevertheless, we now address the arguments raised in the Request and, for reasons stated below, do not find them to be persuasive. The analogous art test considers the threshold question of whether a prior art reference is "'too remote to be treated as prior art."' In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). As set forth in the Decision, see Dec. 4--5, "[t]he Supreme Court's decision in KSR International Co. v. Teleflex, Inc. directs us to construe the scope of analogous art broadly .... " Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (internal citation omitted). Art is 2 Appeal2014-009000 Application 13/149,085 analogous to the claimed invention if ( 1) the art is "from the same field of endeavor, regardless of the problem addressed," or (2) the art is "reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). "A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." Clay, 966 F.2d at 659. The Appellants essentially argue that Klein narrowed the scope of analogous art in a way that supports their position that Ellingboe is nonanalogous art. See Req. 1-3. Klein, however, does not purport to alter the precedent set by prior Federal Circuit cases. Those prior cases establish that the second prong of the analogous art test requires only that the art is "reasonably pertinent to the particular problem with which the inventor is involved." See, e.g., Bigio, 381 F.3d at 1325. Klein itself reiterates that test. See Klein, 647 F.3d at 1348. In particular, the Appellants argue that, after Klein, in identifying "the particular problem with which the inventor is involved," see Bigio, 381 F.3d at 1325, "the problem to be solved cannot be framed broadly when the specification is specific in its purpose. . . . Instead, the problem faced by the inventors as reflected in the patent specification should be considered when assessing this prong of the analogous art test," Req. 2. We agree with the Appellants that the problem faced by the inventors should be considered when assessing the "reasonably pertinent" prong of the analogous art test. However, that does not necessarily mean that the prior art must serve the same purpose or address the same problem as that addressed 3 Appeal2014-009000 Application 13/149,085 by the inventors. As the plain language of the case law states, the prior art need only be "reasonably pertinent" to the problem. Here, the inventors address the problem of cleaning a vacuum insulating glass cavity. More specifically, they address the problem of cleaning a vacuum insulating glass cavity by use of "plasma-enhanced evacuation techniques." E.g., Spec. i-fi-f l, 34 ("[P]lasma ignited within the cavity functions to help clean interior cavity surfaces .... "). As the Specification confirms, an important consideration of the inventors in addressing that problem was the method by which the plasma is ignited and propagated through the cavity. See Spec. i1 8 ("Another aspect of certain example embodiments relates to techniques for igniting a plasma within the internal cavity of a thermally insulating panel ... during the evacuation process, in order to speed up and/or improve the process of evacuation."). The Specification states that "[t]he plasma may be ignited within the cavity via a coil or any other suitable plasma igniting device located at least partially outside of the cavity." See Spec. i134 (emphasis added). One such device disclosed by the Appellants is "an array of electrodes, with the array of electrodes being organized in a plurality of individually activatable plasma-generating elements that are spaced apart from one another." Spec. i-f 12; Claim 1. Ellingboe does not address the problem of cleaning a vacuum insulating glass cavity. Ellingboe is titled "Plasma Source," and the Appellants do not dispute that Ellingboe teaches a plasma source that is capable of propagating plasma between two substrates by selectively activating individual electrodes from among a plurality of electrodes. In assessing the problem with which the inventors were involved, and in 4 Appeal2014-009000 Application 13/149,085 considering suitable plasma sources for "plasma-enhanced evacuation techniques," see Spec. i-fi-11, 34, it is reasonable to believe that an inventor would have researched and been aware of references relating to the use of electrodes to propagate plasma between two substrates. In other words, even when the problem with which the inventors were involved is framed narrowly, as urged by the Appellants, generation of plasma remains an important consideration, and Ellingboe "logically would have commended itself to an inventor's attention in considering" the problem of cleaning vacuum insulating glass with plasma. See Clay, 966 F.2d at 659. That is so because a person of ordinary skill in the art considering plasma sources reasonably would have been expected to come across references disclosing relevant plasma sources, even if those references were not related to vacuum insulating glass. See KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) ("[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."). That