Ex Parte Pollack

Patent Trial and Appeal Board

Jun 30, 2016

12908557 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/908,557 10/20/2010
30623 7590
Mintz Levin/Boston Office
One Financial Center
Boston, MA 02111
07/05/2016
FIRST NAMED INVENTOR
GERALD H. POLLACK
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.
50462-503001US 4126
EXAMINER
ALEXANDER, LYLE
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD H. POLLACK1
Appeal2015-000254
Application 12/908,557
Technology Center 1700
Before BRADLEY R. GARRIS, PETER F. KRATZ, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-25 in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
Appellant's invention relates to fluid flows that "are driven via the
generation of an exclusion zone (EZ) in a polar fluid in proximity to a
1 According to the Appeal Brief, Gerald H. Pollack is the real party in
interest. Appeal Br. 3.
Appeal2015-000254
Application 12/908,557
hydrophilic surface." Spec. i-f 3. Embodiments are depicted in Figures 1 and
2B, reproduced below:
FIG, 1
ENERGY
SOURCE
101
J
t --
\
------------ 106
102
112
FIG. 2B
102
..@::;:)'::;:;,;;,z;;'f':W::;p;;>/;':?.ii:?/b;;;t;;ffit
108 __. ) 202
...................................... - ...................... .,,,.-~~- ... ;> ................ ;-., ........ ,,_ ............................................ -.. ....
\
I
I
FLOW
DIRECTION
GENER.t\ TOR
2G8
204
Figure 1 depicts a fluid flow generator 101, which includes a tube 102
having an inlet end 104, an output end 106, and an inner wall 108, at least
part of which is hydrophilic. Id. i-f 42. Figure 2B depicts a side sectional
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Appeal2015-000254
Application 12/908,557
view of a portion of the tube 102 under conditions of fluid flow 114 past the
hydrophilic wall 108. Id. i-f 52. Dotted line 206 represents the boundary of
an annular exclusion zone (EZ). Id. i-fi-152-53. According to Appellant, the
region 202 in the EZ was found to have a net charge, and the bulk water
region 204 on the opposite side of the EZ boundary 206 was found to have
an opposite charge from region 202. Id. i-f 49.
Claim 1, the sole independent claim, is representative:
1. A fluid flow generator, comprising:
a tube having an inner wall, an inlet end, and an
output end; and
a hydrophilic surface formed on at least a portion of
the inner wall of the tube;
wherein the hydrophilic surface of the inner wall is
configured to form a proximate exclusion zone in polar
fluid in the tube, and the exclusion zone provides a
propulsive force to drive fluid flow from the inlet end to
the output end of the tube.
Appeal Br. 28 (emphasis added).
The Examiner rejects claims 1-25 under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. US 7,793,788 B2 [hereinafter Pollack]
(issued Sept. 14, 2010). Final Action 2-3.
In the Appeal Brief, Appellant provides distinct substantive arguments
only with respect to claims 1, 4, and 7. See Appeal Br. 20-25. Appellant
argues that claims 2, 5, 8, and 9 are patentable for reasons similar to the
reasons given for claim 4. See id. at 24. Likewise, Appellant argues that
claims 10, 13, 14, and 16-25 are patentable for reasons similar to the reasons
given for claim 7. See id. at 25-26. In addition, for dependent claims 2-25,
Appellant relies on the same arguments presented with respect to claim 1.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
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Appeal2015-000254
Application 12/908,557
(2013), we limit our discussion to claims 1, 4, and 7, and all other claims
stand or fall together with claim 1.
In the Reply Brief, Appellant makes additional arguments regarding
claims 3, 5, and 6. See Reply Br. 4--5. Appellant did not raise these
arguments in the Appeal Brief and they are not responsive to arguments
raised in the Examiner's Answer, and Appellant has not shown good cause
why we should consider them. Therefore, consistent with 37 C.F.R.
§ 41.41 (b )(2) (2013), we do not consider the specific arguments regarding
claims 3, 5, and 6 for purposes of the present appeal.
DISCUSSION
A relevant portion of Figure 1 of Pollack is reproduced below:
NAFICN TUBE 1 0_4
.. '· . . ............... .,,........ \ ........ . .. , .
~'*l"'~::i·c· ~"'"'HER·~,.... ' \ '\~·-sv1 vr;: l.~d .. ~ ~- ·b~ \ . . , _ ,.. ............
·1 02 "''" 1 06 .,.... ·1 08 ... ll() ---,, _./
.·.-.: .. ),',,,~:. """"'" - ........... /
./ ,.
/
,,,,./ DILUTE
Pollack describes Figure 1 as "a diagram of an exemplary differential
extractor for separating components of aqueous mixtures." Pollack 1:55-56.
According to Pollack, a homogeneous microsphere suspension 102 enters a
Nafion tube 104 at one end, and as it travels down the tube, the microspheres
migrate from the walls 106 and gather in the core region 108. Id. at 4: 10-
24. "Clear water from the exclusion zone 110 and microsphere-containing
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Appeal2015-000254
Application 12/908,557
water 112 pass through different channels of the extractor," thus separating
the two fractions. Id. at 4:24--27.
The Examiner finds that Pollack teaches all the limitations of claims
1-25. Final Action 2-3. In particular, the Examiner finds that Pollack
"teaches wherein the hydrophilic surface of the inner wall is configured to
form a proximate exclusion zone in polar fluid in the tube, and the exclusion
zone provides a propulsive force to drive fluid flow from the inlet end to the
output end of the tube." Id. at 2 (citing Pollack 2:29-33). In the Answer,
the Examiner further finds that, assuming the "propulsive force" limitation
of claim 1 is structurally limiting, the hydrophilic region taught by Pollack in
the separation tube "exerts a force on the fluid that is indistinguishable from
the argued 'propulsive force.'" Answer 5.
Appellant argues that the plain language of Pollack does not contain a
disclosure of any propulsive force to drive fluid flow, and there is no explicit
or inherent argument that the propulsive force is provided by the exclusion
zone. Appeal Br. 20. Appellant argues that because separate phases are
