MITSUBISHI HEAVY INDUSTRIES MECHATRONICS SYSTEMS, LTD.

Patent Trials and Appeals Board

Jun 1, 2020

2019003653 (P.T.A.B. Jun. 1, 2020)

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.
14/403,808 11/25/2014 Kenji Matsuura P24960US00 2845
38834 7590 06/01/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
ANBACHT, BRIT ELIZA
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI MATSUURA, SHIRO SUZUKI, TOORU NISHIYAMA,
MITSUAKI NISHITANI, and YASUTOSHI UEDA
Appeal 2019-003653
Application 14/403,808
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
DONNA M. PRAISS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
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Application 14/403,808

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DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 3. See Appeal Br. 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a wet electrostatic precipitator
which removes mist containing SOx or dust of gas. Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter (Appeal Br.,
Claims Appendix 15–16):
1. A wet electrostatic precipitator for removing SO3 and dust
contained in gas, comprising:
an electric field forming unit which includes a first
electrode and a second electrode that are arranged to oppose each
other along a flow direction of the gas containing mist having the
SO3 incorporated therein and the dust so as to form a direct
current electric field,
wherein the first electrode is a flat plate and includes a
plurality of discharge electrodes formed on a surface of the first
electrode that opposes the second electrode and protruded in a

1 This Decision includes citations to the following documents: Specification
filed November 25, 2014 (“Spec.”); Final Office Action mailed February 2,
2018 (“Final Act.”); Appeal Brief filed October 1, 2018 (“Appeal Br.”);
Examiner’s Answer mailed February 7, 2019 (“Ans.”); and Reply Brief filed
April 8, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MITSUBISHI
HEAVY INDUSTRIES MECHATRONICS SYSTEMS. Appeal Br. 2.
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direction perpendicular to the flow direction of the gas, along the
flow direction of the gas at predetermined intervals,
the second electrode includes a discharge frame formed in
a rectangular shape, a first flat plate portion which is arranged in
the discharge frame and extends in a direction substantially
perpendicular to the flow direction of the gas and is provided at
a position that opposes the discharge electrode of the first
electrode, and a second flat plate portion which is arranged in the
discharge frame and extends in the direction substantially
perpendicular to the flow direction of the gas, is provided
separated by an air gap from the first flat plate portion, and has a
plurality of discharge electrodes formed on a surface that
opposes a flat surface part of the first electrode and protruded in
a direction perpendicular to the flow direction of the gas,
the first flat plate portion and the second flat plate portion
are arranged along the flow direction of the gas,
the discharge electrode of the first electrode and the
discharge electrode of the second electrode alternately are
configured to generate corona discharges having opposite
polarities in the direction perpendicular to the flow direction of
the gas so as to alternately apply charges having opposite
polarities to the mist and the dust by the corona discharges when
the gas passes through between the first electrode and the second
electrode,
the first electrode and the first flat plate portion are
configured to trap the charged mist and the dust, and
in the second electrode, the first flat plate portion and the
second flat plate portion are alternately arranged in the flow
direction of the gas.

Claim 3 is also independent and similarly recites a wet electrostatic
precipitator. Id. at 16–18.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Keiichi US 4,126,434 November 21, 1978
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Application 14/403,808

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Name Reference Date
Tomimatsu et al.
hereinafter
“Tomimatsu”
US 6,602,329 B2 August 5, 2003
REJECTION
The Examiner rejected claims 1 and 3 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Tomimatsu in view of Keiichi.
Final Act. 5–7.

OPINION
Appellant does not separately argue the limitations of claim 1 and 3.
See Appeal Br. 7–14. We select claim 1 as representative for disposition of
this appeal, with the patentability of claim 3 standing or falling with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).

The Examiner’s Rejection
As to claim 1, the Examiner found Tomimatsu discloses an electric
field forming unit having the structural features recited in the claim with the
exception of first and second plate portions of a second electrode that are
separated by an air gap. Final Act. 5–6. The Examiner found Keiichi
discloses an electrode plate comprising discharge electrodes and collecting
portions, which are separated by an air gap. Id. at 6, citing Keiichi Fig. 5,
parts 15c, 20, 21; col. 3, l. 50 – col. 4, l. 65. As a result, the Examiner
determined it would have been obvious to one of ordinary skill in the art to
have modified Tomimatsu’s electrode plate to have air gaps in view of
Keiichi’s teaching that such spaces would increase the dust collection area.
Id. at 6–7, citing Keiichi, col. 4, ll. 38–42.
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Appellant’s Contentions
Appellant argues the prior art does not disclose or suggest a wet
electrostatic precipitator as claimed because neither Tomimatsu nor Keiichi
discloses a second electrode having a first flat plate portion and a second flat
plate portion that are “separated from” each other by an air gap as required
by the claims. Appeal Br. 7–8, 12–13. In particular, Appellant contends
Keiichi teaches away from plate shaped electrodes and discloses electrodes
that are metal rods or tubes. Id. at 9–10, citing Keiichi, col. 1, l. 66 – col. 2,
l. 10; col. 3, l. 56 et seq. and col. 4, l. 42 et seq. Thus, Appellant contends
that even if Tomimatsu and Keiichi were combined, there would be no basis
for applying anything other than metal rods or tubes based on Keiichi.
Id. at 10–11.
Appellant argues also Keiichi requires pins extending in the direction
of the gas flow whereas the claims require discharge electrodes protruding in
a direction perpendicular to the flow of gas. Id. at 11, 13. Appellant argues
Keiichi discloses supporting frames extend only in one direction, whereas
the claims require a discharge frame formed in a rectangular shape.
Id. at 11. Appellant contends Keiichi does not disclose a plurality of dust
collection electrodes includes a plurality of pins and thus, Keiichi does not
teach that a plurality of metal rods or tubes of the discharge electrodes is
opposed to pins of the dust collection electrodes. Id. at 13.
In view of the alleged inability to combine the cited prior art
teachings, Appellant contends the Examiner’s rejection is based on improper
hindsight. Id. at 13–14. Appellant contends also the Specification discloses
certain advantages as a result of the separation between the first plate portion
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and the second plate portion, such as widening the distribution of the corona
discharge, increased current, increased input power, and increased trapping
efficiency of the first electrode. Id. at 8–9, 12–13, citing Spec. ¶¶ 37, 49.

