Ex Parte King

Patent Trial and Appeal Board

Mar 21, 2016

12146511 (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.
12/146,511 06/26/2008 Edward Earl King 1700.155US3 5251
118935 7590 03/21/2016
Parsons Summa
15801 Brixham Hill Avenue
Suite 550
Charlotte, NC 28277
EXAMINER
NGUYEN, HUNG D
ART UNIT PAPER NUMBER
3742
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 EDWARD EARL KING
____________________

Appeal 2013-009868
Application 12/146,511
Technology Center 3700
____________________

Before LINDA E. HORNER, LYNNE H. BROWNE, and
MARK A. GEIER, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Edward Earl King (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–21.1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 Claims 22–31 are withdrawn from consideration.
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Application 12/146,511

2
CLAIMED SUBJECT MATTER
The claims are directed to real-time imaging and spectroscopy during
microwave assisted chemistry. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of carrying out microwave assisted chemical
reactions, the method comprising:
placing reactants in a microwave-transparent vessel;
positioning the vessel and its contents inside a microwave
cavity that will support a single mode;
applying a continuous single mode of microwave radiation
within the cavity and to the vessel and its contents;
while concurrently monitoring infrared radiation emitted
from the reactants to determine the temperature of the vessel
contents;
while concurrently illuminating and visually monitoring
the reactants to determine the progress of a reaction; and
adjusting the single mode microwave power in response to
a monitored change in the reactants in the vessel.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Greene
Greene
Paul
US 6,084,226
US 6,288,379 B1
US 6,795,190 B1
July 4, 2000
Sept. 11, 2001
Sept. 21, 2004
Scalese
Rubinstein
Tour
Zeng
Collins
US 2002/0035792 A1
US 2002/0160522 A1
US 2004/0222081 A1
US 2004/0225222 A1
US 2004/0260059 A1
Mar. 28, 2002
Oct. 31, 2002
Nov. 11, 2004
Nov. 11, 2004
Dec. 23, 2004
Corbett WO 03/093407 A1 Nov. 13, 2003
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REJECTIONS
I. Claims 1–8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greene ’226 and Corbett.
II. Claims 9–13, 15, and 19–21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Greene ’226, Corbett, and Scalese or
Rubinstein.
III. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greene ’226, Corbett, and Scalese or Rubinstein,
and Paul or Zeng.
IV. Claims 16–18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greene ’226, Corbett, and Scalese or Rubinstein,
and Tour or Collins.

DISCUSSION
Rejection I
The Examiner finds that the combined teachings of Greene ’2262 and
Corbett disclose or suggest all of the limitations of claim 1. See Final Act.
2–3. In particular, the Examiner finds that Greene discloses “a microwave
cavity (11) that will support a single mode (as shown in Fig. 1, the single
vessel is placed inside the cavity and is not rotated; therefore, it supports a
single mode).” Id. at 2.

2 Throughout the Final Action, the Examiner refers to Greene ’226 as
“Green et al.” See Final Act. 2–7. As the Examiner identifies the correct
patent no. in the statement of the rejection for each ground of rejection, we
hold the misspelling of “Greene” to be harmless error.
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Appellant argues that “neither Greene nor Corbett ever discloses a
single mode cavity or method.” Appeal Br. 4. In support of this argument,
Appellant notes that “Greene never mentions single mode techniques.” Id.
Appellant further notes that “Corbett discloses several features [e.g.
rectangular shape of the cavity, the rotor] that the skilled person recognizes
as inconsistent with the claimed single mode technique.” Id. at 5.
In response to this argument, the Examiner notes that Greene ’226 is
the parent of Greene ‘379,3 and that Appellant identifies Greene ’379 as
“[a]n exemplary cavity 12 for propagating a single mode of microwave
radiation” and incorporates Greene ’379 by reference in the instant
Specification. Ans. 3 (citing Spec. ¶ 32). Based on this information, the
Examiner concludes that Greene ’226 discloses “a microwave cavity that
will support a single mode.” Ans. 3 (emphasis omitted).
Arguing that “Greene ’226 is, however, entirely silent as to mode,”
Appellant contends that the Examiner’s reliance on paragraph 32 of the
Specification is in error because paragraph 32 does not refer to Greene ’226
and “propagation of a single mode nevertheless requires control of both a
cavity and the frequencies applied to that cavity. Neither of the Greene
references provide this information, or even discuss modes per se.” Reply
Br. 1.
By definition a divisional application has the same Specification as its
parent application. See MPEP § 201.06. By identifying Greene ’379’s
cavity 12 as an exemplary cavity for propagating a single mode of
microwave radiation, Appellant also identifies Greene ’226’s identical cavity

