Ex Parte 6504308 et al

Board of Patent Appeals and Interferences

Nov 1, 2010

90007276 (B.P.A.I. Nov. 1, 2010)

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.
90/007,276 10/29/2004 6504308 149-0001-2 3775
79220 7590 11/01/2010
ZAGORIN O'BRIEN GRAHAM LLP (149)
7600B N. CAPITAL OF TX HWY
SUITE 350
AUSTIN, TX 78731
EXAMINER
RUBIN, MARGARET R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/01/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TESSERA, INC.1
____________

Appeal 2010-007803
Reexamination Control No. 90/007,276
United States Patent 6,504,308 B1
Technology Center 3900
____________

Before SCOTT R. BOALICK, KARL D. EASTHOM, and
KEVIN F. TURNER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL2

1 Appellant, Tessera, Inc., is the real party in interest for this appeal.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-007803
Reexamination Control 90/007,276
Patent 6,504,308 B1

Patent Owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-5, 8-10, 15, 26, and 30-32. All other
pending claims have been confirmed. (App. Br. 3.) We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We REVERSE.

STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination by Sharper Image Corporation of U. S. Patent 6,504,308 B1,
titled “Electrostatic Fluid Accelerator.” Appellant’s Brief states that there
are no other judicial proceedings which will have a bearing on the Board’s
decision in this appeal. (App. Br. 2.) A telephonic hearing of this appeal
transpired on October 6, 2010.
The ‘308 Patent3
The ‘308 patent discloses a fluid accelerator known in the art as an ion
wind generator. Negatively-charged corona electrodes emit electrons which
ionize fluid particles. The ionized corona particles accelerate toward an
exciting plate electrode 2 extending downstream along a desired fluid flow
direction (designated by the arrow in Figure 1 of the’308 patent). The
ionized fluid particles also transfer momentum to other molecules in the
fluid which also flow downstream. The corona electrodes are
“asymmetrically” located with respect to the plate electrodes, for example,
to the left of the center of the plate electrodes. (Abstract, col. 1, ll. 39-46;
col. 3, ll. 33-37; Fig. 1.)

3 The ensuing description constitutes factual findings hereinafter designated
as “D.”
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The ‘308 patent also describes how prior art wind generator devices
may or may not transfer sufficient momentum to air particles to create
appreciable flow in one direction. Whether flow occurs depends on the
geometry and voltages in the device. (See Abstract; col. 1-2; col. 3, ll. 23-
57.)
Figure 1 of the ‘308 patent appears below:

Figure 1 depicts corona electrodes 1 and plate-shaped electrodes 2.
The arrow represents the desired fluid flow direction. (Col. 6, ll. 51-54.)
Claim 1 on appeal reads as follows:
1. An electrostatic fluid accelerator comprising:
a multiplicity of closely spaced corona electrodes; and
at least one exciting electrode shaped as a plate extending downstream
with respect to a desired fluid flow direction, said at least one exciting
electrode asymmetrically located between said corona electrodes with
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respect to said desired fluid flow direction such that a desired fluid
flow is generated in said desired fluid flow direction.

The Examiner relied upon the following prior art references:
Penney US 3,026,964 Mar. 27 1962
Fuchs US 3,981,695 Sept. 21, 1976
Zucker US 3,984,215 Oct. 5, 1976
Santamaria US 4,600,411 July 15, 1986
Plaks US 5,059,219 Oct. 22, 1991

Claims 1, 4, 5, 8, 9, 15, 26 and 30-32 stand rejected under 35 U.S.C.
102(b) as anticipated based on Plaks.
Claims 1, 2, 8, 26, and 30-32 stand rejected under 35 U.S.C. 102(b) as
anticipated based on Penney.
Claim 2 stands rejected under 35 U.S.C. 103(a) as obvious based on
Penney and either Fuchs, Santamaria, and Zucker.
Claims 2 and 3 stand rejected under 35 U.S.C. 103(a) as obvious
based on Plaks and either Fuchs, Santamaria, and Zucker.
Claim 10 stands rejected under 35 U.S.C. 103(a) as obvious based on
Plaks and either Fuchs, Santamaria, and Zucker.

ISSUE
This appeal involves the issue of whether the Examiner established
that the independent claims, drawn to an electrostatic fluid generator which
generates fluid in a desired direction defined by an electrode extending
downstream, read on the electrostatic precipitators disclosed by either of
Plaks or Penny.

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FINDINGS OF FACT (FF)
1. Penney discloses an electrostatic precipitator. Gas containing dust
enters the device from the left (see “GAS FLOW” arrow in Fig. 1 as
depicted below (FF 3)). Corona electrodes ionize the dust particles. The
negatively-charged dust particles primarily collect at either low positively-
charged passive electrodes 2 and/or grounded or slightly positive electrodes
4 further downstream of the entering gas flow. Electrode 5 is negatively
charged. (Penney, col. 2, ll. 30-50.)
2. “When the gas passes through the collection section the negatively-
charged particles will drift toward the positively-charged collecting plates 4
under the influence of the electrical field between plates 4 and 5.” (Penney,
col. 2, ll. 38-43.)
3. Figure 1 of Penney is depicted below:

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Penney’s Figure 1 depicts corona discharge electrodes 1, passive
electrodes 2, collecting plates 4, and plates 5. (Penney, col. 2, ll. 26-50.)
Negative ions emitted from the corona electrodes are driven across
toward the collecting plates. Electrons from the electrodes tend to collect on
dust in the gas. The negatively-charged dust collects on the plates 2 and also
in the collecting section on plates 4. (Penney, col. 1, ll. 33-35; col. 2, ll. 26-
50; col. 3, ll. 64-69.)
4. Plaks discloses an electrostatic precipitator device which functions
similarly to that of Penney. (Plaks, col. 1, ll. 6-10; compare Plaks, Abstract
and Fig. 1 with Penney, Fig. 1 and supra FF 1-3.) In other words, similar to
the Penney device, ions from corona electrodes charge particulates in a gas
flow which are attracted and collected by collecting electrode plates. (Plaks,
col. 1, ll. 13-31.)
5. Figure 1 of Plaks is depicted next:

Plaks’ Figure 1 represents fluid entering an electrostatic precipitator
from the left with corona discharge electrodes 18, grounded pipes 16, and
grounded collecting plates 22 which collect particulate emissions in the gas.
(Plaks, Abstract; col. 4, ll. 7-29.)
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PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To anticipate a claim
under § 102, a prior art reference must disclose every element of the claim.
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). Appellant has the burden
on appeal to show reversible error by the Examiner in maintaining the
rejection. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
The independent claims are of similar scope and require a device
capable of generating a fluid flow in a desired direction. The desired fluid
flow direction is in relation to “a plate extending downstream with respect to
a desired fluid flow direction,” as set forth in the independent claims. (See
App. Br. 39 (defining the desired direction as “i.e., in a downstream
direction coextensive with a plate constituting an exciting electrode”).)
Appellant contends that neither Penney nor Plaks teaches generating a
fluid flow in a desired direction, inherently or otherwise. (App. Br. 11-12.)
The Examiner correctly finds that Penny’s system causes some charged dust
particles to flow orthogonally (i.e., upwards or downwards) under
electrostatic forces with respect to the transversely (left to right) extending
plate 2 in Figure 1. (See Ans. 30 (making a similar finding with respect to
Plaks); see also FF 1, 3.) However, any flow in Penney and Plaks is
localized. Based on the record here, it cannot be determined that either
device necessarily generates a net fluid flow along the extending exciting
electrode, as Appellant argues. (See e.g., App. Br. 29-30; 39-40, 43-44; 57-
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58.) Hence, even if there were an aggregate upward or downward charged
dust flow, contrary to the Examiner’s contention (Ans. 30), such a flow
would not satisfy the claims because it would not be along Penney’s plate 2
(see FF 3) or Plaks’ plate 22 (see FF 5) extending downstream along the
desired fluid flow direction as the independent claims require.
The Examiner also contends that Plaks and Penney each teach flow
from left to right. The Examiner relies on the passage supra (FF 2) with
respect to Penney, and relies on a passage describing migration velocity w in
Plaks. (Ans. 27-30.) However, as Appellant points out, the force lines in
Penney are fan-wise. (App. Br. 40.)
For example, plate 5 is negatively charged and may repel the negative
dust particles to the left and also to the right toward electrode 4, but the
primary flow is downward at that region. And while some dust particles
may flow transverse to the plate 2 (i.e., left to right in Figure 1 of Penney), it
is not clear if dust particles, either as an aggregate, or net flow, with respect
to the whole precipitator, flow in the transverse direction solely under the
influence of charged plates.
Similarly in Plaks, notwithstanding the Examiner’s contention, Plaks
does not define the direction of the velocity w. The corona electrodes 18, as
a group, appear symmetrically located with respect to Plaks’ plate electrodes
22. (See App. Br. 44, 58 (arguing that Plaks’ device is symmetrical and that
the velocity is orthogonal to the claimed desired direction); FF 5.) Thus,
unlike Appellant’s invention (see D), the electrostatic forces do not extend
predominantly in one direction such as from left to right. Figure 1 in Plaks
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indicates that electrostatic forces are upward, downward, leftward, and
rightward – similar to the fan-wise forces in Penney. (See FF 3, 5.)
As such, any net flow of dust particles from left to right in both Plaks
and Penney may be due to an external blower or fan source causing overall
gas flow into each precipitator. (See App. Br. 40, 58.) Such an external fan
does not constitute a flow generator, as claimed in the electrostatic fluid
accelerator recited in the independent claims – i.e., “such that a desired fluid
flow is generated.” (Emphasis to independent claims supplied.) The object
of the Penney and Plaks precipitators is to trap particulates, as opposed to
forcing them to flow from left to right. (See App. Br. 40-41; 58; FF 1, 4.)
The Examiner’s similar contention that charged particles in Penney or
Plaks (Ans. 29) would create collisions with air molecules and thereby cause
flow based on similarities to the ‘308 patent lacks supporting evidence to
show that the structures are sufficiently similar in electrode configuration
and voltage. (Compare FF D with FF 3 and FF 5.) The ‘308 patent also
indicates that flow may or may not occur depending on the configuration
and voltage. (See App. Br. 11-12 (describing the invention as requiring
asymmetry and closely-spaced corona electrodes); FF D.) Thus, while the
Examiner is correct that the prior art devices need only have the capability to
create flow (Ans. 30-31), any evidence of similarity in voltage and electrode
configuration as necessary to shift the burden to Appellant to show lack of
flow generation capability is insufficient. As indicated supra, based on the
fan-wise forces described in Penney and similarly forces in Plaks, even if
some collisions do occur, it is not clear that the net resulting generated air
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flow in one direction would necessarily be along an extending electrode, as
required by the independent claims.
In other words, as Appellant argues (see App. Br. 30), possible or
probable fluid flow in either Plaks or Penney does not establish that either
system necessarily generates net fluid flow in the desired direction along the
extending exciting electrode, as required to support anticipation under an
inherency theory. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)
(“‘Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result form a given set of
circumstances is not sufficient.’”) (citation omitted).
Based on the foregoing discussion, the Examiner has not established
that Plaks or Penney anticipates independent claims 1, 2, 4, 5, 8, 9, 15, 26,
and also claims 30-32 dependent therefrom. With respect to the obviousness
rejections of claims 2, 3, and 10, the Examiner does not rely on any of the
other disclosures of record to cure the above-described deficiencies in Plaks
and Penney. As such, we will not sustain the Examiner’s rejection of claims
1-5, 8-10, 15, 26, and 30-32.

CONCLUSION
The Examiner did not establish that the independent claims, each
drawn to an electrostatic fluid generator which generates fluid in a desired
direction defined by an electrode extending downstream, read on the
electrostatic precipitators disclosed by either of Plaks or Penny.

Appeal 2010-007803
Reexamination Control 90/007,276
Patent 6,504,308 B1

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DECISION
The Examiner’s decision to reject appealed claims 1-5, 8-10, 15, 26,
and 30-32 is reversed.
REVERSED

bim

FOR APPELLANT:
ZAGORIN O’BRIEN GRAHAM, LLP
7600B NORTH CAPITAL OF TEXAS HIGHWAY
SUITE 350
AUSTIN, TX 78731

FOR THIRD PARTY REQUESTER:
BELL, BOYD & LLOYD, LLC
P.O. BOX 1135
CHICAGO, IL 60690-1135