Ex Parte Gray et al

Patent Trial and Appeal Board

Nov 6, 2014

11280021 (P.T.A.B. Nov. 6, 2014)

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.
11/280,021 11/16/2005 Donald Gray G005 P01219-US 6353
3017 7590 11/06/2014
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE, RI 02903
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
11/06/2014 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 DONALD GRAY and CHARLOTTE FREDERICK

____________

Appeal 2012-011874
Application 11/280,021
Technology Center 1700
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to a method of treating an object in a
solvent. The Examiner has rejected the claims as anticipated under
35 U.S.C. § 102(b) and obvious under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 134. The Examiner’s rejections are affirmed.

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STATEMENT OF CASE
The claimed method of treating an object in a solvent processing
system comprises a step of creating a vacuum in a vacuum chamber, where
the object is disposed in the chamber in a solvent. The vacuum causes a
stream of vapor bubbles to form on the object’s surface, and chemical agent
in the vapor bubbles is transferred to the object’s surface.
Claims 11–21, 40–43, and 451 were rejected in the Final Office
Action. Claim 11 is representative of the appealed claims and reads as
follows:
11. A method of treating an object in a solvent processing
system, said system including a vacuum chamber, said object being disposed in
said vacuum chamber, said object being contacted with a solvent, said solvent
including a chemical treating agent, said method comprising:
creating a vacuum within said vacuum chamber to cause a stream of
vapor bubbles to form at a surface of said object, said vapor bubbles having a
concentration of vaporized chemical agent, said vapor bubbles treating said
object by transferring said chemical agent to the surface of said object while
said chemical agent is in a vapor state.

The Examiner rejected the claims as follows:
1. Claims 11, 12, 14–16, 18, 19, and 21 under 35 U.S.C. § 102(b) as
anticipated by Gray et al. (U.S. Pat. No. 6,418,942 B1, patented July 16,
2002).

1 Appellants indicated that claim 45 was cancelled, but as stated by the
Examiner, no amendment was filed cancelling the claim. Answer 3.
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2. Claims 13, 40, 41, and 45 under 35 U.S.C. § 103(a) as obvious in
view of Gray, Okamiya et al. (U.S. Pat. No. 6,890,389 B2, patented May 10,
2005), and Chou et al. (U.S. 2004/0187891 A1, published Sept. 30, 2004).
3. Claims 17 and 20 under 35 U.S.C. § 103(a) as obvious in view of
Gray, Chou, Neubauer et al. (U.S. Pat. No. 5,268,036, patented Dec. 7,
1993), Oshinowo (U.S. Pat. No. 6,240,938 B1, patented June 5, 2001), and
Kobayashi et al. (U.S. Pat. No. 6,085,764, patented July 11, 2000).
4. Claims 42 and 43 under 35 U.S.C. § 103(a) as obvious in view of
Gray, Okamiya, Chou, Neubauer, Oshinowo, and Kobayashi.
5. Claim 45 under 35 U.S.C § 112, first paragraph, as failing to
comply with the written description requirement.

