Ex Parte Price et al

Patent Trial and Appeal Board

Jun 15, 2016

11699497 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111699,497 01/30/2007
21839 7590 06/17/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Shane Price
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.
1021238-000738 7045
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE PRICE, EVGENI SYCHEV, MARC D. BELCASTRO,
and JEFFREY A. SWEPSTON
Appeal2014-005026
Application 11/699,497 1
Technology Center 3700
Before STEFAN STAICOVICI, AMANDAF. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Price et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-7, 9-16, 19, 20, and 22-242.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is Philip Morris
USA Inc. Appeal Br. 2 (filed Oct. 24, 2013).
2 Claims 8, 17, 18, 21, and 25 are cancelled. See Final Act. 2
(transmitted May 22, 2013).
Appeal2014-005026
Application 11/669,497
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants' invention relates to an aerosol generator with a bent
capillary tube. Spec. i-f 3.
Claims 1, 7, 11, 20, and 23 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. An aerosol generator in the form of a single, unitary capillary
tube, the single, unitary capillary tube comprising at least one bend,
fluid inlets, a single outlet along the bend, and first and second
capillary passages venting to the single outlet, wherein volatilized
fluid discharges from the outlet to form an aerosol; and
a heating mechanism along the first and second capillary
passages, and
wherein the heating mechanism has a power supply and leads
attached to the single, unitary capillary tube such that current passes
along the bend and heats the single, unitary capillary tube, and
\'I/herein a temperature of the single, unitaf'J capillaf'J tube is greatest
at the single outlet.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-7, 9-11, 15, 16, 20, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Nichols (U.S. 6,568,390 B2,
iss. May 27, 2003) and Toss (U.S. 6,134,387, iss. Oct. 17, 2000).
II. The Examiner rejected claims 12-14 and 24 under 35 U.S.C. § 103(a)
as unpatentable over Nichols, Toss, and Cox (U.S. 2004/0050383 Al,
pub. Mar. 18, 2004).
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Application 11/669,497
Ill. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Nichols, Toss, and Baran (U.S. 2004/0084050 Al,
pub. May 6, 2004).
ANALYSIS
Rejection I
Claim 1
The Examiner finds that Nichols discloses an aerosol generator 10 in
the form of two capillary tubes 20, 30, but is silent as to the two capillary
tubes being formed from a single, unitary capillary tube having at least one
bend and a single outlet along the bend. Final Act. 2-3. The Examiner
relies upon Toss to teach a single unitary tube 10 with two ends 12, 14, first
and second bends, and a single escape opening 16. Id. Thus, the Examiner
concludes that it would have been obvious for a person of ordinary skill in
the art "to modify Nichols' [ s] two tubes with a single tube having two bends
and a single outlet ... as taught by Toss, for the purpose of providing a
single outlet and better and earlier mixture and aerosolization for the user."
Id. at 3.
Appellants argue that the proposed modification of the dual capillary
tubes of Nichols with the single capillary tube of Toss would change the
principle of operation ofNichols's aerosol generator completely. See
Appeal Br. 7-8. Appellants maintain that because Nichols's two parallel
capillary tube design is an improvement over a single capillary tube
arrangement, the Examiner's modification ofNichols's two tubes with a
single tube by replacing outlets 20b, 30b with a single outlet would eliminate
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Application 11/669,497
several essential elements of Nichols's dual capillary tube aerosol generator.
Id. at 8.
We are not persuaded by Appellants' arguments because the
Examiner does not propose to replace Nichols's dual tubes 20, 30 with a
single tube through which a single fluid stream is flowing, as suggested by
Appellants, but rather proposes forming a single tube with parallel dual flow
streams having asingle outlet, as taught by Toss. See Final Act. 3; Ans. 12.
More specifically, Nichols discloses a fluid vaporizing device having two
tubes 20, 30 through which parallel streams of fluid pass and exit as
volatilized fluid at exits 20b, 30b. See Nichols, col. 5, 1. 60 - col. 6, 1. 5 and
Fig. 2. Toss discloses a device having a single tube 10, but with two parallel
streams flowing therethrough and exiting through at least one outlet opening
16. See Toss, col. 1, 11. 59---61, col. 2, 11. 5---6, and Fig. 1. As such, in the
Examiner's modification ofNichols's device, according to Toss, the two
parallel streams of fluid exit from a single outlet, as volatilized fluid. See
Final. Act. 3 (citing Toss, col. 1, 11. 60); see also Toss, col. 1, 11. 59---61
(disclosing "one or more gas outlet openings"). Although we appreciate that
Nichols's device, as modified by Toss, connects dual tubes 20, 30 to form a
single tube, nonetheless, because dual parallel flow streams are still present
in the Examiner's modification of Nichols, the advantages proffered by
Nichols of compactness and increased generation of vaporized fluid, as
compared to a single capillary tube device, are still present. See Nichols,
col. 3, 11. 39--43. As the fluid in the Examiner's modification ofNichols's
device, according to Toss, still flows through dual parallel tubes and is
