Ex Parte Tsui

Board of Patent Appeals and Interferences

Jun 8, 2012

11850527 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HERMAN YIK WAI TSUI
____________

Appeal 2011-000704
Application 11/850,527
Technology Center 1700
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-000704
Application 11/850,527

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DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-16, the only claims pending in the Application.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is representative of the invention and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. A system for treating air and processing materials, comprising:

at least one diffusive plasma reactor, each diffusive plasma reactor having
insulated electrodes, one being anode and another being cathode at any given
moment in operation, and a reaction chamber defined between the insulated anode
and cathode;

a diffuser located in the reaction chamber between the insulated anode and
cathode; and

a power supply for supplying high voltage alternating current between the
insulated anode and cathode;

wherein the insulated electrodes generate plasma within the reaction
chamber to treat air passing through the reaction chamber or process materials
placed in the reaction chamber.

Appellant requests review of the following grounds of rejection, expressly
stating that “[c]laims 1-16 will stand [or] fall together” (App. Br. 3):
1. claims 1, 4-6, 9-12, and 15 under 35 U.S.C. § 102(b) as anticipated by
Iwama (US 2005/0249646 A1, pub. Nov. 10, 2005);

1 Final Office Action mailed Nov. 4, 2009 (“Final”).
2 Appeal Brief filed Apr. 4, 2010 (“App. Br.”).
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Application 11/850,527

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2. claims 2 and 8 under 35 U.S.C. § 103(a) as unpatentable over Iwama
in view of Tamura (US 2006/0115390, pub. Jun. 1, 2006);
3. claims 3, 7, 13, and 16 under 35 U.S.C. § 103(a) as unpatentable over
Iwama in view of Hammerstrom (US 7,037,468 B2, issued May 2, 2006); and
4. claim 14 under 35 U.S.C. § 103(a) as unpatentable over Iwama in
view of Iida (WO 2004/112940, pub. Dec. 29, 2004, as translated in US 7,347,979
B2, issued Mar. 25, 2008).
Appellant raises the following issue for our consideration: did the Examiner
reversibly err in finding the claimed “diffuser” reads on Iwama’s “porous inorganic
dielectric”?
Appellant argues Iwama’s porous inorganic dielectric
is not a diffuser because [it] has none of the following features defined
for a diffuser of the present invention[, i.e.]:
a. . . . the ability to provide additional nucleation sites to support the
formation of discharge filaments (lines 6-7, page 11)[;]
b. [] can be made of conductive materials (line 8, page 11)[;]
c. [] only partially fills the reaction space between the electrodes
(line 10 and lines 30-33, page 11)[; and]
d. [] only works when placed between insulated electrodes (lines 10-
13, page 11).
(App. Br. 6.)
A reference may be from an entirely different field of
endeavor than that of the claimed invention or may be directed to
an entirely different problem from the one addressed by the
inventor, yet the reference will still anticipate if it explicitly or
inherently discloses every limitation recited in the claims.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Appeal 2011-000704
Application 11/850,527

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We have thoroughly considered Appellant’s arguments, but are not
persuaded of reversible error in the Examiner’s rejection of independent claim 1
for the reasons expressed in the Answer3 (see Ans. 9-12) and below.
Appellant contends the Examiner failed to establish that Iwama’s “inorganic
dielectric has the ability to provide additional nucleation sites to support the
formation of discharge filaments,” which is a feature required for a diffuser as
claimed. (App. Br. 6.)
According to the Specification “the availability of additional nucleation sites
on the electrically isolated surfaces of the diffuser 19 is maximized” where “the
constituent materials of the diffuser 19 do not take up a significant portion of the
volume within the reaction chamber 12.” (Spec. 11:30-33.) The Specification
states that the diffuser may have a number of different configurations, including a
perforated sheet, wire mesh, and “a tangled string or fluff that loosely fills up the
space between the electrodes.” (Spec. 11:34-12:5.) Iwama’s inorganic dielectric is
described as “porous” and “made of a mixture of barium titanate and alumina.”
(Iwama [0028].)
The foregoing disclosure from the Specification and Iwama is sufficient to
support the Examiner’s finding that Iwama’s inorganic dielectric has a structure
which is suitable for use as a diffuser as claimed, i.e., it does not take up a
significant portion of the volume within the reaction chamber by virtue of its
porosity (see infra 5-6 (bridging para.)) and, therefore, would be capable of
providing additional nucleation sites (see Ans. 10).
Where the Examiner establishes a reasonable assertion of inherency and
thereby evinces that the products claimed by the applicant and disclosed in the
prior art appear to be the same, the burden is properly shifted to the applicant to

