Ex parte Bauer et al.

Board of Patent Appeals and Interferences

Jan 21, 2000

08167288 (B.P.A.I. Jan. 21, 2000)

Application for patent filed December 16, 1993. 1
As is apparent from the record, appellants’ statement2
"[t]his is an appeal from the Office [a]ction dated August 29,
1995 [sic, September 27, 1995], finally rejecting Claims 1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RALPH BAUER, THOMAS E. COTTRINGER
AND MARTIN B. BARNES
____________
Appeal No. 1996-3496
Application No. 08/167,2881
____________
ON BRIEF
____________
Before HANLON, PAK, and LIEBERMAN, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 9 which are all of the claims
pending in the application. 2
Appeal No. 1996-3496
Application No. 08/167,288
11..." in the first page of the Brief is inadvertent.
Clearly, claims 10 and 11 do not exist in this application.
2
Claims 1 and 8 are representative of the subject matter
on appeal and read as follows:
1. A process for the production of a powdered ceramic
material which comprises feeding a mixture comprising carrier
particles of an inert material having a particle size of from
about 3 to 30 mm and a precursor of the ceramic material in
the form of a powder having an average particle size smaller
than about 65 microns in a weight ratio of carrier to
precursor of from about 3:1 to about 15:1 into a rotary kiln
and firing at a temperature sufficient to effect conversion of
the precursor to the ceramic material.
8. A process for producing alpha alumina in the form of
a powder with an average particle size of from about 5 to
about 40 microns which comprises feeding a mixture comprising
a powder of
a transitional alumina with a particle size less than about 65
microns and carrier particles of alpha alumina with an average
particle size of from about 6 to 15 mm, in a carrier to powder
weight ratio of from 5:1 to about 10:1, into a rotary kiln
maintained at a temperature above the conversion temperature
of the precursor [sic, transitional alumina] to alpha alumina
and thereafter separating [sic, the resulting] alpha alumina
powder from the carrier particles.
As evidence of obviousness, the examiner relies on the
following prior art:
Koppers 1,712,082 May 7,
1929
Clark 3,275,405 Sep. 27,
1966
Shabaker 3,630,501 Dec. 28,
1971
Appeal No. 1996-3496
Application No. 08/167,288
3
Leitheiser et al. (Leitheiser) 4,314,827 Feb. 9,
1982
Bauer et al. (Bauer) 4,657,754 Apr. 14,
1987
Wald et al. (Wald) 5,011,508 Apr. 30,
1991
The appealed claims stand rejected as follows:
(1) Claims 1 through 4 and 6 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Wald and
Leitheiser; and
(2) Claims 1 through 9 under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of Bauer, Clark, Shabaker and
Koppers.
We reverse.
We begin our consideration of the issues before us by
determining the scope of the claimed subject matter. Gechter
v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed.
Cir. 1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671,
1674 (Fed. Cir. 1994). We generally give words in the
Appeal No. 1996-3496
Application No. 08/167,288
4
application claims the broadest reasonable interpretation in
light of the specification. In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). When there is
appellants’ intent in the specification to utilize those words
in a more limited sense, however, we give them limited
meaning. See e.g., Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996);
Paulsen, 30 F.3d at 1480, 31 USPQ2d at 1674.
The claimed subject matter is directed to a process for
the production of a powdered ceramic material, such as alpha
alumina powder. See claims 1 and 8. The process involves,
inter alia, firing a mixture of inert carrier particles, such
as alpha alumina, having a particle size of 3 to 30 mm and a
precursor of the ceramic material (transitional alumina) in
the powder form having a particle size smaller than 65 microns
in a weight ratio of about 3:1 to about 15:1 in a rotary kiln
to convert the precursor to the ceramic powder. Id. The
presence of the inert carrier particles is said to minimize
thermal stress and structure failure associated with
accumulation of solid powder on the internal wall of a long
Appeal No. 1996-3496
Application No. 08/167,288
5
externally heated tube which is part of the rotary kiln. See
Specification, pages 1-3. The carrier particles are effective
in conveying the powder precursor through the long externally
heated tube of the rotary kiln without causing the powder
precursor to adhere to the inside wall of the tube. Id.
Manifestly, appellants’ purpose in the specification is to
limit the application of the claimed process to those rotary
kilns having a long externally heated tube. Moreover, we
limit the meaning of “carrier particles of an inert material”
in the claims in accordance with appellants’ intent in the
written description at page 3 of the specification, which
states in relevant part:
It is found that the powder particles become
coated on the larger carrier particles and are
carried along with them as they move through the
furnace. At the end of the firing they can be
readily removed by washing, shaking or by air
blowing the carrier particles.
The carrier particles are inert in the sense
that they do not react with the powder particles
that they are transporting. It is also
desirable that they retain their dimensional and
compositional integrity during passage through
the rotary kiln and the separation of the fired
