Ex Parte Vijay et al

Patent Trial and Appeal Board

May 18, 2018

14285196 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/285,196
50811 7590
O""Shea Getz P.C.
FILING DATE
05/22/2014
05/22/2018
10 Waterside Drive, Suite 205
Farmington, CT 06032
FIRST NAMED INVENTOR
Mohan M. Vijay
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1208-0002-2 4156
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
05/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@osheagetz.com
shenry@osheagetz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAN M. VIJA Y, ANDREW HUNG TIEU,
WENZHUO YAN, and BRUCE R. DANIELS 1
Appeal2018-002335
Application 14/285,196
Technology Center 3700
Before ANNETTE R. REIMERS, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mohan M. Vijay et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1, 2, 4, 5, 7, 8, 10, and 11
under 35 U.S.C. § 103(a) as unpatentable over Vijay (WO 2005/042177 Al,
published May 12, 2005) (hereinafter "WO '177") and von Borcke (US
4,995,201, issued Feb. 26, 1991). Claims 3, 6, 9, and 12-20 have been
1 VLN Advanced Technologies Inc. is indicated as the "real party interest" of
the subject application. See Appeal Brief 3 (hereinafter "Appeal Br.") (filed
Oct. 3, 2017).
Appeal2018-002335
Application 14/285,196
canceled. Claims 21 and 22 have been withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates generally to forced pulsed
waterjets and, in particular, to surface prepping using forced pulsed
waterjets." Spec. ,r 2, Fig. 3F. Claims 1 and 7 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method of prepping a cylindrical inner surface of a bore
using a high-frequency forced pulsed waterjet, the method
compnsmg:
inserting the nozzle2 inside the bore, wherein the bore has
a constant radius;
generating a pressurized waterjet using a high-pressure
water pump;
generating a high-frequency signal using a high-frequency
signal generator;
applying the high-frequency signal to a transducer to
generate the high-frequency forced pulsed waterjet; and
rotating a rotatable nozzle head inside the bore to prep the
inner cylindrical surface of a substrate material of the bore to a
predetermined uniform surface finish characterized by an
average surface roughness Ra that is within a predetermined
range of surface roughness using the high-frequency forced
pulsed waterjet exiting from at least one angled exit orifice of the
rotatable nozzle head, wherein the waterjet flows through a
curved conduit in the nozzle head to the at least one angled exit
orifice that is substantially perpendicular to an axis of rotation of
2 Each of independent claims 1 and 7 recites, "inserting the nozzle inside the
bore." See Appeal Br. 11, 12 ( emphasis added). As "the nozzle" lacks
antecedent basis in each of claims 1 and 7, it appears Appellants meant for
claims 1 and 7 to recite, "inserting f! nozzle inside the bore." See id. ( emphasis
added).
2
Appeal2018-002335
Application 14/285,196
the rotatable nozzle head to direct the waterjet radially outwardly
against the surface of the bore.
ANALYSIS
Claim 1 is directed to "[a] method of prepping a cylindrical inner
surface of a bore" including the step of "rotating a rotatable nozzle head ...
to prep the inner cylindrical surface ... of the bore," wherein the high-
frequency forced pulsed waterjet "flows through a curved conduit in the
nozzle head to the at least one angled exit orifice that is substantially
perpendicular to an axis of rotation of the rotatable nozzle head." Appeal
Br. 11, Claims App. The Examiner finds that WO '177 "preps the surface of
a substrate by deburring the workpiece and can also be used similarly to
Appellant[s'] disclosure of removing the coating (ie decoating)." Ans. 6; see
also Final Act. 3 ("Deburring and decoating are synonymous with
'prepping' a surface."). 3 The Examiner further finds that
[ r ]egarding the orifices angled at 90 degrees to the rotation
axis, [WO '177] discloses that the angle can be varied . . . to
achieve desired self-rotation of nozzle. Therefore, it would have
been obvious to one of ordinary skill in the art at time invention
was made to angle the exits at 90 degrees since any angle is
contemplated by [WO '1 77] and in order to achieve desired self-
rotation.
Final Act. 4 ( citing WO '177 16: 17); see also Ans. 7.
Appellants contend that "[ d]e-coating and prepping are ... considered
different processes" (Appeal Br. 8; see also Reply Br. 2)4 and "orifices 91
[ of WO '177] are actually parallel to the axis of rotation, axially oriented,
3 Examiner's Answer (hereinafter "Ans.") (dated Nov. 1, 2017); Final Office
Action (hereinafter "Final Act.") (dated May 3, 2017).
4 Reply Brief (hereinafter "Reply Br.") (filed Dec. 29, 2017).
3
Appeal2018-002335
Application 14/285,196
not perpendicular to the axis of rotation" (Reply Br. 4; see also Appeal Br.
9).
As an initial matter, we disagree with the Examiner's position that
"de-coating" a surface is synonymous with "prepping" a surface. See Final
Act. 3. Appellants' Specification describes that Figure 1 C "depicts a forced
pulsed waterjet apparatus for use in surface prepping ( or other applications
such as coating removal or creating patterns) in accordance with
embodiments of the present invention" and "[t]he drop test ... provides a
useful and novel means to determine operating parameters for particular
prepping or coating-removal applications." Spec. ,r,r 18 ( emphasis added),
163 ( emphasis added), Fig. 1 C; see also Reply Br. 2. In other words,
Appellants' Specification indicates that "prepping" a surface and "de-
coating" a surface are different processes. Moreover, Appellants correctly
note that both withdrawn claims 21 and 22 of the subject invention "recite a
step of removing a coating prior to prepping the surface," and, thus, "[t]he
principle of claim differentiation requires that [the prepping step ofJ claim 1
be interpreted as not involving de-coating." Appeal Br. 8.
Here, the Examiner finds that "[ d]eburring and decoating are
synonymous with 'prepping' a surface." Final Act. 3; see also Ans. 6.
However, as discussed above, Appellants' Specification distinguishes
between "prepping" and "de-coating" a surface. Stated differently,
according to the Specification, "prepping" and "de-coating" are not
synonymous processes. Thus, the Examiner's position that "[t]he deburring
process" of WO '177 "is synonymous with [the] prepping" process of the
subject invention is not supported by a preponderance of the evidence. See
Ans. 6; see also Spec. ,r,r 18, 163, Fig. IC; Appeal Br. 8; Reply Br. 2-3.
4
Appeal2018-002335
Application 14/285,196
Regarding the exit orifices, although WO '177 discloses that the
"angle of orientation" of exit orifices 91 "can be at different angles [i.e., can
vary]" (see Ans. 7; see also Final Act. 4), we agree with Appellants that exit
orifices 91 of WO '177 "are all aimed forward in order to impinge on a
forward surface" such that "an amount of self-rotation" of rotating nozzle
head 90 is "adjusted by changing the axial angle of orientation" of exit
orifices 91 and, as such, "[ t ]here is no disclosure or suggestion" in WO '1 77
of exit orifices 91 being "substantially perpendicular to an axis of rotation"
of rotatable nozzle head 90. See Reply 4 (underlining added); see also
Appeal Br. 9; WO '177 16:15-20, Figs. 13-15.
For these reasons, we do not sustain the Examiner's rejection of
claims 1, 2, 4, 5, 7, 8, 10, and 11 as unpatentable over WO '177 and von
Borcke.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 2, 4, 5,
7, 8, 10, and 11 as unpatentable over WO '177 and von Borcke.
REVERSED
5