Ex Parte Platt et al

Board of Patent Appeals and Interferences

May 17, 2010

10200564 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT C. PLATT, JR., and MITCH AGAMOHAMADI
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Appeal 2009-007603
Application 10/200,564
Technology Center 1700
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Decided: May 17, 2010
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Before MICHAEL P. COLAIANNI, KAREN M. HASTINGS,
and JEFFREY R. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-7. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2009-007603
Application 10/200,564

Claim 1, the sole independent claim, and dependent claim 5 are
illustrative (emphasis added):
1. A method of sterilization of an article, the method comprising:
placing the article in a first region;
introducing gas or vapor species into a second region;
generating a plasma by applying an applied electric field in the second
region,

the second region in fluid communication with the first region,
the first region having an electric field weaker than the applied
electric field in the second region, the applied electric field having a
frequency of less than 10 kHz; and

maintaining the plasma for a time period sufficient to
substantially remove gas or vapor species from the article.

5. The method as defined in Claim 1, wherein the voltage has a
frequency from 0 to approximately 1 kHz.

Appellants appeal the following rejections:
1) Claims 1-3 and 7 under 35 U.S.C. § 103(a) as unpatentable over the
combined prior art of Graves (US 5,920,799, issued July 6, 1999) and Lin
(US 5,876,666, issued March 2, 1999).
2) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Graves, Lin
and Jacob (US 5,200,158 issued April 6, 1993).
3) Claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over the
combined prior art of Graves, Lin and Mark (US 5,303,139, issued April 12,
1994).
Appellants argue both the first and third rejections as a group, and do
not offer any additional arguments specific to dependent claim 4 (Br. 3-5).
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select independent
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Application 10/200,564

claim 1 and dependent claim 5 as the representative claims on which our
discussion will focus.
ISSUES
1) Did the Examiner err in determining that the claimed sterilization
method would have been obvious over Graves and Lin because there is no
suggestion for combining the prior art and/or because the prior art teaches
away from using a frequency of less than 10kHz as required by claim 1?
2) Did the Examiner err in determining that the frequency of claim 5,
exemplified in Mark as a known frequency useful for generating plasma,
would have been obvious for the Graves/Lin sterilization process because
Mark does not explicitly describe employing its low frequency generated
plasma in a sterilization process?
We answer both of these questions in the negative.
PRINCIPLES OF LAW
Obviousness
An improvement in the art would have been obvious if "it is likely the
product not of innovation but of ordinary skill and common sense." KSR
Int’l. v. Teleflex Inc., 550 U.S. 398, 421 (2007). 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 Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also In re Boesch,
617 F.2d 272, 276 (CCPA 1980).
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Application 10/200,564

A reference "teaches away" when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellants' invention; the degree of teaching away will of course depend on
the particular facts. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).1
ANALYSIS
with Factual Findings
We adopt the factual findings and reasoning of the Examiner (Ans. 3-
9; Final Office Action pp. 2-5)2 and add the following primarily for
emphasis.
Appellants’ contention that there is no suggestion to combine the
teachings of Graves and Lin (Br. 3) is unavailing as both references deal
with sterilizing an article in plasma generated with hydrogen peroxide (see,
Ans. 6). Appellants’ contention that Graves teaches away from the currently
claimed range (Br. 3-4) is also unavailing in light of the explicit disclosure
of Graves that teaches frequencies that overlap the claimed range (Ans. 8).
It is well established that disclosure of preferred examples do not constitute
a teaching away from a broader (e.g., alternative) disclosure. See, e.g., In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As aptly pointed out by the
Examiner, both Graves and Lin teach frequency ranges that overlap the
claimed range (Ans. 6, 7). Indeed, Appellants have not challenged the
Examiner’s finding that Lin’s RF (radiofrequency) spectrum encompasses

1 See also Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d
1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state that it
“should not” or “cannot” be used in combination with other features in the
prior art.)
2 Note one obvious typographical error is a reference to col. 21 of Lin that
should be col. 11 (bottom of Ans. 4; top of Final 3).
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Application 10/200,564

extremely low frequencies from 3Hz up to 30GHz (Ans. 7).3 These
circumstances support the Examiner’s obviousness determination of the
claimed range. In re Gurley, 27 F.3d at 553; see also Para-Ordnance Mfg.,
Inc. 73 F.3d at 1090.
We disagree with the other arguments raised by Appellants (e.g., with
respect to dependent claims 3 and 7; Br. 3) for essentially the reasons stated
by the Examiner in the Answer.4
Accordingly, Appellants have not persuasively argued that the facts
and reasons relied on by the Examiner are insufficient to establish a prima
facie case of obviousness as to claims 1-4 and 7.
With respect to dependent claims 5 and 6, we also agree with the
Examiner’s conclusion that using a known low frequency alternative for
forming plasma in a chamber, as described in Mark as an advantageous
alternative to using high frequencies (Ans. 5, 6), to form the plasma for the
sterilization process of Graves/Lin would have been nothing more than using
a known plasma generating technique in accordance with its known function
for the predictable result of creating a plasma. See KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Where the Examiner establishes a reasonable basis to conclude that
the claimed invention would have been obvious, as here, the burden shifts to
the Appellants to rebut the prima facie case by providing evidence of

3 No Reply Brief has been filed.
4 We also note that merely pointing out what a claim recites (Br. 3) is not
considered a separate argument for patentability of that claim. Appellants
also have not presented any further arguments regarding the § 103 rejection
of claim 4 over the combined prior art of Graves, Lin, and Jacob (Br. 4).
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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 pointed out by the Examiner, Appellants have
offered no comparison evidence of unexpected results due to the claimed
frequency ranges (Ans. 9).
Accordingly, the evidence as a whole supports the Examiner’s
conclusion of obviousness, and on the record before us, we sustain the § 103
rejections of claims 1-7 as maintained by the Examiner.5
DECISION
We affirm the Examiner’s § 103 rejections.
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

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5 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which could have made but Appellants chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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