is especially true given that both Veerasamy and the Appellants' Specification expressly state that "any ... suitable plasma igniting device" may be used to ignite the plasma. See Spec. ,-r 34; Veerasamy i-f 26. Those statements would have invited a person of ordinary skill in the art to research plasma sources generally. The Appellants do not persuasively dispute that the substitution of Ellingboe' s plasma source for Veerasamy' s plasma source would have been within the ordinary level of skill in the art. Nor do they provide any evidence or persuasive technical reasoning to suggest that a person of ordinary skill in the art would not reasonably have expected Ellingboe's plasma source to function properly in combination with Veerasamy. 5 Appeal2014-009000 Application 13/149,085 In Klein, the problem at issue was "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals." Klein, 647 F.3d at 1347 (internal quotation marks omitted). The Federal Circuit determined that three of the relied-upon prior art references were nonanalogous because "[t]he purpose of [each reference] is to separate solid objects" (emphasis added), while the inventors were concerned with mixing components. Id. at 1350-51. Moreover, the Federal Circuit noted that the containers of those three references were not "adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments," which was an important component of the claimed invention. See id. Thus, the Federal Circuit determined that an inventor would have had little or no reason to look to those references in addressing the problem. See id. The Federal Circuit disagreed with the Board's determination concerning two other references at least partially because "the Board did not set forth any reasoning in support of its finding that [the two references] are analogous." See id. at 1352. By contrast, an important aspect of the problem faced by the inventors in this case was the generation of plasma. Ellingboe is directly relevant to the generation of plasma and discloses plasma sources. In view of that and the fact that the Appellants' Specification makes clear that plasma generation and propagation are important aspects of the problem with which the inventors were involved, we decline to find that Ellingboe is "too remote" from the issues faced by the inventors "to be treated as prior art." See Clay, 966 F.2d at 658. To the extent that the Appellants suggest that a prior art reference must be relevant to "the entirety of the problem to be solved" in order to be analogous, see Req. 3, we disagree. A reference can 6 Appeal2014-009000 Application 13/149,085 be reasonably pertinent to a problem if it relates to an important component of the problem such that the reference logically would have commended itself to an inventor considering the problem. See Clay, 966 F.2d at 659. It is not a requirement that the reference address the same problem, serve the same purpose, or be from the same field of endeavor. Cf KSR, 550 U.S. at 417 ("When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability."). Contrary to the Appellants' arguments, the Decision does not hinge on an impermissibly broad interpretation of either the purpose of the Appellants' disclosure or the purpose of Ellingboe' s disclosure. See, e.g., Req. 4--5. As explained above, the Decision relies, among other things, on the fact that generation and propagation of plasma would have been important considerations to an inventor addressing the problem at issue here. In assessing issues relating to generation and propagation of plasma, a reference such as Ellingboe logically would have commended itself to an inventor's attention. The Circuit Check case relied upon by the Appellants does not conflict with the foregoing analysis. See Req. 5---6 (citing Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1336 (Fed. Cir. 2015)). In that case, the Federal Circuit considered, among other things, whether any rational jury could have concluded that various prior art references were nonanalogous art. See Circuit Check, 795 F.3d at 1334--35. The issue before us is different: Whether a preponderance of the evidence supports the Examiner's finding that a reference is analogous art. At issue in Circuit Check, for 7 Appeal2014-009000 Application 13/149,085 example, was whether rock carvings would have been reasonably pertinent to circuit testers. See id. at 1333-34. At issue here is whether a reference disclosing a relevant plasma source would have been reasonably pertinent to an inventor considering plasma sources for cleaning vacuum insulating glass. For reasons set forth in the Decision, see Dec. 4--5, and as further explained above, we continue to agree with the Examiner's finding that Ellingboe constitutes analogous art. CONCLUSION The Appellants' request has been granted to the extent that the Decision has been reconsidered, but, for the reasons set forth above, the request is DENIED with regard to modifying the result of the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 8 Copy with citationCopy as parenthetical citation