Ex Parte Tang et al

Patent Trial and Appeal BoardJun 23, 2016

12540203 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/540,203 78980 7590 LLNL/Zilka-Kotab 08/12/2009 06/27/2016 Lawrence Livermore National Laboratory L-703, P.O. Box 808 Livermore, CA 94551 FIRST NAMED INVENTOR Vincent Tang 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IL-12010/LLNLP053 1795 EXAMINER BURKE, SEAN P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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 VINCENT TANG, GLENN A. MEYER, STEVEN FALABELLA, GARY GUETHLEIN, BRIAN RUSNAK, STEPHEN SAMPAYAN, CHRISTOPHER M. SPADACCINI, LI-FANG WANG, JOHN HARRIS, and JEFF MORSE Appeal2014-005278 Application 12/540,203 Technology Center 3600 Before WILLIAM A. CAPP, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. CAPP, Administrative Patent Judge. uECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-005278 Application 12/540,203 THE INVENTION Appellants' invention relates to pyroelectric crystals and their use in portable devices to detect radioactive materials that may pose a threat to national security. Spec. i-fi-1 3-9. Independent Claims 1 and 17, reproduced below, are illustrative of the subject matter on appeal. 1. An apparatus, comprising: a pyroelectric crystal; a deuterated or tritiated target; an ion source; and a common support coupled to the pyroelectric crystal, the deuterated or tritiated target, and the ion source. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Cran berg Swenson Naranjo Geuther1 us 3,860,827 us 4,906,896 US 2008/0142717 Al Jan. 14, 1975 Mar. 6, 1990 June 19, 2008 Apr. 23, 2007 The following rejections are before us for review: 2 1. Claims 1---6, 8-10, and 12-15 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Naranjo. 2. Claim 7 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Naranjo and Geuther. 1 Jeffrey A. Geuther & Yaron Danon, Enhanced neutron production from pyroelectric fusion, 90 APPLIED PHYSICS LETTERS 17 4103 (2007). 2 An alternate rejection of claims 1---6, 8-10, and 12-15 under 35 U.S.C. Â§ 102(b) as anticipated by Naranjo is withdrawn. Final Action 6-10; Ans. 2. 2 Appeal2014-005278 Application 12/540,203 3. Claim 11 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Naranjo and Swenson. 4. Claims 16-19 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Naranjo and Cranberg. Claim 1 OPINION Unpatentability of Claims 1-6, 8-10, and 12-15 over Naranjo3 In the Final Action, the Examiner rejected claims 1---6, 8-10, and 12- 15 under 35 U.S.C. Â§ 102(b) as anticipated by or, in the alternative, as obvious over Naranjo. Final Action 6. The Examiner finds that Naranjo discloses all of the limitations of claim 1. Id. at 6-7. In particular, the Examiner also finds that, to the extent that an arrangement of separate structural elements is required by the claim, such condition falls under the provisions ofMPEP Â§ 2144.04 regarding separable elements. Id. at 7. In the Appeal Brief, Appellants traverse the Examiner's alternate anticipation and obviousness rejections by arguing that Naranjo fails to teach or suggest an ion source and a separate pyroelectric crystal. Appeal Br. 22. Appellants contend that Naranjo's pyroelectric crystal is the ion source. Id. 3 Appellants assert that the Examiner, in the Final Action, improperly made a new ground of rejection under 35 U.S.C. Â§ 103(a) over Naranjo with respect to claims 1-6, 8-10, and 12-15. Appeal Br. 20-21, 25-26, 28, 33. The Examiner finds that Appellants' amendment to the claims necessitated this new ground of rejection. Final Act. 13; see MPEP Â§ 706.07(a). Appellants do not dispute that finding. Appellants' position is without merit and, in any event, is waived. See, e.g., 37 C.F.R. Â§ 1.116; MPEP Â§ 714; 37 C.F.R. Â§ 1.121; 37 C.F.R. Â§ 41.31(a); MPEP Â§ 1208; 37 C.F.R. Â§ 41.40(a). 