PALO ALTO RESEARCH CENTER INCORPORATEDDownload PDFPatent Trials and Appeals BoardDec 2, 20212021003681 (P.T.A.B. Dec. 2, 2021) Copy Citation 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. 16/014,402 06/21/2018 VICTOR BECK 20120933US03-409841-0460 2872 65650 7590 12/02/2021 Miller Nash LLP - PARC 3400 U.S. Bancorp Tower 111 SW Fifth Avenue PORTLAND, OR 97204 EXAMINER GREENLUND, JOSEPH A ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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): eofficeaction@appcoll.com patdocketing@millernash.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VICTOR BECK and DAVID MATHEW JOHNSON Appeal 2021-003681 Application 16/014,402 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “PALO ALTO RESEARCH CENTER INCORPORATED.” Appeal Br. 2. Appeal 2021-003681 Application 16/014,402 2 STATEMENT OF THE CASE Subject Matter on Appeal The Appellant’s “disclosure relates to the field of atomization of fluids, more particularly to atomization of fluids using diverging surfaces.” Spec. ¶ 3. Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A process of creating an aerosol, comprising: coating at least one of a pair of counter-rotating, adjacent rollers with a fluid, the pair of counter-rotating rollers defining a nip there between; rotating the pair of counter-rotating, adjacent rollers in counter rotation with respect to each other to cause the fluid coating to be drawn into an upstream side of the nip to a downstream side of the nip, such that the fluid adheres to surfaces of each of the rollers; causing fluid filaments of the fluid to form on a downstream side of the nip, the fluid filaments formed by stretching the fluid between respective surfaces of the pair of counter-rotating, adjacent rollers, until the filaments break into droplets on the downstream side of the nip; and harvesting the droplets at the downstream side of the nip. References The prior art relied upon by the Examiner is: Name Reference Date Zavodny US 4,034,670 July 12, 1977 Stowe et al. (“Stowe”) US 2013/0033688 A1 Feb. 7, 2013 John G. Hagedorn et al., Breakup of a fluid thread in a confined geometry: droplet-plug transition, perturbation sensitivity, and kinetic stabilization with confinement, Physical Review E 69, 056312-1–056312-18 (2004) (“Physical Review”).2 2 The Examiner relies on this reference as extrinsic evidence. See Ans. 4. Appeal 2021-003681 Application 16/014,402 3 Edward Maccurdy, The Notebooks Of Leonardo Da Vinci Arranged Rendered Into English And Introduced Volume II, The Nature of Water, p. 748 (1958) (“Nature of Water”).3 Rejections Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by Zavodny. Claims 2–4 are rejected under 35 U.S.C. § 103 as unpatentable over Zavodny and Stowe. ANALYSIS The Appellant argues that the Examiner’s anticipation rejection of claim 1 is inadequately supported because Zavodny fails to disclose a process that includes the claimed step of “causing fluid filaments of the fluid to form on a downstream side of the nip, the fluid filaments formed by stretching the fluid between respective surfaces of the pair of counter- rotating, adjacent rollers, until the filaments break into droplets on the downstream side of the nip.” See Appeal Br. 4; Reply Br. 2. With regard to the aforementioned step of claim 1, the Examiner finds that Zavodny discloses causing fluid filaments of dampening fluid 18 to form on the downstream side of nip 16 where mist 44 is formed. Final Act. 3 (citing Zavodny, Fig. 1). Specifically, the Examiner finds that the fluid filaments are formed by stretching fluid 18, including bead B, between respective surfaces of supply roller 13 and mist generating or feed roller 14, until the fluid filaments break into mist 44. See id. at 3, 5 (citing Zavodny, 3 The Examiner relies on this reference as extrinsic evidence. See Ans. 4. Appeal 2021-003681 Application 16/014,402 4 Figs. 1, 3); see also Spec. ¶ 21 (describing “[a]ll fluids can be continually stretched to form fluid filaments (stretched fluid) until the fluid filaments break into several droplets thus forming a mist or aerosol”). The Appellant contends that “[t]he apparatus of Zavodny does not teach the formation of fluid filaments between the ‘supply roller 13’ and ‘feed roller 14.’” Appeal Br. 5 (emphasis omitted). The Appellant’s contention is persuasive. Zavodny does not explicitly disclose that a “fluid filament” forms on the downstream side of nip 16. Rather, Zavodny only discloses that fluid 18, specifically bead B, tends to spread into a film and is released via centrifugal force as a fine mist on the downstream side of nip 16. See Zavodny, col. 5, ll. 3–39, Figs. 1, 3. In the Appellant’s words, “the nip of Zavodny changes the bead B into a thin film that is still intact when it emerges from the nip and is then flung off the roller using centrifugal force.” Appeal Br. 6. We determine that the Examiner fails to adequately explain on the record why one of ordinary skill in the art would understand that bead B or fluid film that emerges at the downstream side of Zavodny’s nip 16 corresponds to a fluid filament as claimed. We note that the Examiner defines that term “filament” as “a single thread or a thin[] flexible threadlike object, process, or appendage.” Ans. 3. The Examiner, however, fails to adequately explain on the record why one of ordinary skill in the art would understand fluid 18 (i.e., bead B, fluid film, or “thin sheet of fluid” (Ans. 4)), which emerges at the downstream side of nib 16, as a single thread or a thin threadlike object, process, or appendage. See Reply Br. 2. Here, the Examiner concludes that a thin sheet of fluid corresponds to a thread, and Appeal 2021-003681 Application 16/014,402 5 therefore, a filament. The lack of evidentiary support for the Examiner’s conclusion prevents us from agreeing. The Examiner cites to extrinsic evidence, including Physical Review as support for the Examiner’s conclusion. Ans. 4 (citing Physical Review, Figs. 2, 5, 7; Nature of Water). Physical Review describes that “[a] wide range of flexible boundary types is evidently possible (e.g., threads in supported and free-standing films, etc.) and investigation of this type of confinement is needed since many new features apparently arise for this type of confinement.” Physical Review, 17 (emphasis added). However, Physical Review suggests that threads and films are understood in the art as distinct, not that threads (i.e., filaments) and films are understood in the art as the same. Similarly, the Specification treats the terms filament and film as distinct. See, e.g., Spec. ¶¶ 30–31 (describing a fluid film on the upstream side of the nip and a filament formed on the downstream side of the nip), Fig. 5. In the Appellant’s words, “[t]he film of Appellant’s invention as claimed does not emerge from the nip as a film, it is the nip that causes the film to be stretched into filaments.” Appeal Br. 6. Therefore, we determine that although it is possible that the fluid (e.g., film) that emerges on the downstream side of Zavodny’s nip 16 may include filaments, the Examiner does not demonstrate on the record that it is necessarily the case that the fluid formed on the downstream side of nip 16 includes one or more filaments. In view of the foregoing, we determine that the Examiner has not adequately supported the finding that Zavodny discloses “causing fluid filaments of the fluid to form on a downstream side of the nip,” as recited in claim 1. Moreover, we note that claim 1 adds to the step of “causing fluid Appeal 2021-003681 Application 16/014,402 6 filaments of the fluid to form on a downstream side of the nip,” by reciting that “the fluid filaments [are] formed by stretching the fluid between respective surfaces of the pair of counter-rotating, adjacent rollers, until the filaments break into droplets on the downstream side of the nip.” For at least the reasons discussed above, the Examiner also does not demonstrate on the record that it is necessarily the case these additional requirements of the “causing” step are disclosed by Zavodny. See also Appeal Br. 6–7. Thus, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Zavodny. Further, the Examiner fails to rely on the teachings of Stowe in any manner that would remedy the deficiency in the Examiner’s rejection as discussed above. Therefore, we likewise do not sustain the Examiner’s rejection of claims 2–4 under 35 U.S.C. § 103 as unpatentable over Zavodny and Stowe. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102(a)(1) Zavodny 1 2–4 103 Zavodny, Stowe 2–4 Overall Outcome 1–4 REVERSED Copy with citationCopy as parenthetical citation