Ex Parte Aizenberg et al

Board of Patent Appeals and Interferences

Jun 20, 2012

11172319 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOANNA AIZENBERG, THOMAS KRUPENKIN,
PAUL KOLODNER, and JOSEPH ASHLEY TAYLOR
__________

Appeal 2010-007722
Application 11/172,319
Technology Center 3700
___________

Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-12 and 21-26. The real party in interest is Lucent Technologies
Inc. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Applied Prior Art
Dodson U.S. 3,633,831 Jan. 11, 1972

Appeal No. 2010-007722
Application 11/172,319

2

The Rejection on Appeal
Claims 1-12 and 21-26 were finally rejected under 35 U.S.C. § 103
as obvious over Dodson.
Although the Examiner’s Answer does not identify claim 22 as a
rejected claim, we treat that as an inadvertent oversight and regard claim 22
as rejected as is indicated in the Office Action Summary of the final Office
action. Appellant regards claim 22 as finally rejected and on appeal.
The Invention
The disclosed invention is directed to an apparatus and method for
breaking particles. (Spec. 1: [0001]). In the background section of the
specification, it is described that in many biological applications, it is
desirable to crush particles so that their contents can be analyzed. (Spec.
1:[0002]:1-2). The specification further notes, for example, that bacterial
spores are highly resistant to rupture by various mechanical treatments.
(Spec. 1:[0003]:3-5). The specification further states that the invention
benefits from investigations that lead to a new understanding that it is
difficult to crush microparticles because forces from flowing liquid can
move the microparticles away as the crushing components of a mechanical
crusher are brought together. (Spec. 6:[0016]:1-6). The specification
describes that embodiments of the invention eliminates that problem by
providing a continuous flow of microparticles to rotating crushing
components. (Spec. 6:[0016]:7-9).
Claim 1 is the only independent claim. It is drawn to an apparatus and
reproduced below:

App
App

illus
eal No. 20
lication 11
1.

a

fir
each dis

w
more of
includes
one of th
ones of i

Figure 1
trates a pla
Figu
10-007722
/172,319
An ap
substrate;
st and sec
k having a
herein the
its teeth w
a channel
e disks, an
nterleaved
of Appell
n view of
re 1 shows

paratus, co
ond disks
n outer cir
first disk i
ith the tee
with an ex
d a maxim
teeth is le
ant’s speci
one embo
an embod
3
mprising
rotatably l
cumferenc
s positione
th of the se
it port loc
um distan
ss than ab
fication is
diment of
iment of A
:
ocated ove
e with tee
d to interl
cond disk
ated near
ce betwee
out 10 mic
reproduce
the claime
ppellant’
r the subs
th thereon
eave one o
, the subst
the teeth o
n adjacen
rons.
d below, w
d inventio

s inventio
trate,
; and
r
rate
f
t
hich
n:
n
Appeal No. 2010-007722
Application 11/172,319

4

As shown in Figure 1, apparatus 100 comprises a substrate 102 and
first and second disks 105 and 110, and the disks are rotatably mounted over
substrate 102. (Spec. 6:[0017]:3-5). Each disk 105 and 110 has an outer
circumference 130 with teeth 125 thereon. (Spec. 8:[0021]:1-2). The
specification describes exemplary microparticles 120 as having outer
dimensions that are less than about 100 microns and as comprising
biological cells or nonbiological microspheres. (Spec. 7:[0019]:1-7).
The specification describes that crushing the microparticles 120 is
facilitated by interleaving the teeth 125 located on the two disks as the disks
rotate. (Spec. 9:[0022]:1-3). The specification also describes that it is
preferable to have a maximum distance 148 between adjacent interleaved
teeth 140-146 on the separate disks to be less than about 10 microns. (Spec.
9:[0023]:1-3). Claim 1 is directed to that embodiment and specifically
recites that a maximum distance between adjacent ones of the interleaved
teeth is less than about 10 microns. In that regard, note that a micron is a
micrometer which is 1 x 10-6 of a meter.
DISCUSSION
We focus on the disputed limitations. The Examiner determined that
Dodson discloses all the elements of claim 1 except for the requirement that
the maximum distance between adjacent ones of the interleaved teeth is less
than about 10 microns. (Answer 3:11-24). The Examiner then determined
that Dodson nonetheless discloses that the cutters are spaced 0.125 inches
apart from each other for use with a material having a particular thickness,
and therefore it would be routine experimentation for one with ordinary skill
to modify the spacing of the interleaved teeth to arrive at Appellant’s
claimed maximum separation of 10 microns. There are several problems
App
App

with
Dod
piece

cutte
recir
there
arou
for k
disch
they
as m
to be

betw
throa
posit
eal No. 20
lication 11
the Exam
son which
s (Dodson

Fig
Dodson
rs 36 and
culating sc
to. (Dods
nd its entir
eeping pie
arged thro
will be ca
any times
discharge
Dodson
een screen
ts 55 and
ioned too
10-007722
/172,319
iner’s state
is a perspe
3:34-36)
ure 3 show
describes t
38 cannot
reen 44 is
on 3:72 to
e lower po
ces of cut
ugh holes
rried aroun
as may be
d through
also descr
44 and th
55’ is som
close to th

d position
ctive view
:
s an embo
hat inasm
be cut into
provided
4:1). Scre
rtion and
material w
46 in con
d the cutt
necessary
holes 46.
ibes that sp
e cutters 3
ewhat crit
e cutters, t
5
, but first w
of a cutte
diment of
uch as mat
small chi
around the
en 44 has
serves as a
hich are n
tact with c
ers and pre
to cause t
(Dodson 4
acing pro
6 and 38 t
ical. (Dod
he throats
e reprodu
r for cutti