3 Appeal2014-005278 Application 12/540,203 Appellants argue that claim 1 requires an ion source that is separate and distinct from a pyroelectric crystal. Id. at 23. In the Answer, the Examiner withdraws the anticipation rejection. Ans. 2. Then, in response to Appellants' traverse of the obviousness rejection, the Examiner finds, for the first time, that Naranjo's pyroelectric crystal is not the ion source. Ans. 4. In connection with such new finding, the Examiner states that the ions do not originate from the crystal, rather they originate from tungsten probe 22 to which a high voltage has been applied. Id. In the alternative, the Examiner takes the position that, even if one were to view the ion source (tungsten probe) and the pyroelectric crystal as a unified structure, merely separating known components for the identical purpose disclosed by the prior art does not render an invention patentable. Id. at 5---6 (citing MPEP Â§ 2144.04 V.C; In re Larson, 340 F.2d 965 (CCPA 1965)). In reply, Appellants reiterate their previous argument that Naranjo does not teach an ion source that is separate and distinct from its pyroelectric crystal. Reply Br. 3-7. Appellants contend that it is the combination of the pyroelectric crystal and the attached tungsten probe tip that results in production of the deuterium ion beam and that the tungsten probe, by itself, will not ionize a deuterium atmosphere. Id. at 7. Appellants argue that a source configured to provide an electrostatic field needs to be attached to the tungsten probe, which, in the case of Naranjo, is the pyroelectric crystal. Id. In view of the Examiner's decision to withdraw the alternative anticipation grounds of rejection, we determine that the Examiner has failed to provide sufficient findings of fact and underlying reasoning to modify the 4 Appeal2014-005278 Application 12/540,203 prior art to substantiate an unpatentability rejection. vVhile it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, the tests for anticipation and obviousness are different. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Anticipation and obviousness require different elements of proof. Dura-Last, Inc. v. Custom Seal, Inc., 321F.3d1098, 1107---08 (Fed. Cir. 2003). Obviousness requires analysis of certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and ( 4) secondary considerations. Cohesive, 543 F.3d at 1364. In the Examiner's obviousness rejection, the Examiner does not specify, with sufficient clarity, the differences between the prior art and the claimed invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966) ("UnderÂ§ 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved."). Additionally, the Examiner does not construe the meaning of "ion source" with clarity.4 Nor does the Examiner articulate, with sufficient underlying analysis, how or why a person of ordinary skill in the art would have modified the prior art to achieve the claimed invention. See id. 4 It is unclear to us whether the Examiner intends to construe "ion source" in such a way that the ion source may receive and utilize electric energy from the pyroelectric crystal. In that regard, the Examiner provides no discussion or analysis for the meaning of "ion source" in the context of Appellants' disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure). 5 Appeal2014-005278 Application 12/540,203 The Examiner relies on the provisions of~vfPEP Â§ 2144.04 V.B. (and/or Section V.C.) for the principle that it would have been obvious to have made integral components separable. Final Action 7; Ans. 5---6 (also citing Larson, 340 F .2d at 968). Section 2144.04 of the Manual of Patent Examination Procedure permits an Examiner to support an obviousness rejection by relying on the rationale used by a court in a similar case. However, this is only appropriate where "the facts of [the] prior legal decision are sufficiently similar to those in [the] application under examination." MPEP Â§ 2144.04. In particular, Section 2144.04 emphasizes that "[i]f the applicant has demonstrated the criticality of a specific limitation, it [is not] appropriate to rely solely on case law as the rationale to support an obviousness rejection." Id. In the instant case, Appellants represent that their invention is directed toward detection of nuclear and/or radioactive threats. Spec. i-fi-12-9. Appellants maintain, in their Specification, that prior art threat detectors are large and bulky and, therefore, not acceptable for use as portable radiation detectors. Id. i-fi-1 4--8. Id. Appellants' invention is an attempt to provide a smaller, lighter, more intense, pulseable, lower weight neutron source that uses less power. Id. i1 9. Appellants disclose an embodiment in Figure 2A where ion source 206 is spaced apart from pyroelectric crystal 202 with a tritiated target 204 disposed