Ex Parte Saccomanno

Board of Patent Appeals and Interferences

Nov 21, 2008

10284709 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT J. SACCOMANNO
__________

Appeal 2008-4476
Application 10/284,709
Technology Center 1700
____________

Decided: November 21, 2008
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-3, and 8-24. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.

Appeal 2008-4476
Application 10/284,709

INTRODUCTION
Appellant claims a system to disinfect air using ultraviolet radiation,
said system comprising, in relevant part, “total internal reflecting features
[120] disposed upon at least a portion of at least one of the elongate surfaces
of said air inlet tube [110]” (claim 1; Figure 5).
Claim 1 is illustrative:
1. A system to disinfect air using ultraviolet radiation (UV), said
system comprising:

(a) an air inlet tube (110) comprising an entrance end (111),
a distally opposing exit end (112), an elongate internal
surface (121) in contact with said air, and an elongate
external surface;

(b) total internal reflecting features disposed upon at least a
portion of at least one of the elongate surfaces of said air
inlet tube;

(c) an air containment vessel (130) disposed around said air
inlet tube;

(d) an ultraviolet inlet window (135) that allows penetration
of said air containment vessel by ultraviolet radiation but
prevents passage therethrough of air;

(e) a high intensity ultraviolet lamp (40) providing
ultraviolet radiation that passes through said ultraviolet
inlet window and impinges upon the internal surface of
said air inlet tube; and

(f) an air outlet (150) extending from said air containment
vessel.

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Application 10/284,709

The Examiner relies on the following prior art references as evidence
of unpatentability:
Schenk 4,255,383 Mar. 10, 1981
Scroggins 5,742,063 Apr. 21, 1998
McGaffigan 6,160,948 Dec. 12, 2000
Horton, III 6,447,720 B1 Sep. 10, 2002

The rejections as presented by the Examiner are as follows:
1. Claims 1, 3, and 8-23 are rejected under 35 U.S.C. § 103 as
being unpatentable over Horton, III in view of McGaffigan.
2. Claim 2 is rejected under 35 U.S.C. § 103 over Horton, III in
view of McGaffigan and Schenck.
3. Claim 24 is rejected under 35 U.S.C. § 103 over Horton, III in
view of McGaffigan and Scroggins.
Appellant separately argues independent claims 1, 10, and 18.
Because Appellant argues the same or similar features with regard to claims
1, 10, and 18, we address rejection 1 with respect to claim 1.

STATEMENT OF THE CASE
The Examiner finds that Horton, III teaches all the features of claim 1,
except the “total internal reflecting features on the internal surfaces of the
system” (Ans. 3-4). The Examiner finds that McGaffigan discloses a light
pipe that uses the principle of total internal reflection within a hollow tube
(Ans. 4). Based on these disclosures, the Examiner concludes that it would
have been obvious to
further modify Horton[’s] apparatus by placing a
retroreflective end feature at the opposite side of the UV
source in the inlet tube (figure 5:51A) or on Horton’s
elongate internal surface as taught by McGaffigan in
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Application 10/284,709

order to reflect light rays back towards the light source
resulting in a more uniform emitted light from the end
opposite the light source (McGaffigan, col.15, lines 7-1
3, co1.20, lines 55-57 and col.15, lines 43-45) since
reflecting UV rays would lead to an increase in the dose
applied to fluids and would obviate the need to place the
light sources on the optical centerline of the
retroreflective ends
(Ans. 4).
Appellant argues that the Examiner’s motivation is based on
impermissible hindsight and that there is no motivation to combine Horton,
III and McGaffigan in the manner proposed by the Examiner (App. Br. 11-
12). Appellant contends that any advantage stated by the Examiner
regarding the use of total internal reflection (TIR) on the elongate portions
of the inlet tube is derived from Appellant’s Specification, not the prior art
(App. Br. 12). Appellant argues that neither McGaffigan nor Horton, III
teaches or suggests the TIR features that are disposed upon at least a portion
of at least one of the elongate surfaces of an air inlet tube (App. Br. 12).

ISSUE
The issue presented in this appeal is: did Appellant establish that the
Examiner’s obviousness conclusion is based on impermissible hindsight and
that McGaffigan and Horton, III fail to teach or suggest “total internal
reflecting features disposed upon at least a portion of at least one of the
elongate surfaces of said air inlet tube” as recited in claim 1? We answer
this question in the affirmative.

FACTUAL FINDINGS (FF)
Specification
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Application 10/284,709

1. The Specification states that using total internal reflection (TIR)
“maximizes the overall system efficacy by containing the UV” rays
and “allowing it more opportunity to interact with the air stream”
(Spec. ¶ [0026]).
2. The Specification further states that TIR “ensures that all the input
UV radiation is dissipated in the air” (Spec. ¶ [0007]).

Horton, III
3. Horton, III discloses a system for ultraviolet disinfection of fluids
(col. 1, ll. 6-8).
4. Horton, III discloses using and positioning multiple lamps to provide
sufficient UV light to disinfect the fluid (col. 2, ll. 53-59; col. 3, ll. 57-
62).
5. Horton, III discloses that the UV light source “is not submerged in the
fluid to be disinfected” (col. 7, ll. 34-35).
6. The UV light source may contain optical components, such as
reflectors, shutters, lenses, which may be used in combination to
achieve the desired control and output of the UV light rays (col. 7, ll.
46-53; col. 8, ll. 33-43).
7. The optical components are positioned between the UV light source
(36) and the UV light source system output point (i.e., the bottom of
the UV light source system (34)) (Figure 3; col. 8, ll. 35-37).
8. Horton, III uses lamps with reflectors and light pipes attached thereto
to direct the light (Figures 4A-4D, 7A-7D).
9. Figure 7B illustrates a tubular light source with a light pipe (Horton,
III, Fig. 7B).
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Application 10/284,709

10. Horton, III discloses that using the optical components “increases the
overall effectiveness” of the system (col. 11, ll. 65-67; col. 12, ll. 14-
16).
11. Horton, III does not disclose placing any of the optical components on
the inlet tube 51A or in UV dose zones 52 or 53 as shown in Figure 5.
12. Horton, III’s Figure 5 illustrates a UV light source 56 emitting UV
light rays 55 substantially parallel to the longitudinal axis of the light
source toward the UV dose zones 52, 53, and the inlet tube 51A (Fig.
5).

