Ex Parte Arofikin

Patent Trial and Appeal Board

Sep 26, 2018

13800100 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/800,100 03/13/2013
20322 7590 09/28/2018
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
FIRST NAMED INVENTOR
Nikolay V. Arofikin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
59902.0100 5960
EXAMINER
NGUYEN, PHUONG T
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
IPDOCKET@swlaw.com
chauff@swlaw.com
dgiancaterin@swlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKOLA Y V. AROFIKIN 1
Appeal2017-009817
Application 13/800,100
Technology Center 3700
Before: JILL D. HILL, JEREMY M. PLENZLER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Nikolay V. Arofikin ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-31.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the real party in interest as Millisecond Technologies
Corp. Appeal Br. 2.
2 Claims 32 and 33 were withdrawn from consideration. Appeal Br. 23
( Claims App.).
Appeal2017-009817
Application 13/800,100
BACKGROUND
Sole independent claim 1, reproduced below, represents the claimed
invention, with certain disputed limitations italicized.
1. A reactor for treating a liquid product by heating it,
the reactor comprising:
(a) two spaced-apart walls wherein each wall has a
planar interior surface, an exterior surface, and an interior
cavity between the interior surfaces;
(b) an entrance to the interior cavity;
( c) one or more heating sources for each wall wherein
each of the one or more heating sources is external to the
interior cavity and is configured to raise the temperature of the
interior surface of each wall to a temperature equal to or greater
than the highest temperature to which the liquid product is
heated; and
( d) a nozzle at the entrance, the nozzle having an inlet
into which the liquid product enters and an exit opening to the
interior cavity and through which the liquid product enters the
interior cavity, the nozzle projecting a flat stream of the liquid
product into the interior cavity.
REJECTIONS
I. Claims 1-31 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 3.
II. Claims 1-31 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 3.
III. Claims 1-31 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Bronnert (US 4,776,268, issued Oct. 11, 1988). Final Act. 4.
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Application 13/800,100
ANALYSIS
Rejection I: Written Description
The Examiner finds that the claims fail to comply with the written
description requirement, because the originally-filed disclosure lacks support
for "each of the one or more heating sources [being] external to the internal
cavity." Final Act. 3.
Appellant argues that their Specification discloses this subject matter.
Appeal Br. 7-8 (citing Spec. ,r 31 ("[i]nterior surfaces of ... walls 102, 104
may be heated to the same or different temperatures using a variety of
techniques .... , such as heating jackets ... around one or more of an
exterior or interior of the walls."); f 41 ("the walls may be heated by, for
example, using one or more heating jackets around one or more of an
exterior or interior of the walls")). According to Appellant, its interior
cavity 110 is formed between interior walls surfaces, and the heat source can
be "on or around an exterior of the walls," which provides support for the
heat source being external to the internal cavity. Id. at 8 ( citing Fig. 1; ,r 28).
The Examiner responds that, while Appellant's Specification
describes its walls 102, 104 being heated using heating jackets around "an
exterior or interior of the walls," and around "one or more of an exterior or
interior of the walls," the entirety of Appellants' disclosure does not
describe the claimed heating sources being "external to the internal cavity."
Ans. 3 ( citing Spec. ,r,r 31, 41 ).
Considering the cited portions of Appellant's Specification, and
Appellant's disclosure in its entirety, we conclude that one skilled in the art
would understand that, because Appellant's walls 102, 104 surround the
interior cavity 110 therebetween, and the heating source(s) can be external to
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Application 13/800,100
the walls 102, 104, then Appellant contemplated and had possession of its
heating source(s) being external to the internal cavity as claimed. For this
reason, we do not sustain Rejection I.
Rejection II: Definiteness3
The Examiner finds that the phrase "one or more heating sources for
each wall, wherein each of the one or more heating sources is external to the
interior cavity" in claim 1 is unclear. Final Act. 3--4. The Examiner
assumes "that the phrase means: one or more heating sources conduct the
heat to each wall, wherein one or more heating sources conduct the heat
from the external to the interior cavity."
A decision on whether a claim is indefinite requires a determination of
whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification. Power-One, Inc. v. Artesyn Techs.,
Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986).
The rejection does not include an assertion that one skilled in the art,
reading the phrase at issue in light of the Specification, would fail to
understand what is claimed. Indeed, having considered the disclosure of the
3 Although not addressed by the Examiner, we note that the recitation in
claim 1 of "an interior cavity" appears to refer back to "wherein each wall
has," such that it may be unclear whether the recited interior cavity is within
each wall or between the two walls. Further, the claims are drawn to an
apparatus, yet appear to improperly include method limitations such as, for
example, "projecting a flat stream" ( claim 1) and "each interior surface is
heated" (claim 16). See IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005) (a single claim reciting "both an apparatus and the
method steps of using the apparatus is indefinite under 35 U.S.C. 112,
second paragraph.").
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Appeal2017-009817
Application 13/800,100
Specification, we determine that the meaning of the claimed phrase would
have been understood by one skilled in the art to mean that the heat
source( s) for the walls 102, 104 is external to the cavity 110 therebetween.
For this reason, we do not sustain Rejection II.
Rejection III: Anticipation
The Examiner finds, inter alia, that Bronnert discloses "two spaced-
apart walls ... wherein each wall has a planar interior surface." Final Act.
4.
Appellant argues, inter alia, that Bronnert's vessel 11 is cylindrical,
and therefore has "an annular wall 20" with an annular interior surface,
rather than a planar interior surface. Appeal Br. 11 (citing Bronnert 3:39-
43, 3:51-59, Figs. 1-2). According to Appellant, "Bronnert's vessel 10 is
shown in cross-sectional view in Fig. 2, which may create the impression of
there being two planar walls instead of a single annular wall," but "[n]either
Bronnert 's steam line 21 nor cylindrical reactor section 10 has two spaced-
apart, planar walls defining a cavity between them." Id.
The Examiner responds that Bronnert discloses two spaced-apart
walls, and provides an annotated version of Bronnert's Figure 2 (see below)
that designates W as the spaced-apart walls. Ans. 4 ("the top portion of the
wall (W, annotated figure of Bronnert above) is planar").
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Appeal2017-009817
Application 13/800,100
Id. at 5.
i\.tttHJtatt~ti tl~tt~:~ i:tf
JJ:r~.)tttlt~rt {l)$ 4: .. 77t>..:J:6$)
Appellant replies that Bronnert's wall 23, found by the Examiner to be
one of the two spaced-apart walls having a planar interior surface, is a
cylindrical ( or frustroconical) wall that instead "has one, continuous, curved
surface" and thus "is not planar." Reply Br. 7.
We agree with Appellant. Bronnert' s disclosure makes clear that the
interior surface of wall 23 is frusto-conical, rather than planar. The
Examiner's finding is therefore in error, because Bronnert does not disclose
two spaced-apart walls with planar interior surfaces as required by claim 1.
Anticipation has not been established. Verdegaal Bros. v. Union Oil Co. of
California, 814 F .2d 628, 631 (Fed. Cir. 1987) ("A claim is anticipated only
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Application 13/800,100
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference."). For this reason, we
do not sustain Rejection III.
DECISION
We REVERSE the pending rejections.
REVERSED
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