3 Greene ’379 is a division of U.S. Patent Application No. 09/063,545
(Greene ’226). Greene ’379, p. 1.
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12 as an exemplary cavity for this purpose. Thus, by Appellant’s own
admission Greene ’226’s cavity is “a microwave cavity that will support a
single mode,” as required by claim 1. Furthermore, Appellant’s argument
that neither Greene reference provides information about the frequencies is
inapposite, as frequencies are not recited in claim 1.
To the extent that Appellant is arguing that Greene ’226 fails to
disclose “applying a continuous single mode of microwave radiation within
the cavity and to the vessel and its contents” as required by claim 1,
Appellant does not provide evidence or persuasive argument that the mode
utilized in Greene ’226 is not a single mode. Rather, Appellant merely notes
that Green does not use the terminology “single mode.” However, the
teaching in the prior reference need not be ipsissimis verbis. Structural
Rubber Products v. Park Rubber, 749 F.2d 707, 716 (Fed. Cir. 1984). The
Examiner’s finding that Green ’226 discloses applying a single mode is
supported by a preponderance of the evidence. Final Act. 2; Ans. 3‒4.
Appellant does not provide a definition of “single mode” or explain why
Greene ’226’s mode is not a single mode. Accordingly, Appellant’s
argument is unpersuasive.
For these reasons, we sustain the Examiner’s decision rejecting
independent claim 1. Appellant does not provide separate arguments for the
patentability of claims 2–8. Accordingly, we sustain the Examiner’s
decision rejecting claims 2–8.
Rejection II
The Examiner finds that the combined teachings of Greene ’226,
Corbett, and Scalese or Rubinstein disclose or suggest all of the limitations
of independent claim 9. In particular, the Examiner finds that Greene ‘226
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discloses “applying a continuous single mode of microwave radiation (via
13) within a cavity (11) that will support the single mode,” Corbett
“discloses illuminating and visually monitoring the reactants (Page 5 Line 4
to Page 6, Line 2,” and “Scalese et al. discloses intermittently monitoring the
sample (Par. 216).” Final Act. 4.
Appellant contends that “[a]s already argued with respect to Claim 1,
the single mode step is absent from any and all of these references.” Appeal
Br. 7. As discussed supra, Appellant’s argument is unconvincing.
Appellant further contends that Scalese “never carries out intermittent
visual observation or intermittent illumination,” however, Appellant’s
argument is not responsive to the rejection. Appeal Br. 7; see also Final Act.
4. Here, the rejection relies on Corbett, not Scalese to meet the requirements
for visual and illumination monitory. See Final Act. 4. Scalese is only
relied upon to teach intermittent monitoring. Id. Thus, it is the combined
teachings of Corbett and Scalese that meet the limitation at issue.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, Appellant does not apprise us of error.
We sustain the Examiner’s decision rejecting claim 9 as unpatentable
over Greene ’226, Corbett, and Scalese. Appellant does not provide separate
arguments for the patentability of claims 10–13, 15, and 19–21.
Accordingly, we sustain the Examiner’s decision rejecting claims 10–13, 15,
and 19–21.
As we sustain the Examiner’s decision rejecting claims 9–13, 15, and
19–21 based on the combined teachings of Greene ’226, Corbett, and
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Scalese, we need not reach the alternative rejection of these claims based on
the combined teachings of Green ’226, Corbett, and Rubenstein.
Rejections III and IV
Appellant does not argue the rejections of claim 14 and 16–18.
Accordingly, we summarily sustain the Examiner’s decisions rejecting
claims 14 and 16–18.

DECISION
The Examiner’s rejections of claims 1–18 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED