Ex Parte OHMI et al

Patent Trial and Appeal Board

Nov 2, 2017

12950798 (P.T.A.B. Nov. 2, 2017)

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.
12/950,798 11/19/2010 Tadahiro OHMI SUGI0208 8470
24203 7590 11/06/2017
GRIFFIN & SZIPL, PC
SUITE 112
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204
EXAMINER
MCCALISTER, WILLIAM M
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
11/06/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
GandS @ szipl.com
burke @ szipl. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TADAHIRO OHMI, KOUJINISHINO, RYOUSUKE DOHI,
MASAAKINAGASE, KATSUYUKI SUGITA, KAORU HIRATA,
TAKASHIHIROSE, TSUTOMU SHINOHARA, NOBUKAZUIKEDA,
TOSHIHIDE YOSHIDA, and HISASHI TANAKA
Appeal 2016-000076
Application 12/950,798
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tadahiro Ohmi et al. (“Appellants”)1 seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated October 15, 2014 (“Final Act.”), rejecting claims 1 and 3-11 under
35 U.S.C. § 103(a) as unpatentable over Applicants’ Admitted Prior Art
(“AAPA”) and Ohmi (US 2006/0236781 Al, published Oct. 26, 2006). The
1 Appellants identify (1) Fujikin Incorporated, (2) National University
Corporation Tohoku University, and (3) Tokyo Electron Limited as the real
parties in interest. Appeal Br. 3.
Appeal 2016-000076
Application 12/950,798
record includes a transcript of the oral hearing held on October 19, 2017.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The disclosed subject matter “relates to improvements in a fluid
supply method used for semiconductor manufacturing facilities, chemical
industrial facilities, medical industrial facilities, and the like.” Spec. ^ l.2
Claims 1 and 6 are independent. Claim 1 is reproduced below, with
emphasis added:
1. A discontinuous switching fluid flow rate
control method comprising the steps of:
(a) providing a pressure type flow rate
control device that comprises
i. a control valve;
ii. at least two or more parallel fluid
passages connected as fluid passages
between a downstream side of the control
valve and a fluid supply pipe passage; and
iii. a plurality of orifices, wherein
each orifice has a different fluid flow rate
characteristic from each other orifice of the
plurality of orifices, wherein the plurality of
orifices are interposed in respective parallel
fluid passages so as to pass fluid flowing in
a first flow rate region though a first orifice
disposed to provide flow rate control of fluid
flowing in the first flow rate region and so
2 Citations to the Specification refer to the 26-page version filed on
November 19, 2010.
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Application 12/950,798
as to pass fluid flowing in a second flow rate
region through at least a second orifice
disposed to provide flow rate control of fluid
flowing in the second flow rate region; and
(b) during flow of fluid between the
downstream side of the control valve and the fluid
supply pipe passage, operating the pressure type
flow rate control device to provide flow rate
control of the fluid, wherein a minimum flow rate
in the second flow rate region is higher than a
maximum flow rate in the first flow rate region,
and a discontinuity in flow rate and flow rate
control separates the maximum flow rate in the
first flow rate region and the minimum flow rate in
the second flow rate region, and
wherein
i. the pressure type flow rate control
device computes a flow rate of fluid passed
through the first orifice, or the second
orifice, or the first orifice and the second
orifice, as Qc = KPi, where K is a
proportional constant, from an upstream side
pressure Pi; or
ii. the pressure type flow rate control
device computes the flow rate of fluid
passed through the first orifice, or the
second orifice, or the first orifice and the
second orifice, as Qc = KP2m(Pi-P2)n, where
K is a proportional constant, and m and n are
constants, from the orifice upstream side
pressure Pi and an orifice downstream side
pressure P2.
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Application 12/950,798
DISCUSSION
Appellants assert the patentability of the two independent claims—
claims 1 and 6—based on the same arguments and do not provide separate
arguments for any dependent claims. Appeal Br. 7-15. We select
independent claim 1 as representative, with the remaining claims standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
For claim 1, the Examiner relied on Figures 6 and 8(A) as well as
paragraphs 6 and 15 through 18 of the Specification3 as AAPA, and stated:
The only differences between the invention and the
[AAPA] are that (1) the invention uses a lower flow rate orifice
at orifice location 8a, which has a flow rating up to 100 seem,
whereas the [AAPA] uses a low flow rate orifice 8a[,] which
has a flow rating up to 200 seem (see paragraphs [15 to 18 of
the Specification,] describing FIGS 6 and 8A), and (2) the
claims recite the inherent result of using said lower flow rate
orifice - i.e., the creation of a “discontinuity in flow rate and
flow rate control” between the first and second flow rate
regions.