drawn off by separate coaxial tubes in Pollack, the arrangement "is believed
likely to substantially prevent generation of the propulsive force recited by
claim 1 of the present application." Id. at 21. Moreover, Appellant argues
that Pollack discloses that fluid flow is provided from conventional pumps
or gravity, and therefore does not disclose that a propulsive force is provided
by the exclusion zone. Id. at 21-22. Furthermore, Appellant argues that
Figure 10 of Pollack shows that the thickness of the exclusion zone increases
downstream, which is the opposite of the downstream decrease shown in
Appellant's Figure 2B. Reply Br. 1-3.
As the broadest reasonable interpretation consistent with the
Specification, see In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed.
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Appeal2015-000254
Application 12/908,557
Cir. 2007), we interpret claim 1 as containing a functional limitation that
requires a configuration to generate a propulsive force on the fluid that
pushes from one end of the tube toward the other end. Consistent with the
Specification, the presence of a configuration to create such a propulsive
force is not negated by the presence of additional forces, such as those
provided by a conventional pump such as that disclosed in paragraph 65 of
the Specification, and original claim 6, see Spec. i-fi-1 46-4 7.
When "the claimed and prior art products are identical or substantially
identical, ... the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The
Examiner has made a prima facie case of anticipation by showing that the
Nafion tube 104 of Pollack has substantially the same structure of the tube
required by claim 1. Therefore, the burden has shifted to Appellant to "show
that the prior art structure did not inherently possess the functionally defined
limitations of his claimed apparatus." In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). However, Appellant has not directed our attention to
evidence sufficient to show that the Nafion tube 104 of Pollack is not
configured to generate a propulsive force as required by claim 1.
We have carefully considered Appellant's arguments comparing
Figure 10 of Pollack with Figure 2B of the Specification, and suggesting that
the opposite shape of the exclusion zone boundary in relation to the direction
of fluid flow indicates that Pollack does not disclose a propulsive force. See
Reply Br. 1-2. We have also carefully considered Appellant's argument that
Pollack would not generate a propulsive force because of the existence of
two separate coaxial exit tubes. Appeal Br. 21. However, these are attorney
arguments, not supported by a declaration or other objective evidence.
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Appeal2015-000254
Application 12/908,557
Furthermore, these arguments are undermined by the Specification, which
states that "[a]ll EZ-generating surfaces tested thus far produce flow." Spec.
i-f 51. Pollack clearly discloses an exclusion zone (EZ), see, e.g., Pollack
2:29-33; therefore, we find no reversible error in the Examiner's
determination that the structure of Figure 1 in Pollack is configured to
generate a propulsive force as per claim 1.
Regarding claim 4, the Examiner finds that "the flow direction
generator is formed as a variation in a cross sectional area inside the tube
and the flow direction generator is formed as a variation in hydrophilicity of
the hydrophilic surface or as a variation in an area occupied by the
hydrophilic surface." Final Action 3 (citing Pollack, Abstract). The
Examiner finds that Nafion tube 104 of Pollack, in addition to the attached
differential extractor, constitutes the "tube" of claim 1, and that "[ t ]he
differential extractor portion has a different cross sectional area than the
flow input portion of the tube (104)." Answer 6.
Appellants argue that
[i]f the inner tube diameter abruptly steps up or down at
a tube juncture, as the Examiner is best understood to
assert, then there will be no axial force along the step,
which is directed radially. Moreover, the Examiner has
not asserted that the stepped-diameter tube (whatever it
might be) is made of N afion or any other substance that
would create an exclusion zone. Unless the tube other
than tube 104 also creates an exclusion zone, there is no
basis for the Examiner's assertion, even if a force gradient
were (incorrectly) assumed.
Reply Br. 4--5.
As with claim 1, the Examiner has established a structure in Pollack
that is identical with the structure required by claim 4, including a tube with
a variation in a cross sectional area inside the tube, at least a portion of the
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Appeal2015-000254
Application 12/908,557
tube's inner wall surface being hydrophilic. Appellants have the burden to
produce evidence showing that the structure disclosed in Pollack does not
inherently function as a flow direction generator. See Schreiber, 128 F.3d at
1478. Appellant has not produced any such evidence, apart from attorney
argument. Therefore, Appellant has failed to meet that burden, and we find
no reversible error in the Examiner's determination that claim 4 is
anticipated by Pollack.
Regarding claim 7, Appellant argues in the Appeal Brief that the
Examiner failed in the Final Action to articulate a basis for rejection. See
Appeal Br. 24--25. The Examiner provided a specific basis of rejection in
the Answer at pages 6-7, to which Appellant did not substantively respond
in the Reply Brief. See Reply Br. 5. Because Appellant has not identified
an error, we find no reversible error in the Examiner's rejection of claim 7.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections.")
For the above reasons, we find no reversible error in the Examiner's
decision to reject claims 1, 4, and 7. For the same reasons, we also find no
reversible error in the Examiner's decision to reject dependent claims 2, 3, 5,
6, and 8-25.
DECISION
The Examiner's decision is affirmed.
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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