Ex Parte Schutze

Patent Trial and Appeal Board

Jun 1, 2015

10991047 (P.T.A.B. Jun. 1, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/991,047 11/17/2004 Andreas Schutze H37-117 US 4892
21706 7590 06/02/2015
NOTARO, MICHALOS & ZACCARIA P.C.
100 DUTCH HILL ROAD
ORANGEBURG, NY 10962
EXAMINER
BRAYTON, JOHN JOSEPH
ART UNIT PAPER NUMBER
1756
MAIL DATE DELIVERY MODE
06/02/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte ANDREAS SCHUTZE
______________

Appeal 2012-003852
Application 10/991,047
Technology Center 1700
_______________

Before CHARLES F. WARREN, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 3–11, 14, and
15. App. Br. 3.1 We have jurisdiction. 35 U.S.C. § 6(b).
We affirm-in-part the decision of the Primary Examiner.
Claim 1, as illustrated by Application Figures 1 and 2, illustrates
Appellants’ invention of an ignition device for an electric arc vaporizer, and
is representative of the claims on appeal:
1. An ignition device for an electric arc vaporizer having a target (9)
made of target material and having a target surface (20), a counterelectrode
(6) as well as an arc supply (4) for maintaining an arc discharge between the
target (9) and counterelectrode (6), the ignition device (1) comprising: an
ignition finger (1') having at an ignition tip (10) made of electrically
conductive material with an ignition point (5) made of electrically
conductive material in continuous contact with the target surface (20), a

1 Amended Brief on Appeal filed July 20, 2011.
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spring (12) in the ignition finger for biasing the ignition tip toward and
against the target surface for continuous physical contact with said target
surface (20) so that said pointed ignition tip (10) is touching said target (20)
at all times during an ignition process of the ignition device as the target
surface melts and vaporizes under the ignition tip (5), the spring pressing the
tip (10) during the ignition process with substantially constant force onto the
target surface (20), the ignition finger (1') being switchable to different
ignition potentials with respect to the target, an ignition generator (3)
adapted to be connected to the ignition finger (1'), a switch (2) between the
ignition generator (3) and the ignition finger (1') and being closed for
connecting the ignition generator (3) to the ignition finger (1), the spring
(12) holding the ignition (10) of the ignition finger (1') in continuous
physical contact with the target surface (20) at all times when the switch (2)
is closed and while the arc supply (4) is maintaining an arc discharge
between the target (9) and counterelectrode (6), the tip (10) of the ignition
finger (1') having a higher melting point than the target material so that the
target surface melts and vaporizes at the ignition point (5).
App. Br. 27 (App’x - Claims on Appeal) (Figs. 1 and 2 numerals supplied by
Appellant). Spec. 3:7–5:27.2
Appellant requests review of the following grounds of rejection under
35 U.S.C. § 103(a) advanced on appeal by the Examiner (App. Br. 7):
claims 1 and 8–11 over Sablev (US 3,793,179), Shi (US 6,413,387
B1), and Sunthankar (US 6,936,145 B2) (Ans. 93);4

2 Specification as originally filed November 17, 2004.
3 Amended Examiner’s Answer mailed October 27, 2011.
4 The Examiner has also ordered the basic combination of references as
Sunthankar, Shi, and Sablev in rejecting claims 1, 8, and 10 (Ans. 5), and
relies on both orders of references alternatively along with one of the other
four applied references in rejecting the dependent claims under 35 U.S.C.
§ 103(a) (Ans. 12–14). In the interest of judicial economy, we have based
our decision on the order Sablev, Shi, and Sunthankar in light of the
positions of the Examiner and Appellant with respect thereto, because the
order is applied to claims 9 and 10 in addition to claims 1, 8, and 11, and
thus have considered the grounds of rejection of the dependent claims on the
same basis. We have taken into account Appellant’s position with respect to
the order Sunthankar, Shi, and Sablev in considering what each of these
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claims 3 and 4 over Sablev, Shi, Sunthankar, and Gallagher
(US 3,450,922) (Ans. 12);
claims 5 and 7 over Sablev, Shi, Sunthankar, and Withers
(US 5,876,684) (Ans. 13);
claim 6 over Sablev, Shi, Sunthankar, Withers, and Suga
(US 3,867,667) (Ans. 14); and
claims 14 and 15 over Sablev, Shi, Sunthankar, and Boddenberg
(US 4,267,216) (Ans. 14).
We decide the appeal on sole independent claim 1 with respect to the
first ground of rejection above and on a dependent claim in each of the other
grounds of rejection to the extent argued in the Briefs. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
OPINION
We are of the opinion Appellant’s arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the ignition device encompassed by claim 1. We are in essential
agreement with the Examiner’s analysis of the evidence in the basic
combination of Sablev, Shi, and Sunthankar, findings of fact and
conclusions of law, and response to Appellant’s arguments stated in the
Answer, to which we add the following for emphasis with respect to
Appellant’s arguments.
We cannot agree with Appellant the Examiner reversibly erred in
concluding that the combination of Sablev, Shi, and Sunthankar would have
led one of ordinary skill in the art to modify arc ignition trigger electrode 29,

