Ex Parte Sciulli et al

Board of Patent Appeals and Interferences

Jan 24, 2012

10114920 (B.P.A.I. Jan. 24, 2012)

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.
10/114,920 04/01/2002 Felix M. Sciulli 340058.534C1 8148
500 7590 01/24/2012
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Felix M. Sciulli, Mohamed A. Hashish, Steven J. Craigen, Bruce M.
Schuman, Chidambaram Raghaven, Andreas Meyer and Wayne Johnson
__________

Appeal 2009-013096
Application 10/114,920
Technology Center 3700
___________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and
SALLY C. MEDLEY, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
Applicant appeals the Final Rejection of Claims 1, 3, 4, and 6 under 35
U.S.C. § 103(a). 35 U.S.C. §§ 6(b) and 134(a). We affirm and enter a new ground
of rejection.
The Invention
The claimed subject matter relates to fluid jet cutters. Such cutters use a
high pressure mixture of a fluid, typically water, mixed with an abrasive for
cutting.
Specifically, the claimed invention is directed to a component of the cutter
called an orifice mount. The orifice mount has an opening along its central
longitudinal axis. High pressure fluid supplied to the mount is forced through the
opening to produce a high pressure fluid jet. Abrasive material is subsequently
Appeal 2009-013096
Application 10/114,920
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added to the jet. The orifice mount has a frusto-conical outer surface. Applicants’
Figure 2, reproduced below, shows an embodiment:

Independent Claim 1 specifies the dimensions of two portions of the mount
that can be seen in Figure 2: (1) the radial distance 13 from the central axis 14 to
the midpoint of the frusto-conical outer surface 15 must be 0.11 - 0.19 inches and
(2) the vertical distance 16 between the midpoint 15 to the top surface 17 must be
0.15 - 0.3 inches. Claim 3, which depends from Claim 1, adds an additional
dimensional limitation. It adds that the angle 18 formed by opposite sides of the
frusto-conical surface must be 55-80º. Claims 1 and 3 are reproduced in the
margin. 1

1 Claims 1 and 3, with indentation added, provide:
1. An orifice mount for use in a high-pressure fluid jet system, comprising:
an orifice mount body
having a frusto-conical outer surface and
an aperture extending therethrough along a central longitudinal
axis of the orifice mount body, and
wherein
Appeal 2009-013096
Application 10/114,920
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The Rejections
The Examiner entered two grounds of rejection:
1. Independent Claim 1, and dependent Claims 3 and 4 as unpatentable
under 35 U.S.C. 103(a) over the combined teachings of Erichsen2 and Yie3.
2. Dependent Claim 6 as unpatentable under 103(a) over the combined
teachings of Erichsen, Yie, and Chalmers4.
Erichsen
The Erichsen patent relates to fluid jet cutting systems. Erichsen’s cutter
includes a frusto-conical orifice mount (98) with an opening on the central
longitudinal axis. The angle formed by the sides of the frusto-conical surface is
said to preferably be between 55 and 80º.” Erichsen, 4:55-66. Erichsen’s Figure
3B, reproduced below, shows the frusto-conical mount 98 with the opening 94 on
the central axis and the angle β.

a radial distance from the central longitudinal axis of the
orifice mount body to a midpoint of the frusto-
conical outer surface is 0.11 - 0.19 inches,
a longitudinal distance between the midpoint of the frusto-
conical outer surface and a top surface of the orifice
mount body is 0.15 - 0.3 inches, and
the frusto-conical outer surface converges in a downstream
direction.

