Ex Parte Hursen

Patent Trial and Appeal Board

Mar 21, 2016

12605305 (P.T.A.B. Mar. 21, 2016)

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.
12/605,305 10/23/2009 Thomas Francis Hursen Hursen-0803 1450
36787 7590 03/21/2016
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
REIS, RYAN ALEXANDER
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
03/21/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS FRANCIS HURSEN
____________

Appeal 2014-001336
Application 12/605,305
Technology Center 3700
____________

Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant (Thomas Francis Hursen) appeals under 35 U.S.C.
§ 134 from the Examiner’s rejections of claims 1–13 and 15–20.1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

We REVERSE.

1 Claim 14 has been cancelled. (See Final Action 2, Appeal Br. 5.)
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Application 12/605,305

2
STATEMENT OF THE CASE
The Appellant’s invention “relates to soil excavation using supersonic
nozzles.” (Spec. ¶ 3.)
Illustrative Claim2
1. A pneumatic nozzle assembly comprising:
A nozzle body having an internal through passage with an
inlet on the a first side and an outlet on an opposed side of the
nozzle body, wherein the nozzle body is a converging-diverging
cylindrical nozzle body having the inlet on the converging side
and the outlet on the diverging side of the nozzle body, and an
external nozzle connection; and
A replaceable cylindrical wear tip removably coupled to
the nozzle body through the nozzle body externally threaded
nozzle connection and with an internal through passage aligning
with the outlet of the nozzle body, and wherein an outside form
of the wear tip is configured to direct reverse sand blasting
particles away from the external surfaces of the nozzle body.

References
Voos US 4,091,999 May 30, 1978
Radtke US 4,494,618 Jan. 22, 1985
Artzberger US 5,170,943 Dec. 15, 1992
Potter US 2008/0093125 A1 Apr. 24, 2008

Rejections
I. The Examiner rejects claims 1–8, 10, 12, 13, and 15–17 under
35 U.S.C. § 102(b) as anticipated by Radtke. (Final Action 2.)
II. The Examiner rejects claims 1, 9, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Voos. (Id. at 8.)

2 This illustrative claim is quoted from the Claims Appendix set forth on
pages 21–25 of the Appeal Brief.
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Application 12/605,305

3
III. The Examiner rejects claims 10 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Voos in view of Radtke. (Id. at 10.)
IV. The Examiner rejects claims 18 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Voos in view of Potter. (Id. at 11.)
V. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Voos in view Potter and further in view of Artzberger.
(Id. at 12–13.)

ANALYSIS
Claims 1, 10, and 17 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 2–9, 11–13, 15, 16, and 18–20)
depending therefrom. Independent claims 1, 10, and 17 each recites a
“converging-diverging” nozzle body having an “inlet” on its “converging
side” and an “outlet” on its “diverging side.” (Appeal Br., Claims App.)
The Examiner and the Appellant differ somewhat on their
interpretations of this recited limitation, however, they both agree that it
requires the nozzle body to have an internal passage with a converging
portion upstream of a diverging portion. (See Appeal Br. 11–14;
Answer 13.)
Although we review claim construction issues de novo,3 here we agree
with the parties that independent claims 1, 10, and 17, when correctly
construed, would require the recited nozzle body to have, among other
things, an internal passage with a converging portion upstream of a
diverging portion. The record reflects that this claim construction is

3 See In re Donaldson Co., 16 F. 3d 1189, 1192 (Fed. Cir. 1994) (en banc)
(Claim construction is “a question of law” that is reviewed “de novo.”)
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Application 12/605,305

4
consistent with the interpretation one of ordinary skill in the art would reach
regarding the recited limitation.4 (See e.g., Potter col. 4, ll. 62–66, Fig. 2.)
And the record reflects that this claim construction is consistent with the
Appellant’s Specification.5 (See e.g., Spec. ¶ 46, Fig. 3A.)
The Examiner bears the initial burden of establishing a prima facie
case of anticipation or obviousness.6 As independent claims 1, 10, and 17
each requires the internal passage of a nozzle body to have a converging
portion upstream of the diverging portion, a prima facie case of anticipation
cannot be established unless the Examiner identifies where such a
converging portion is disclosed in a prior art reference.7 Likewise, a prima
facie case of obviousness cannot be established unless the Examiner
articulates where and why such a converging portion is shown or suggested
in the prior art reference(s).8

