Ex Parte Oh et al

Patent Trial and Appeal Board

Sep 12, 2016

12314962 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/314,962 12/19/2008
9629 7590 09/14/2016
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA A VENUE NW
WASHINGTON, DC 20004
FIRST NAMED INVENTOR
Tae Young Oh
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.
041501-5764 9823
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
patents@morganlewis.com
karen.catalano@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAE YOUNG OH, HUI JAE LEE,
GEON YONG KIM, and EUN HA LEE
Appeal2014-009273
Application 12/314,962
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 7, 8, and 15. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2014-009273
Application 12/314,962
THE INVENTION
Appellants' invention relates to a washing device for substrates.
Spec. i-f 2. Claim 1 (below with emphasis added) is illustrative of the subject
matter on appeal.
1. A washing device, comprising:
a substrate entry guiding unit which guides a substrate supplied
from the outside to be entered in a correct direction;
a dirt removing unit receiving the substrate from the substrate entry
guiding unit and removing dirt formed on the substrate;
a dirt washing unit receiving the substrate from the dirt removing
unit and washing off residual dirt remaining on the substrate; and
a position controlling unit controlling position of the substrate
being unloaded from the dirt washing unit,
wherein the dirt washing unit comprises an upper dirt washing unit
and a lower dirt washing unit facing each other at a predetermined gap
and thereby forming a moving space for passage of the substrate,
wherein the upper dirt washing unit jets air toward the moving
space and also draws in the jetted air, and the lower dirt washing unit
jets air toward the moving space and draws in the jetted air;
wherein the air jetted from the upper dirt washing unit is jetted in
vertical direction with respect to an upper surface of the substrate,
wherein the air jetted from jetted the lower dirt washing unit is
jetted in vertical direction with respect to an lower surface of the
substrate,
wherein the air drawn by the upper dirt washing unit is drawn in
vertical direction with respect to the upper surface of the substrate,
wherein the air drawn by the lower dirt washing unit is drawn in
vertical direction with respect to the lower surface of the substrate,
wherein the jetting force is greater than the drawing force,
wherein the upper dirt washing unit jets deionized water toward the
moving space, and generates foam by combining the jetted deionized
water and air, thereby removing the dirt formed on the upper surface of
the substrate passing through the moving space,
wherein the lower dirt washing unit jets deionized water toward the
moving space, and generates foam by combining the jetted deionized
water, thereby removing the dirt formed on the lower surface of the
substrate passing through the moving space,
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Application 12/314,962
wherein the upper and the lower dirt washing units discharge the
jetted deionized water to the outside using the drawn air,
wherein the upper and the lower dirt washing units are made of a
porous material comprising at least one hole passing therethrough,
such that the outside air can be jetted to the moving space, penetrating
the upper and lower dirt washing units,
wherein the upper and the lower dirt washing units each includes a
plurality of suction holes which draw the air, and a plurality of jetting
holes which jet the deionized water,
wherein the plurality of suction holes of the upper dirt washing unit
are formed penetrating the upper dirt washing unit, and directed to the
movmg space,
wherein the plurality of suction holes of the lower dirt washing unit
are directed to the moving space, penetrating the lower dirt washing
unit,
wherein the dirt removing unit comprises an upper dirt removing
unit and a lower dirt removing unit facing each other at a
predetermined distance to form a moving space for passage of the
substrate,
wherein the upper dirt removing unit removes the dirt formed on an
upper surface of the substrate through a physical contact,
wherein the lower dirt removing unit removes the dirt formed on a
lower surface of the substrate through a physical contact,
wherein the upper dirt removing unit repeatedly moves in a forward
and backward direction or in a lateral direction to be parallel with the
upper surface of the substrate, and
wherein the lower dirt removing unit repeatedly moves in a forward
and backward direction or in a lateral direction to be parallel with the
lower surface of the substrate.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Van Wormer
Croft
Bard
Uzawa
Wakao
us 1,947,748
us 2,395,397
us 5,289,639
us 5,457,847
US 2005/0044653 Al
3
Feb.20, 1934
Feb.26, 1946
Mar. 1, 1994
Oct. 17, 1995
Mar. 3, 2005
Appeal2014-009273
Application 12/314,962
The following rejections are before us for review:
1. Claims 1-3, 7, 8, and 15 are rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
2. Claims 1-3, 7, 8, and 15 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as their invention.
3. Claims 1, 2, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Van Wormer, Wakao, and Bard.
4. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Van Wormer, Wakao, Bard, and Croft.