between the ion source and the crystal. Spec. i-fi-129-31, Fig. 2A. By contrast, Naranjo discloses an apparatus where pyroelectric crystal 12 is immediately adjacent tungsten probe 22. Naranjo, Fig. IA. The crystal and probe are spaced apart from target 24. Id. 6 Appeal2014-005278 Application 12/540,203 In the Answer, the Examiner identifies tungsten probe 22 as the ion source. Ans. 4--5. The Examiner further states that a "high voltage" is applied to the probe, but does not otherwise identify where such "high voltage" originates from. Id. 5 Nevertheless, the Examiner concludes that merely separating known components for the identical purpose disclosed in the prior art does not render an invention patentable. Id. at 6 (citing MPEP Â§ 2144.04 V.C.). Having considered the respective positions of Appellants and the Examiner, we are not persuaded that the facts of the instant case are so closely analogous to the facts of cases cited in MPEP Â§ 2144.04 V.B-C. so as to warrant relying solely on case law as the supporting rationale for an obviousness rejection. The Examiner's attempt to analogize the facts of the instant case to authorities such as In re Larson, 340 F .2d at 968 is unpersuasive. Ans. 5-6. Larson dealt with whether a mechanical wheel and brake assembly for a vehicle could be considered "integral." 340 F.2d at 967-968. The Larson case maintained that use of a one-piece construction instead of a fixed assembly of separate components was merely a matter of obvious engineering choice. Id. Here, there is an interrelationship not only between the mechanical and physical juxtaposition of the components, but also how they interrelate with respect to generating electrical energy and ionization of an atmosphere that is then directed toward a target. See Reply Br. 7. This is substantially different from whether it would have been obvious for individual components to be mechanically assembled into a unitary structure, as 5 The Examiner does not dispute Appellants' position that Naranjo's tungsten probe 22 receives its electrical power from its pyroelectric crystal 12. See generally Ans. 7 Appeal2014-005278 Application 12/540,203 opposed to being fabricated as a single, indivisible piece. The Examiner provides no additional analysis to support the conclusion of obviousness of claim 1 over Naranjo. While we agree generally with the Examiner that Naranjo is closely related prior art, we determine that it is inappropriate to rely exclusively on the principle of separable parts under MPEP Â§ 2144.04 as the supporting rationale for the rejection under the facts presented in this case. Accordingly, we do not sustain the Examiner's unpatentability rejection of claim 1 over Naranjo.6 Claims 2-6, 8-10, and 12-15 Claims 2---6, 8-10, and 12-15 depend, directly or indirectly, from claim 1. Claims App. The Examiner's rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 2---6, 8-10, and 12-15. Unpatentability of Claim 7 over Naranjo and Geuther Claim 7 depends indirectly from claim 1 and adds the limitation "wherein the thermal altering mechanism raises or lowers a temperature of the pyroelectric crystal by about 10Â°C to about 150Â°C to produce a voltage of negative polarity on a surface of the deuterated or tritiated target of at least about -100 keV." Claims App. The Examiner relies on Naranjo as 6 In the event prosecution of this application is continued, our ruling today should not be construed as foreclosing supporting an unpatentability rejection over Naranjo, whether alone or in combination with other references, but accompanied with more cogent reasoning to combine or modify the prior art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 8 Appeal2014-005278 Application 12/540,203 rendering obvious the elements of the parent claim. Final Action 10. The Examiner's rejection of claim 7 suffers from the same infirmity that was identified above with respect to claim 1, which infirmity is not cured by Geuther. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claim 7. Unpatentability of Claim 11 over Naranjo and Swenson Claim 11 depends indirectly from claim 1 and adds the limitation "wherein the pyroelectric stack accelerator comprises the pyroelectric crystal formed in a plurality of hollow portions alternating and partially shrouded with high gradient insulator (HGI) portions, wherein the second thermal altering mechanism changes a temperature of the pyroelectric crystal." Claims App. Once again, the Examiner relies on Naranjo as rendering obvious all of the elements of the parent claim. Final Action 10-11. The Examiner's rejection of claim 11 suffers from the same infirmity that was identified above with respect to claim 1, which infirmity is not cured by Swenson. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claim 11. Claim 16 Unpatentability of Claims 16--19 over Naranjo and Cranberg Claim 16 depends from indirectly from claim 1 and adds the limitation "wherein the deuterated or tritiated target has an inverted cone geometry with a focusing tip extending toward the ion source." Claims App. Once again, the Examiner relies on Naranjo as rendering obvious all of the elements of the parent claim. Final Action 11. The Examiner's rejection of claim 16 suffers from the same infirmity that was identified above with 9 Appeal2014-005278 Application 12/540,203 respect to claim 1, which infirmity is not cured by Cranberg. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claim 16. Claims 17-19 Claim 1 7 is an independent claim and claims 18 and 19 depend directly from claim 17. Claims App. In traversing the rejection of claim 17, Appellants argue, among other things, that the prior art fails to disclose a hollow tube support with two ends and where the ion source is near one end, the pyroelectric crystal is near the other end, and the deuterated or tritiated target is positioned therebetween, as claimed. Appeal Br. 42--43. In response, the Examiner maintains that Naranjo renders obvious all of the claimed elements and it would have been obvious to rearrange the parts as claimed. Ans. 11 (citing MPEP Â§ 2144.04). As discussed previously in connection with the rejection of claim 1, reliance on legal precedent under Section 2144.04 of the Manual of Patent Examination Procedure as the rationale for a conclusion of obviousness is only appropriate where there is sufficient similarity between the facts involved in an application and that of the legal precedent relied by the Examiner. The principle of "rearrangement of parts" harkens back to In re Japikse, 181F.2d1019, 1023 (CCPA 1950), in which claims were held unpatentable because rearranging the position of the starting switch would not have modified operation of the device. Id.; MPEP Â§ 2144.04 VI.C. The Examiner makes no effort to analogize the facts of the instant case with those of any case precedent, including Japikse. Thus, in essence, the Examiner merely relies on the principle of rearrangement of parts as a per se rule of obviousness. We do not accept such a per se rule of 10 Appeal2014-005278 Application 12/540,203 obviousness and we do not agree with the Examiner that the principle of rearrangement of parts is appropriate under the facts of this case. It is well settled that the mere fact that the prior art may be modified in the manner suggested by the Examiner does not necessarily make the modification obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); see also Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984). The Japikse case involved a rearrangement of parts that did not modify operation of the device. 181 F .2d at 1023. The Examiner makes no analogous findings, supported by either evidence or persuasive technical reasoning, that rearrangement ofNaranjo's ion source, target, and crystal would have no affect operation of the apparatus. Indeed, the Examiner acknowledges that, in the claimed invention, ionized particles are drawn toward the pyroelectric crystal whereas, in the prior art, they are pushed away, which, at a minimum, entails changing orientation of the electric field. Ans. 6-7. Thus, we determine that the Examiner has not provided sufficient underlying reasoning or analysis to support a conclusion that it would have been obvious to modify the prior art in the manner proposed in the rejection. Accordingly, we do not sustain the rejection of independent claim 17, nor do we sustain the rejection of claims 18 and 19 that depend therefrom. See In re Fritch, 972 F.2d at 1266 (dependent claims are nonobvious if the independent claims from which they depend are nonobvious ). DECISION The decision of the Examiner to reject claims 1-19 is reversed. REVERSED 11