REJECTION 1
Claim 11 is directed to a “method of treating an object in a solvent
processing system.” The object is recited to be “contacted with a solvent,”
where the solvent is “including a chemical treating agent.” The claim
comprises a recited step of “creating a vacuum within said vacuum chamber
to cause a stream of vapor bubbles to form at a surface of said object.”
The claim further recites that the vapor bubbles have “a concentration
of vaporized chemical agent” and recited the result that the “vapor bubbles
[are] treating said object by transferring said chemical agent to the surface of
said object while said chemical agent is in a vapor state.”
The Examiner found that Gray describes creating vapor bubbles at the
surface of an object in a solvent as recited in the claim. Answer 10–11.
Gray describes a solvent and aqueous decompression processing
system. Gray, col. 1, ll. 6–8.
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Gray describes decompression processing to produce “vapor bubbles”
as claimed:
. . . the production of vapor bubbles at a solid surface, to
produce an energy release at the solid surface. The process is
accomplished by alternating vacuum and pressure to produce a
pulsing action within a fluid. The release of pressure produces
vapor bubbles at the solid surface, which are collapsed when
pressure is re-applied.
Gray, col. 1, ll. 28–34 (emphasis added.)
Gray teaches that a vacuum causes vapor bubbles to form, the same
step recited in claim 11: “Removal of the vapor reduces pressure within the
system 10, and since the solvent in the chamber 12 is under vacuum, solvent
bubbles will begin to nucleate at the solid surfaces including the surface of
the part 20.” Gray, col. 5, ll. 21–24 (with reference to Gray’s Fig. 1).
Gray teaches that the vapor bubbles transfer material to a solid surface
of an object as recited in claim 11 (“vapor bubbles treating said object by
transferring said chemical agent to the surface of said object”). The
following disclosures from Gray provide evidence of this step:
. . . if the vapor bubble is allowed to detach from the surface,
the particle would be exposed to a reforming boundary layer,
and this action should enhance transfer of material to a surface
as required in surface coating processes.
Gray, col. 1, ll. 50–55.
The main objective of this invention is to enhance the transfer
of material to or from a liquid to a solid surface by producing
vapor bubbles at the surface and either detaching or collapsing
these bubbles in a cyclical manner.
Gray, col. 3, ll. 14–17.
(2) bubble generation on the parts is utilized to enhance mass
transfer to a part’s surface such as a corrosion inhibitor
dissolved in the solvent being deposited on a solid surface.
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Gray, col. 7, ll. 19–22.
Appellants contend that Gray does not describe “vapor bubbles
treating said object by transferring said chemical agent to the surface of said
object while said chemical agent is in a vapor state.” Br. 5–6 (emphasis
added.) Appellants argue that Gray “mention that the action of bubbles can
enhance the transfer of a chemical agent to the surface to be treated but the
transfer referred to is within the liquid state.” Id. at 7. Appellants cite
column 2, lines 31– 41 of Gray to support this argument in which Gray
states that “evaporating bubbles will leave the acid behind creating a highly
concentrated acid solution near the surface being treated.” Appellants
contend that an “acid dissociates into ions that are surrounded by water
molecules. Ions do not evaporate and the acid must come together as a
molecule in solution and then evaporate. Because of this, acids will remain
in the liquid state.” Br. 5–6.
The Examiner challenged Appellants’ interpretation of Gray, pointing
out that the Specification of the ’021 application describes acid entering in
the vapor phase. Answer 11 (citing paragraph 78 of the ’021 application.)
The Examiner also emphasized that the “manipulative steps” of the claimed
method is the same as the steps disclosed in Gray and thus Gray would
“inherently” accomplish the same results as claimed. Answer 10 and 12.
We recognize that Gray’s statement that “evaporating bubbles will
leave the acid behind” could be interpreted to mean that the evaporating
vapor bubbles do not include the acid as required by claim 11 (“said vapor
bubbles having a concentration of vaporized chemical agent”). However, as
pointed out by the Examiner, this interpretation and Appellants’ analysis
could be understood to be inconsistent with the disclosure in the ’021
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application that acids enter the vapor phase (“Other aqueous solutions that
can be used that would dampen the VCS [vacuum cavitation streamlining]
process by generating a non-condensable gas component in the vapor phase
include solutions of hydrochloric, sulfuric, nitric, fluoric, or any other
acids.” ’021 application ¶ 78 (emphasis added)).
Nonetheless, there is other disclosure in Gray which provides factual
support for the Examiner’s findings that Gray anticipates claim 11.
Gray teaches that a heated liquid solvent or solution is heated (at col.
4, ll. 55–59; col. 5, 11–15), introduced into a decompression chamber, and a
vacuum pump is turned on (at col. 5, ll. 11–20). As vapor is removed from
the chamber, the pressure is reduced and solvent bubbles begin to form at
the object’s surface (at col. 5, ll. 21–30). The vapor bubbles generated by
reduced pressure of the vacuum is said by Gray to responsible for
transferring material to the object’s surface.
The main objective of this invention is to enhance the transfer
of material to or from a liquid to a solid surface by producing
vapor bubbles at the surface and either detaching or collapsing
these bubbles in a cyclical manner.
Gray, col. 3, ll. 14–17.
(2) bubble generation on the parts is utilized to enhance mass
transfer to a part’s surface such as a corrosion inhibitor
dissolved in the solvent being deposited on a solid surface.
Gray, col. 7, ll. 19–22.
In other words, the material, such as an acid, corrosion inhibitor, or
chemical, is present in the solvent in the fluid state, and transfer to the
object’s surface from this fluid state is achieved by generating vapor
bubbles. As long as the material is capable of being vaporized at the
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conditions disclosed in Gray, then it would be reasonable to expect – as the
Examiner did – the material to be present in the vapor bubbles.
The transfer of material into the vapor state is described in the ’021
application as the mechanism through which the claimed method operates:
It would be expected that the rate of mass transfer to a
surface would also be enhanced if the material being
transferred were first transferred into a vapor state that comes
directly in contact with the surface. This is what occurs when
boiling a liquid on a surface. The main objective of this
invention is to enhance the transfer of material to or from a
liquid to a solid surface by producing vapor bubbles at the
surface and either detaching or collapsing these bubbles in a
cyclical manner under a controlled pressure. In general the new
process is an enhanced vacuum cavitational streaming (VCS)
process, which generates a vapor bubble often with a non-
condensable gas that may or may not be collapsed.
’021 application ¶ 13 (emphasis added.)
Gray also describes bubble formation (see above) and “boiling vapor
bubbles” at the surface of object (Gray, col. 1, l. 43). Thus, the ’021
application does not appear to describe a process that is any different in its
steps (or mechanism) than the steps carried out in Gray. The bubble
formation and boiling are accomplished by pulling a vacuum, and when the
material in the solvent enters the vapor state upon boiling, the transfer from
the vapor state to the object’s surface necessarily results. These steps are
explicitly described by Gray, and thus transfer from the vapor surface would
be a necessary result.
Claim 11 does not distinguish its method from Gray’s other than by
reciting that as a consequence of the step of “creating a vacuum within said
vacuum chamber to cause a stream of vapor bubbles to form at a surface of
said object,” “said vapor bubbles treating said object by transferring said
