Ex Parte Pauzauskie et al

Patent Trial and Appeal Board

Mar 20, 2017

12958224 (P.T.A.B. Mar. 20, 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.
12/958,224 12/01/2010 Peter J. Pauzauskie IL-12145/LLNLP084 2634
78980 7590 03/22/2017
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
SANDERS, JAMES M
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. PAUZAUSKIE, JONATHAN C. CROWHURST,
MARCUS A. WORSLEY, and JOE H. SATCHER, JR.
Appeal 2014-006565
Application 12/958,224
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting claims 1—9, 27, and 28.3 We have
jurisdiction over the appeal. 35 U.S.C. § 6(b).
1 Our decision refers to the Specification (Spec.) filed December 1, 2010,
Appellants’ Appeal Brief (Appeal Br.) filed January 22, 2014, the
Examiner’s Answer (Ans.) mailed March 6, 2014, and Appellants’ Reply
Brief (Reply Br.) filed May 6, 2014.
2 According to Appellants, the real party in interest is Lawrence Livermore
National Security, LLC. Appeal Br. 2.
3 Pending claims 10—24 have been withdrawn from consideration and are not
before us on appeal. Final Act. 1; Appeal Br. Claims App’x.
Appeal 2014-006565
Application 12/958,224
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a system including a pressure cell adapted for
enclosing a porous structure, an inert pressure medium within the pressure
cell, and a heat source for heating the porous structure. Spec. 110; claim 1.
Claim 1, reproduced below from the Claims Appendix to the Appeal Brief,
is illustrative of the subject matter on appeal. The limitation at issue is
italicized.
1. A system, comprising:
a pressure cell adapted for enclosing a porous structure;
an inert pressure medium within the pressure cell; and
a heat source for heating the porous structure.
REJECTIONS
The Examiner maintains, and Appellants request review of, the
following grounds of rejection:
1. Claims 1, 2, 4—9, 27, and 28 under 35 U.S.C. § 102(e) (pre-AIA)
as anticipated by Hudgins;4 and
2. Claim 3 under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over
Hudgins in view of Sumiya.5
ANALYSIS
The dispositive issue before us in this appeal is whether Appellants
have identified reversible error in the Examiner’s interpretation of claim 1 as
4 US 2010/0290574 Al, published November 18, 2010.
5 JP 2003-137686, published May 14, 2003 (English-language machine
translation).
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Application 12/958,224
an apparatus claim and treatment of the recitation, “an inert pressure
medium within the pressure cell,” as material worked upon by the apparatus.
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven assuming that the
examiner had failed to make a prima facie case, the Board would not have
erred in framing the issue as one of ‘reversible error.’”). We answer this
question in the negative and, therefore, will sustain the Examiner’s
rejections substantially for the findings, analysis, and conclusions provided
by the Examiner in the Answer which we adopt as our own. We offer the
following for emphasis.
The dispute before us in this appeal centers on the recitation in claim
1 of an inert pressure medium within the pressure cell. The Examiner
initially finds that Hudgins teaches a system comprising, inter alia, an inert
pressure medium within the pressure cell, citing Figure 1 and paragraph 20.
Ans. 4. In addressing dependent claim limitations directed to this inert
pressure medium, the Examiner finds the
Hudgins system would be capable of using inert pressure
medium having a low photon absorption cross section at an
operational wavelength and intensity of the laser and low
chemical reactivity with the porous structure such that chemical
reactions and background absorption are reduced during heating
of the porous structure at high pressure; inert pressure medium
comprising supercritical neon gas; inert pressure medium
comprising at least one of: neon gas, argon gas, helium gas,
krypton gas, xenon gas, and carbon dioxide gas[.]
Ans. 5. The Examiner finds that claim 1 is “directed towards an
apparatus and examined as such.” Id. at 3. Accordingly, the
Examiner treats the inert pressure medium as merely reciting intended
use and material worked upon by the apparatus in accordance with the
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Manual of Patent Examining Procedure (MPEP), §§ 2114—2115, 9th
ed. (March 2014). Ans. 3—4, 7—9.
Appellants contend that claim 1 is directed to “a system,” which
includes, under the broadest reasonable interpretation standard,
apparatus, product, and/or kit embodiments unless the language of the
claim or binding defmition(s) in the specification indicate otherwise.
Appeal Br. 7—8; Reply Br. 2—3. Appellants argue that none of the
claims expressly define any element thereof as necessarily limited to
an apparatus or a part thereof, nor does the Specification contain any
definition of the term, “system,” as limited to apparatus. Appeal Br.
8. Appellants assert that because the Examiner’s treatment of the inert
pressure medium as intended use and material worked upon which
applies only to apparatus claims, and claim 1 is not limited to an
apparatus, the Examiner’s treatment of the inert pressure medium is
erroneous. Id. at 8—9.
Appellants’ argument is not persuasive of reversible error.
During examination, claims appropriately are given their broadest
reasonable interpretation consistent with the specification. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Such a broad construction is appropriate during prosecution because
Appellants may amend claims to narrow and clarity their scope. Id.',
In reBigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004).
Here, Appellants contend that nothing in the claims or
Specification expresses an intent to limit the “system” of claim 1 to an
apparatus. As such, Appellants urge that claim 1 includes apparatus,
product, and/or kit embodiments. Thus, by Appellants’ own
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admission, claim 1 broadly includes apparatus. The Examiner’s
treatment of the inert pressure medium recitation of claim 1, which
relies on claim 1 broadly covering apparatus, is not erroneous on this
basis.
Appellants next contend that the inert pressure medium
recitation must be given patentable weight to the extent that claim 1
encompasses apparatus. Appeal Br. 10-11; Reply Br. 4—5.
Appellants argue that, though the recited porous structure is material
worked upon by the apparatus, the inert pressure medium is a
structurally-limiting component of the apparatus. Id. In this regard,
Appellants assert that the methods described in the Specification