references as a whole would have taught to one of ordinary skill in the art as
well as where this combination of references would have led this person.
See, e.g., App. Br. 18 (5th full paragraph).
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that is, the ignition finger, of Sablev’s electric arc apparatus for metal
evaporation coating illustrated in Sablev’s Figure 1, by replacing the flat tip
of trigger electrode 29, which is in contact with evaporation surface 10 of
cathode 9 during arc ignition, with pointed tip 73 of arc striker 71 of Shi’s
arc vaporizer apparatus; and by using a conductive ceramic for modified
trigger electrode 29 which has a higher melting point than cathode 9 as
taught for an arc vaporizer apparatus by Sunthankar, wherein Sablev’s
electric arc apparatus is capable of holding the modified tip of trigger
electrode 29 against evaporation surface 10 of cathode 9 continuously while
the electric arc is formed and then while the electric arc discharge is
maintained in the manner disclosed by Sunthankar, thus arriving at an
ignition device having an ignition finger as specified in claim 1. Sablev
cols.7–11, Fig. 1; Shi, cols.6–7, Figs. 6, 7; Sunthankar col.9 ll.19–20. Ans.
9–12, 15–25; App. Br. 8–12, 14–22; Reply Br. 8–11.
We are not convinced by Appellant’s contention that Sablev does not
teach that trigger electrode 29 is held against evaporation surface 10 of
cathode 9 to form an arc, as indeed, we find that, contrary to Appellant’s
position, Sablev would have taught as much. Sablev col.10 ll.51–60, col.11
ll.14–21, Fig. 1. In this respect, we further find that, also contrary to
Appellant’s position, Sablev would have disclosed to one of ordinary skill in
the art that electromagnetic armature 30 can act on return spring 34 to move
trigger electrode 29 away from evaporation surface 10 of cathode 9 after the
arc is formed. Sablev col.10 ll.4–12, col.10 ll.46–60, col.11 ll.14–21, Fig. 1.
App. Br. 11–12, 17–19. Thus, we are of the view Sablev would have taught
one of ordinary skill in the art that trigger electrode 29 will remain on
evaporation surface 10 until armature 30 acts on return spring 34.
We are also not convinced by Appellant’s contentions that one of
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ordinary skill in the art would not have used pointed tip 73 of Shi’s arc
striker 71 in place of the flat tip of Sablev’s trigger electrode 29 which
touches evaporation surface 10 of cathode 9 because Shi teaches that pointed
tip 73 does not touch the target surface in striking the arc. We agree with
Appellant that Shi discloses that pointed tip 73 does not touch the target
surface in striking an arc. Shi col.8 ll.13–15, col.8 ll.19–22, col.12 ll.28–32,
Figs. 3, 6, 7. However, as the Examiner points out, Sablev would have
disclosed that the arc is generated at pointed tip 73 of striker 71, and Sablev
would have disclosed that the arc is generated at the flat tip of trigger
electrode 29 when touching evaporation surface 10 of cathode 9. Shi col.8
ll.13–15, col.8 ll.19–22. Thus, we are of the opinion that, as the Examiner
contends and contrary to Appellant’s “hindsight” position, Sablev and Shi
would have led one of ordinary skill in the art to use Shi’s pointed tip 71 in
place of Sablev’s flat surface in the reasonable expectation of the same or
similar results in forming an arc when the pointed tip of the trigger electrode
touches Sablev’s evaporation surface 10 of cathode 9. Ans. 7–8, 10–11, 19–
21, 23–24; App. Br. 10–11, 14–16, 19–21; Reply Br. 9–10.
We are also not persuaded by Appellant’s contention that Sunthankar
teaches that arc-forming trigger is flat ceramic block 62 which must have
metal film 63 on its surface in contact with an input lead to be conductive
when in direct contact with target 10 of cathode 11, as illustrated in
Sunthankar’s Figure 6, wherein the metal film 63 is evaporated when power
is applied to ceramic striker “which causes ignition of the arc.” App. Br.
21–22; see also App. Br. 8–10, 15–17. We fail to find Sunthankar would
have disclosed to one of ordinary skill in the art that evaporation of metal
film 63 is necessary to arc formation, and indeed, contrary to Appellant’s
contention, Sunthankar does not disclose that the metal film will necessarily
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be vaporized upon arc formation. Sunthankar col.9 ll.16–32, col.15 ll.28–
55, Fig. 6. We further find that, contrary to Appellant’s position, Sunthankar
would have disclosed that ceramic block 62 can be thin, narrow, round, or of
small diameter. Sunthankar col.9 ll.42–43, col.15 l.31. App. Br. 11, 21;
Reply Br. 10–11. Thus, Appellant has not directed our attention to any
disclosure in Sunthankar which would have suggested to one of ordinary
