MAHADESWARASWAMY, Chetan et al.

Patent Trials and Appeals Board

Aug 21, 2019

13756176 - (R) (P.T.A.B. Aug. 21, 2019)

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.
13/756,176 01/31/2013 Chetan MAHADESWARASWAMY PA1327/11269.223 7028
25220 7590 08/21/2019
Roeder & Broder LLP
13400 Sabre Springs Pkwy.
Suite 155
San Diego, CA 92128
EXAMINER
MATES, ROBERT E
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte CHETAN MAHADESWARASWAMY,
MICHEL PHARAND, and MICHAEL B. BINNARD
____________

Appeal 2018-005580
Application 13/756,1761
Technology Center 2800
____________

Before JEFFREY T. SMITH, DONNA M. PRAISS,
and JANE E. INGLESE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 NIKON CORPORATION is the Appellant and the real party in interest.
Appeal 2018-005580
Application 13/756,176
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Appellant timely requests reconsideration of our Decision on Appeal
entered May 24, 2019 (“original Decision” or “Dec.”), in which we affirmed
the Examiner’s final decision to reject claims 22 and 33–38. We have
jurisdiction under 35 U.S.C. § 6(b).
Appellant’s arguments fail to establish that we misapprehended or
overlooked any point that would justify a different outcome. See 37 C.F.R.
§ 41.52(a)(1).
Written Description Rejection
Appellant argues “in the Decision on Appeal, it appears that the Board
only evaluated the original Specification, and did not actually evaluate the
Amended Specification.” (Request 2). Appellant specifically argues:
The Amended Specification at ¶ 142 provides that “‘each of the fixed
orifices can be configured to be of a different size to selectively control the
flow rate ...’. (Emphasis Added). If each fixed orifice is a different size as
provided for in ¶ 142, the fixed orifices must necessarily be distinct and
different from one another. This is directly converse to the conclusion
reached in the Decision on Appeal.”
(Request 4 Emphasis original).
Appellant’s arguments are not persuasive. The Decision considered
all the arguments and evidence including the Declaration and Specification,
both the original and amended, as argued by the Appellant. (Dec. 6–9). The
Amended Specification at ¶ 142 provides that “each of the fixed orifices can
be configured to be of a different size to selectively control the flow
rate . . . ,” which does not define a relationship of the orifices relative to one
another. As stated in the Decision, “the addition to the original Specification
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further specifies that the fixed orifices are sized to control the flow rate of
the circulation fluid.” (Dec. 5–6). The language allows the independent
selection of orifices to achieve the desired flow rate. As such, the
Specification, original and amended, conveys to those skilled in the art that
Appellant had possession of selecting the size of each of the fixed orifices to
selectively control the flow rate.
The Specification, both original and amended, does not describe the
relationship, size or otherwise, of the first, second, and third fixed orifices
relative to one another as recited in amended claim 22. The selection of
each fixed orifice to have a different size for the purpose stated in ¶ 142 —to
provide flow rates that correspond to the average heat dissipated in each
conductor unit 740A, 740B, 740Z—does not indicate the fixed orifices are
necessarily different from one another as specified in claim 22. It may have
been obvious to a person of ordinary skill in the art, based on the original
and/or amended Specification, to select the first, second, and third fixed
orifices to have the relationship specified in claim 22, however, the test for
determining compliance with the written description requirement “is not
whether a claimed invention is an obvious variant of that which is disclosed
in the specification.” Lockwood v. American Airlines, 107 F.3d 1565, 1572
(Fed. Cir. 1997). Moreover, Appellant has not directed us to portions of the
Specification that teach the average heat dissipated in each conductor unit
740A, 740B, 740Z —the basis for determining the appropriate flow rates—
are necessarily distinct from one another.
Obviousness Rejection
The Appellant argues the Board misapprehended the relevance of
certain case law, regarding the physical incorporation of embodiments, and
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Application 13/756,176
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misapprehended the teaching of the Malloy reference as referred to in the
Decision on Appeal. (Request 6). The Appellant argues “their argument
was not primarily founded on the premise of physical incorporation, but
rather on the premise that none of the references had any teaching relating
to the idea of passively cooling (via different sized fixed orifices) an actively
operating motor.” (Request 7).
This argument is not persuasive because the subject matter of claim
22 is directed to a stage assembly and describes the elements of the stage
assembly. The claimed invention is not limited to an actively operating
motor. The claim specifies the stage assembly comprises a temperature
controller that includes three fixed orifices that control the flow rate of the
circulation fluid to the three conductor units. The concept of passive cooling
is known by persons of ordinary skill in the art as stated in the Decision:
The prior art cited by the Examiner establishes that persons of
ordinary skill in the art would have recognized the amount of
coolant utilized in cooling systems must be sufficient for the
intended purpose. (See generally Malloy, Cooper, Binnard, and
Emoto). Persons of ordinary skill in the art would have
understood that orifices having a specific size provide a
constant supply of coolant (see Malloy) and that active cooling
systems are suitable where the cooling needs vary dynamically
(Cooper, Binnard, and Emoto). A person of ordinary skill in
the art would have recognized that in systems where the cooling
needs are constant, orifices having a fixed size sufficient for the
intended purpose would have been suitable. Given these
teachings, we determine that a preponderance of the evidence
supports the Examiner’s determination that one of ordinary skill
in the art, using no more than ordinary creativity, would have
been led to a temperature controller system including a
temperature system that independently directs a first circulation
fluid to the various conductor unit through fixed orifices at
specific flow rates as required.
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Application 13/756,176
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(Decision 11).
Appellant argues:
[T]he Decision on Appeal was overly deferential to the determinations
of the Examiner rather than performing a full and complete analysis of
this rejection on its own merits. . . . In contrast, the Appellant
respectfully believes that it would be more appropriate for the Board
to conduct a de novo review, rather than merely looking for reversible
error.
(Request 9).
In reaching our Decision, we considered all evidence presented and all
timely arguments made by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv); see
also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“Filing a Board appeal does not, unto itself, entitle an appellant
to de novo review of all aspects of a rejection. If an appellant fails to present
arguments on a particular issue . . . the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”). We also
considered the findings of fact and conclusions made by the Examiner and,
if not made clear in our Decision, we adopt as our own the Examiner’s
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken. We found a preponderance of the
evidence supported the Examiner’s findings that the cited prior art teaches or
suggests the disputed limitations of claim 22, and agreed with the
Examiner’s ultimate conclusion of obviousness with regard to claim 22 and
the remaining claims.
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CONCLUSION
Based on the foregoing, Appellant’s Request is granted to the extent
that we have reconsidered our Decision, but is denied with respect to making
changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed May 24, 2019, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).

DENIED