Ex Parte Farina et al

Patent Trial and Appeal BoardJan 31, 2014

95001578 (P.T.A.B. Jan. 31, 2014)

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. 95/001,578 04/19/2011 Dino J Farina 3028-0039 5314 32361 7590 01/31/2014 GREENBERG TRAURIG (NY) MET LIFE BUILDING 200 PARK AVENUE NEW YORK, NY 10166 EXAMINER DEB, ANJAN K ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/31/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ INNOVASYSTEMS, INC. Third Party Requester and Respondent v. PROVERIS SCIENTIFIC CORPORATION Patent Owner and Appellant ____________ Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 2 Patent Owner Proveris Scientific Corporation (“Patent Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 3-13. 1 Third Party Requestor InnovaSystems, Inc. (“Requestor”) responds to the appeal. 2 We have jurisdiction under 35 U.S.C. §§ 134 and 315. We heard oral arguments from Patent Owner on October 2, 2013, the written transcript of which is part of the record. We AFFIRM. STATEMENT OF THE CASE United States Patent 6,785,400 B1 (hereinafter the “’400 Patent”), issued to Dino J. Farina on August 31, 2004, is the subject of the current inter partes reexamination. The ’400 Patent was also the subject of a litigation between the Patent Owner and Requestor. See PO App. Br. 2. THE INVENTION The invention relates to systems and methods for characterizing aerosol spray patterns through illuminating an aerosol spray plume and utilizing optical-techniques. Spec. 1:26-30. The system includes, for 1 See Patent Owner’s Appeal Brief, filed July 30, 2012 (hereinafter “PO App. Br.”), at 3; Examiner’s Answer, mailed February 5, 2013, incorporating by reference the Examiner’s Right of Appeal Notice, mailed April 27, 2012 (hereinafter “RAN”). 2 See Third Party Requestor’s Appeal Brief, filed May 29, 2012 (hereinafter “TPR App. Br.”), at 2. Patent Owner also responds to the Requestor’s appeal. See Patent Owner’s Respondent Brief, filed August 30, 2012 (hereinafter “PO Resp. Br.”), at 1. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 3 example, a pumping device to generate an aerosol spray plume, an illumination device to illuminate the spray plume along at least one geometric plane that intersects the spray plume, and an imaging device that acquires data representative of an interaction between the illumination and the spray plume. Abstract. Claim 3, which is illustrative of the appealed subject matter, reads as follows: 3. An apparatus for producing image data representative of at least one sequential set of images of a spray plume, each of the images being representative of a density characteristic of the spray plume (1) along a geometric plane that intersects the spray plume, and (ii) at a predetermined instant in time comprising: an illuminator for providing an illumination of the spray plume along at least one geometric plane that intersects the spray plume; and, an imaging device for generating the image data representative of an interaction between the illumination and the spray plume along the at least one geometric plane. PO App. Br., Claims App’x. PRIOR ART REJECTIONS The prior art references, relied upon by Appellant in the proposed rejections that have not been adopted, are: Dodge et al. 2,779,233 Jan. 29, 1957 Dietrich 3,275,744 Sept. 27, 1966 Aleshin et al. 5,396,333 Mar. 7, 1995 Gomez 6,049,382 Apr. 11, 2000 Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 4 S. Miszuk et al., “Video Characterization of Flume Patterns of Inhalation Aerosols,” Journal of Pharmaceutical Sciences, Vol. 69, No.6, 7l3-717 (June 1980) (hereinafter “Miszuk”). Rama Deljouravesh, “An Optical Patternator for Quantitative and On- Line Spray Diagnostics,” Thesis Submitted to the Department of Mechanical Engineering, Queen's University, Kingston, Ontario, Canada (October 1997) (hereinafter “Deljouravesh”). M. Dolovich, “Measurement of Particle Size Characteristics of Metered Dose Inhaler (MDI) Aerosols,” Journal of Aerosol Medicine, Vol. 4, No. 3, 251-263 (1991) (hereinafter “Dolovich”). Gary S Settles, “A Flow Visualisation Study of Airless Spray Painting,” published in the Proceedings of the ILASS-Americas '97, May 18-21, 1997, Ottawa, Canada (hereinafter “Settles”). Younggy Shin, “Visualization of Liquid Fuel Behavior in a Spark Ignition Engine during Starting and Warm-up”, published in the KSME International Journal, Vol. 11, No.5, pp. 582-593, 1997 (hereinafter “Shin”). Patent Owner also relies on the Declaration of Dino Farina, dated August 29,2011 (PO Resp. Br., Evid. App’x., Ex. A) (hereinafter “Farina Decl.”). Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 5 ISSUES 1. Did the Examiner err in construing “an illuminator for illuminating the spray plume along at least one geometric plane”? 2. Did the Examiner err in finding that the cited prior art discloses an illuminator for providing an illumination of the spray plume along at least one geometric plane that intersects the spray plume as recited in claim 3? 3. Did the Examiner err in finding dependent claims 4-15 anticipated or obvious in view of the cited prior art? DISCUSSION Findings of Fact The record supports the following findings of fact (FF) by at least a preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (explaining the general evidentiary standard for proceedings before the Office). The ’400 Patent FF1. The ’400 Patent generally relates to a system for characterizing aerosol spray patterns. Spec. 1:26-28. The system illuminates an aerosol spray plume and utilizes optical-techniques to characterize the associated spray pattern. Id.at 1:28-30; Abstract. FF2. The Specification notes that characterization of the spray’s geometry is the best indicator of overall performance of most inhaler-based drug delivery device (hereinafter “DDD”). Important characteristics include the spray’s divergence angle (plume geometry), the spray’s cross-sectional Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 6 ellipticity, uniformity and particle/droplet distribution (spray pattern), and the time evolution of the developing spray. Spec. 1:45-54; see also Spec. 1:61-65 (explaining that during quality assurance and stability testing, plume geometry and spray pattern measurements are key characteristics to be reviewed). FF3. Fig 1, depicted below, is a schematic showing an embodiment of the spray data acquisition system. Fig. 1 of the ’400 Patent Depicting a Spray Data Acquisition System Including a Pumping Device, Illumination Device, and Imaging Device FF4. The Specification describes that a pumping device generates an aerosol spray plume and an illuminator illuminates the spray plume along at least one geometric plane that intersects the spray plume. Spec. 2:41-67. An imaging device or transducer then acquires data representative of the interaction between the illumination and the spray plume along the at least one geometric plane. Id. The image sampling rate of the imaging device or system may be, for example, approximately 500 images per second. Spec. 3:33-35. FF5. Further, according to the Specification, the system “is capable of capturing information representative of the time evolution of an aerosol Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 7 spray for substantially complete geometrical (divergence angle and plume geometry) and pattern (cross-section uniformity and ellipticity) imaging.” Spec. 4:8:12. FF6. In the disclosed embodiment, the position of the illumination device is rotated depending on whether the system is performing spray pattern tests or spray geometry tests. For spray pattern tests, the illumination device illuminates a thin sheet along a transverse axial cross section of the spray, as shown in Fig. 2 below. Spec. 6:26-30. Fig. 2 of the ’400 Patent Depicting the Illumination Device Projecting a Thin Sheet of Light along the Spray Axis For spray geometry tests, as shown in Fig. 3, the illumination device illuminates a plane of particles parallel to the flow direction along the centerline of the spray or spray axis SA. Spec. 6:52-56. FF7. The illumination device may “simultaneously or sequentially illuminate the spray with thin, fan-shaped beams of light along the spray axis SA and traverse to the spray axis SA.” Spec. 4:39-42. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 8 FF8. The Specification further describes Preferably, the illumination device is a continuous-wave illuminant…such as a laser sheet generator. Furthermore, the light from the illumination device 26 is capable of being shaped into a thin sheet for accurate illumination of the particles for both the spray pattern and 50 divergence angle measurements. Preferably, the illumination device is capable of producing approximately 4W of illumination power and directly projecting a very thin sheet of light at a wavelength of 810 nm with a fan angle of 45° though other fan angles can be used depending on the 55 situation. Spec. 5:44-56. FF9. The Magnum 4000 laser sheet generator, which directly projects a very thin sheet of light, is an example of a preferred illumination device. Spec. 5:57-61. FF10. The Specification further discloses that the system includes a spray pump actuator that is capable of controlling the pumping force and duration of the aerosol spray plume produced by the pumping device. Spec. 2:58-61; see also Spec. 4:55-58. Miszuk FF11. Miszuk discloses a technique to characterize the intermittent flume patterns associated with the short bursts of metered-dose aerosols. Miszuk, Abstract. Particularly, two orthogonal video images are utilized to describe the complex shape and direction of the flume pattern. Id. FF12. In Miszuk, the aerosol droplets are illuminated by a high intensity light source. Miszuk, p. 714 and Figs. 3 and 4. The scattered light from the flume droplets are then delivered to the viewing lens of a video camera. Miszuk, p. 714. As shown in Figs. 5-7, the entire spray plume is illuminated by the light source. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 9 FF13. Miszuk explains that because the flume pattern is three dimensional, a single two dimensional image cannot completely characterize the flume pattern. Miszuk, p. 713-714. Instead, according to Miszuk, two simultaneous orthogonal video images are needed to completely describe the complex shape and direction of the flume pattern. Miszuk, p. 714. FF14. For the optimum contrast in these orthogonal views, Miszuk suggests using two flexible fiber optic bundles to ensure uniformity of the scattered light in both views. Id. Dolovich FF15. Dolovich generally relates to measuring the particle size characteristics of metered dose inhaler (hereinafter “MDI”) aerosols to predict the deposition efficiency and behavior in the lung. Dolovich, §§Abstract and Introduction. FF16. Dolovich identifies different particle sizing techniques, such as techniques employing aerodynamic principles or light scattering methods. Dolovich p. 252 (Particle Sizing Techniques); see also Dolovich, Table 2. FF. 17. Dolovich describes an optical sizing diffraction system where “a laser beam intersects a portion of the aerosol spray.” Dolovich, p. 257 (Optical Sizing Methods). In particular, the system “characterizes a slice of the MDI aerosol spray.” Dolovich, p. 256 (Optical Sizing Methods). FF18. A laser, as opposed to white light, is used for better resolution and increased accuracy. Dolovich, p. 256 (Optical Sizing Methods). FF19. Dolovich additionally discloses photomultipliers that detect light as the particulars travel through the laser beam to capture data used to Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 10 analyze the change in particular size at fixed points along the horizontal axis of the aerosol flume. Dolovich p. 258 (2 nd and 3 rd paragraphs). Gomez FF16. Gomez generally is directed to an apparatus and procedure for characterizing spray plumes by generating a collimated laser beam that is passed through a measurement plane of the spray. Gomez, Abstract. In particular, the collimated laser beam is directed through the axis of a Cartesian measurement system (x0,y0), which is the measurement plane, and propagates along the x-axis. Spec. 3:28-41. FF16. Scattering collection means collects the scattered spray material and another collection means obtains the attenuation of the laser beam passing through the measurement plane. Gomez, Abstract and 2:48- 65. Both collection means are coupled to photodetectors and signal processing units able to generate electrical signals proportional to the received light intensities. Gomez, Abstract. Dietrich FF17. Generally, Dietrich discloses a spray analysis apparatus. As shown in the Figure, a stroboscopic light source 12 is placed adjacent to the spray. When energized, the stroboscopic light source will brightly illuminate a portion of the spray. Dietrich, Figure and 2:24-30. FF18. In Dietrich, the light source may be any conventional type that upon triggering will produce short-duration light flashes of great intensity. Dietrich 2:24-30. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 11 FF19. Dietrich also describes a camera with a conventional scanning system. Dietrich, 2:33-34. Dodge FF20. Dodge, like Dietrich, is directed to photographic analysis of sprays. Dodge, Abstract. As shown in Figs. 1 and 3, a photo light is placed adjacent to the spray, on the opposite side of the spray from the camera. With this arrangement, the drops of the spray appear in silhouette on pictures made by the camera. Dodge, Figs. 1 and 3 and 2:38-47. FF21. The light passes through a diffusing cell before illuminating the spray and arriving at the camera. Dodge 2:50-53. The intensity of the light may also be modified by the introduction of a suitable neutral light filter. Dodge 2:56-60. FF22. Dodge further teaches that the optical axis of the camera may be directed to make any desired angle with the axis of the spray. Dodge 2:62-64. Aleshin FF23. Aleshin generally relates to a device for observation and analysis of a cross-sectional portion of a stream of material. Aleshin, Abstract. The device includes a laser light source to generate a laser beam and focusing lens to convert the beam into a plane of light. Id. FF24. More specifically, as shown below in Fig. 1, a diode laser light source generates a beam of light and a line generator means converts the beam of light into a line of light along a plane. This plane of light is Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 12 projected through a powder stream to illuminate a selected cross-section for observation and analysis. Aleshin, 3:7-22. Fig. 1 of Aleshin Depicting the Observation and Analysis Device FF25. According to Aleshin, a laser light source is preferred because it is less divergent therefore produces a more refined line or plane of light. Aleshin further notes though that any light source that adequately illuminates the selected cross section of the powder stream and highlights the interior portion may be used. Aleshin 3:31-36. Shin FF26. Shin describes an apparatus and test methods for visualizing liquid fuel behavior. Shin, Abstract. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 13 FF 27. The fuel is illuminated by a collimated candescent light and a CCD camera records a set of images of the liquid fuel during start-up. Shin p. 583-584. FF28. Shin additionally discloses using a high speed CCD camera with a recording rate of 500 frames/sec. Id. Settles FF26. Settles is directed to a flow visualization study of airless spray painting. In one described analysis method, an argon-ion laser beam is spread into a sheet by a simple glass rod to illuminate a plane of light. Settles, p. 146 (Experimental Methods). The plane of light is applied to three perpendicular planes as shown in Fig. 2 below. Fig. 2 of Settles Depicting Three Planes of Light FF27. Settles also identifies that “[t]his Planar Laser Scattering (PLS) technique is well-suited to examine complex particle-laden flows.” Id. FF28. An S-VHS videotape using a 1/250 sec shutter speed is used to record the results. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 14 Deljouravesh FF28. Deljouravesh describes an optical patternator for quantitative and on-line spray diagnostics. Deljouravesh, Title and Abstract. FF29. According to Deljouravesh, laser light sheet imaging has been used in a wide variety of flow visualization application to obtain qualitative information regarding the overall structure of the flows considered. This method uses cylindrical optics to produce a planar region of illumination from a laser beam. Deljouravesh § 2.2.4, Laser light sheet imaging. FF30. In Deljouravesh, a laser beam is converted into a plane of light by a cylindrical lens. The plane of light is then projected to illuminate a cross section of the spray, as depicted in Fig. 3.2. Deljouravesh, Fig. 3.2; see also Deljouravesh, Chapter 2.2. Fig. 3.2 of Deljouravesh Depicting a Cylindrical Lens Converting a Laser Beam into a Plane of Light FF30. As shown in Fig. 4.2, the cylindrical lens is adjacent to the top of the laser. Deljouravesh, Fig. 4.2. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 15 FF31. Deljouravesh describes that “the optical patternator consists of two sub-systems, one for the acquisition and recording of the forward light power and one for the capture and digitization of video images through a CCD camera.” Deljouravesh, Chapter 4.1. FF32. Deljouravesh additionally contemplates analyzing metered dosage inhalers. “The importance of particle size measurement (offered by some optical methods) in two phase-flows can not [sic] be overstressed. In some medical applications sprays are used for drug delivery via the patient's respiratory tract through the use of metered dosage inhalers." Deljouravesh, Chapter 2.2. CLAIM CONSTRUCTION An Illuminator for Providing an Illumination of the Spray Plume along at Least One Geometric Plane that Intersects the Spray Plume Patent Owner argues that “an illuminator for providing an illumination of the spray plume along at least one geometric plane that intersects the spray plume” should be construed as “a light source that projects a thin sheet of light that intersects the spray plume along a geometric plane.” PO App. Br. 13. Additionally, according to the Patent Owner, “along at least one geometric plane” means along one geometric plane at a time. Id. We disagree. The Patent Owner first relies on the “context of the claim” to construe “at least one” as one at a time. PO App. Br. 12-14. The only “context” identified though is the later recited singular form of “an interaction.” Id. In particular, the Patent Owners asserts “[u]se of the singular (i.e., ‘an interaction’) defines the limitation to the specific interaction along the one Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 16 geometric plane selected for the particular test the user wishes to perform.” Id. at 13. This is not persuasive. It is well established that “a” (or “an”) in a comprising claim means one or more. See Baldwin. Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). Merely reciting a single interaction here does not preclude the claim from also covering additional interactions. Moreover, the singular form of “an interaction” is consistent with the express language of the claim – at least one, i.e. one or more than one. In other words, claim 3 covers illuminating along one geometric plane (resulting in one interaction) as well as illuminating along multiple geometric planes (resulting in multiple interactions). The Patent Owner’s reliance on claim 5 is likewise unavailing. Claim 5 recites: 5. An apparatus according to claim 3, wherein a first time- sequential set of images corresponds to an axial cross-sectional density characteristic along a first geometric plane substantially normal to a flow direction centerline, and a second time- sequential set of images corresponds to a longitudinal density characteristic along a second geometric plane substantially parallel to and intersecting the flow direction centerline. The Patent Owner maintains that because the Specification, in one embodiment, describes that illumination of these first and second geometric planes are achieved through rotation of the illuminator, claim 3 must be limited to projecting light along only one geometric plane at a time. PO App. Br. 14-17. Specifically, the Patent Owner asserts that “the apparatus provides a user with the ability to generate only one time-sequential set of images at a time using an illuminator that projects one thin sheet of light at a Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 17 time, and provides at least two options for the type of image data generated by virtue of the position in which the illuminator and imaging device are placed….” PO App. Br. 15-16. While the Patent Owner correctly points out that the Specification only depicts illuminating along one plane at a time, the Specification also expressly identifies that at least two geometric planes may be illuminated simultaneously. See FF 7; see also Oral Hearing Transcript at 7-8. According to the Specification then, the illumination of one or more geometric planes that interact with the spray plume may occur one at a time or may occur simultaneously. Moreover, claim 5 is not inconsistent with the Examiner’s interpretation of claim 3. Patent Owner here essentially argues that because claim 5 requires a first and second time-sequential set of images, the sets of images must be taken at separate times. Even if claim 5 arguably requires two sequential sets of images to be taken one at a time, it still falls within the scope of claim 3. Claim 3 requires at least one, i.e. one or more, sequential set of images or a spray plume where the illumination was along at least one, i.e. one or more, geometric plane. This language expressly permits the claim to include more than one sequential set of images where illumination is along more than one geometric plane, regardless of timing. Therefore, we are not persuaded that “along at least one geometric plane” means one geometric plane at a time. Next, the Patent Owner contends that the claimed illumination should be limited to a thin sheet. PO App. Br. 18-20. The Patent Owner here points to the Farina Declaration, which provides that a skilled artisan would Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 18 understand the claimed illumination to be a thin sheet of light. Id. at 20 (citing ¶¶30-35). The Farina Declaration relies on various passages of the Specification, provided definitions, and knowledge of a person of ordinary skill in the art for this conclusion. See Farina Decl. ¶35. We, however, are not persuaded that the claimed invention is so limited. The express language of claim 3 merely recites an illumination, not a “thin sheet of light.” Neither is the plain and ordinary meaning of illumination, as Dr. Farina acknowledges, limited to a thin sheet of light. See Farina Decl. ¶31. While the sole described embodiment projects thin sheets of light, the Specification elsewhere recites language consistent with the claim. FF4. Claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004). The Summary of the Invention also discloses providing an illumination of the spray plume along at least one geometric plane that intersects the spray plume, without limiting the illumination to a thin sheet of light. FF4; see also Spec. 3:6-9. Moreover, the Specification describes that the illumination device is preferably a laser sheet generator and that light from the illumination device is capable of being shaped into a thin sheet for accurate illumination. FF8. While it may be preferable to use a thin sheet of light for better accuracy, the discussion at least implies that other forms of illumination, such as illuminating along multiple geometric planes at one time, are contemplated and could be employed. See also FF25 (identifying that prior art Aleshin explains that a laser light source is preferred but any light source that Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 19 illuminates the selected cross section of the stream and highlights the interior portion may be used). The Patent Owner, at the oral hearing, stated that the cited goals of the patent, such as obtaining plume geometry and spray pattern measurements, could not be achieved without illuminating along a thin sheet of light. In other words, illuminating along multiple geometric planes (as done by some of the prior art) could not achieve the stated goals of the patent. The Patent Owner expressly refers to the Farina declaration. See Tr. 24-25 (citing in particular ¶32). The Farina Declaration, however, merely indicates that the Specification describes use of a thin sheet and that unstructured light sources cannot project a thin sheet of light. The stated goals of the patent, and whether a thin sheet of light is required to achieve them, are not persuasively addressed. Finally, the Patent Owner argues that the illumination device must be a structured light source because only a structured light source can project a thin sheet of light. This argument, however, lacks merit. As discussed above, we are not persuaded that the claimed illumination must directly project a thin sheet and, therefore, we also agree with the Examiner that the claimed invention is not limited to a structured light source. We further note that the ’400 Patent fails to discuss (or even mention) structured or unstructured light or any distinction between them. Based on the record before us, we disagree with the Patent Owner that “an illuminator for providing an illumination of the spray plume along at least one geometric plane that intersects the spray plume” should be construed as “a light source that projects a thin sheet of light that intersects Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 20 the spray plume along a geometric plane.” And further disagree that “at least one” means “one at a time.” Spray Plume The Patent Owner additionally argues that a spray plume should be limited to “a spray of limited duration. PO App. Br. (citing Farina Decl. ¶¶40-42). We disagree. The Farina Declaration, relying on two passages of the Specification, states that a skilled artisan would “understand the term ‘spay plume’ in the context of the ’400 patent to describe extremely transient, short-cycle spray plume where the spray plume duration is only approximately one second – i.e. of limited duration.” Farina Decl. ¶41. But this interpretation is at odds with other teachings of the Specification. For example, the Specification discloses that the invention may include a spray pump actuator that is capable of controlling the duration of the aerosol spray plume. See Spec. 2:58-61 and 4:55-58. Thus, the Specification supports varying spray plume duration, and should not be limited only to an extremely transient, short- cycle spray. Therefore, we disagree with the Patent Owner’s proposed construction of a spray plume. ANALYSIS THE ANTICIPATION REJECTIONS OF CLAIMS 3-8 AND 13 BASED ON GOMEZ, MISZUK, DIETRICH, DODGE, DOLOVICH, AND SHIN Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 21 Claim 3 Based on the record before us, we find that the Examiner did not err in rejecting claim 3 as anticipated by each of Gomez, Miszuk, Dietrich, Dodge, Dolovich, and Shin. See RAN 12. Each of the cited prior art rejections disclose an illuminator for providing an illumination of the spray plume along one geometric plane or along multiple geometric planes. See e.g., FF12, FF17, FF21, FF24, FF26, and FF30. For example, Miszuk teaches using a high intensity light source to illuminate a spray plume. The high intensity light source provides this illumination of the entire spray plume, thus providing illumination along numerous geometric planes that intersect the spray plume. FF12. Similarly, Dodge, Shin, and Dietrich all disclose illuminating the entire spray plume with light sources, such as a photo light (Dodge), stroboscopic illuminator, (Dietrich), and collimated 650W candescent light source (Shin). See FF17, FF21, and FF27. Because we are not persuaded that the claimed illumination must be limited to a thin sheet of light or illuminating only one geometric plane at a time, we agree with the Examiner that each cited prior art reference teaches the claimed illuminator limitation. We likewise agree with the Examiner that Gomez and Dolovich disclose an illuminator for illuminating along one geometric plane. Specifically, Gomez discloses using a laser generating means to project a laser beam through a measurement plane that then propagates along an axis. FF16. Gomez thus teaches illuminating along at least one geometric plane, i.e. the plane the laser travels along that intersects the spray plume. FF16. Dolovich similarly teaches using a laser to illuminate a spray plume to Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 22 analyze a slice of the spray plume. FF17. We thus agree with the Examiner that these prior art references then teach an illuminator for providing an illumination of a spray plume along at least one geometric plane that intersects a spray plume. Therefore, we disagree with the Patent Owner that the Examiner erred in rejecting claim 3 as anticipated by under 35 U.S.C. §102 by the cited prior art and accordingly affirm the rejections of claim 3. Claims 4, 6-8 and 13 We likewise agree with the Examiner regarding the rejections of dependent claims 4-8 and 13 based on the cited prior art. The Patent Owner here relies on the arguments presented for claim 3. See PO App. Br. 21-27. As discussed above, those arguments are unavailing. Therefore, we are also not persuaded that the Examiner erred in rejecting dependent claims 4, 6-8 and 13 as anticipated by the cited prior art. Accordingly, we affirm the rejections as to these claims. Claim 5 Based on the record before us, we agree with the Patent Owner that the Examiner erred in rejecting claim 5 as anticipated by Miszuk. The Examiner relies on Miszuk’s teaching of the need for “two simultaneous orthogonal views… to describe the character and direction of the flume pattern adequately.” RAN 16. Claim 5 though expressly recites obtaining a first and second set of sequential images along the geometric planes substantially normal and parallel to the flow direction centerline. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 23 Merely disclosing the importance of obtaining simultaneous orthogonal views falls short of disclosing the claimed limitations. Therefore, we disagree that Miszuk anticipates claim 5 and reverse this rejection with respect to claim 5. THE OBVIOUSNESS REJECTION OF CLAIMS 5 AND 13 Based on the record before us, we disagree with the Patent Owner that the Examiner erred in rejecting claims 5 and 13 based on the cited combination of Deljouravesh and Dodge. First, Patent Owner relies on its proposed constructions for the claimed illuminator limitation and spray plume. PO App. Br. 29. As discussed above, we disagree with these constructions and therefore are not persuaded that Deljouravesh and Dodge combined fail to teach the claimed limitations. Further, the Patent Owner argues that a skilled artisan would not combine Deljouravesh with Dodge because Dodge teaches away from the combination. Id. According to the Patent Owner, Dodge teaches away from using planar light because it discloses using diffuse light. Id. The Examiner, however, merely relies on Dodge’s teaching of taking images at varying angles to satisfy the limitation obtaining a first and second set of sequential images along the spray axis and perpendicular to the spray axis. RAN 25-27. A reference teaches away from a combination when a person of ordinary skill, upon reading the reference, would be discouraged from the combination. In re Mouttet, 686 F.3d 1322, 1333-1334 (Fed. Cir. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 24 2012)(citations omitted). The mere disclosure of an alternative design, such as Dodge’s use of diffuse light compared to Deljouravesh’s planar light, is insufficient to teach away. See Id. The Patent Owner reliance solely on Dodge’s use of diffuse light without any disclosure of Dodge that disparages use of planar light is not persuasive. Therefore, we disagree with the Patent Owner that Dodge teaches away from the cited combination. The Patent Owner additionally makes blanket assertions that the resulting images of the cited combination of Deljouravesh and Dodge would not be visible. PO App. Br. 30. These blanket assertions though, without supporting argument or evidence, are unavailing. The Patent Owner refers to the Farina Declaration, but the cited portions present no persuasive additional points. See Farina Decl. ¶¶100-102 and 124-126 (mimicking the Patent Owner’s arguments in the Patent Owner’s appeal brief). Therefore, based at least on the reasons identified by the Examiner, we agree that the cited combination of Deljouravesh and Dodge renders claims 5 and 13 obvious. Accordingly, we affirm the obviousness rejection. THE OBVIOUSNESS REJECTIONS OF CLAIMS 9 Based on the record before us, we disagree with the Patent Owner that the Examiner erred in rejecting claim 9 based on the cited combinations of Deljouravesh and Shin, Dodge and Shin, and Aleshin and Shin. In response to each obviousness rejection of claim 9, the Patent Owner, relying on its proposed claim constructions, asserts that none of the cited art teaches the clamed illuminator. See PO App. Br. 30-33. Namely, the Patent Owner argues that none of the cited references alone or in Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 25 combination can project a thin sheet of light that intersects the spray plume along at least one geometric plane. Id. As discussed above, we disagree with the Patent Owner’s proposed construction limiting the illumination to a thin sheet and therefore find these arguments unpersuasive. Additionally, with respect to the rejection based on Aleshin and Shin, the Patent Owner contends that “POSITA would not combine references disclosing and teaching characterization of a steady flow stream of material - - such as is disclosed and taught by the ‘333 patent.” PO App. Br. 33. Notably absent though is any persuasive support as to why a skilled artisan would not combine the references. Instead, the Patent Owner distinguishes the steady flow stream of the cited art from the “‘spray plume’ with a duration of one second.” See Id. As discussed above, we disagree with the Patent Owner’s narrow interpretation of the claimed spray plume. Moreover, we are not persuaded that a skilled artisan would not combine the cited art because of the mere use of a steady flow stream. Therefore, we affirm the rejections of claim 9 as obvious in view of Deljouravesh and Shin, Dodge and Shin, and Aleshin and Shin. THE OBVIOUSNESS REJECTIONS OF CLAIMS 10, 11 AND 12 The Patent Owner, here, again relying on its proposed claim constructions, asserts that Dolovich and Settles fail to disclose the illuminator of claim 3 and therefore also cannot teach the limitations of claims 10-12. See PO App. Br. 33-35. Namely, the Patent Owner argues that neither Dolovich nor Settles project a thin sheet of light that intersects Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 26 the spray plume along at least one geometric plane. Id. As discussed above, we disagree with the Patent Owner’s proposed construction limiting the illumination to a thin sheet and likewise find the Patent Owner’s arguments here unavailing. Accordingly, we affirm the obviousness rejection of claims 10 and 11 based on Dolovich and the obviousness rejections of claim 12 based on the combination of Settles and Dolovich. THE INDEFINITENESS REJECTION OF CLAIMS 14 AND 15 With respect to claim 14, the Examiner fails to explain why it is rejected as indefinite. See RAN 33-34. As the Patent Owner explains, the Specification describes the limitations of claim 14 and we agree that claim 14 is not indefinite. See PO App. Br. 35-36. The Examiner rejected claim 15 under 35 U.S.C. §112, second paragraph as indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. More specifically, the Examiner explains that projecting a thin sheet of light is indefinite “because it can be construed to mean either (i) the illuminator delivers (i.e., projects) only one sheet of light at the spray plume or (ii) is simply capable of delivering a thin sheet of light (e.g., a light bulb projects a multitude of thin sheets of light).” RAN 34. We disagree. As the Patent Owner points out, the Specification expressly describes and depicts a laser projecting only one thin sheet of light at the spray plume. PO App. Br. 36-37. We agree with the Patent Owner then that the Specification clearly defines the limitations and claim 15 is definite. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 27 Accordingly, we reverse the rejection of claims 14 and 15 under 35 U.S.C. § 112. THE ANTICIPATION/OBVIOUSNESS REJECTIONS OF CLAIMS 14 AND 15 BASED ON DELJOURAVESH, ALESHIN, AND SETTLES 3 With respect to claim 14, the Patent Owner here presents the same arguments as those presented for claim 3. Namely, the Patent Owner relies on its proposed construction to distinguish the cited prior art. As discussed above, we disagree with the Patent Owner’s proposed construction and therefore also disagree with the dependent distinctions over the cited prior art here. With respect to claim 15, the Patent Owner distinguishes Deljouravesh, Aleshin, and Settles because the light sources, i.e. lasers, do not alone directly project the thin sheet of light but instead rely on adjacent lenses to convert the laser beam into a thin sheet of light. PO App. Br. 40-42 and 46-47; see also Farina Decl. ¶39. This argument, however, is misplaced. Each prior art laser source with its accompanying lens, together, satisfies the claimed laser limitation. Claim 15 does not recite a laser sheet generator. As can be seen, for example, in Fig. 4.2 of Deljouravesh, these lenses or optical devices are merely placed at the tip of the laser. FF30. Therefore, we agree with the Examiner that a skilled artisan would understand that a laser and accompanying lens of the cited prior art that project a thin sheet of light would satisfy the claimed limitation. 3 Because we affirm the rejections of claims 14 and 15 as anticipated/obvious by each of Deljouravesh, Aleshin, and Settles, we do not address the additional rejections of claims 14 and 15. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 28 Accordingly, we affirm the anticipation/obviousness rejections of claims 14 and 15. DECISION The Examiner’s decision to reject claims 14 and 15 under 35 U.S.C. §112, second paragraph as indefinite is reversed. Likewise, the Examiner’s decision to reject claim 5 as anticipated in view of Miszuk is reversed. The Examiner’s remaining decisions to reject claims 3-7 and 9-15 as anticipated and/or obvious are affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED ak PATENT OWNER: Greenberg Traurig Met Life Building 200 Park Avenue New York, NY 10166 THIRD-PARTY REQUESTER: Kenealy Vaidya, LLP 515 East Braddock Road Suite B Alexandria, VA 22314