3 Examiner’s Answer mailed Jun. 23, 2010 (“Ans.”).
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show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
Appellant has not met the burden to provide persuasive evidence
demonstrating that Iwama’s porous inorganic dielectric would be incapable of
providing additional nucleation sites. (See generally, App. Br. 3-8; Rep. Br.4 1-5.)
Appellant also argues Iwama’s porous inorganic dielectric is not a diffuser
because it cannot be made of conductive materials. (App. Br. 6.) The
Specification states that “[t]he diffuser can be made of electrically conductive or
insulating materials.” (Spec. 6:10-11 (emphasis added).) Appellant has not
disputed that Iwama’s porous inorganic dielectric can be made of insulating
materials. (Cf. App. Br. 6 (“[B]y definition, the inorganic dielectric used in Iwama
cannot be conductive.”).) Therefore, this argument is not persuasive of error in the
Examiner’s rejection of claim 1. See In re May, 574 F.2d 1082, 1089 (C.C.P.A.
1978) (“[The reference] expressly discloses . . . a species within the genus of claim
1. Therefore, [the reference] is a technical anticipation of claim 1.”)
Appellant contends Iwama’s porous inorganic dielectric is not a diffuser
because it “fully fills the reaction space between the opposite electrodes” whereas
“[a] diffuser as required in the present invention can only partially fill the space to
perform its intended function.” (App. Br. 6.) As an initial matter, we note
Appellant’s contention that a diffuser “can only partially fill the space” between
electrodes does not appear to be commensurate in scope with claim 1, because
claim 10, which depends from claim 1, expressly recites this limitation. See 35
U.S.C. § 112, ¶ 4 (“[A] claim in dependent form shall contain a reference to a
claim previously set forth and then specify a further limitation of the subject matter
claimed.” (emphasis added)). According to the Specification, “[t]he diffuser 319

4 Reply Brief filed Aug. 23, 2010.
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can [] be constructed like a tangled string or fluff that loosely fills up the space
between the electrodes.” (Spec. 12:4-5 (emphasis added); see also, claim 9.)
Appellant has not persuasively explained why, given the existence of voids due to
its porous structure, Iwama’s inorganic dielectric is not properly viewed as
corresponding to a structure which “loosely fill[s] the space between the
electrodes” (appealed claim 9) or “only partially fills the reaction space between
the electrodes” (Ans. 11).
Appellant also argues the “diffuser of the present invention can only work
with insulated electrodes” while “Iwama discloses that it is possible for the
inorganic dielectric to work if the electrodes are not all insulated.” (App. Br. 7.)
This argument is not persuasive of error in the Examiner’s rejection of claim
1, because Appellant has not refuted the Examiner’s finding that “Iwama []
discloses an embodiment using insulated electrodes” (Ans. 11 (citing Iwama Fig.
2C)). See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed.
Cir. 2003) (“The anticipation analysis asks solely whether the prior art reference
discloses and enables the claimed invention, and not how the prior art characterizes
that disclosure or whether alternatives are also disclosed.”).
In sum, for the reasons stated above and in the Answer, we are not
persuaded the Examiner reversibly erred in finding the “diffuser,” as recited in
appealed claim 1, reads on Iwama’s “porous inorganic dielectric.” As noted above
(see Ans. 3 supra p. 2), Appellant does not advance any additional arguments in
support of patentability of the remaining appealed claims. Accordingly, we sustain
all four grounds of rejection. The Examiner’s decision to reject claims 1-16 is
affirmed.

Appeal 2011-000704
Application 11/850,527

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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).
AFFIRMED

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