Final Act. 3 (underlining as emphasis omitted).4 The Examiner found,
however, that “Ohmi teaches that low flow rate orifices with flow ratings up
to 100 seem were known in the art at the time of invention (see Ohmi,
paragraph [0141], describing the ‘No. 1’ orifice).” Id. According to the
3 In the Office Action and Answer, the Examiner refers to the
paragraph numbering of the Pre-grant Publication for this Application.
Because the paragraph numbering of the Pre-grant Publication and the
Specification differ, to avoid confusion, we will revise any statements that
refer to the Pre-grant Publication to instead refer to the Specification.
4 The term “seem” stands for standard cubic centimeters per minute.
Spec. ^ 2.
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Application 12/950,798
Examiner, it would have been obvious for one of ordinary skill in the art at
the time of the invention
to use a low flow rate orifice which has a flow rating up to 100
seem (at AAPA’s orifice location 8a), instead of an orifice with
a flow rating up to 200 seem, in [the AAPA] device, for
example should a user decide that higher flow rate accuracy up
to 100 seem (rather than up to 200 seem) is needed for a
particular application. Further, as a result of this obvious
substitution, a discontinuity in flow rate and flow rate control,
between the first and second flow rate regions (i.e., from 100
seem (the max flow rate of obvious orifice 8a) to 200 scc[]m
(the minimum flow rate of orifice 8c)) would necessarily be
created during the provision and operation of the resultant
system, just as in [Appellants’] invention.
Id. at 3-4.
First, Appellants “dispute[] the Examiner’s contention that with
regard to claims 1 and 6, ‘Applicant clearly admits as prior art steps (a) and
(b), by operation and provision of AAPA.’” Appeal Br. 7 (quoting Final
Act. 3)). Appellants argue that “there is no disclosure or suggestion in the
alleged AAPA of the claim limitations: ... ‘a discontinuity in flow rate and
flow rate control separates the maximum flow rate in the first flow rate
region and the minimum flow rate in the second flow rate region’ as recited
in section (b) of claim 1” (as shown with emphasis above). Id. at 8.5
According to Appellants, Figures 6 and 8 A of the Specification do not
disclose the discontinuity limitation. See id. at 9-10.
We are not apprised of error based on this argument. As an initial
matter, we note that, if read in isolation, the first sentence on page 3 of the
Final Office Action could be interpreted as indicating that the Examiner
5 We will refer to this claim language as the “discontinuity limitation.”
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relied on AAPA for the entirety of sections (a) and (b) in claim 1. The rest
of the Rejection makes clear, however, that the Examiner does not rely on
AAPA alone to address claim 1, or the discontinuity limitation recited in
section (b) of claim 1. See Final Act. 3—4; see also Ans. 6 (“The [Ejxaminer
does not contend that the [AAPA] alone discloses a discontinuity as
claimed.”). Instead, the Examiner takes the position that the recited
“discontinuity” would be an inherent characteristic of the modified
process—i.e., after substituting in the 100-sccm orifice of Ohmi for low flow
rate orifice 8a in Figure 6 of the Specification. See Ans. 6 (stating that “the
‘discontinuity’ as claimed (and not disclosed by the [AAPA] alone) would
inherently occur as a result of the obvious device (which uses a lower flow-
rate orifice at location 8a), since the obvious device would be incapable of
accurately controlling flow rates between 100 and 200 seem”); Final Act. 3-
4 (stating that the recited “discontinuity” “would necessarily be created
during the provision and operation of the resultant system, just as in
[Appellants’] invention”); see also In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
In the Reply Brief, Appellants state that “[n] either the alleged
A[A]PA nor Ohmi, alone or in combination disclose or suggest” the
discontinuity limitation. Reply Br. 5 (emphasis added). This argument does
not apprise us of error because Appellants contend that the combined prior
art does not satisfy the limitation at issue but do not explain why. See 37
C.F.R. § 41.37(c)(l)(iv) (“The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant.”).
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Second, Appellants argue that “the Examiner is incorrect in his
assertion” that paragraphs 15 through 18 of the Specification “teach any
such thing.” Appeal Br. 11 (discussing Final Act. 3). According to
Appellants, “these paragraphs teach that FIGS. 6 and 8A differ from the . . .
invention as recited in independent claim[] 1.” Id. Highlighting certain
disclosures in paragraphs 17 and 18 of the Specification, Appellants argue
that the Specification “clearly discusses the differences and disadvantages of
prior art FIG. 8.” Id.