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chemical agent to the surface of said object while said chemical agent is in a
vapor state.” However, this result is said in the ’021 application to be
achieved by placing the material (“chemical agent”) in the vapor bubble.
Appellants’ own application describes acids as going into the vapor state.
Answer 11; ’021 application ¶ 78. Even if only a minimal amount of acid
goes into the vapor state, and the rest remains in the liquid, the claim is still
anticipated by Gray because claim 11 does not require an amount or degree
of vapor transfer, so even a minimal amount satisfies the claim limitation.
Appellants have not identified a difference between the steps in the
claimed method, and the step carried out by Gray. that would produce the
result of “said vapor bubbles treating said object by transferring said
chemical agent to the surface of said object while said chemical agent is in a
vapor state” in the claimed method, but not in Gray. It is well established by
case precedent that merely recognizing something that was not known
before is insufficient to render an old process again patentable. In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir. 2002). See also In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); MEHL/Biophile Int’l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999); Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005); In re
Omeprazole Patent Litig., 483 F.3d 1364, 1373 (Fed. Cir. 2007).
Appellants also argue that Gray “specifically claims . . . that the main
role of the vapor bubble formation is to exert a physical force on the surface
of the solid.” Br. 6. Appellants contend that this is achieved in Gray by
alternating pressure with vacuum. Id. In contrast, Appellants assert that
“the main treatment mechanism is chemical” in the claimed method. Id. at
6–7.
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This argument is not persuasive. Even if the “main” force in Gray is
“physical” as asserted, this does not exclude Gray from also carrying out the
claimed “chemical” step of transferring a chemical agent in vapor state.
Claim 11, moreover, uses the term “comprising” which is open-ended and
does not exclude a physical force from also being exerted, such as one
produced by alternating vacuum and pressure. Thus, the claim does not
exclude collapsing bubbles as described in Gray. Br. 22.
Appellants describe the chemical mechanism responsible for material
transfer from the vapor bubble, and its advantages. Br. 12–17. However,
such information does nothing to dispel the determination that Gray’s
method, when carried out as discussed above, would accomplish the
chemical vapor transfer step.
On page 22 of the Appeal Brief, in the section supposedly addressing
rejections 2–4, Appellants argue against the Examiner’s position that the
manipulative steps of Gray are the same as those recited in the claimed
method. Appellants state that they have distinguished the claimed method
from Gray by reciting “creating a vacuum within said vacuum chamber to
cause a stream of vapor bubbles to form at a surface of said object, said
vapor bubbles having a concentration of vaporized chemical agent, said
vapor bubbles treating said object by transferring said chemical agent to the
surface of said object while said chemical agent is in a vapor state.”
We identified where Gray discloses creating a vacuum to produce
vapor bubbles as recited in the claim. It is true that the result of
“transferring said chemical agent to the surface of said object while said
chemical agent is in a vapor state” is not expressly described in Gray.
However, this is simply a recitation of the result of “creating a vacuum.” A
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clause that “merely states the result of the limitations in the claim adds
nothing to the patentability or substance of the claim.” Texas Instruments
Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993).
For the foregoing reasons, the rejection of claim 11 as obvious in view
of Gray is affirmed. Claims 12, 14–16, 18–19, and 21 were not argued
separately and fall with claim 11.

REJECTIONS 2–4
Appellants argue the rejections as a group.
Appellants argue that a person of ordinary skill in the art “would not
be able to easily produce vapor bubbles in the invention, let alone use
correct liquid phase concentrations, correct pressures and correct
temperatures to obtain a working vapor phase concentration. This is beyond
the scope of a person having ordinary skills in cleaning surfaces.” Br. 20.
The claims do not require specific pressures or vapor concentration.
Appellants have not demonstrated that working conditions disclosed in Gray
would not result in the claimed transfer of a chemical agent from a vapor
state. Consequently, we do not find Appellants’ argument persuasive.
With regard to Okamiya and Chou, Appellants contend they suggest
surfactants for cleaning and surfactants would not transfer into the vapor
state. Br. 20–21. Okamiya and Chou were cited by the Examiner for
teaching the claimed chemicals ammonia and hydrogen peroxide as recited
in claims 13 and 40. Answer 5–6. While other agents may have been
recited in these publications, such disclosure does not make it unobvious to
have chosen ammonia and peroxide as claimed.
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Appellants contend that neither Gray, Okamiya, nor Chou teach the
use of ammonia or hydrogen peroxide in a vapor bubbling process. Br. 23.
The references do not have to expressly suggest the use of the recited
chemicals in the claimed vapor bubbling process. An 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).
In this case, the ammonia and peroxide are being use for their
established function.
If a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. .
. . [A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
Id. at 417.
Appellants also argue the patentability of the claims rejected by the
Examiner in view of the obviousness of using ultrasonic energy. Br. 21.
Appellants do not identify which claims they are referring to nor do they
identify the publications cited by the Examiner. However, we shall assume
they are referring to claim 20 and 42 which recite “ultrasound.” The
Examiner cited Kobayashi and Oshinowo as teaching ultrasound as
enhancing cleaning. Final Act. 7.
Appellants contend that “ultrasonics produce vapor bubbles in the
liquid phase only and the applicant is not aware of any articles or claims the
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vapor bubbles are formed on a solid surface using ultrasonics.” Br. 21.
Appellants present an equation said to substantiate this assertion. Id.
This argument is not persuasive. The ultrasonic energy is said by the
claim to be for “supplying energy to said vacuum chamber to facilitate the
creation of vapor bubbles.” See claim 14 upon which claim 20 indirectly
depends from. The bubbles are still required by the claim to be formed by
the step of “creating a vacuum.” Appellants’ argument is therefore not
commensurate with the claim language.
Appellants also argue the patentability of claim 17 which is rejected
over Gray, Chou, Neubauer, and Oshinowo. Claim 17 depends from claim
11 and recites that the process “comprises rapidly moving said object being
treated so as to produce a low pressure region near the surface of said object
to facilitate the formation of vapor bubbles.” The Examiner found that
“Kobayashi et al, Oshinowo et al and Neubauer et al teach to move the
substrates to be cleaned during the cleaning to enhance the cleaning.” Final
Act. 6. Appellants contend that “use of ultrasound described by Chou et al,
Kobayashi et al and Oshinowo et al could produce only a slow random
motion to an object that would not move the object at a fast enough rate to
produce bubbles on the surface.” Br. 24. Appellants also argue that the
motion described in the publications is not “to produce vapor bubbles.” Id.
at 25–26.
Appellants have not provided evidence that the motion described in
the cited publications would be insufficient to facilitate bubble formation as
claimed. An argument made by counsel in a brief does not substitute for
evidence lacking in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997). Moreover, even if the motion was for a different
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purpose, i.e., to enhance cleaning, the Examiner provided a rationale and
fact-based reason for combining the disclosure with Gray. Answer 6-7.
Appellants did not identify a defect in this reasoning. Once combined with
Gray, the Examiner had reasonable basis to believe that it would have also
functioned to facilitate bubble formation. Appellants only present attorney
argument as to why the movement would not produce bubbles. However, as
pointed out by the Examiner, the claims do not require the movement to
produce bubbles.
Claim 19 depends on claim 14. Claim 14 recites “method of claim 11,
further comprising: supplying energy to said vacuum chamber to facilitate
the creation of vapor bubbles.” Claim 19 depends from claim 14 and recites
“said step of supplying energy into said vacuum chamber comprises
directing a beam of energy at a surface of the object, wherein the object
absorbs energy in order to prevent cooling of the surface.” Claim 20
depends from claim 19, and further recites “wherein said beam of energy is
selected from the group comprising: light, laser, microwave, ultrasound,
radiation and combinations thereof.” The Examiner, as stated above, cited
teachings in the prior art of using ultrasonic energy. Appellants argue
Although Kobayashi et al Oshinowo et al and Neubauer et al
use ultrasound, their intent is not to aid in keeping the object
heated, but more to produce a physical bubble implosion to
remove material from the surface. In our system, the energy is
directed to the solid surface in order to heat the surface as
opposed to the bulk fluid as in ultrasonic cleaning systems.
Br. 27 (emphasis added).
Gray specifically teaches that ultrasonic waves produce heat:
Cavitation is a well-accepted means of cleaning surfaces.
An object having a solid surface to be cleaned is immersed in
the fluid. Typically, ultrasonic sound waves are used to produce
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tiny collapsing bubbles at the solid surface. The energy of the
ultrasonic waves is released into the fluid and the heat created
by this energy evaporates small volumes of the fluid at the
surface of the object, forming vapor bubbles.
Gray, col. 1, ll. 12–18.
With regard to claims 40–43, Appellants make the same arguments as
for claim 11. Br. 27–28. In addition, Appellants contend that Gray utilized
“pure liquids and was a totally physical process.” Br. 28. This argument is
unavailing. Gray, as discussed already, describes the presence of materials
in its solvent, including acid, corrosion inhibitors, and chemicals. See Gray,
col. 2, ll. 23–40 and 48–52; col. 3, ll. 13–115; col. 7, ll. 19–22 and 38–42.
For the foregoing reasons, we affirm the obviousness rejections of
claims 13, 17, 20, 40, 41–43, and 45.

REJECTION 5
Appellants did not provide arguments as to why claim 45 is described
in the specification in compliance with 35 U.S.C. § 112, first paragraph. We
therefore affirm the rejection for the reasons set forth by the Examiner

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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