12062005 (P.T.A.B. Sep. 10, 2018)

Ex Parte Artman et al

Patent Trial and Appeal BoardSep 10, 2018

12062005 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/062,005 04/03/2008 70329 7590 09/12/2018 Graffech International Holdings Inc. Cindy Aquilino 982 Keynote Circle Brooklyn Heights, OH 44131 FIRST NAMED INVENTOR Diane Artman 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. P2087-l 9489 EXAMINER NGUYEN, HUNG D ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 09/12/2018 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): patents@graftech.com cindy.aquilino@graftech.com Patrick.Floyd@GraITech.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIANE ARTMAN, PHILIP DENNIS COLEMAN, and JUAN MORALES Appeal 2017-011113 Application 12/062,005 1 Technology Center 3700 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's rejection of claims 10-15 and 21-25. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. According to Appellants, "the invention concerns ... graphite electrodes." Spec. ,r 1. Claim 10 is the sole independent claim on appeal. 1 According to Appellants, "[t]he real party in interest is GrafTech International Holdings Inc." Appeal Br. 2. Appeal 2017-011113 Application 12/062,005 Below, we reproduce claim 10 (reformatted) as representative of the appealed claims. 10. An electrode comprising a monolithic cylindrical main body having a first end and a second end and comprised substantially of a baked and graphitized extruded green stock, the first end includes a generally planar end face having a recessed threaded socket and the second end includes an axially extending threaded tapered tang, wherein a length of the electrode comprises more than 3050 mm. REJECTION AND PRIOR ART The Examiner rejects claims 10-15 and 21-25 under 35 U.S.C. Â§ I03(a) as unpatentable over Smith (US 2005/0249260 Al, pub. Nov. 10, 2005) and either Doerschuk (US Re. 18,062, iss. May 5, 1931) or Maki et al. (US 5,479,433, iss. Dec. 26, 1995) ("Maki"). ANALYSIS As set forth above, independent claim 10 recites, in relevant part, "[ a ]n electrode comprising a monolithic cylindrical main body ... [,] wherein a length of the electrode comprises more than 3050 mm." Br., Claims App. As set forth in our previous Decision on Appeal in this application, "[a]s described in Appellant's Specification, 'a monolithic electrode ... is ... an electrode without an added joint.' Spec. ,r 14. Thus, claim 10 requires that the electrode has no joint and has a length of more than 3050 mm." Decision mailed July 17, 2015, 3. This interpretation of 2 Appeal 2017-011113 Application 12/062,005 claim 10--i.e., that the claim recites an electrode that is a single body with no joint and which is at least 3050 mm in length-is consistent with the Examiner's and Appellants' interpretation of the claim. See, e.g., Answer 9 ("Maki ... does not disclose anywhere ... that the electrode (9) is the electrode column that is made of multiple individual electrodes connected together to form the electrode column. Therefore, Maki ... discloses the electrode has a length of about 9000 mm."); see, e.g., Br. 13-14 ("Maki does not teach an electrode having a monolithic main body with a length comprising more than 3050 mm, but rather an electrode column [that has] a length of [more than 3500 mm].") With respect to the Examiner's obviousness rejection based on Smith and Doerschuk, Appellants argue that the rejection is in error because the references teach away from modifying Smith based on Doerschuk, as proposed by the Examiner. See, e.g., Br. 5---6. Based on our review of the record, we agree with Appellants. The Examiner relies on "Smith [to] disclose[] [a] monolithic cylindrical main body ... comprised substantially of baked and graphitized extruded green stock." Final Action 3 (citations omitted). However, "Smith does not disclose a length of the electrode comprises more than 3050 mm." Id. We note that both the claimed electrode (see Br., Claims App. (Claim 10)) and Smith's electrode (see, e.g., Smith ,r 17) are extruded electrodes. Instead, the Examiner relies on "Doerschuk [to] disclose[] a length of the electrode compris[ing] more than 3050 mm." Final Action 3. As Appellants point out, however, 3 Appeal 2017-011113 Application 12/062,005 Doerschuk discloses a vibro-molding operation to manufacture carbon electrodes and cathodes ( carbon lining of aluminum furnaces) for the aluminum industry. While it is clear that Doerschuk does make a reference to [ an electrode having a length ofJ 139 inches (approx[imately] 3530 mm), it is also undeniable that Doerschuk teaches away from the electrode being an extruded product. Br. 5. More specifically, Appellants point out that throughout Doerschuk's disclosure, Doerschuk discusses disadvantages of extruded electrodes, including the formation of voids and air pockets, and how such disadvantages are overcome by vibro-molding. See id. at 4--7. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) ( citations and internal quotation marks omitted). In this case, Doerschuk teaches away from modifying Smith to provide an extruded electrode of greater than 3050 mm. Thus, based on the foregoing, we do not sustain the Examiner's rejection of claims 10-15 and 21-25 based on Smith and Doerschuk. With respect to the Examiner's obviousness rejection based on Smith and Maki, the Examiner relies on Maki to disclose an electrode having a single body with a length of more than 3050 mm. Final Action 3--4. Appellants argue that the rejection is in error because "Maki does not teach an electrode having a monolithic main body with a length comprising more than 3050 mm, but rather [Maki teaches] an electrode column [(that is made up of a multiple electrodes connected together) which has] a length of [more than 3500 mm].") Br. 13-14. In response, the Examiner finds that 4 Appeal 2017-011113 Application 12/062,005 Maki . . . clearly state[ s] that the electrode (9) has a length of9000 mm ([c]ol. 3, [11.] 50-51, 'The upper electrode 9 is formed of a graphite bar, and has a diameter of about 7 60 mm and a length of about 9000 mm')[,] and Maki ... does not disclose anywhere in the [disclosure] that the electrode (9) is the electrode column that is made of multiple individual electrodes connected together to form the electrode column. Therefore, Maki ... discloses the electrode has a length of about 9000 mm. Answer 9. We are persuaded by Appellants' evidence, however, as set forth in the Declaration of Brian Bowman dated December 7, 2011, that there is an insufficient basis for the Examiner to find that Maki teaches an electrode having no joint and having a length of more than 3050 mm. The Declarant explains that in Maki, "the term 'electrode' refers in this case to the plurality of individual electrodes secured together to form the electrode column. This is clearly the case in" Maki. Deel. ,r 7. The Examiner's support for the finding that Maki discloses a single body with a length of more than 3050 mm is solely that Maki "does not disclose anywhere in the specification that the electrode (9) is the electrode column that is made of multiple individual electrodes connected together to form the electrode column." Answer 9. We note, however, that neither does Maki expressly state that electrode 9 is a single body. Thus, based on our review of the evidence, the Examiner does not support adequately the finding that Maki discloses a single-body electrode of more than 3050 mm. Therefore, we do not sustain the Examiner's rejection of claims 10-15 and 21-25 based on Doerschuk and Maki. 5 Appeal 2017-011113 Application 12/062,005 DECISION We REVERSE the Examiner's rejection of claims 10-15 and 21-25. REVERSED 6