We are not apprised of error based on this argument. Regardless of
whether Appellants use the phrase “any such thing” to refer to the
discontinuity limitation or the entirety of claim 1, as discussed above, the
Examiner does not rely on AAPA alone to address claim 1, or the
discontinuity limitation recited in claim 1. Moreover, as noted by the
Examiner, the discussion of certain drawbacks of the AAPA does not
undermine the use of those disclosures as prior art. See Ans. 7 (stating that
Appellants’ “discussion of the drawbacks of AAPA is not understood to
negate [Appellants’] admission that it constitutes prior art”).
Third, as to the findings regarding Ohmi, Appellants “do[] not dispute
that orifices up to 100 seem were known,” but rather Appellants
question[] . . . the relevance of this teaching given that: (1) the
alleged AAPA has no foundation; and (2) the first named co­
inventor of [Ohmi] explicitly stated in a Rule 132 Declaration
previously filed on July 18, 2013 that Ohmi discloses a
“differential pressure type flowmeter and differential pressure
type flow meter controller[”] that is “completely silent
regarding any kind of discontinuous switching of fluid flow
rate control.”
Appeal Br. 11-12 (citing Declaration Under 37 C.F.R. § 1.132 (of Kouji
Nishino) (dated July 18, 2013) ^ 19).
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We are not apprised of error based on this argument. As to point 1
raised by Appellants, for the reasons discussed above regarding the second
argument, the discussion of certain drawbacks of the AAPA does not
undermine the use of those disclosures as prior art. As to point 2, the
Examiner does not rely on Ohmi alone to address the discontinuity
limitation, but rather, as discussed above, the Examiner takes the position
that the recited “discontinuity” would be an inherent characteristic of the
modified process. See Ans. 7 (addressing this argument by stating, “It is the
combination of the [AAPA] and the orifice of up to 100 seem [of Ohmi]
which renders the ‘discontinuity’ obvious.”); Merck, 800 F.2d at 1097.
Fourth, Appellants contend that “the Examiner has ignored, for
example, FIG. 2, as originally filed.” Appeal Br. 12 (emphasis omitted).
Appellants state, “[w]ith flow rate control using solely the first flow rate
region orifice 8a', the flow rate control is performed more accurately at low
flow rates in a first flow rate region and also with respect to a second higher
flow rate region.” Id. (citing Spec. 39, 40) (emphasis omitted).
According to Appellants, this is “[a]n advantage not taught in the prior art
and is strong evidence of non-obviousness.” Id.
The Examiner states to have “not ignored FIG[.] 2” and states that
“Figure 2 is understood to illustrate [Appellants’] two flow rate regions with
a discontinuity therebetween.” Ans. 7. According to the Examiner, “[t]he
same features would be shown in [AAPA] FIG 8A, if box ‘F200’ were
shifted to the left (for example by changing the [AAPA] orifice 8a from
<200 seem to <100 seem).” Id.
In reply, Appellants quote the preceding statement by the Examiner,
highlighting the word “if.” Reply Br. 6. According to Appellants, this
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statement shows that “[t]he Examiner is actually inserting his own hindsight
reconstruction to find obviousness where none such exists.” Id.
We understand the Examiner’s response here as again taking the
position that the recited “discontinuity” would be an inherent characteristic
of the modified process. See Ans. 6. When an examiner shows a sound
basis for finding that the claimed structure6 and prior art structure are
identical or substantially identical, the burden shifts to an appellant to show
that the “prior art products do not necessarily or inherently possess the
characteristics of [the] claimed product.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Here, we determine that the Examiner’s explanation supports
a prima facie case that the recited “discontinuity” would be an inherent
characteristic of the modified process. Appellants have not shown that the
modified process would not provide the recited “discontinuity.”
We turn now to the use of the word “if’ in the phrase “if box ‘F200’
were shifted to the left (for example by changing the [AAPA] orifice 8a
from <200 seem to <100 seem).” Ans. 7 (emphasis added). In Figure 8(A),
box F200 represents a low flow rate region of 20 seem to 200 seem. See,
e.g., Spec, m 21, 16, 15. The Examiner states that, as a result of the
proposed modification—i.e., after substituting the 100-sccm orifice of Ohmi
for low flow rate orifice 8a in Figure 6 of the Specification—the modified
orifice would have a maximum flow rating of 100 seem rather than 200
seem. Final Act. 3. Thus, we view the statement at issue from page 7 of the
Answer as indicating a result of the proposed modification of AAPA with
Ohmi, rather than as indicating the use of hindsight reconstruction.