skill in the art that the tip of Sablev’s trigger electrode 29 must be flat and
not pointed as disclosed by Shi in order to remain in touch with evaporation
surface 10 of cathode 9 during arc ignition, and further remain in contact
with that surface at all times during arc discharge as disclosed in Sunthankar.
We are of the view that, as the Examiner points out, one of ordinary skill in
the art would have recognized that Sablev’s return spring 34 holds trigger
electrode 29 on evaporation surface 10 until acted on by armature 30, which
is the same result obtained by Sunthankar’s clip 65 in holding ceramic block
62 on target 10 of cathode 11. Ans. 8, 11, 20, 22, 24, 25.
Accordingly, on this record, we affirm the ground of rejection of
claims 1 and 8–11 under 35 U.S.C. § 103(a) over Sablev, Shi, and
Sunthankar.
Turning now to the rejections of the dependent claims, we cannot
agree with Appellant the Examiner has reversibly erred in concluding that
the combination of Sablev, Shi, Sunthankar, and Gallagher would have led
one of ordinary skill in the art to further modify the conductive ceramic
ignition finger of Sablev’s electric arc apparatus by including a pointed tip
of a refractory metal taught by Gallagher, thus arriving at an ignition device
specified by claims 3 and 4. Ans. 12–13, 25–26; App. Br. 12–13, 22–23.
We determined above that one of ordinary skill in the art following the
combined teachings of Sablev, Shi, and Sunthankar would have modified
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Sablev’s flat trigger electrode to have a pointed tip which touches the
evaporation surface of the target electrode, and we are not convinced
otherwise by Appellant’s contention based on Gallagher’s disclosure that
with respect to some prior art disclosures, the use of “sharp points” is
undesirable. Gallagher col.4 ll.4–32. App. Br. 22–23 (citing Gallagher col.4
ll.27–32).
Accordingly, on this record, we affirm the ground of rejection of
claims 3 and 4 under 35 U.S.C. § 103(a) over Sablev, Shi, Sunthankar, and
Gallagher.
We further disagree with Appellant the Examiner has reversibly erred
in concluding that the combination of Sablev, Shi, Sunthankar, and Withers
would have led one of ordinary skill in the art to further modify the
conductive ceramic ignition finger of Sablev’s electric arc apparatus by
replacing the conductive ceramic electrode with a graphite electrode as
disclosed by Withers, which is “a high-carbon material” falling within claim
5. Ans. 13–14, 26 (citing Withers col.4 ll.13–35, col.10 ll.52–53, Fig. 1);
App. Br. 23–24. We find Withers would have disclosed to one of ordinary
skill in the art that in electric arc vaporization of carbon particles to
fullerenes, rod electrode 1 can be, among other things, graphite or a ceramic.
Withers col.1 ll.2–12, col.4 ll.26–33, Fig. 1. We further find Withers would
have disclosed that any manner of carbon particles, including, among other
things, graphite, can be used in the electric arc vaporization. Withers col.1
ll.51–57. We also find Withers would have disclosed that electrodes should
be used which are resistant to reactions with carbon, and that where a liquid
or gas hydrocarbon passes through an arc in synthesizing fullerenes, a
graphite electrode is recommended, which electrode can form fullerenes “if”
vaporized. Withers col.1 ll.2–12, col.9 ll.50–67, col.10 ll.49–62.
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On this record, we are not convinced by Appellant that Withers’
disclosure is limited to carbon particles as the sole target materials for arc
vaporization; that the carbon particles, regardless of source, would have the
same melting point as graphite electrodes; and thus that a graphite electrode
used with the carbon particles would be expected to erode. Indeed, Withers
discloses that a graphite electrode can be used in place of a ceramic
electrode, and that one of ordinary skill in the art would have been aware
that under some electric arc vaporization conditions, the graphite electrode
can erode.
We are also not convinced by Appellant that the Examiner reversibly
erred in finding that the “high-carbon material” graphite electrode of Sablev,
Shi, Sunthankar, and Withers would inherently have the same or similar
resistivity as the identical or substantially identical “high-carbon material”
specified in claim 7 which is dependent on claim 5. Ans. 14, 26–27; App.
Br. 24. The Examiner’s position shifted the burden to patentably distinguish
the claimed “high-carbon material” from the graphite electrode of Withers
by technical reasoning and/or objective evidence, and Appellant has not
adduced either on this record. See, e.g., In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”); In re King, 801 F.2d 1324, 1326–28
(Fed. Cir. 1986);5 In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the