Issue
The dispositive issue with respect to this rejection is:
Has Appellant demonstrated reversible error in the Examiner’s
position that the combination of Tomimatsu and Keiichi renders the
arrangement of first electrodes and second electrodes in claim 1 obvious?

Discussion
We are not persuaded by Appellant’s arguments. We are in
substantial agreement with the Examiner’s position that Appellant’s
arguments largely consider each reference individually rather than the
combination of references as a whole. Ans. 3–4.
As to Appellant’s arguments that Keiichi teaches away from the use
of plate shaped electrodes, we are of the view that Appellant’s arguments do
not properly consider the full scope of Keiichi’s disclosure. That is,
although it is true Keiichi discusses certain disadvantages of plate shaped
electrodes in conjunction with particular prior art embodiments (Keiichi,
col. 1, l. 43 – col. 2, l. 16, Fig. 2), Keiichi expressly discloses that dust
collection electrode structures can comprise flat plates. Keiichi, col. 2,
ll. 51–53. Indeed, Keiichi expressly discloses that the discharge electrode
structure disclosed and embodied in Figure 3, is substituted for the metal
wire structure 3 depicted in Figure 1, which includes metal plates 4.
Id. at col. 3, ll. 4–15. Thus, we are not persuaded that Keiichi categorically
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teaches away from the use of plate shaped electrodes. Appellant’s
contentions do not address the thrust of the Examiner’s rationale, which we
understand to be that it would have been obvious to have incorporated the
spaces disclosed in Keiichi into the flat plates of Tomimatsu to create air
gaps for dust collection, and, as a result, create the first and second plate
portions recited in claim 1. Final Act. 6, 7.
As to Appellant’s arguments that Keiichi discloses metal rods or tubes
as electrodes, we are not persuaded that the particular shape of the metal
rods or tubes disclosed therein limits the disclosure relied upon by the
Examiner (Keiichi, col. 4, ll. 41–42) that the spaces between the metal rods
act as effective dust collecting surfaces such that one of ordinary skill in the
art would be compelled to include a plurality of metal rods or tubes as
electrodes in Tomimatsu. Although Appellant contends Keiichi discloses
round surfaces are important, such that one of ordinary skill in the art would
not have applied Keiichi’s configuration to flat plates (Reply Br. 4–5), this
disclosure in Keiichi relates specifically to a particular embodiment in
Keiichi. Keiichi, col. 3, ll. 51–59. Keiichi expressly discloses the discharge
electrodes may be made in other shapes. Id. at col. 3, ll. 45–50.
As to Appellant’s arguments the orientation of the pins is parallel to
the gas flow in Keiichi, Keiichi discloses supporting frames in one direction,
and that Keiichi does not disclose dust collecting electrodes with pins, the
Examiner does not rely on Keiichi for such teachings, but rather relies on
Tomimatsu. Final Act. 5–6. Accordingly, we are not persuaded by
Appellant’s arguments.
We are not persuaded by Appellant’s argument that the air gap
between the first plate portion and the second plate portion results in certain
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advantages such as widening the distribution of the corona discharge,
increased current, increased input power, and increased trapping efficiency
of the first electrode, which are not disclosed by Tomimatsu and Keiichi. As
stated by the Supreme Court in KSR, “[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
We observe that claim 1 is an apparatus claim and additionally claim
1 does not recite the advantages argued by Appellant. As discussed above,
the Examiner provided a specific reason to incorporate spaces as disclosed in
Keiichi into the flat plate electrodes disclosed in Tomimatsu resulting in a
first flat plate portion and second flat plate portion as recited in claim 1,
which Appellant has not directly addressed. Although Appellant’s
Specification indicates different reasons for providing an air gap than
Keiichi, such different reasons do not mean the claims would not have been
obvious. Thus, we are not persuaded by Appellant’s additional argument
that the Examiner relied on improper hindsight to reject the claims.
Appeal Br. 13–14.
Accordingly, we affirm the Examiner’s rejection of claims 1 and 3 as
obvious over Tomimatsu and Keiichi.

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Application 14/403,808

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1,3 103 Tomimatsu, Keiichi 1, 3
TIME PERIOD FOR RESPONSE
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