6 For claim 1, the claimed structure is that recited in section (a).
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Here, Appellants do not address the reasoning provided by the
Examiner to modify AAPA with Ohmi (Final Act. 3). We determine that the
Examiner’s reasoning supports a prima facie case of obviousness of claim 1.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) see also In re Cree,
Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an “impermissible
hindsight” argument as “essentially a repackaging of the argument that there
was insufficient evidence of a motivation to combine the references”). By
not addressing the reasoning provided, Appellants have not shown error in
the relevant findings or the conclusion as to obviousness.
Fifth, Appellants highlight a statement in Appellants’ own summary
of an interview with the Examiner, which states, “[t]he Examiner agreed that
the prior art is silent regarding any kind of discontinuous switching of fluid
flow rate control but the Examiner responded that he believed such a method
is inherently obvious.” Telephone Interview Summary (dated Aug. 29,
2014), at 2, quoted at Appeal Br. 10. Appellants argue that “[ijnherency is
not sufficient to show obviousness.” Appeal Br. 10. Appellants also state
that the Examiner (1) “is carrying out an impermissible hindsight
reconstruction” and (2) “simply cannot find any prior art that teaches” the
discontinuity limitation. Id.
In response, the Examiner states “the Examiner does not understand
what is meant by the proffered phrase ‘inherently obvious’ and does not
recall ever using this terminology” and states that “the method claims would
necessarily be performed during the normal and usual operation of the
obvious device.” Ans. 6.
We are not apprised of error based on this argument. Regardless of
the Examiner’s statements during the interview (or in the summary of that
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interview), we understand the Examiner to take the position discussed
above—i.e., that the recited “discontinuity” would be an inherent
characteristic of the modified process. In other words, the Examiner’s
reason for modifying the process to use the low flow rate orifice of Ohmi
having a flow rating of up to 100 seem is to provide a higher flow rate
accuracy than the prior art orifice with a flow rating of up to 200 seem.
Final Act. 3. In so doing, a discontinuity would result. For the reasons
discussed above regarding the fourth argument, Appellants have not shown
that the modified process would not provide the recited “discontinuity.”
Sixth, Appellants argue that, “[e]ven assuming arguendo that aprima
facie showing of obviousness had been made, which is not the case, the
unexpected advantages of the present invention [are] sufficient to rebut any
such showing.” Appeal Br. 13. According to Appellants,
an advantage provided by various embodiments, in accordance
with the present invention, is that a discontinuous switching
fluid flow rate control method is provided in which it is
possible to switch between a low flow rate region (also referred
to as a “first flow rate region” [)] and a high flow rate region
(also referred to as a “second flow rate region”) without
deteriorating the flow rate control accuracy for the first flow
rate region, and thereby enable the method of the invention to
be deployed using fewer parts than hitherto possible resulting in
downsized fluid supply devices and reduction in manufacturing
cost.
Id. (citing Spec. 1, 22-24); see also Reply Br. 7 (“The two flow rate
regions of the present invention result in ‘highly accurate flow rate
control.’”) (citing Spec. ^ 40). Appellants argue that “the Examiner’s
decision to ignore secondary considerations was improper.” Appeal Br. 14.
We are not apprised of error here because Appellants have not
identified record evidence supporting the assertion that the purported
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advantages were unexpected results. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (stating that unsupported attorney argument as to
unexpected results is entitled to little weight); see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (“It is well settled that unexpected results
must be established by factual evidence. Mere argument or conclusory
statements in the specification does not suffice.”). Unlike in In re Soni, 54
F.3d 746 (Fed. Cir. 1995), relied on by Appellants (Appeal Br. 14), here,
Appellants’ Specification (including the paragraphs cited by Appellants)
does not include data indicating substantially improved results, and does not
include a statement that the results were unexpected. See Soni, 54 F.3d at
750-51. Neither have Appellants provided such a statement through other
evidentiary methods, such as a declaration. See Geisler, 116 F.3d at 1471.
Instead, only attorney argument identifies the purported advantages as
unexpected results. See, e.g., Appeal Br. 13.
Moreover, only if Appellants had provided such evidence (which they
did not) could the Examiner have erred by failing to consider such evidence.
See In re Huai-Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[WJhen
secondary considerations are present, though they are not always
dispositive, it is error not to consider them.”) (emphasis added).
For these reasons, we sustain the rejection of independent claim 1.
Claims 3-11 fall with claim 1.
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DECISION
We affirm the decision to reject claims 1 and 3-11.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv)
AFFIRMED
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