5 Here, appellant’s burden before the board was to prove that
Donley’s structure does not perform the so-called method
defined in the claims when placed in ambient light. . . . It did
not suffice merely to assert that Donley does not inherently
achieve enhanced color through interference effects,
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product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior art
product was made by a different process.”); In re Best, 562 F.2d 1252,
1254–56 (CCPA 1977);6 In re Skoner, 517 F.2d 947, 950 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain
physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious
in view of [the reference].” (citation omitted)).
Accordingly, on this record, we affirm the ground of rejection of
claims 5 and 7 under 35 U.S.C. § 103(a) over Sablev, Shi, Sunthankar, and
Withers.
We agree with Appellant that the Examiner reversibly erred in
concluding that the combination of Sablev, Shi, Sunthankar, Withers, and
Suga would have led one of ordinary skill in the art to further modify the
graphite ignition finger of Sablev’s electric arc apparatus, suggested by
Sablev, Shi, Sunthankar, and Withers, by replacing the same with Suga’s

challenging the PTO to prove to the contrary by experiment or
otherwise. The PTO is not equipped to perform such tasks.
King, 801 F.2d at 1327.
6 Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, 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.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Best, 562 F.2d at 1255 (footnote and citations omitted).
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carbon laminate electrode for an arc lamp used in fading and weathering
tests for paints or fabrics, which would be a high-carbon laminate electrode
falling within claim 6. Suga col.1 ll.5–7, 6–53. Ans. 14, 27; App. Br. 24–
25. Indeed, the Examiner has not adduced technical reasoning and/or
evidence establishing one of ordinary skill in the art would have reasonably
expected that Suga’s carbon laminate electrode for an arc lamp would
function as an ignition finger in an electric arc vaporizer as specified in
claim 1, from which claim 6 ultimately depends. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“‘[R]ejections 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.’”)).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claim 6 under 35 U.S.C. § 103(a) over
Sablev, Shi, Sunthankar, Withers, and Suga.
We do not agree with Appellant that the Examiner has reversibly
erred in concluding that the combination of Sablev, Shi, Sunthankar, and
Boddenberg would have led one of ordinary skill in the art to further modify
the conductive ceramic ignition finger of Sablev’s electric arc apparatus by
using a CrNi steel spring as disclosed by Boddenberg for Sablev’s return
spring 34, which falls within claims 14 and 15. Ans. 14–15, 27–28; App.
Br. 25–26. The Examiner contends that one of ordinary skill in the art
would have used Boddenberg’s CrNi steel spring as Sablev’s spring 34 to
avoid friction corrosion between associated machine parts as disclosed by
Boddenberg, pointing out that Sablev does not disclose the nature of spring
34. Ans. 15 (citing Boddenberg col.2 ll.31–62), 27. In this respect, we
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found above that Sablev’s return spring 34 is movably associated with
electromagnetic armature 30 and trigger electrode 29 within Sablev’s
evaporation coating Apparatus. See above p. 4. Thus, we are of the view
that, contrary to Appellant’s position, the Examiner has established that one
of ordinary skill in the art would have reasonably selected Boddenberg’s
CrNi steel spring for return spring 34 in following the teachings of Sablev,
in the reasonable expectation of increased service life.
We are also not convinced by Appellant that the Examiner reversibly
erred in finding that Boddenberg’s CrNi steel spring would inherently have
the same or similar spring constant as the identical or substantially identical
“CrNi spring steel alloy” specified in claim 15. Ans. 15, 28; App. Br. 25–
26. The Examiner’s position shifted the burden to patentably distinguish the
claimed “CrNi spring steel alloy” from the CrNi spring steel alloy of
Boddenberg by technical reasoning and/or objective evidence, and Appellant
has not adduced either on this record. See, e.g., Spada, 911 F.2d at 708;
King, 801 F.2d at 1326–28; Thorpe, 777 F.2d at 697; Best, 562 F.2d at
1254–56; Skoner, 517 F.2d at 950.
Accordingly, on this record, we affirm the ground of rejection of
claims 14 and 15 under 35 U.S.C. § 103(a) over Sablev, Shi, Sunthankar,
and Boddenberg.
In summary, we have affirmed grounds of rejection of claims 1, 3–5,
7–11, 14, and 15, and have reversed the ground of rejection of claim 6.
The Primary Examiner’s decision is affirmed-in-part.
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