powder. Most preferably the carrier particles
have the same composition as the powder after
firing is complete but this is not essential.
Thus, for example, transitional aluminas are
Appeal No. 1996-3496
Application No. 08/167,288
6
preferably carried on alpha alumina and unfired
zirconia powders are carried on fired zirconia
carriers.
This interpretation is consistent with appellants’ suggestion
at pages 4 and 5 of the Brief.
Having determined the scope and meaning of the claims, we
turn to the examiner’s rejection of claims 1 through 4 and 6
under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Wald and Leitheiser. The examiner acknowledges
that Wald describes, among other things, firing a mixture of
two differently sized alpha alumina precursor particles, one
portion of which being larger than the other, in a rotary
kiln. See Answer, page 4. The examiner recognizes that Wald
does not specifically mention “carrier particles of an inert
material”, especially those having the claimed particle sizes.
See Answer, pages 4 and 5. To remedy such a deficiency, the
examiner determines the term “carrier particles of an inert
material” as including large alpha alumina precursor
particles. Id. The examiner then, relying on Leitheiser’s
teaching regarding the particle sizes of its alpha alumina
precursor particles, concludes that it would have been obvious
to one of ordinary skill in the art to use alpha alumina
Appeal No. 1996-3496
Application No. 08/167,288
7
precursor particles (inert carrier particles) having the
claimed particle size in the ceramic making process of Wald.
See Answer, page 5.
As is apparent from our interpretation above, the
examiner has improperly construed the claimed “carrier
particles of an inert material” as including the large alpha
alumina precursor particles. Appellants correctly determine
that the large alpha alumina precursor particles do not have
any physical and/or functional attributes of the claimed inert
carrier particles. See Brief, pages 17-22. The large alpha
alumina precursor particles, unlike the claimed “carrier
particles of an inert material”, react with other smaller
precursor particles during sintering (conversion) to form
permanent bond therebetween, thus producing ceramic particles
larger than the large alpha alumina precursor particles. See
Wald, column 3, lines 5-19. There simply is no recognition in
either Wald or Leitheiser of the importance of using the
claimed “carrier particles of an inert material” for the
purpose of conveying the resulting ceramic powder.
Accordingly, we cannot sustain the examiner’s § 103 rejection
Appeal No. 1996-3496
Application No. 08/167,288
8
of claims 1 through 4 and 6 over the combined disclosures of
Wald and Leitheiser.
We turn next to the examiner’s rejection of claims 1
through 9 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Bauer, Clark, Shabaker and Koppers.
The examiner takes the position that it would have been
obvious to employ the solid balls of ceramic materials (inert
particles) described in Clark, Shabaker and Koppers as a heat
source in the ceramic powder making process described in
Bauer. See Answer, pages 6-8. We cannot agree with the
examiner for essentially those reasons set forth by appellants
at pages 23 through 31 of the Brief. We find that the
examiner has not supplied sufficient facts to explain why
firing a mixture of the solid balls of ceramic material
described in Clark, Shabaker and Koppers and the ceramic
precursor particles described in Bauer would have been
suggested to one of ordinary skill in the art. When solid
powder, such as those precursor particles described in Bauer,
is already primarily heated with the solid balls of ceramic
materials, as taught by Clark, Shabaker and Koppers, there
appears to be no incentive on the part of one of ordinary
Appeal No. 1996-3496
Application No. 08/167,288
9
skill in the art for firing (fired by burner) the mixture.
Moreover, the examiner has not supplied sufficient facts to
explain why one of ordinary skill in the art would have
employed the solid balls of ceramic material described in
Clark, Shabaker and Koppers as a heat source for the rotary
kiln of Bauer. When the rotary kiln and those heaters
described in Clark, Shabaker and Koppers operate differently
due to using different heat medium, the examiner must supply
sufficient facts to demonstrate why and/or how one of ordinary
skill in the art would employ the solid balls of ceramic
material (heating source) used in the heater described in
Clark, Shabaker and Kopper in the rotary kiln of the type
described in Bauer. Contrary to the examiner’s assertion,
Shabaker, for example, does not teach or suggest using the
solid balls of ceramic material as a heat source for rotary
kilns. Rather, Shabaker teaches away from using rotary kilns
to heat solid powder. See column 1, lines 4-32.
In view of the foregoing, the decision of the examiner is
reversed.
Appeal No. 1996-3496
Application No. 08/167,288
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
CKP:lp
Appeal No. 1996-3496
Application No. 08/167,288
11
DAVID BENNETT
NORTON COMPANY, INTELLECTUAL PROPERTY
LAW DEPARTMENT, 1 NEW BOND STREET
MS 412-101, BOX NO. 15008
WORCESTER, MA 01615-0008
Leticia
Appeal No. 96-3496
Application No. 08/167,288
APJ PAK
APJ HANLON
APJ LIEBERMAN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 5, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM /ACTS 2/BOOK
DISK FOIA)/REPORT