4 See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the
PTO must give claims their broadest reasonable interpretation, this
interpretation must be consistent with the one that those skilled in the art
would reach”).
5 See In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010),
(“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification”).
6 See In re Oetiker, 977 F. 2d. 1443, 1445 (Fed. Cir. 1992) ([T]he
[E]xaminer bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability”).
7 See in re Schreiber 128 F. 3d 1473, 1477 (Fed. Circ. 1997) (“To anticipate
a claim, a prior art reference must disclose every limitation of the claimed
invention, either explicitly or inherently”)
8 See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness”).
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Application 12/605,305

5
Rejection I
As indicated above, independent claims 1, 10, and 17 each require the
internal passage of a nozzle body to have a converging portion upstream of
the diverging portion. Claims 2–8, 12, 13, 15, and 16 depend directly or
indirectly from claim 1 or claim 10, and thus incorporate such a requirement.
The Examiner maintains that “[t]he device of Radtke converges from
element 4 to element 2 then diverges along element 2 in the downstream
direction as seen in Figure 1.” (Id.) Radtke’s Figure 1 is reproduced below,
with the pertinent passage region being enlarged and annotated.

Radtke’s Figure 1 is a view, partly in quarter section, of an earth boring drill.
The Examiner does not identify, and we do not see, a converging portion
upstream of a diverging portion in this drawing.
Thus, the Examiner fails to establish a prima facie case of
anticipation; and we do not sustain the Examiner’s rejection of claims 1–8,
10, 12, 13, and 15–17 under 35 U.S.C. § 102(b) as anticipated by Radtke.
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Application 12/605,305

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Rejection II
As indicated above, independent claims 1 and 17 each requires the
internal passage of the nozzle body to have a converging portion upstream of
the diverging portion. Claim 9 depends from claim 1 and thus incorporates
this requirement.
The Examiner maintains that Voos discloses such a converging
portion in Figure 1B. (See Final Action 8; see also Answer 13.) Voos’s
Figure 1B is reproduced below with the relevant regions being enlarged and
annotated.

Voos’s Figure 1B is a cross sectional-view of a nozzle device. The
Examiner does not identify a converging portion upstream of a diverging
portion in this drawing; and the Examiner does not otherwise articulate why
such a converging portion is shown or suggested by Voos.
Thus, the Examiner fails to establish a prima facie case of
obviousness; and we do not sustain the Examiner’s rejection of claims 1, 9,
and 17 under 35 U.S.C. § 103(a) as unpatentable over Voos.
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Application 12/605,305

7
Rejections III–V
As indicated above, independent claim 10 requires the internal
passage of the nozzle body to have a converging portion upstream of the
diverging portion. Claim 11 depends from independent claim 10 and thus
incorporates this requirement. Claims 18–20 depend directly or indirectly
from independent claim 17 and thus incorporate its requirement that the
internal passage of the nozzle body have a converging portion upstream of
the diverging portion. In the obviousness rejections of these claims, the
Examiner relies upon Voos disclosing such a converging portion upstream
of a diverging portion. (See Final Action 10, 12, 13.) However, as
discussed above, the Examiner fails to articulate where or why such a
converging portion is shown or suggested by Voos. The Examiner’s further
findings and determinations with respect to Radtke, Potter, and Artzberger
do not compensate for this failure. (See id. at 11–13.)
Thus, the Examiner does not establish a prima facie case of
obviousness, and we do not sustain Examiner’s rejections of claims 10, 11,
and 18–20 under 35 U.S.C. § 103(a) as unpatentable over Voos in view of
Radtke, Potter, and/or Artzberger.

DECISION
We REVERSE the Examiner’s rejections of claims 1–13 and 15–20.

REVERSED