heated, we agree with the Examiner that "modifying Nichols' [ s] parallel
tubes ... [to] form[] a single u-shaped tube ... would keep the modified
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Application 11/669,497
aerosol generator compact and deliver the same amount of aerosol." Ans. 12
(transmitted Nov. 21, 2013). Appellants have not shown error in the
Examiner's reasoning. Accordingly, we agree with the Examiner that the
modification of Nichols, according to Toss, will not change the principle of
operation of Nichols, as Appellants contend.
Appellants argue additionally that Toss is non-analogous art because
it "is neither within the inventors' endeavor (i.e. aerosol generation), nor is it
pertinent to the particular problem involved (i.e., providing a capillary tube,
which requires less energy to vaporize liquid flowing through the tube)."
Appeal Br. 9. Appellants contend that "Toss is non-analogous prior art for
at least the reason that the fields of aerosol generation and welding plastic
sheets with hot gas are two distinct technical fields." Id.
The Federal Circuit has explained that ''[t]he amdogous art inquiry is a
factual one~ requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill [in the
art]." 5'cient[fic Plastic Prods., Inc. v. Biotage AB, 766 E3d 1355, 1360
(Fed. Cir. 2014). "Criteria for determining whether prior art is analogous
may be summarized as '(1) whether the mi is from the same field of
endeavor, regardless of the problem addressed) and (2) ff the reference is not
\vithin the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. rn Id. at 1359 (citing In re Clay, 966 F.2d 656~ 658-59 (Fed. Cir.
1992)). In this case, Appellants describe the problem they confront as
efficiently transferring heat so as to require less energy to vaporize fluid
flowing through a capillary tube of a fluid vaporizing device. See Spec.)
,-r 12. Therefore, an inventor seeking to reduce the amount of energy
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Application 11/669,497
required to vaporize a fluid would look for suitable mechanisms for
improving heat transfer efficiency. Toss discloses a U-shaped tube for
improving the heat transfer efficiency of a heated fluid flowing through the
tube. See Toss, col. 1, 11. 25-37. Accordingly, the Examiner is correct that
Toss would logically have commended itself to an inventor considering the
problem of heat transfer efficiency, and therefore constitutes analogous art.
Ans. 12. Moreover, we note that Appellants' statement that the problem of
"providing a capillary tube, which requires less energy to vaporize liquid
flowing through the tube," is simply a more specific statement of the general
problem of providing a tube which requires less energy to heat fluid flowing
through the tube, which Toss discloses. Appeal Br. 9. The analogous prior
art should not be limited to vaporizing liquid in a tube, but should include
the heating of fluids in a tube. See, e.g., Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 35 (1966) (rejecting the argument that the cited
references were not "pertinent prior art" and stating that "[t]he problems
confronting [the patentee] and the insecticide industry were not insecticide
problems; they were mechanical closure problems").
We are unpersuaded by Appellants' argument that Toss teaches "a
plurality of outlets 16" and "would not function as intended with a single,
common outlet." Appeal Br. 8. The Examiner's finding that Toss discloses
a single outlet is supported by a preponderance of evidence. See Final Act.
3; Ans. 13; Toss, col. 1, 11. 59---61, claim 2.
Finally, for the first time in the Reply Brief, Appellants argue that
Toss does not teach or suggest a single outlet along a bend, but rather
teaches outlets along a straight, intermediary region of the U-shaped tube
body. See Reply Br. 6-7. This argument is untimely and not in response to
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Application 11/669,497
an argument raised by the Examiner for the first time in the Answer. See
Final Act. 2-3. It will not be considered as Appellants offer no good cause
as to why the argument was not raised in the Appeal Brief. See 37 C.F.R. §
41.41 (b )(2) ("Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the examiner's
answer ... will not be considered by the Board for purposes of the present
appeal, unless good cause is shown."); In re Hyatt, 211F.3d1367, 1373
(Fed. Cir. 2000).
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1under35 U.S.C. § 103(a) as unpatentable over Nichols
and Toss.
Claims 2-7, 9-11, 15, 16, 20, 22, and 23
With respect to the rejection of claims 2-7, 9-11, 15, 16, 20, 22, and
23, Appellants make the same arguments as presented supra in the rejection
of claim 1. See Appeal Br. 10-19. Accordingly, for the same reasons as
discussed above, we likewise sustain the rejection of claims 2-7, 9-11, 15,
16, 20, 22, and 23 over the combined teachings of Nichols and Toss.
Rejections II and III
Appellants rely on arguments presented supra in Rejection I. See
Appeal Br. 14--15 and 19-20. Accordingly, for the same reasons as
discussed above, we also sustain the rejections under 35 U.S.C. § 103(a) of
claims 12-14 and 24 as unpatentable over Nichols, Toss, and Cox and of
claim 19 as unpatentable over Nichols, Toss, and Baran.
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Application 11/669,497
SUMMARY
The Examiner's decision to reject claims 1-7, 9-16, 19, 20, 22-24 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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