Ex Parte Pau et al

Board of Patent Appeals and Interferences

Jan 26, 2010

11148549 (B.P.A.I. Jan. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STANLEY PAU and DONALD MILAN TENNANT
____________

Appeal 2009-002168
Application 11/148,549
Technology Center 1700
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Decided: January 26, 2010
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and,
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-7 and 10-14. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
Claims 1 and 5 are illustrative of Appellants’ invention:
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1. A chemical reactor, comprising:
two or more substrates joined along planar surfaces
thereof, each substrate comprising dielectric or semiconductor;
a chemical reaction chamber formed between the
substrates, the chemical reaction chamber having a hollow
interior and
a pair of electrodes located on one of the substrates along
a wall of the chamber, the chamber having one or more input
ports to transport a gas into the hollow interior and an output
port to transport a byproduct out of the hollow interior, wherein
the pair of electrodes are separated by about 0.1 to 1 microns.

5. A chemical reactor, comprising:
two or more substrates joined along planar surfaces
thereof, each substrate comprising dielectric or semiconductor;
a chemical reaction chamber formed between the
substrates, the chemical reaction chamber having a hollow
interior and
a pair of electrodes located on one of the substrates along
a wall of the chamber, the chamber having one or more input
ports to transport a gas into the hollow interior and an output
port to transport a byproduct out of the hollow interior, and
further comprising a chemical catalyst being on a portion of a
wall of the chamber and being exposed to the hollow interior.

The Examiner relies upon the following prior art:

Northrup 5,589,136 Dec. 31, 1996
Becker 5,858,192 Jan. 12, 1999
Krulevitch 6,352,838 B1 Mar. 5, 2002
Ackley 2004/0077074 A1 Apr. 22, 2004
Yamamoto 2004/0105789 A1 Jun. 3, 2004

