Ex Parte Vijay et al

Patent Trial and Appeal BoardMay 18, 2018

14285196 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/285,196 50811 7590 O""Shea Getz P.C. FILING DATE 05/22/2014 05/22/2018 10 Waterside Drive, Suite 205 Farmington, CT 06032 FIRST NAMED INVENTOR Mohan M. Vijay 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. 1208-0002-2 4156 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 05/22/2018 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): uspto@osheagetz.com shenry@osheagetz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MOHAN M. VIJA Y, ANDREW HUNG TIEU, WENZHUO YAN, and BRUCE R. DANIELS 1 Appeal2018-002335 Application 14/285,196 Technology Center 3700 Before ANNETTE R. REIMERS, NATHAN A. ENGELS, and BRENT M. DOUGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mohan M. Vijay et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1, 2, 4, 5, 7, 8, 10, and 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Vijay (WO 2005/042177 Al, published May 12, 2005) (hereinafter "WO '177") and von Borcke (US 4,995,201, issued Feb. 26, 1991). Claims 3, 6, 9, and 12-20 have been 1 VLN Advanced Technologies Inc. is indicated as the "real party interest" of the subject application. See Appeal Brief 3 (hereinafter "Appeal Br.") (filed Oct. 3, 2017). Appeal2018-002335 Application 14/285,196 canceled. Claims 21 and 22 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "relates generally to forced pulsed waterjets and, in particular, to surface prepping using forced pulsed waterjets." Spec. ,r 2, Fig. 3F. Claims 1 and 7 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method of prepping a cylindrical inner surface of a bore using a high-frequency forced pulsed waterjet, the method compnsmg: inserting the nozzle2 inside the bore, wherein the bore has a constant radius; generating a pressurized waterjet using a high-pressure water pump; generating a high-frequency signal using a high-frequency signal generator; applying the high-frequency signal to a transducer to generate the high-frequency forced pulsed waterjet; and rotating a rotatable nozzle head inside the bore to prep the inner cylindrical surface of a substrate material of the bore to a predetermined uniform surface finish characterized by an average surface roughness Ra that is within a predetermined range of surface roughness using the high-frequency forced pulsed waterjet exiting from at least one angled exit orifice of the rotatable nozzle head, wherein the waterjet flows through a curved conduit in the nozzle head to the at least one angled exit orifice that is substantially perpendicular to an axis of rotation of 2 Each of independent claims 1 and 7 recites, "inserting the nozzle inside the bore." See Appeal Br. 11, 12 ( emphasis added). As "the nozzle" lacks antecedent basis in each of claims 1 and 7, it appears Appellants meant for claims 1 and 7 to recite, "inserting f! nozzle inside the bore." See id. ( emphasis added). 2 Appeal2018-002335 Application 14/285,196 the rotatable nozzle head to direct the waterjet radially outwardly against the surface of the bore. ANALYSIS Claim 1 is directed to "[a] method of prepping a cylindrical inner surface of a bore" including the step of "rotating a rotatable nozzle head ... to prep the inner cylindrical surface ... of the bore," wherein the high- frequency forced pulsed waterjet "flows through a curved conduit in the nozzle head to the at least one angled exit orifice that is substantially perpendicular to an axis of rotation of the rotatable nozzle head." Appeal Br. 11, Claims App. The Examiner finds that WO '177 "preps the surface of a substrate by deburring the workpiece and can also be used similarly to Appellant[s'] disclosure of removing the coating (ie decoating)." Ans. 6; see also Final Act. 3 ("Deburring and decoating are synonymous with 'prepping' a surface."). 3 The Examiner further finds that [ r ]egarding the orifices angled at 90 degrees to the rotation axis, [WO '177] discloses that the angle can be varied . . . to achieve desired self-rotation of nozzle. Therefore, it would have been obvious to one of ordinary skill in the art at time invention was made to angle the exits at 90 degrees since any angle is contemplated by [WO '1 77] and in order to achieve desired self- rotation. Final Act. 4 ( citing WO '177 16: 17); see also Ans. 7. Appellants contend that "[ d]e-coating and prepping are ... considered different processes" (Appeal Br. 8; see also Reply Br. 2)4 and "orifices 91 [ of WO '177] are actually parallel to the axis of rotation, axially oriented, 3 Examiner's Answer (hereinafter "Ans.") (dated Nov. 1, 2017); Final Office Action (hereinafter "Final Act.") (dated May 3, 2017). 4 Reply Brief (hereinafter "Reply Br.") (filed Dec. 29, 2017). 3 Appeal2018-002335 Application 14/285,196 not perpendicular to the axis of rotation" (Reply Br. 4; see also Appeal Br. 9). As an initial matter, we disagree with the Examiner's position that "de-coating" a surface is synonymous with "prepping" a surface. See Final Act. 3. Appellants' Specification describes that Figure 1 C "depicts a forced pulsed waterjet apparatus for use in surface prepping ( or other applications such as coating removal or creating patterns) in accordance with embodiments of the present invention" and "[t]he drop test ... provides a useful and novel means to determine operating parameters for particular prepping or coating-removal applications." Spec. ,r,r 18 ( emphasis added), 163 ( emphasis added), Fig. 1 C; see also Reply Br. 2. In other words, Appellants' Specification indicates that "prepping" a surface and "de- coating" a surface are different processes. Moreover, Appellants correctly note that both withdrawn claims 21 and 22 of the subject invention "recite a step of removing a coating prior to prepping the surface," and, thus, "[t]he principle of claim differentiation requires that [the prepping step ofJ claim 1 be interpreted as not involving de-coating." Appeal Br. 8. Here, the Examiner finds that "[ d]eburring and decoating are synonymous with 'prepping' a surface." Final Act. 3; see also Ans. 6. However, as discussed above, Appellants' Specification distinguishes between "prepping" and "de-coating" a surface. Stated differently, according to the Specification, "prepping" and "de-coating" are not synonymous processes. Thus, the Examiner's position that "[t]he deburring process" of WO '177 "is synonymous with [the] prepping" process of the subject invention is not supported by a preponderance of the evidence. See Ans. 6; see also Spec. ,r,r 18, 163, Fig. IC; Appeal Br. 8; Reply Br. 2-3. 4 Appeal2018-002335 Application 14/285,196 Regarding the exit orifices, although WO '177 discloses that the "angle of orientation" of exit orifices 91 "can be at different angles [i.e., can vary]" (see Ans. 7; see also Final Act. 4), we agree with Appellants that exit orifices 91 of WO '177 "are all aimed forward in order to impinge on a forward surface" such that "an amount of self-rotation" of rotating nozzle head 90 is "adjusted by changing the axial angle of orientation" of exit orifices 91 and, as such, "[ t ]here is no disclosure or suggestion" in WO '1 77 of exit orifices 91 being "substantially perpendicular to an axis of rotation" of rotatable nozzle head 90. See Reply 4 (underlining added); see also Appeal Br. 9; WO '177 16:15-20, Figs. 13-15. For these reasons, we do not sustain the Examiner's rejection of claims 1, 2, 4, 5, 7, 8, 10, and 11 as unpatentable over WO '177 and von Borcke. DECISION We REVERSE the decision of the Examiner to reject claims 1, 2, 4, 5, 7, 8, 10, and 11 as unpatentable over WO '177 and von Borcke. REVERSED 5