Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardMay 31, 201613149085 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/149,085 05/31/2011 23117 7590 06/02/2016 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 06/02/2016 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 Exparte ROBERT A. MILLER, RYAN L. DEAR, and JEFFREY A. JONES 1 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 APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1--4 and 8-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to a method of making a vacuum insulating glass unit. E.g., Spec. ,-i l; Claim 1. Claim 1 is reproduced below from page 15 (Claims Appendix) of the Appeal Brief: 1 According to the Appellants, the Real Party in Interest is Guardian Industries Corp. App. Br. 3. Appeal2014-009000 Application 13/149,085 1. A method of making a vacuum insulating glass (VIG) unit, the method comprising: locating a VIG unit subassembly in close relative proximity to an array of electrodes, the array of electrodes being organized in a plurality of individually activatable plasma-generating elements that are spaced apart from one another, the VIG unit subassembly including first and second substrates separated from one another by a plurality of support spacers and an edge seal, a space being defined between the first and second substrates, and a pump-out port that communicates with the space; and causing plasmas to be present in at least portions of the space between the substrates by selectively activating the elements before and/or during a process of evacuating the space, wherein the electrodes are selectively activated in a sequential manner moving toward the pump-out port so as to cause successive plasma waves to propagate through the space towards the pump- out port. ANALYSIS Claims 1--4 and 8-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Veerasamy et al. (US 2003/0051436 Al, published Mar. 20, 2003) in view of Ellingboe (US 7,342,361 B2, issued Mar. 11, 2008). The Appellants present arguments for claim 1 and separately for claims 10 and 11. We limit our discussion to those claims, and the remaining claims on appeal will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner's rejection. Accordingly, we sustain the rejection for reasons set forth below and by the Examiner in the Final Action and in the Answer. See generally Final Act. 2-5; Ans. 2-3. 2 Appeal2014-009000 Application 13/149,085 Claim 1 The Examiner finds that V eerasamy teaches each element of claim 1 except the array of electrodes that is used to cause successive plasma waves to propagate towards the pump-out port. Final Act. 2. The Examiner finds that, rather than using an array of electrodes, V eerasamy propagates successive plasma waves towards the pump-out port by the use of a coil that moves across the VIG unit. Id. The Examiner finds that Ellingboe teaches a plasma source comprising a plurality of electrodes in which the electrodes may be selectively activated. Id. at 2-3. The Examiner concludes that it would have been obvious to substitute "the single electrode of V eerasamy ... with the plurality of electrodes as taught by Ellingboe because Ellingboe teaches that the plurality of electrodes provides center-to-edge power deposition by electrode spacing and a power distribution design and controlled uniformity profile plasma." Id. at 3. The Examiner further notes that "V eerasamy teaches that the plasma may be ignited by any suitable plasma igniting device ... and substituting the plurality of electrodes as suggested by Ellingboe would propagate the plasma wave as taught by V eerasamy ... without having to move the coil." Id. In the Answer, the Examiner further finds that the proposed modification "would have been a simple substitution of one known element for another to obtain the predictable result of a plasma." Ans. 2. The Appellants first argue that a person of ordinary skill would not have combined V eerasamy and Ellingboe because V eerasamy is directed to an evacuation process while Ellingboe is directed to a deposition process. App. Br. 9-10. We do not find that argument to be persuasive. "A reference must be considered for everything it teaches by way of technology and is not 3 Appeal2014-009000 Application 13/149,085 limited to the particular invention it is describing and attempting to protect." Belden Inc. v. Berk-TekLLC, 805F.3d1064, 1076 (Fed. Cir. 2015) (internal quotation marks and alterations omitted). There is no dispute that both V eerasamy and Ellingboe concern generation of plasma. E.g., V eerasamy ii 26; Ellingboe at 2:34-56. There is no dispute that, while Veerasamy specifically mentions the use of a coil to generate plasma, it also teaches that "any other suitable plasma igniting device" may be used. Veerasamy ii 26. Nor is there any dispute that Ellingboe teaches a plasma source comprising a plurality of electrodes that can be selectivity activated. Ellingboe at Abstract, 1 : 5-8. The use of a known element according to its established function typically does not result in nonobvious subject matter. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."); see also id. at 416 ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). The fact that V eerasamy is directed to an evacuation process while Ellingboe is directed to a deposition process does not persuade us that it would not have been obvious to a person of ordinary skill simply to substitute the known plasma source of Ellingboe for the plasma source ofVeerasamy. See Belden, 805 F.3d at 1076. The Appellants also argue, for essentially the same reasons, that Ellingboe "is not analogous art when it comes to ... the instant application." We disagree. "The Supreme Court's decision in KSR International Co. v. Teleflex, Inc. directs us to construe the scope of analogous art broadly .... " 4 Appeal2014-009000 Application 13/149,085 Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (internal citation omitted). Art is 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." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The Appellants' Specification states that "[a]nother aspect of certain example embodiments relates to techniques for igniting a plasma .... " Spec. ii 8. Like Veerasamy, the Specification states that "plasma may be ignited within the cavity via a coil or any other suitable plasma igniting device .... " Id. ii 34. As set forth above, Ellingboe also concerns generation of plasma, and it discloses a method involving a plurality of electrodes that can be selectively activated to have greater control over the plasma generation. Ellingboe at Abstract, 1 :5-8, 2:40--49. Thus, Ellingboe is reasonably pertinent to the claimed invention because it "logically would have commended itself to an inventor's attention in considering his problem." See Clay, 966 F.2d at 659. The Appellants next argue that the Examiner's stated motivation to combine is inadequate because Ellingboe teaches "an incorrect plasma profile (a standing uniform plasma, as opposed to successive plasma waves moving toward the port) extending in the wrong directions (center-to-edge, as opposed to edge towards the pump-out port)." App. Br. 10-12. We are not persuaded by those arguments because they focus too narrowly on 5 Appeal2014-009000 Application 13/149,085 Ellingboe. CY: Jn re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references."). The Examiner relies on V eerasamy for the teaching of successive plasma waves extending from an edge towards the pump-out port. Final Act. 2 ("V eerasamy teaches propagating a plasma wave through the space towards a pump-out port by moving the coil across the unit . . . . V eerasamy teaches that successive plasma waves may propagate through the space .... "). As the Examiner explains, see Ans. 2, the Examiner is not proposing the use of a uniform plasma profile or center-to-edge plasma propagation in Veerasamy; the Examiner cites Ellingboe's center-to-edge plasma propagation to "show[] that the plasma igniting device is capable of propagating a plasma wave across distance .... V eerasamy explicitly teaches propagating a plasma wave through the space towards the pump-out port .... " Ans. 2. Thus, we do not find the Appellants' argument to be persuasive. In the Reply Brief, the Appellants newly argue that V eerasamy does not teach successive plasma waves. Reply Br. 5. We decline to consider that argument because the Appellants have not established good cause for not raising it until the Reply Brief. See 37 C.F.R. § 41.4l(b)(2). The Appellants' arguments do not persuade us that the Examiner committed reversible error in concluding that the substitution of one known plasma source (taught in Ellingboe) for another (used in Veerasamy) would have been obvious to a person of ordinary skill in the art. See KSR, 550 U.S. at 416-21. We therefore affirm the Examiner's rejection of claim 1. 6 Appeal2014-009000 Application 13/149,085 Claims 10 and 11 The Appellants argue claims 10 and 11 together, so they stand or fall together. Claim 10 depends from claim 1 and further recites "wherein the [plasma-generating] elements are oriented relative to the VIG unit subassembly such that an acute angle is formed between edges of the elements closest to the pump-out port and an adjacent edge of the VIG unit subassembly to which the pump-out port is closest." Figure 10 of the Specification depicts an embodiment of claim 10, showing a top view of an example system including plasma-generating elements 9la through 9ln which form an angle 8 relative to the underlying VIG subassembly. Spec. iJ 63. 23' The Specification discloses that "[t]his angled arrangement may help to move the debris closer to the tube and, thus, out of the cavity." Id. The Examiner finds that Ellingboe's Figure 4 shows "that the electrodes could have an arrangement wherein an acute angle would be formed between edges of the elements and an adjacent edge of the VIG subassembly." Final Act. 4. Figure 4 appears below and is described by Ellingboe as depicting "an alternative arrangement" of electrodes "where the 7 Appeal2014-009000 Application 13/149,085 source could be applied to non-planar plasma volumes." Ellingboe at 5:64- 67; see also Ellingboe at 3:1-2. l' l 400 The Appellants argue that Ellingboe is not concerned with cleaning and that "one would expect failure" from the proposed combination. Id. In the Reply Brief, the Appellants argue that "Ellingboe does not illustrate an acute angle formed between the edges of electrode elements and the workpiece." Reply Br. 5. Those arguments do not persuade us that claim 10 is patentably distinct over the prior art. As stated above, the Examiner finds that Ellingboe's Figure 4 teaches "that the electrodes could have an arrangement wherein an acute angle would be formed between edges of the elements and an adjacent edge of the VIG subassembly." Final Act. 4. While Ellingboe's Figure 4 does not 8 Appeal2014-009000 Application 13/149,085 literally depict a substrate, it shows edges of the electrodes at a variety of angles, at least one of which would be expected to form an acute angle with the edge of a substrate. The Appellants' unembellished statement that Ellingboe does not expressly illustrate such an angle relative to a workpiece is not persuasive of reversible error in the Examiner's rejection. The Appellants' arguments concerning cleaning/sweeping likewise provide no basis to reject the Examiner's conclusion that, in substituting the electrodes of Ellingboe for the plasma source of Veerasamy, it would have been obvious to arrange the electrodes with an acute angle between the electrodes and an adjacent edge of the VIG subassembly-an arrangement the Examiner finds is suggested by Ellingboe. The Appellants' arguments do not persuade us that the use of a known arrangement of electrodes would not have been obvious, even acknowledging that Ellingboe is not concerned with sweeping debris. See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("[T]he law does not require that the references be combined for the reasons contemplated by the inventor."). In that regard, we note that, similar to the Appellants' Specification, Veerasamy expressly teaches cleaning interior cavity surfaces by sweeping contaminants to the pump-out port, and it teaches movement of the coil from the comer of the unit furthest from the pump-out port "diagonally" across the unit towards the pump-out port. V eerasamy ,-i,-i 26, 4 7. Given those teachings, it would have been well within the level of ordinary skill in the art to arrange electrodes in a way that mimics the diagonal movement of Veerasamy's coil in order to achieve Veerasamy's stated cleaning function, including by the use of acute angles, which the Examiner finds is an arrangement suggested by Ellingboe. On this record, we are not persuaded 9 Appeal2014-009000 Application 13/149,085 that it would not have been obvious to a person of ordinary skill in the art to arrange the electrodes as recited by claim 10. We affirm the Examiner's rejection of claims 10 and 11. CONCLUSION We AFFIRM the Examiner's rejection of claims 1--4 and 8-19. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation