Ex Parte Mondt et al

Patent Trial and Appeal Board

Mar 28, 2017

13810585 (P.T.A.B. Mar. 28, 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.
13/810,585 01/16/2013 Eva Mondt 2010P00651WOUS 2795
138325 7590 03/30/2017
PHILIPS LIGHTING HOLDING B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
SMITH, DAVID E
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
kim.larocca@philips.com
j o. c angelosi @ philips. com
Gigi.Miller@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVA MONDT, EINTE HOLWERDA, DAI YU HAYASHI, and
GEORG GREUEL
Appeal 2016-003376
Application 13/810,585
Technology Center 2800
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
1 This Decision includes citations to the following documents: Specification filed
Jan. 16, 2013 (“Spec.”); Final Office Action mailed Mar. 16, 2015 (“Final”);
Appeal Brief filed Aug. 11, 2015 (“Appeal Br.”); Examiner’s Answer mailed Dec.
17, 2015 (“Ans.”); and Reply Brief filed Feb. 12, 2016 (“Reply Br.”).
Appeal 2016-003376
Application 13/810,585
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim on appeal, is representative of the
invention and is reproduced below:
1. A device for subjecting a fluid flowing therethrough to a
disinfecting treatment by exposing the fluid to ultraviolet light, said
device comprising a reactor having a wall encompassing an inner
space in which an ultraviolet light source is disposed, an inlet for
letting the fluid into the inner space, and an outlet for letting the fluid
out from the inner space, said ultraviolet light source including a first
electrode of the reactor and said wall comprising an electrically
conductive material functioning as a second electrode of the reactor,
said device further including at least one electrically conductive
element extending from said reactor wall into the inner space for,
during operation, locally increasing the electrical conductivity within
said flowing fluid and thereby locally increasing the intensity of the
ultraviolet light.
Appeal Br. 27 (Claims App’x) (emphasis added).
The Examiner relies on the following references in rejecting the claims:
Falkenstein
Freeman et al.
Schiene et al.
Yencho
Yong et al.
Hombach et al
US 2002/0089275 Al
US 6,590,217 B1
US 2008/0185536 Al
US 2009/0084734 Al
US 2011/0024365 Al
W02009146744 Al
July 11,2002
July 08, 2003
Aug. 07, 2008
Apr. 02, 2009
Feb. 03,2011
Dec. 10, 2009
2 Appellants identify the real party in interest as Koninklijke Philips Electronics
N.V. Appeal Br. 3.
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Application 13/810,585
The claims stand rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable
over the following prior art combinations:
1. claims 1—5 and 12 over Schiene, Falkenstein, and Hombach, as
translated;
2. claims 1, 6, 7, 9, and 14 over Schiene, Falkenstein, and Yencho;
3. claims 8, 11, and 13 over Schiene, Falkenstein, Yencho, and Freeman;
and
4. claim 10 over Schiene, Falkenstein, Yencho, and Yong.
Rejection of claims 1—5 and 12 over Schiene, Falkenstein, and Hombach
Appellants argue the claims as a group. Accordingly claims 2—5 and 12 will
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants do not dispute the Examiner’s finding (see Final 2—3) that
Schiene, as modified by Falkenstein to include a fluid inlet and outlet, discloses a
device as recited in claim 1 with the exception of “at least one electrically
conductive element extending from [the] reactor wall into the inner space”
encompassed by the reactor wall (claim 1). See Appeal. Br. 11—12. Rather,
Appellants contend the Examiner reversibly erred in either (1) relying on Hombach
for a teaching of an electrically conductive element as claimed because Hombach
is nonanalogous art or (2) finding Hombach would have provided one of ordinary
skill in the art with a reason to modify Schiene’s device to include an electrically
conductive element as claimed. Id. at 13—18.
A reference qualifies as prior art for an obviousness analysis only when it is
analogous to the claimed invention. Innovention Toys, LLC v. MCA Entm’t, Inc.,
637 F.3d 1314, 1321 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed.
Cir. 1992)). “Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
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Application 13/810,585
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
The Examiner finds Hombach is analogous prior art under at least the
second test because both Hombach and the inventors were concerned with the use
of UV discharge lamps for sterilization and the same problem of arranging
electrodes to adjust electric field configuration so as to achieve a given sterilization
efficiency. Ans. 9. Appellants contend “the problem faced by the inventors [was]
that of effectively disinfecting fluids while conserving energy when using a device
incorporating a UV light source ... for radiating fluid as it passes through the
device.” Appeal Br. 16 (emphasis omitted). Appellants contend Hombach would
not have commended itself to the inventors’ attention in considering this problem
because Hombach is concerned with “improv[ing] the treatment (cleaning,
modifying and/or activating substrate surfaces) when using ultraviolet or vacuum
ultraviolet UV/VUV radiation.” Id. (citing In re Icon Health and Fitness, Inc., 496
F.3d 1374, 1379-80 (Fed. Cir. 2007)).
The Federal Circuit counsels us to construe the scope of analogous art
broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
(“[FJamiliar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 402 (2007))).
The Specification describes an object of the invention as providing an
alternative solution
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Application 13/810,585
for compensating for the decrease in ultraviolet intensity with
distance, which yields useful results, and which can be implemented
in a device comprising light emission means, a reactor having an inner
space for accommodating the light emission means and for exposing a
quantity of fluid to the light emission means, and an electrically
conductive reactor wall.
Spec. 2:29—3:1 (emphasis added). We agree with the Examiner (Ans. 9) that
Hombach is pertinent to at least the first objective of “compensating for [a]
decrease in ultraviolet intensity with distance” (Spec. 2:29—30). See, e.g.,
Hombach 3, second and third full paragraphs (discussing the importance of
electrode configuration to optimum UV radiation efficiency).
In sum, Appellants’ argument, which is based on an overly narrow view of
the problem faced by the inventors, is not persuasive of error in the Examiner’s
finding that Hombach is analogous to the claimed invention and qualifies as prior
art for an obviousness analysis.
We turn next to Appellants’ argument that the Examiner failed to identify
sufficient facts and reasons to support a finding that one of ordinary skill in the art
would have modified Schiene’s device to include an electrically conductive
element as claimed. See Appeal Br. 17—18.
The Examiner found each of Schiene and Hombach describes a treatment
vessel having an ultraviolet light source disposed in an interior thereof, the
ultraviolet light source comprising a first electrode and the vessel housing
functioning as a second electrode. See Final 2—3; Schiene 130; Hombach 4, last
para. The Examiner found Hombach teaches that in addition to, or instead of, the
vessel housing functioning as a second electrode, an auxiliary electrode in the form
of a metal rod projecting into the interior of the vessel may be utilized. Final 3.
Based on Hombach’s teaching, the Examiner found one of ordinary skill in the art
similarly would have included an electrically conductive rod in Schiene’s vessel as
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Application 13/810,585
an auxiliary electrode to increase the electric field inside Schiene’s vessel, thereby
increasing sterilization efficiency. Id. at 3^4.
Appellants have not persuaded us that the above-listed facts and reasons
relied upon by the Examiner are insufficient to satisfy the requirement of “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants’ arguments fail to address the facts and reasons relied on by the
Examiner, improperly focus on the individual rather than the collective teachings
of the references, and are not supported by the relevant case law. Compare Appeal
Br. 18, Reply Br. 10 (arguing Hombach does not teach that the metal rod increases
an electric field and has no clear function other than supporting a substrate), with
Final 2—3 (finding Schiene’s conductive elements 4 locally increase electrical
conductivity within the flowing fluid and thereby locally increase the intensity of
the ultraviolet light), Ans. 9—10 (finding the ordinary artisan, based on Hombach’s
teaching regarding the auxiliary electrode (metal rod), would have understood that
Schiene’s conductive elements 4 likewise would perform these functions if
rearranged to extend from the reactor wall into the interior of the vessel or that an
additional auxiliary electrode as taught by Hombach could be added to further
increase electrical conductivity and UV intensity); compare Appeal Br. 18, Reply
Br. 10-11 (arguing it is not clear how Hombach’s metal rod could be used in
Schiene’s device), within re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is
well-established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of elements.”).
For the above reasons, we are not persuaded of reversible error in the
Examiner’s rejection of claims 1—5 and 12 over Schiene, Falkenstein, and
Hombach. Accordingly, we sustain this ground of rejection.
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Rejection of claims 1, 6, 7, 9, and 14 over Schiene, Falkenstein, and Yencho
Appellants argue the claims as a group. Accordingly, claims 6, 7, 9, and 14
will stand or fall with claim 1.
The Examiner relies on Schiene and Falkenstein as discussed above. See
Final 5. The Examiner finds Yencho discloses a UV fluid disinfecting system
wherein baffles extending from the wall of the reaction vessel are used to optimize
the amount of time flowing water spends in the vessel so as to optimize the kill rate
of pathogens. Id. at 6. The Examiner finds one of ordinary skill in the art would
have modified Schiene’s device to include baffles in order to achieve improved
sterilization as taught by Yencho. Id. The Examiner finds that because Yencho’s
baffles are made of metal (i.e., steel), they inherently would “have the effect of
locally increasing the electrical conductivity within said flowing fluid and thereby
locally increasing the intensity of the ultraviolet light.” Id.
Appellants argue the addition of baffles would change the principle of
operation of Schiene and require substantial reconstruction and redesign. Appeal
Br. 20. Appellants’ argument is not convincing because it is not supported by
persuasive evidence, see In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel cannot take the place of evidence), and because it fails to
explain why it was erroneous or unreasonable for the Examiner to find that baffles
were known in the art and it would have been “within the skill of one of ordinary
skill in the art to add them to the system of Schiene in order to control the fluid
flow of Schiene without a major redesign of the system” (Ans. 10). See Reply Br.
12.
Appellants also disagree with the Examiner’s finding of inherency,
contending “stainless steel is a very poor conductor compared to most metals,” and
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Application 13/810,585
that there is no disclosure in Yencho suggesting the baffles would have any
influence on the intensity of UV radiation in Schiene’s device. Reply Br. 14.
Appellants’ argument lacks persuasive merit given the Specification’s
description of stainless steel as a suitable material for the electrically conductive
element. See Spec. 9:11—12.
In sum, Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection of claims 1, 6, 7, 9, and 14 over Schiene, Falkenstein, and
Yencho. Accordingly, we sustain this ground of rejection.
Rejection of claims 8, 11, and 13 over Schiene, Falkenstein, Yencho, and Freeman
and
Rejection of claim 10 over Schiene, Falkenstein, Yencho, and Yong
We have considered the arguments made by Appellants in support of
patentability of claims 8, 10, 11, and 13 (see Appeal Br. 22—24; Reply Br. 15—17),
but find them unpersuasive of reversible error in the Examiner’s conclusion of
obviousness for the reasons explained in the Answer (Ans. 10—11). With respect to
claim 10, we note that the respective positions of Appellants and the Examiner are
based on a disagreement over the scope and meaning of “central portion.”
Compare Appeal Br. 24, Reply Br. 17 (arguing Yong’s plate 26 does not include a
central portion that is “free from holes” as required by claim 10 because a hole is
clearly shown in the center of plate 26 in Yong Figure 2 and Yong describes water
as flowing through the center of plate 26), with Ans. 11 (arguing Yong’s plate 26
has at least one area in a centrally located portion that is free of holes). We have
reviewed the Specification, and we determine the broadest reasonable construction
of claim 10 does not limit structure of the plate to one in which the entire central
area is free of holes, e.g., claim 10 does not preclude the presence of a hole in
substantially the exact center as in Yong’s plate 26. Although the Drawings
illustrate central portion 31 as encompassing the direct center of reflector element
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Application 13/810,585
30, there is no indication in the Specification that the claims should be limited to
this particular configuration (see, e.g., Spec. 4:3—5, 25—26). See Crown Packaging
Technology, Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1381
(Fed. Cir. 2011) (“[W]hile Ball is correct in noting that the embodiment drawings
in the specification all show chuck drive outside the reinforcing bead, that does not
compel the conclusion that the written description is so narrowly tailored as to
preclude Crown from claiming an embodiment that only utilizes the angled chuck
wall solution.”).
The rejections of claims 8, 10, 11, and 13 are sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
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