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Van Wormer, Wakao, Bard, and Uzawa.
OPINION
Lack of Enablement
Claim 1, the only independent claim and from \vhich all other claims
depend, contains limitations directed to a "porous material" that comprises at
least "one hole" that passes therethrough. Claims App. 1 The claim further
requires that the porosity is such that outside air can be "jetted" to the
1 As last amended prior to appeal, the limitation at issue read: "the upper
and the lower dirt washing units are made of a porous material such that the
outside air can be jetted to the moving space, penetrating the upper and
lower dirt washing units." See Amendment (dated Jan. 11, 2013),
3. That is, the claim did not recite "at least one hole passing therethrough"
in connection with the jetted water limitation. Thus, the Appeal Brief
Claims Appendix does not faithfully present the rejected claim on appeal.
This does not affect our decision, which is based on the claim requirement
for the porosity of the material to be such that outside air can be "jetted" to
the moving space.
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Appeal2014-009273
Application 12/314,962
moving space, thereby "penetrating the upper and lower dirt washing units."
Id. The Examiner determines that Appellants fail to provide any specific
materials that possess the porous property so claimed. Final Action 2. The
Examiner observes that there are several ways by which a material may be
porous. Id. The Examiner determines that the term "porous" suggests
properties that render a material capable of passing air or liquid. Id. The
Examiner contrasts such property with holes that are formed by an absence
of material. Id. Thus, the Examiner concludes that Appellants' application
lacks adequate disclosure of the claimed "porous" material that would
enable a person of ordinary skill in the art to make the claimed invention.
Id.
Appellants traverse the Examiner's rejection by arguing that a porous
material is one through which outside air can be jetted to the moving space.
Appeal Br. 8. Appellants identify cellophane as a porous material. Id.
Appellants refer to three non-applied references for examples of porous
materials. Id. at 8-9.2 Appellants also provide an on-line dictionary
definition of "porous" as meaning "full of pores and permeable by water, air,
etc." Id. at 9. 3 Appellants express a belief that the claimed "porous"
material is generally well known to someone of ordinary skill. Id.
In response, the Examiner points out, correctly, that cellophane is not
actually disclosed in Appellants' application. Ans. 11. The Examiner rebuts
2 Appellants cite to Yamada (US 4,449,992, iss. May 22, 1984); Usui
(US 6,536,861 Bl, iss. Mar. 25, 2003); and Young (US 6,585,509 B2, iss.
July 1, 2003). None of these references were supplied in Appellants' Appeal
Brief Evidence Appendix and Appellants' Appeal Brief erroneously refers to
each of these issued patent numbers as "patent application" numbers.
Appeal Br. 8-9.
3 Citing: http://dictionary.reference.com/browse/porous?s=t. Id.
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Application 12/314,962
Appellants' reliance on non-applied art by pointing out that Appellants'
references are not taken from the cleaning field. Id. The Examiner further
finds, and Appellants do not dispute, that none of Appellants' references
disclose a capability of having air "jetted" through their respective porous
materials. Id. The Examiner states that Appellants' non-applied references
tend to support the fact that porous materials do, in fact, exist, but do not
support that someone of ordinary skill in the pertinent art would be familiar
with porous materials as claimed. Id. at 11-12.
The Examiner emphasizes that the application, as a whole, fails to
disclose any structure that would allow air to be "jetted" through the porous
material. Id. at 12. The Examiner further finds that the Specification fails to
disclose any nozzle or orifice for directing air at and through the porous
material or any jet or orifice formed in the porous material. Id. The
Examiner explains that known porous materials would tend to disperse any
jetted air directed therethrough. Id. at 12-13. The Examiner differentiates
between air that merely seeps through porous material and "jetted air" that is
directed through porous material. Id. at 13 .
The Specification is replete with references to "porous" materials.
See Spec. i-fi-f 13, 17, 22, 41, 50, 60, and original claims 4, 8, and 13.
However, claim 1 is not limited to just any porous material. Rather, claim 1
requires that the dirt washing units draw in jetted air and then direct jetted
air in a vertical direction toward the substrate. Claims App. claim 1.
Furthermore, the "jetting force" of air directed onto the substrate is greater
than the drawing force. Id. Thus, the porous material must be of a character
that the cleaning air stream can be "jetted" onto the substrate to be cleaned
after passing through the porous material.
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Application 12/314,962
A patent specification must enable those skilled in the art to make and
use the full scope of the claimed invention without undue experimentation.