Appellants appeal the following rejections:
Claims 1-4, 6, 9, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Krulevitch and Becker.
To reject dependent claims 7 and 19 under 35 U.S.C. § 103(a), the Examiner
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adds Ackley to Krulevitch and Becker. To reject dependent claims 8, 17,
and 18, under 35 U.S.C. § 103(a), the Examiner adds Northrop to Krulevitch
and Becker.
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Northrup and Yamamoto.
Appellants focus their arguments on independent claims 1 and 5.
They do not separately argue any of the claims dependent upon claim 1,
including those rejected separately from claim 1. Accordingly, we will also
focus on independent claims 1 and 5.
The § 103 Rejection of Claim 1
ISSUES
The issues on appeal are:
a) have Appellants shown the Examiner reversibly erred in
determining that it would have been obvious to optimize the electrode pair
separation spacing of Krulevitch to “about 0.1 to 1 microns” as recited in
independent claim 1?
b) have Appellants shown the Examiner reversibly erred in
determining that the structure recited in claim 1 is obvious because the
device in each of Krulevitch and Becker is not a “chemical reactor” as set
out in the preamble of claim 1?
We decide both of these questions in the negative.
PRINCIPLES OF LAW
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). Therefore, where the claimed and prior art
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structures are identical or substantially identical, the PTO can require an
applicant to prove that the prior art structure is not capable of performing the
function claimed. Id. at 1478.
A range can be disclosed in multiple prior art references instead of in
a single prior art reference depending on the specific facts of the case. Iron
Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004).
The discovery of an optimum value of a variable in a known process
or product is usually a matter of obviousness for one of ordinary skill in the
art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368-69 (Fed. Cir. 2007).
This is the kind of situation that requires an Appellant to show secondary
considerations such as unexpected results or criticality to overcome the
prima facie case. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see
also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants’ attorney’s arguments do not take the place of evidence in
the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
FACTUAL FINDINGS
We refer to the Examiner’s factual findings stated in the Answer (Ans.
5-6) and Final Office Action (2-4), as well as the Examiner’s findings of fact
in response to the Appeal Brief as set out on pages 9-10 of the Answer in the
“Response to Argument” section.
Specifically, the Examiner established that Krulevitch describes all of
the claimed structural elements of claim 1, however it describes an
exemplary spacing of an electrode pair of “about 2-50 micron” versus claim
1’s range of “about 0.1 to 1.0 micron” (see, e.g., Krulevitch col. 3, ll. 25-29;
Ans. 5).
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Becker teaches that the electrode pair separation in a device
comparable to Krulevitch may be “between about 0.1 microns and about
1000 microns”, and that for cellular discrimination, the separation is
preferably between “about 1 micron and about 100 microns” (Becker, col.
15, ll. 35-42). Becker describes that alteration of electrode width to
electrode spacing “changes the magnitude of the dielectrophoretic force and
thereby changes the particle levitation characteristics of the design.”
(Becker, col. 15, ll. 42-46).
Accordingly, one of ordinary skill in the art would have appreciated
that spacing between an electrode pair was a result effective variable in the
design of particle separation devices. It follows that the use of claim 1’s
spacing of “about 0.1 to 1.0 microns” in Krulevitch would have been prima
facie obvious to one of ordinary level of skill in the art.
ANALYSIS
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has properly identified
factual findings and reasoning for establishing a prima facie case of
obviousness of the subject matter of claim 1.
Appellants’ main contention is that these combined teachings do not
establish the obviousness of the claimed range because Krulevitch teaches
away from using the electrode spacing as claimed. Specifically, Appellants
argue that one of ordinary skill would not have modified Krulevitch outside
its specific teaching of about 2 to 50 microns (App. Br. 7). Appellants also
contend that since the device in each of Krulevitch and Becker is not a
“chemical reactor” as set out in the preamble of claim 1, one would not have
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been motivated to optimize the electrode pair spacing for a chemical reactor
(App. Br. 7-8; Reply Br. 2-3).
These contentions are not persuasive of reversible error for the
reasons well stated by the Examiner in the Answer (Ans. 9-10). Moreover,
Krulevitch’s exemplary teaching of about 2 to 50 microns falls far short of
teaching away from the claimed “about 0.1 to 1 micron”, especially as
considered in combination with Becker’s 0.1 to 1000 micron range for
electrode spacing. Appellants' claimed range falls within the “range”
reflected by both Krulevitch and Becker, and thus is obvious. Iron Grip
Barbell Co., Inc., 392 F.3d at 1322.
Where the Examiner establishes a reasonable basis to conclude that
the claimed invention would have been obvious, as here, (that is, based on
optimizing the electrode pair spacing) the burden shifts to the Appellants to
rebut the prima facie case by providing evidence of unexpected results or a
showing that the prior art teaches away from the claimed invention in any
material respect. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). As discussed above, Appellants have not directed us to any credible
technical reasoning or evidence sufficient to refute the Examiner’s
reasonable position of obviousness for the claimed electrode spacing range.
Furthermore, Appellants have not contended that the claimed range provides
unexpected results (see generally App. Br.; Reply Br.).
Appellants’ argument that since the references are not directed to
chemical reactors, there is no motivation to combine them for electrode
spacing in a chemical reactor, is also unavailing, since “the law does not
require that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
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Additionally, Appellants have not rebutted the Examiner’s factual
finding that a biochemical dielectrophoresis reactor is a type of chemical
reactor (Ans. 10; see generally App. Br.; Reply Br. 7-8). However, even
assuming arguendo that Appellants are correct that the devices of the applied
prior art are not de facto “chemical reactors”, the specific method steps that
may actually be performed in devices/reaction chambers of the applied prior
art are irrelevant; the issue is whether the apparatus of Kruvelitch/Becker is
capable of being used as a chemical reactor. See, e.g., In re Schreiber, 128
F.3d at 1478.
Appellants have provided no evidence, nor any persuasive line of
technical reasoning explaining why the device of Kruvelitch/Becker is not
capable of being used as a chemical reactor.
Accordingly, Appellants have not shown reversible error in the
Examiner’s determination that it would have been obvious to optimize the
separation spacing of the electrode pair of Krulevitch to within the claimed
range.
Appellants make no additional arguments regarding the rejections of
any of the claims dependent upon claim 1.
Accordingly, Appellants have not shown error in the Examiner’s
factual findings and obviousness analysis of any of claims 1-4, 6-9, and 16-
19 on appeal.
The § 103 Rejection of Claim 5
ISSUE
Have Appellants shown the Examiner reversibly erred in determining
that Northrup teaches or suggests “a pair of electrodes located on one of the
substrates along a wall of the chamber” as recited in claim 5?
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We decide this issue in the affirmative.
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the Examiner must
show that each limitation of the claim is described or suggested by the prior
art or would have been obvious based on the knowledge of those of ordinary
skill in the art. See, e.g., In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Furthermore, “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007)).
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007).
Analysis with Factual Findings
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art with respect to
independent claim 5.
It is apparent that the Examiner and Appellants disagree over the
scope and meaning of the phrase “a pair of electrodes located on one of the
substrates along a wall of the chamber” (claim 5). Therefore, our
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consideration of the issue presented begins with interpretation of the claim
language in dispute.
The plain meaning of “along” is “over the length of or direction of”,
or “parallel in the same direction”.1 We have reviewed Appellants’
Specification and, in every embodiment, Appellants’ Specification describes
that both electrodes are located along, in a direction parallel to, a wall of the
chemical reaction chamber (e.g., Figs. 1, 2, 10, 11; Spec. 5:12-14; Spec. 6:1-
4). The broadest reasonable definition of “along” in light of Appellants’
Specification is thus consistent with the plain meaning of this word.
Furthermore, one of ordinary skill in the art would understand from
Appellants’ Specification that the “CRC 4” (i.e., the chemical reaction
chamber) per se does not include the inlet and outlet channels 8 and 9 (e.g.,
Figs. 1, 11; Spec. 4:1-5).
We therefore agree with Appellants that, contrary to the Examiner’s
position, Northrup does not teach or suggest that its pair of electrodes are
“located on one of the substrates along a wall of the [chemical reaction]
chamber” (claim 5, emphasis provided) because it is unreasonable to read a
wall of the inlet port 148 as a wall of the chemical reaction chamber 147 of
Northrup for the reasons explained in the briefs (see, App. Br. 9-12; Reply
Br. 3-5).
Furthermore, even assuming arguendo that the Examiner’s position
that a side wall of an inlet port 148, as depicted on page 11 of the
Examiner’s Answer, fairly reads on the claimed reaction chamber wall, it is
not reasonable to view the two electrode elements of Northrup that run
perpendicular to that chamber wall as being along the wall.

1 Webster’s College Dictionary, Second Random House Ed., p. 36, 1999
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In light of these circumstances, the weight of the evidence supports
Appellants’ arguments that the Examiner has not met the requisite initial
burden for establishing a prima facie case of obviousness. Accordingly, we
cannot sustain the Examiner's rejection of independent claim 5.
CONCLUSION/ ORDER
The Examiner’s § 103(a) rejections of claims 1-4, 6-9, and 16-19 are
affirmed.
The Examiner’s rejection of claim 5 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

kmm

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