Ex Parte Hernandez et al

Patent Trial and Appeal Board

Jul 11, 2016

13161116 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/161,116 06/15/2011
74701 7590 07113/2016
ADDMG - Harris
255 S ORANGE A VENUE
SUITE 1401
ORLANDO, FL 32801
FIRST NAMED INVENTOR
Victor Hernandez
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.
GCSD-2322 (61812) 4752
EXAMINER
TAI,XIUYU
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
07/13/2016 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):
creganoa@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR HERNANDEZ and LISA PATTON
Appeal2014-007166
Application 13/161, 116
Technology Center 1700
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-5 and 7-16. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "Harris Corporation" (Br. 1 ).
Appeal2014-007166
Application 13/161, 116
Claim 10, the broadest independent claim, is illustrative of the subject
matter on appeal (emphasis added to highlight key limitations for purposes
of this appeal):
10. An apparatus/or processing hydrocarbons
compnsmg:
a resonant ring comprising a phase adjuster and a
reaction chamber coupled thereto, the reaction chamber being
configured to process hydrocarbons therein;
a coupler having a first port, a second port, and a
third port, the second and third ports being coupled to the
resonant ring; and
a power supply connected to the first port and
configured to supply radio frequency (RF) energy through the
resonant ring for processing the hydrocarbons within the
reaction chamber.
Appellants appeal the following rejections under 35 U.S.C. §103(a):
I. Claims 1--4, and 8-14 as unpatentable over the combined prior art of Uhm
(US 2008/0296294 Al, pub. Dec. 4, 2008), Aine (US 3,710,063, iss. Jan. 9,
1973), Tomiyasu (Attenuation in a Resonant Ring Circuit (Correspondence),
IRE Transaction on Microwave Theory and Techniques, Vol. 8, 253-254
(March 1960)), and Veshcherevich (Resonant Ring For High Power Tests of
RF Couplers, Cornell University ERL Report 03-15, 1-20 (2003)) (Ans. 3-
8);
II. Claims 5 and 15 as unpatentable over the combined prior art of
Uhm, Aine, Tomiyasu, and Veshcherevich, and Nick (US 2006/0112639 Al,
pub. Jun. 1, 2006) (Ans. 8-9);
III. Claims 7 and 16 as unpatentable over the combined prior art of
Uhm, Aine, Tomiyasu, and Veshcherevich, and Constantz (US
2011/0277474 Al, pub. Nov. 17, 2011) (Ans. 9-10).
Appellants argue the claims as a group, but focus their arguments on
limitations of independent claim 1 (e.g., Br. 6), failing to appreciate that
claim 10 lacks some of the disputed limitations. Accordingly, we mainly
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Application 13/161, 116
focus our discussion to limitations common to independent claims 1 and 10,
and address the additional limitations of claim 1 as needed. We also address
Appellants' arguments regarding the separate rejection of claims 5 and 15
(Br. 10, 11).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections because we are unpersuaded of error in the
Examiner's determination of obviousness essentially for the reasons set out
by the Examiner in the Answer.
We add the following primarily for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellants' first argument is that the Examiner failed to give
appropriate weight to the intended use of the claimed apparatus (e.g., Br. 7,
8). However, there is no dispute that Uhm is directed to a microwave
plasma torch apparatus and method for reforming hydrocarbons (Br.
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Appeal2014-007166
Application 13/161, 116
generally; Uhm e.g., i-f 26). Appellants have not directed us to any
persuasive technical reasoning why the apparatus of Uhm as modified by the
Examiner would not have been capable of "processing hydrocarbons" as
recited in claim 10, or "at least one of sublimation and pyrolysis of
hydrocarbons" as recited in claim 1 (Ans. 6).
Appellants also contend that neither Aine nor Tomiyasu is analogous
art and thus there is no reason to combine them with Uhm 2, because these
references are not from Appellants' field of endeavor (Br. 8-9). Appellants
contend that the claimed invention is drawn to the sublimation or pyrolysis
of hydrocarbons, while Tomiyasu is drawn to attenuation in a resonant ring
circuit, and Aine is directed to uniform application of microwave energy to
sheets of material (Br. 9).
We are not persuaded by Appellants' arguments. The scope of the
field of endeavor is a factual determination based on the scope of the
application's written descnpt10n and claims. In re Bigio, 381F.3d1320,
1326 (Fed. Cir. 2004). If a reference is not within the relevant field of
endeavor, it may still be properly considered if it is reasonably pertinent to
the problem; that is, if it would have logically commended itself to an
inventor's attention. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In KSR
Int'! Co., 550 U.S. at 419-420 the Supreme Court observed that:
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [ unpatentable] under § 103. One of the ways in which a
2 There is no dispute that Uhm and Veshcherevich are analogous art (Br.
generally).
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Application 13/161, 116
patent's subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for
which there was an obvious solution encompassed by the
patent's claims.
See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
("[t]he Supreme Court's decision in KSR ... directs us to construe the scope
of analogous art broadly," stating that "familiar items may have obvious
