Ex Parte Braun et al

Patent Trial and Appeal Board

Mar 27, 2017

11796685 (P.T.A.B. Mar. 27, 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.
11/796,685 04/27/2007 Minel J. Braun UOA.575.US 3334
26360 7590 03/29/2017
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
EXAMINER
KUNEMUND, ROBERT M
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
pto@rennerkenner.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINEL J. BRAUN and HONGMIN LI
Appeal 2015-007215
Application 11/796,685
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision rejecting claims 1—6, 8—20, and 22—28. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.2
STATEMENT OF THE CASE
1 According to Appellants, the real party in interest is The University of
Akron. Br. 1.
2 Our decision refers to the Specification (Spec.) filed April 27, 2007,
Appellants’ Appeal Brief (Br.) filed October 14, 2014, and the Examiner’
Answer (Ans.) mailed May 29, 2015.
Appeal 2015-007215
Application 11/796,685
The invention relates to an apparatus for hydrothermal crystal growth
having a thermally driven circulation loop. Spec. 1:11—16.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. Limitations at issue are
italicized.
1. A crystal growth apparatus comprising:
(a) a crystal growth vessel, the crystal growth vessel
comprising:
an upper chamber providing an uppermost opening
at an uppermost end thereof,
a lower chamber providing a lowermost opening at
a lowermost end thereof
at least one baffle means, the baffle means being
located within the crystal growth vessel so as to form a
separation between the upper and lower chambers, and
at least one seed crystal held in one of said upper
chamber and said lower chamber and a plurality of pieces
of crystal growth raw material held in the other of said
upper chamber and said lower chamber;
(b) a circulating loop fluidly connecting the upper
chamber of the crystal growth vessel to the lower chamber of
the crystal growth vessel by providing a flow path between the
uppermost opening and the lowermost opening; and
(c) at least one heating means, wherein the at least one
heating means independently provides heat to each of the upper
chamber of the crystal growth vessel, the lower chamber of the
crystal growth vessel, and the circulating loop, wherein the
crystal growth solution circulating through the crystal growth
apparatus must circulate through said plurality of pieces of
crystal growth raw material; and
(d) a crystal growth solution circulating through the
crystal growth apparatus hy natural convection flow effected by
said at least one heating means.
Claim 15, the remaining independent claim before us on appeal, is
similarly directed to a crystal growth apparatus having openings at the
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Appeal 2015-007215
Application 11/796,685
uppermost end of an upper chamber and at the lowermost end of a lower
chamber, and a circulating loop providing a flow path between these
openings.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1) Claims 1—6, 8—11, 14—19, 22—25, and 28 as unpatentable over
Vig;3 (Ans. 2—5 and 6—7)
2) Claims 12, 13, 26, and 27 as unpatentable over Vig in view of
Anderson;4 (Ans. 5—6) and
3) Claims 6 and 20 as unpatentable over Vig in view of
Baughman.5 (Ans. 6).
ANALYSIS
Rejection 1: Obviousness over Vig
Appellants do not argue the claims separately. Pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv) (2013), we select claim 1 to address Appellants’
arguments. Claims 2—6, 8—11, 14—19, 22—25, and 28 stand or fall with claim
1.
We sustain this rejection based on the findings of fact, conclusions of
law, and rebuttals to arguments well expressed by the Examiner in the
Answer. The following comments are added for emphasis.
3 US H580, published February 7, 1989.
4 US 5,375,557, issued December 27, 1994.
5 US 5,135,603, issued August 4, 1992.
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Application 11/796,685
The Examiner finds, without dispute, Vig teaches a crystal growth
apparatus as claimed except the openings 31, 336 for the upper and lower
chambers are not located at respective uppermost and lowermost ends of
those chambers. Ans. 2. However, the Examiner determines that, in the
absence of unexpected results, locating Vig’s openings 31, 33 at the
uppermost and lowermost ends of the chambers would have been obvious as
a matter of routine optimization in order to eliminate stagnant flow areas.
Id. In addition, the Examiner finds that though Vig provides a pump 41
within the circulation loop, the flow type (pump versus natural convection)
is a process limitation which does not affect the apparatus structure, i.e.,
does not structurally distinguish the claimed apparatus over Vig. Id. at 3.
Appellants contend that the structural positioning of physical
elements, the openings in the upper and lower chambers at the respective
uppermost and lowermost ends thereof, is not a mere optimization, but a
fundamental changing of the structure that fundamentally alters the flow/raw
nutrient interaction. Br. 4. Appellants argue that they have “provided a
fundamentally different physical structure and operational mode (natural
convection vs. forced circulation) from that taught in the prior cited art.” Id.
Appellants further argue that Vig’s crystal growth solution
tangentially enters the lower chamber 25 such that the solution brushes over
the top surface of the nutrient 15, resulting in a very slow rate of crystal
growth. Id. at 5. As such, Appellants urge that the claimed apparatus is not
merely an obvious design choice, but establishes a completely different flow
6 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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Application 11/796,685
from Vig’s apparatus. Id. at 9. In contrast to Vig’s apparatus, Appellants
emphasize that the invention “uses the porous bed for relaminarization of a
turbulent entry flow, a concept that is very different from [Vig’s] concept,
which does not guarantee laminar flow.” Id. at 7. As such, Appellants
assert that the claimed apparatus reduces velocity and temperature eddies to
a minimum, greatly enriches the circulating fluid in etched nutrient,
promotes a more homogenous growth environment, significantly increases
deposition rates, “radically speeds growth,” and “diminishes significantly
the total growth time.” Id. at 6 and 8.
Moreover, Appellants assert that Vig teaches pump 41 provides a