concern techniques to synthesize crystalline phase porous structures,
not techniques to synthesize inert pressure media. Id. at 12. Further,
Appellants assert that the inert pressure medium performs work, i.e.,
exerts force(s) on the pores of the porous structure to preserve the
structural integrity and arrangement thereof, during operation of the
apparatus. Id., citing Spec. H 38 and 41. Without the conformal,
homogenous structural support provided by the inert pressure
medium, the pores of the porous structure would collapse “rather than
produce the thermodynamic conditions that favor phase change from
amorphous to crystalline.” Appeal Br. 13. Therefore, Appellants
argue that the inert pressure medium is “a unique structural feature
without which the apparatus would not function as intended.” Id. at
14.
The question as to whether a recitation of an apparatus claim is
properly construed as a structural limitation or intended use (and
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material worked upon) of the apparatus depends on the facts of the
case. The courts have long held that the recitation of a material
intended to be worked upon by a claimed apparatus does not
differentiate the claimed apparatus structure from the structure of a
prior art apparatus. Roberts v. Ryer, 91 U.S. 150 (1875); In re
Hughes, 49 F.2d 478, 479 (CCPA 1931); In re Rishoi, 197 F.2d 342,
345 (CCPA 1952).
In Roberts, the Court found the only difference between the
claimed invention and a prior art apparatus was the use of a
descending current of air with the circulation device of the prior art.
Roberts, 91 U.S. at 157—158. In deciding that the descending current
of air was merely directed to a new use of the prior art apparatus
which could not serve to distinguish the claimed invention over the
prior art, the Court found that “[tjhere was no change in the machine:
it was only put to a new use” {id. at 159) and “[i]t is no invention to
use an old machine for a new purpose” {id. at 151).
In Rishoi, the claims were directed to a butter chum comprising
a sheet metal dmm with a roughened inner surface and a film of liquid
covering the exposed portions of the roughened inner surface. Rishoi,
197 F.2d at 343. Though the film of liquid was recited as part of the
apparatus and performed a function of preventing butter from
adhering to the surface of the chum, the court held that the film was
nonetheless directed to the intended use of the chum and was material
worked upon because when the apparatus stmcture was completed,
there was no liquid film, and after operation of the butter churning, the
film evaporated and disappeared. Id. at 345.
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In Hughes, the claims were directed to a printing apparatus
including the dye solvent used therewith. Hughes, 49 F.2d at 479. As
in the case before us, the Hughes claim recited the dye solvent as part
of the apparatus. Further, the dye solvent performs the function of
passing through paper on which it is applied (and evaporating) so as to
create a lightening effect on a subsequent carbon coating on the paper.
Id. However, even though the dye solvent was recited as part of the
apparatus, the court held that the dye solvent was material worked
upon. Id. In so holding, the court stated “a person may not patent a
combination of a device and the material upon which the device
works, nor limit other persons from the use of similar material by
claiming a device patent.” Id.
We find the facts before us, in light of the above legal
precedent, support the Examiner’s treatment of the inert pressure
medium recitation as intended use and material worked upon by the
apparatus and which does not structurally distinguish claim 1 from the
applied prior art based on the Examiner’s undisputed finding that the
pressure cell of Hudgins “would be capable of enclosing an inert
pressure medium within the pressure cell.” Ans. 8; see Final Act. 3.
In other words, although the inert pressure medium is not part of the
final compressed product, neither is it part of the apparatus, for the
same reason that Rishoi’s film of liquid was not part of the butter
chum even though the film of liquid was not part of the butter product
and Hughes’ dye solvent was not part of the printing apparatus even
though the dye solvent was not part of the printed paper product. The
Examiner’s characterization of such a material, e.g., Appellants’ inert
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pressure medium and Rishoi’s film of liquid and Hughes’ dye solvent,
as transitory material captures this concept though the court held such
material is in fact material worked upon. Thus, Appellants’ have not
shown reversible error in the Examiner’s treatment of the inert
pressure medium as material worked upon.6
Finally, Appellants argue that neither the anticipation rejection
nor the obviousness rejection meet the legal standard for establishing
a prima facie case. Appeal Br. 15—23; Reply Br. 6—7. We disagree.
The Examiner explicitly found, without dispute, that Hudgins teaches
a diamond anvil cell as recited in the claims except for an inert
pressure medium. The Examiner further explicitly found that claim 1
is an apparatus claim and that the inert pressure medium recitation
was directed to intended use and material worked upon by the
apparatus. As such, the Examiner found anticipation of the claims in
spite of the lack of an inert pressure medium. As we explained above,
the Examiner’s treatment of the inert pressure medium recitation was
appropriate in light of controlling legal precedent. We are, therefore,
satisfied that the anticipation rejection satisfies the legal standards for
the finding of prima facie anticipation.
As to the Examiner’s obviousness rejection, we note that
Appellants do not separately argue the merits of this rejection, instead
relying on arguments previously made with regard to the anticipation
rejection. Accordingly, because those arguments were not persuasive
6 Appellants’ claims do not recite a source of inert pressure medium or any
structure for delivering inert pressure medium to the pressure cell.
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of reversible error in the Examiner’s anticipation rejection, we
likewise hold that those same arguments are not persuasive of
reversible error with regard to the Examiner’s obviousness rejection.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1—9, 27, and 28
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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