35 U.S.C. § 112, i-f 1. Whether a patent claim is enabled is a question of law,
although based upon underlying factual findings. National Recovery
Technologies, Inc., v. Magnetic Separation Systems, Inc. 166 F.3d 1190,
1194 (Fed. Cir. 1999). The enablement requirement ensures that the public
knowledge is enriched by the patent specification to a degree at least
commensurate with the scope of the claims. Id. at 1196. The scope of the
claims must be less than or equal to the scope of the enablement. Id. The
scope of enablement, in tum, is that which is disclosed in the specification
plus the scope of what would be known to one of ordinary skill in the art
without undue experimentation. Id.
It is well-established that a specification need not disclose, and
preferably omits, what is already well known in the art. Streck, Inc. v.
Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012).
Thus, the disclosure of an application embraces not only what is expressly
set forth in words or drawings, but what would be understood by persons
skilled in the art. See In re Howarth, 654 F.2d 103, 106 (CCPA 1981). A
patent applicant "may begin at the point where his invention begins, and
describe what he has made that is new and what it replaces of the old."
Webster Loom Co. v. Higgins, 105 U.S. 580, 586 (1881). "That which is
common and well known is as if it were written out in the patent and
delineated in the drawings." Id. Nevertheless, "the rule that a specification
need not disclose what is well known in the art is 'merely a rule of
supplementation, not a substitute for a basic enabling disclosure.'" Auto.
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Application 12/314,962
Techs. Int'l, Inc. v. BlvnV ofl\!. Am., Inc., 501F.3d1274, 1282 (Fed. Cir.
2007).
The issue presented by Appellants in the instant case is whether
"porous materials" that allow air to be 'jetted" are sufficiently common and
well known as to permit them to form an unwritten part of the disclosure of
the application. Here, Appellants represent that cellophane is an example of
a porous material. Appeal Br. 8. However, Appellants provide no evidence
that a person of ordinary skill in the art would have known that cellophane
could be used in the invention. Appellants' reliance on Yamada, U sui, and
Young is also misplaced as there is no evidence that the porous materials
disclosed therein are capable of supplying "jetted" air in a washing device.
Moreover, there is no evidence that persons of ordinary skill in the art would
have been able to extract a teaching from Yamada, U sui, and Young that
would have enabled them to select an appropriate porous material so that air
could be jetted onto a substrate in a washing device. Finally, Appellants'
reliance on a dictionary definition of "porous" is of no avail as it fails to
differentiate between porous materials that would be operable and those that
would be inoperable in the claimed invention. 4
4 Neither Appellants nor the Examiner provided an undue experimentation
analysis under the Wands factors per se. See In re Wands, 858 F.2d 731,
737 (Fed. Cir. 1988) (listing factors for determining whether a disclosure
satisfies the enablement requirement). Nevertheless, it is evident that the
Examiner's analysis is based on the factors most relevant to this case, that is,
the lack of "direction or guidance presented" by the inventor, and the
"absence of working examples" sufficient to provide an enabling disclosure
of the claimed porous material. Id. at 737. In a case such as this, it is not
necessary to specifically cite to Wands. See In re Hillis, 484 Fed. Appx. 491
(Fed. Cir. 2012); MPEP § 2164.0l(a).
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Application 12/314,962
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and the
Examiner's legal conclusion of lack of enablement is well-founded.
Accordingly, we sustain the Examiner's section 112 non-enablement
rejection of claims 1-3, 7, 8, and 15.
Indefiniteness
We do not reach the section 112, second paragraph, indefiniteness
rejection because our affirmance of the section 112, first paragraph,
non-enablement rejection set forth above disposes of all claims on appeal.
37 C.F.R. § 41.50(a)(l).
Unpatentability of Claims 1-3, 7, 8, and 15
over the Prior Art
We do not reach the obviousness rejections because our affirmance of
the non-enablement rejection disposes of all claims on appeal. 37 C.F.R.
§ 41.50(a)(l). We do not believe it necessary to address the obviousness of
claims containing subject matter for which an enabling disclosure is not
provided in the specification, as filed. See Ex Parte Smith, 2008 WL
4998624 (BPAI 2008). 5
DECISION
The decision of the Examiner to reject claims 1-3, 7, 8, and 15 is
affirmed.
5 We note that the section of Appellants' Brief devoted to the obviousness
rejection refers to prior art that is different from the prior art relied on by the
Examiner in the rejection. See Appeal Br. 10, final paragraph. Thus,
Appellants' arguments do not appear to be responsive to the Examiner's
rejection.
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Appeal2014-009273
Application 12/314,962
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
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