Ex Parte Schwoebel

Patent Trial and Appeal Board

Nov 13, 2017

13875276 (P.T.A.B. Nov. 13, 2017)

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.
13/875,276 05/01/2013 Paul Schwoebel 37794.0039U1 7872
151270 7590 11/13/2017
Ballard Spahr LLP / SRI International (California)
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
EXAMINER
DAVIS, SHARON M
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
11/13/2017 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 PAUL SCHWOEBEL
Appeal 2017-001408
Application 13/875,2761
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, “[t]he real party in interest is SRI
INTERNATIONAL.” (Appeal Br. 1.)
Appeal 2017-001408
Application 13/875,276
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to “a method for extracting
ions.” (Spec. 14.)
Claim 1 is the sole independent claim on appeal. It recites (emphasis
added):
1. A method for extracting ions, the method comprising:
in a vacuum chamber applying voltages to a spark gap
between two electrodes comprising coatings of a hydrocarbon,
each voltage sufficient to trigger a spark discharge in the gap
sufficient to dissociate the hydrocarbon and extract therefrom
hydrogen ions, wherein the hydrocarbon is a nonvolatile liquid
sufficiently non-viscous to flow and re-coat holes in the coatings
between each spark discharge.
REJECTIONS
1. Claims 1—9, 13, 14, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adler (US 4,587,430, iss. May 6, 1986) and
Atkinson (US 3,876,521, iss. April 8, 1975).
2. Claims 10-12, 15—17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Adler, Atkinson, and Schmidt
(US 3,417,245, iss. Dec. 17, 1968).
ANALYSIS
The Examiner finds that Adler discloses all of the limitations of
claim 1 except that “Adler does not explicitly disclose a hydrocarbon
coating.” (Final Action 4.) The Examiner finds that Atkinson discloses this
limitation. (Id.) According to the Examiner,
Atkinson further teaches that its hydrocarbon is highly stable,
with high oxidation resistance, long service life, and suitable for
2
Appeal 2017-001408
Application 13/875,276
use at high temperatures, specifically noting its utility in nuclear
applications (“radiolysis experiments” column 4, lines 3—11),
providing the motivation for one of ordinary skill in the art to
combine the hydrocarbon of Atkinson with the ion extraction
method of Adler. Following the suggestion of Adler, the
hydrocarbon of Atkinson would be coated onto the surface
electrode of the spark gap (column 4, lines 1—37).
(Id.) The Examiner further finds that “the primary reference Adler suggests
that its electrodes can be coated with any material, while the secondary
reference Atkinson teaches that its coating materials possess the chemical
and physical properties that are desirable for materials used in nuclear
applications.” (Answer 2.) The Examiner determines that “one of ordinary
skill in the art at the time of the invention would have found it obvious to
follow the suggestion of Adler and the motivation of Atkinson to make the
proposed obvious combination and coat the electrodes of Adler with the
materials of Atkinson.” (Id.)
Appellant disagrees and argues that “[tjhere is not [sic] suggestion in
the art to employ a liquid surface to such an electrode — that comes from our
disclosure.” (Appeal Br. 4.) Specifically, Appellant argues that “Atkinson
suggests nothing about applying the new [lubricating] oil to electrodes.”
(Id.) Moreover, Appellant argues, “Adler repeatedly, consistently and
exclusively teaches eroding, solid surfaces, and Adler’s method is adapted to
an erosive, solid surface.” (Id.)
Atkinson “is concerned with deuterated petroleum fraction lubricating
oils as well as with the process for preparing these deuterated lubricants.”
(Atkinson col. 1,11. 1—3.) In relevant part, with regard to radiolysis
experiments, Atkinson discloses:
3
Appeal 2017-001408
Application 13/875,276
The novel deuterated hydrocarbons of the present invention are
highly stable and have been found to be particularly useful in a
variety of fields, such as superior lubricants either as such or
compounded with a thickener to form a grease having enhanced
oxidation resistance, longer service life and being suitable for use
under vigorous operating temperatures; in radiolysis
experiments, petroleum chemistry, and as high temperature
lubricants or greases. The deuterated lubricating oils have been
found superior to the undeuterated specie as specialty and
instrument lubricants because of their greater oxidation
resistance which provides longer service life and/or higher
temperature operation.
{Id. col 4,11. 3—16, emphasis added.)
In short, Atkinson discloses the use of deuterated hydrocarbons as
lubricants. {Id.) The disclosure of use of the deuterated hydrocarbons “in
radiolysis experiments” relates to use of the hydrocarbons as a lubricant.
{Id.) The Examiner does not sufficiently explain how Atkinson’s disclosure
of use of the hydrocarbons as a lubricant “in radiolysis experiments” teaches
or suggests coating an electrode with the lubricant.
To the extent that the Examiner finds the suggestion for the
combination in Adler, we disagree.
Adler discloses using a spark to generate “a plasma containing ions of
the species which forms the surface of the surface electrode” and that “[t]his
surface can be the material of the entire electrode, or can be a sheath, or a
coating.” (Adler, col. 4,11. 34—37.) The Examiner found that Adler does not
disclose that the coating is a hydrocarbon. (Final Action 4.) Also, the
Examiner did not find that Adler teaches or suggests that the electrodes
should be coated with a lubricant.
In view of the above, the Examiner has not sufficiently explained why
it would have been obvious to combine the references as proposed.
4
Appeal 2017-001408
Application 13/875,276
Therefore, we are persuaded that the Examiner erred in rejecting claim 1
under § 103(a).
We do not sustain the rejection of independent claim 1 or the rejection
of dependent claims 2—9, 13, 14, and 18, which depend from claim 1.
With regard to dependent claims 10-12, 15—17, 19, and 20, the
Examiner does not rely on any additional reasoning or the other cited
reference (Schmidt) to remedy the deficiency discussed above. Therefore,
we do not sustain the rejection of dependent claims 10—12, 15—17, 19,
and 20.
DECISION
The Examiner’s rejections of claims 1—20 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
5