PALO ALTO RESEARCH CENTER INCORPORATED

Patent Trials and Appeals Board

Dec 2, 2021

2021003681 (P.T.A.B. Dec. 2, 2021)

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

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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.
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Application 16/014,402

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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
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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
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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