Dodson’s
erials fed
ps or squa
cutters in
perforatio
guide or
ot small e
utter teeth
sented to
hem to be
:1-9).
vided by a
o form ma
son 4:9-1
formed be
ce Figure
ng sheet m
invention
into the bi
res in a sin
close prox
ns or hole
restraining
nough to b
50 and 52
the bite of
cut suffici
support b
terial acce
1). If the s
tween the
1 of
aterial int

te of
gle pass, a
imity
s 46 all
member
e
so that
the cutter
ently smal
ar 54
pting
creen is
cutters
o

l
Appeal No. 2010-007722
Application 11/172,319

6

and the screen cannot accept the large volume of material cut by the cutters
at their maximum feed rate and the material may back up and either reduce
the cutting rate or act like brakes to stop the cutters. (Dodson 4:12-17). If
the screen is positioned too far, a portion of the material to be recirculated
may tend to mat upon the screen 44 and block the discharge of small pieces
of material through the holes 46. (Dodson 4:17-20). Dodson further
describes that a spacing of 0.125 inches has been found to be quite suitable
for use with material of a thickness of about 0.031 inch. (Dodson 4:25-27).
The Examiner incorrectly cited to the description in Dodson that the
screen 44 is optimally separated from the cutters by a spacing of 0.125
inches as disclosing that the cutters are separated from each other by 0.125
inches. The Examiner indicates that the language can be reasonably
interpreted that way. We disagree. The reference to a separation distance of
0.125 inches immediately follows the explanation that the distance between
the screen 44 and the cutters can be critical and why both excessive distance
and insufficient distance result in problems. The only reasonable reading is
that 0.125 inches refers to the distance between the screen 44 and the cutters.
In any event, even assuming that the separation distance of 0.125
inches applies to the opposing teeth on the cutters in Dodson, it does not
meet the claim requirement of maximum distance of 10 microns. As is
pointed out by Appellant, 0.125 inches is more than 300 times greater than
the required value. The Examiner holds that one with ordinary skill in the
art could have arrived at the claimed separation as a matter of routine
experimentation when optimizing the apparatus of Dodson. That
determination is not supported by the record.
Appeal No. 2010-007722
Application 11/172,319

7

The apparatus disclosed in Dodson is for cutting ordinary articles such
as sheet material. (Dodson 3:53-68). The dimensions of such articles are
hundreds, if not thousands of times, larger than those of microparticles
described in Appellant’s specification, which measure in microns. The
Examiner has articulated no reasonable basis why optimizing the apparatus
of Dodson would even come close to a maximum separation distance of 10
microns between opposing cutting teeth. The difference in magnitude of
scale between ordinary sheet material and microparticles are incomparable.
We further agree with Appellant’s argument that Dodson teaches
away from a maximum separation distance of 10 microns between opposing
teeth that are interleaved. Specifically, Dodson describes (Dodson 6:4-17):
Another important distinction of the cutters of the present
invention is that they are mounted so that they have a limited
amount of overlap. Some overlap is desired to permit cutter
[16] to drive cutter 18 [referring to Figure 1] and to insure that
the cutting edges 74, 72 will slide over each other to shear the
work material. However, the overlap should be limited so that
the tooth spaces 82, 84 will be kept relatively open after cutting
to permit the cut pieces 10a, 10b and 10c of the material 10 to
assume the approximate positions shown in FIG. 4 wherein
they can freely exit from the teeth and not become jammed in
the tooth spaces 82, 84. A penetration of the teeth of one cutter
into the tooth spaces of a mating cutter of about 25-35 percent
has been found to give good results.

Figure 4 of Dodson shows an enlarged sectional view of a pair of
cutters relative to the material being cut, in a plane perpendicular to the axes
of the cutters, and is reproduced below:
App
App

oppo
that
App
eal No. 20
lication 11
Fig
In the co
sing teeth
regard, not
ellant’s sp
Figu
10-007722
/172,319
ure 4 show
ntext of A
is measur
e referenc
ecification
re 1 shows

s cutters i
ppellant’s
ed from th
e numeral
, in Appel
an embod
8
n relation
invention
e tip of on
148, ident
lant’s Figu
iment of A
to materia
, separatio
e to the ba
ified in Pa
re 1 again
ppellant’
l being cut
n distance
se of the o
ragraph [0
reproduce
s inventio

between
ther. In
023] of
d below:

n
Appeal No. 2010-007722
Application 11/172,319

9

As is noted above in text quoted from Dodson, Dodson desires to keep
tooth spaces 82 and 84 relatively open by limiting the overlap between
interleaved teeth to reduce the penetration of one into the space of the other.
We agree with Appellant that that teaches away from a maximum separation
distance of mere 10 microns between opposing teeth. At that depth of
penetration of one tooth into the tooth space of the other, the condition fits
that described in Dodson as undesirable and prone to cause jamming.
Finally, Appellant correctly points out that the Examiner has not
accounted for the required channel included in a substrate as is recited in
claim 1. We find in Dodson no such channel in a substrate.
For all of the foregoing reasons, the rejection of claim 1 under
35 U.S.C. § 103 as obvious over Dodson cannot be sustained.
Each of claims 2-12 and 21-26 depends either directly or indirectly
from independent claim 1 and includes all of the elements of claim 1.
Accordingly, the rejection of claims 2-12 and 21-26 under 35 U.S.C. § 103
as obvious over Dodson also cannot be sustained.
CONCLUSION
The rejection of claims 1-12 and 21-26 under 35 U.S.C. § 103 as
obvious over Dodson is reversed.

REVERSED