McGaffigan
13. McGaffigan discloses light pipes that “give the appearance of a laser
beam being emitted axially within the light pipe” and “provide highly
efficient radial and axial distribution of light” (col. 1, ll. 14-18).
14. McGaffigan’s light pipes emit “light rays in a substantially radial
direction” (col. 3, ll. 21-22).
15. McGaffigan’s retroreflective elements 45, 55 reflect light rays back
into the prismatic elements, or the retroreflective elements may be
omitted to permit light to be released from the end of the light pipes
(col. 7, ll. 47-52).
16. The retroreflective element 267 in Figure 18B reflects light back
toward the light source to emit a more uniform light from the end of
the simulated laser light system (SLLS) opposite the light source (col.
15, ll. 7-13).
17. McGaffigan discloses that the light pipes are used, for example, in
toys, displays, or vehicle brake lights (col. 24, ll. 61-65).
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Application 10/284,709

18. McGaffigan does not disclose a device that has an air or fluid inlet
tube.

PRINCIPLES OF LAW
A claimed invention “composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741 (2007). Often it will be necessary “to look to interrelated
teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed.” Id. at 1740-41. “A factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant on ex post reasoning.” Id. at 1742 (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966), which warned against a
“temptation to read into the prior art the teachings of the invention in
issue”).
For a prima facie case of obviousness all the claim features must be
taught or suggested by the applied prior art. In re Royka, 490 F.2d 981, 985
(CCPA 1974).

ANALYSIS
The Examiner indicated two reasons for combining McGaffigan’s
total internal reflective features with the elongate portion of Horton, III’s
inlet tube 51A: (1) “to reflect light rays back towards the light source
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Application 10/284,709

resulting in a more uniform emitted light from the end opposite the light
source since reflecting UV rays would lead to an increase in the dose applied
to fluids” and (2) to “obviate the need to place the light sources on the
optical centerline of the retroreflective ends” (Ans. 4) (references omitted).
The “increase in the dose [of UV light] applied to the fluids” portion
of reason (1) is not found in the prior art and the Examiner has not
established that such reason would have been within the knowledge of one
of ordinary skill in the art absent Appellant’s disclosure. Rather, reason (1)
appears to be improperly derived from Appellant’s Specification that teaches
that the air containment vessel 130 maximizes the overall system efficacy by
containing the UV rays, allowing them more opportunity to interact with the
air stream (FF 1 and 2).
With regard to reason (2), it is unclear how placing McGaffigan’s
reflective surfaces of the light pipe along Horton, III’s elongate surface of
the inlet tube 51A and the portion of the inlet tube extending into dose zones
52 and 53 would obviate the need to place the light source along the optical
centerline. Horton, III shows the UV light source positioned above the inlet
tube with parallel UV light rays emanating from it toward the inlet tube (FF
12), such that there would appear to be no reason to place McGaffigan’s
reflective elements of the light pipe along the elongate surface of the inlet
tube to obviate the need to place Horton, III’s light along the optical
centerline of the retroreflective element of a light pipe.
In fact, the only light pipe disclosed by Horton, III is shown connected
to a tubular lamp as a possible UV light source (Figure 7B) (FF 8, 9).
Accordingly, the only combination possibly suggested by the applied prior
art would have been McGaffigan’s light pipe reflective elements with
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Application 10/284,709

Horton, III’s light pipe as part of the UV light source. However, such a
combination fails to teach or suggest placing McGaffigan’s reflective
elements along the elongate surfaces of Horton, III’s inlet tube 51A and the
portions extending into dose zones 52 and 53 (FF 10). In other words,
neither McGaffigan nor Horton, III teaches or suggests placing “total
internal reflecting features” along elongate surfaces of the inlet tube as
claimed (FF 10, 18). The only disclosure to place the total internal reflecting
elements on an inlet pipe comes from Appellant’s Specification.
For the above reasons, we determine that neither McGaffigan nor
Horton, III teaches or suggests “total internal reflecting features disposed
upon a portion of at least one of the elongate surfaces of said air inlet tube”
as claimed. We further determine that the Examiner has improperly relied
on impermissible hindsight to conclude that the combination of
McGaffigan’s reflective elements with the elongate surface of the inlet pipe
of Horton, III’s UV disinfecting system would have been obvious.

DECISION
We reverse the 35 U.S.C. § 103 rejection of claims 1, 3, and 8-23 as
being unpatentable over Horton, III in view of McGaffigan.
We reverse the 35 U.S.C. § 103 rejection of claim 2 is rejected as
being unpatentable over Horton, III in view of McGaffigan and Schenck.
We reverse the 35 U.S.C. § 103 rejection of claim 24 as being
unpatentable over Horton, III in view of McGaffigan and Scroggins.

ORDER
The Examiner’s decision is reversed.
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REVERSED

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MICHELE M. BURRIS
HONEYWELL INTERNATIONAL INCORPORATED
LAW DEPARTMENT AB2
POST OFFICE BOX 2245
MORRISTOWN, NJ 07962-2245
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