uses beyond their primary purposes, and a person of ordinary skill often will
be able to fit the teachings of multiple patents together like pieces of a
puzzle").
Appellants do not dispute the Examiner's finding that Aine
exemplifies that a resonant ring circuit was known to efficiently produce "a
region of intense uniform electric field and allows a relative low power
source for excitation [of] the resonator" (Ans. 4; Br., generally). Indeed,
Appellants admit that Veshcherevich exemplifies that a resonant ring can
amplify RF power using two directional couplers with a coupling device
there between with a resonant cavity (Spec. i-f7, Br. 8), and Appellants do not
dispute the Examiner's finding that Veshcherevich "shows that a RF power
is an equivalent power source for a microwave power generator" (Ans. 6;
Br. generally). Appellants also admit that the use of steam, microwave
energy and RF energy have been used to process hydrocarbons, albeit
generally inefficiently and costly (Spec. 3). 3
3It is axiomatic that admitted prior art in an Applicants' Specification may be
used in determining the patentability of a claimed invention and that
consideration of the prior art cited by the Examiner may include
consideration of the admitted prior art found in an Applicants' Specification.
In re Nomiya, 509 F.2d 566, 570-571(CCPA1975); In re Davis, 305 F.2d
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Appellants have not shown error in the Examiner's de facto finding
that the relevant field of endeavor relates to apparatus including a resonator
with the claimed structure, and that the applied references are all related to
microwave technology using a resonator (and used to generate plasma to
process hydrocarbons in Uhm) (Ans. 10) instead of the more narrow
definition Appellants' propose of pyrolysis or sublimation of hydrocarbons
(Br. 9). Notably, Appellants' Specification and claims are not so limiting.
Indeed, claim 10 is broadly directed to "an apparatus for processing
hydrocarbons." A preponderance of the evidence supports the Examiner's
findings that the applied prior art are in the same field of endeavor and/or
reasonably pertinent to the problem of efficient generation of plasma energy
via microwaves or RF power, and thus are analogous art. The Examiner has
articulated sufficient reasons why one of ordinary skill in the art would have
looked to Aine, and Tomiyasu (as well as Veshcherevich) when considering
the plasma reaction apparatus of 1Jhm (generally Ans.). Appellants mere
conclusion that these four references are "disjoint" and that their
combination used improper hindsight (Br. 8) is not persuasive of error in the
Examiner's detailed reasoning (Ans. generally). Appellants' arguments do
not adequately address the Examiner's reasoning for combining the prior art.
Appellants have not adequately explained why one skilled in the art
would not have combined Aine's and Tomiyasu's teachings with Uhm and
Veshcherevich to arrive at a modified hydrocarbon processing reactor
having the enhanced efficiencies and "fully capable of performing the
501, 503 (CCPA 1962); In re Hedges, 783 F.2d 1038, 1039--1040 (Fed. Cir.
1986).
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Application 13/161, 116
claimed functions" (Ans. 6) as stated by the Examiner. Thus, on this record,
Appellants have not shown error in the Examiner's determination that one of
ordinary skill in the art, using no more than ordinary creativity, would have
used a known resonator ring circuit as exemplified in Veshcherevich and
Aine for enhanced efficiency for the resonator/waveguide of Uhm or that
one skilled in the art would have known of the benefits of a phase adjuster
for a resonant ring circuit as exemplified in Tomiyasu (Ans. 3---6). KSR Int 'l
Co., 550 U.S. at 417 (2007) (the predictable use of known prior art elements
performing the same functions they have been known to perform is normally
obvious; the combination of familiar elements is likely to be obvious when it
does no more than yield predictable results); Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(Under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of the "inferences and creative steps," as well as routine steps,
that an ordinary artisan would employ).
Appellants' argument that Nick is also non-analogous art as applied to
dependent claims 5 and 15 (Rejection II) because Nick deals with a waste
reactor (Br. 10), is similarly not persuasive of error. As pointed out by the
Examiner, Nick exemplifies the known use of a gas chromatograph for
monitoring a reaction exit gas and ensure proper operation of the reactor,
and the use of such a known expedient for the (modified) reactor of Uhm
would have been obvious (Ans. 9, 11).
Appellants present no further arguments regarding rejection (III).
Consequently, after consideration of Appellants' arguments, we are
unpersuaded of error in the Examiner's determination of obviousness. We
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Application 13/161, 116
affirm the Examiner's prior art rejections under 35 U.S.C. § 103(a) of all the
claims on appeal for the reasons given above and presented by the Examiner.
Accordingly, we affirm the Examiner's prior art rejections of claims
1-5 and 7-16 under 35 U.S.C. § 103(a) for the reasons given above and
presented by the Examiner.
DECISION
The Examiner's § 103 rejections (Rejections I-III) are affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRiviED
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