circulation rate equal to that of a “conventional, single chamber autoclave”
which does not employ a circulating loop and, therefore, does not teach or
suggest convection for fluid transport. Id. at 8. As such, Appellants argue
that Vig does not and that one of ordinary skill in the art would note that Vig
“could not function properly without” the pump because the pressure drop
caused by the filter element 39 would be too large for natural convection.
Id.
Appellants’ arguments are not persuasive of reversible error. Initially,
we note that Appellants’ asserted advantages with regard to reduced velocity
and temperature eddies, more homogenous growth environment,
significantly increased deposition rates, radically faster growth, and
significantly shorter growth time are merely attorney argument. Appellants
do not direct our attention to any evidentiary support in the record for any of
these asserted advantages, nor do we find any. There is also no evidence
supporting Appellants’ argument that Vig’s location for the openings is
actually inferior to Appellants’ with regard to the rate of crystal growth. In
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Application 11/796,685
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what
seems to follow from common experience is just attorney argument and not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness.”) Attorney argument does not suffice. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984); In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”)
Further, while the Examiner has characterized the location of the
openings in the upper and lower chamber as being optimizable by routine
experimentation, the Examiner states that the difference between Vig’s and
Appellants’ location of these openings is merely a matter of design change,
which can be viewed as the result of optimization of either design or
function, especially given the finding that the record is devoid of any
evidentiary support for unexpected advantages/results for Appellants’
locations, or even that Appellants’ location of the openings is superior to that
of Vig. Ans. 8. Appellants have not shown either the Examiner’s finding or
the Examiner’s statement are erroneous. In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (“We also agree that the particular placement of the contact
provides no novel or unexpected result. The manner in which electrical
contact is made for Smith’s battery would be an obvious matter of design
choice within the skill of the art.”) While Vig’s openings are located at
respective upper and lower portions of the upper and lower chambers, the
location at the uppermost and lowermost ends of these chambers would have
been readily apparent as the most likely alternative locations for these
openings given the direction of Vig’s fluid flow. Indeed, the Examiner aptly
observes that Appellants’ arguments are based on known principles of
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Appeal 2015-007215
Application 11/796,685
contact between fluid and solids (Ans. 10), which further supports the
Examiner’s position that relocation of Vig’s openings would have been an
obvious matter of design choice.
Moreover, while Appellants contend that Vig’s fluid flow concept is
very different from that provided by Appellants’, we disagree. Appellants
do not direct our attention to, nor do we find, any support in the record for
Appellants’ assertion that the invention “uses the porous bed for
relaminarization of a turbulent entry flow,” nor that Vig’s design “does not
guarantee laminar flow.” We do note that Appellants recite in claim 1 (but
not independent claim 15) that the crystal growth solution circulates through
the apparatus “by natural convection flow effected by said at least one
heating means.” However, Appellants’ claims do not exclude provision of a
pump. Indeed, as the Examiner finds (Ans. 10-11), Appellants disclose that
a pump 370 may be provided to assist fluid flow, such as for lower pressure
operations. Figs. 4a and 4b. Appellants disclose that “[i]n such situations,
solution 118 flows due to the combination of pump 370 and the natural
convection described previously. ” Spec. 10:22—23. Appellants do not
contest the Examiner’s finding that Vig teaches a heating means that
independently heats each of the chambers and the circulating loop, as well as
a control means that selectively controls the heating means as recited in the
claims. Thus, Appellants have not identified error in the Examiner’s finding
that Vig’s apparatus is at least capable of natural convection.
“[Apparatus claims cover what a device is, not what a device
does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends
on the claimed structure, not on the use or purpose of that structure, Catalina
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Application 11/796,685
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), or the function or result of that structure. In re Danly, 263 F.2d 844,
848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA
1948). Although “[a] patent applicant is free to recite features of an
apparatus either structurally or functionally[,] .... choosing to define an
element functionally, i.e., by what it does, carries with it a risk.” In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner
establishes a reasonable belief that the apparatus is capable of performing as
recited in the claims, the burden of proof shifts to Appellants to show that
the prior art actually cannot perform the recited function. Id. Appellant has
not provided any evidence or persuasive technical reasoning to refute the
Examiner’s reasonable determination that Vig at least would have been
capable of providing natural convection, with or without the assistance of
the pump.
Accordingly, we will sustain the Examiner’s obviousness rejection
based on Vig.
Rejections 2 and 3: Obviousness over a combination of Anderson or
Baughman
Appellants do not separately argue these rejections. Therefore, for the
same reasons discussed above, we likewise sustain these obviousness
rejections based on Vig in view of Anderson or Baughman.
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1—6, 8—20, and
22—28 under 35 U.S.C. § 103(a) as unpatentable over Vig alone, or further in
view of Anderson or Baughman, is affirmed.
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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