3. The orifice mount according to claim 1 wherein
the frusto-conical outer surface forms an included angle of 55-80°.

2 U.S. Patent 5,643,058.
3 U.S. Patent 4,555,872.
4 U.S. Patent 5,018,670.
Appeal 2009-013096
Application 10/114,920
4
Differences between the subject matter of Claim 1 and Erichsen
There are two limitations in Claim 1 that are not described by Erichsen: (1)
the radial distance from the central longitudinal axis of the orifice mount body to
the midpoint of the frusto-conical outer surface and (2) the longitudinal distance
between the midpoint of the frusto-conical outer surface and a top surface of the
orifice mount body. The claims require that the former be 0.11 - 0.19 inches and
that the latter be 0.15 - 0.3 inches. Erichsen is silent as to the two dimensions.
Analysis
Claim 1
Ordinarily, a mere difference in dimensions of an otherwise old device does
not present an unobvious distinction over the prior art. To render the old device
patentable, the change in dimensions must result in a device which performs or
operates differently than the prior art. Gardner v. TEC Sys., Inc., 725 F.2d 1338,
1349 (Fed. Cir. 1984). See also The Great Atlantic and Pacific Tea Company v.
Supermarket Equipment Corp., 340 US 147, 150 (1950) (“We need not go so far
as to say that invention never can reside in mere change of dimensions of an old
device, but certainly it cannot be found in mere elongation of a merchant's counter-
Appeal 2009-013096
Application 10/114,920
5
-a contrivance which, time out of mind, has been of whatever length suited the
merchant's needs.”).
Applicants argue that an orifice mount having the specific dimension
achieves certain benefits and thus performs differently than “known orifice
mounts.” Applicants also contend that the dimensions are critical. App. Brief, 14-
15.
Applicants’ claimed orifice mounts are said to have the following benefits
(Written Description, 2:26 – 3:12):
1. Improved wear characteristics and accuracy of the fluid jet assembly
improving the overall performance of the system;
2. Deflection of the orifice mount adjacent the orifice 20 under pressure is
reduced; and
3. The orifice mount is more stable under pressure.
Applicants support their position with the declaration of one of the
inventors, Mohamed A. Hashish, the Senior Vice President of Technology for
Applicants’ assignee, Flow International Corp. His testimony affirms the benefits
stated in the specification. He testifies that objective, observable, improved
performance has been achieved for orifice mounts having the claimed dimensions
when compared to “previously available mounts.” He testifies that deflection
around the orifice is reduced making the mount more stable. The increased
stability is said to improve accuracy and wear characteristic of the fluid jet system.
He testifies that the improved results were observed in the laboratory and in the
field. Hashish Declaration, ¶¶ 4 and 5.
Applicants’ evidence is not persuasive that an orifice mount having the
specific dimensions claimed performs or operates differently than the “previously
available mounts” or that the dimensions are critical. We do not accord the
benefits reported in the written description and the Hashish declaration significant
Appeal 2009-013096
Application 10/114,920
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weight. Applicants’ written description, while touting benefits and improvements,
provides no objective comparative data with respect to any prior art mount. The
written description does not identify the dimensions of the prior art mounts. The
Hashish declaration provides little additional information over what was provided
in the written description. For the most part the declaration merely affirms and
repeats the unsupported assertions in the written description. Like the written
description, the declaration similarly lacks any objective factual support for the
asserted benefits and alleged performance differences compared with “previously
available” orifice mounts. The evidence does not establish, by a preponderance,
that the claimed orifice mount operates differently than the prior art orifice mounts.
Nor does the evidence establish the criticality of the claimed dimensional
ranges. Neither the written description nor the declaration establishes that the
alleged benefits are due to the specific dimensions. The evidence does not
establish that the “previously available mounts” were either identical except for the
dimensions, or, to the extent there were additional differences, that those
differences did not account for the alleged improvements. Where the benefits
result from something different than what is both claimed and novel, no nexus to
the merits of the invention is established. In re Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011). Thus, the evidence does not establish a nexus between the properties
and the claimed dimensions.
Even if we assume a nexus has been shown, the evidence does not establish
by a preponderance, that the dimensions are critical to achieving improved results.
Criticality of a range is generally established by showing that the results achieved
are unexpected relative to the prior art results. In re Geisler, 116 F.3d 1465, 1469-
70 (Fed. Cir. 1997). To the extent that improved properties were achieved, “[m]ere
improvement in properties does not always suffice to show unexpected results.” In
re Soni, 54 F.3d 746, 751. Applicants’ written description and the Hashish
Appeal 2009-013096
Application 10/114,920
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declaration fail to establish the degree of improvement or even allege that the
improvements would have been unexpected.
We affirm the examiner’s decision holding that Claim 1 is unpatentable
under 35 U.S.C. § 103(a).
Claims 3, 4 and 6
Applicants do not argue that the additional limitations of Claims 3, 4 and 6
would render the subject matter of those claims non-obvious. Brief, 15-16. We
select Claim 1 as representative of the claims on appeal and affirm the rejection of
Claims 3, 4 and 6 for the reasons we stated with respect to Claim 1. 37 CFR
41.37(c)(vii).
DECISION
We affirm the Examiner’s decision that the subject matter of Claims 1, 3, 4
and 6 would have been obvious under 35 U.S.C. 103(a)
New Ground of Rejection
In reaching our decision, we have found it unnecessary to refer to the
Chalmers and Yie references. We express no view on the Examiner’s reliance on
these references. However, since our rationale is significantly different and rests on
a more fundamental basis than the Examiner’s, we designate our opinion as stating
a new ground of rejection under 37 CFR 41.50(b).
Regarding the affirmed rejection of claims 1, 3, 4 and 6, 37 C.F.R.
§ 41.52(a)(1) provides that “Appellant may file a single request for rehearing
within two months of the date of the original decision of the Board.”
This decision contains new grounds of rejection pursuant to 37 C.F.R. §
41.50(b). This regulation states that “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” Furthermore, 37
C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options
Appeal 2009-013096
Application 10/114,920
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with respect to the new grounds of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner pursuant to
37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35
U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution before the Examiner
unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
If Appellant elects prosecution before the Examiner and this does not result
in allowance of the application, abandonment or a second appeal, this case should
be returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED
NEW GROUND OF REJECTION

SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE WA 98104