Ex Parte Burgher et al

Board of Patent Appeals and Interferences

Jul 31, 2002

08854332 (B.P.A.I. Jul. 31, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOHN W. BURGHER,
DENNIS F. DONG,
and
RICHARD E. LOFTFIELD
______________
Appeal No. 1999-1258
Application No. 08/854,332
_______________
ON BRIEF
_______________
Before GARRIS, OWENS, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s refusal
to allow claims 1 through 20 as amended subsequent to the final
rejection (see the amendment dated Aug. 4, 1998, Paper No. 8,
entered as per the Advisory Action dated Aug. 19, 1998, Paper
No. 9, thus overcoming the final rejection under 35 U.S.C. § 112,
paragraph 2). Claims 1-20 are the only claims pending in this
application. We have jurisdiction pursuant to 35 U.S.C. § 134.
Appeal No. 1999-1258
Application No. 08/854,332
2
According to appellants, the invention is directed to a
metal anode useful in a galvanic or impressed current cathodic
protection system for a steel reinforced concrete article which
is a strip or ribbon having a plurality of louvers defining a
plane or planes at the lateral extremities of said louvers
(Brief, page 5). Illustrative independent claim 1 is reproduced
below:
1. In a galvanic or impressed current cathodic
protection system comprising a plurality of porous, metal
anodes, the improvement wherein each of said anodes
comprises a unitary, porous, metal strip comprising a
plurality of louvers formed on a first plane of said metal
strip having a largest area, said louvers having a lateral
and a long dimension, and said louvers defining a second
plane or both a second plane and a third plane at the
lateral extremities of said louvers.
The examiner has relied upon the following references as
evidence of obviousness:
Warne 4,187,164 Feb. 05, 1980
Boulton et al. (Boulton) 4,204,939 May 27, 1980
Taki 4,997,492 Mar. 05, 1991
Bartholomew et al. (Bartholomew) 5,292,411 Mar. 08, 1994
Bennett et al. (Bennett) 5,423,961 Jun. 13, 1995
Herman et al., “Heat Treating of Titanium and Titanium Alloys,”
Metals Handbook® Ninth Edition, Vol. 4, Heat Treating,
pp. 763-64 (Am. Society for Metals, Park, OH, 1981)(Hereinafter
referred to as Metals Handbook).
Appeal No. 1999-1258
Application No. 08/854,332
1The reference to Pulliainen, U.S. Patent No. 5,531,873, has
been withdrawn by the examiner (Answer, page 3).
3
Claims 1-6, 8-11, 13-15 and 19 stand rejected under
35 U.S.C. § 103 as unpatentable over Bennett in view of Boulton
and Warne (Answer, page 3).1 Claim 7 stands rejected under
35 U.S.C. § 103 as unpatentable over the references noted above
further in view of Taki (Answer, page 4). Claims 16-18 and
20 stand rejected under 35 U.S.C. § 103 as unpatentable over the
references applied against claims 1-6, 8-11, 13-15 and 19,
further in view of the Metals Handbook (Answer, page 5). Claims
1-7, 11 and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Bartholomew in view of Boulton and Warne (id.).
We reverse all of the rejections on appeal for the reasons set
forth below.
OPINION
All of the rejections on appeal have an evidentiary basis of
Bennett or Bartholomew as primary references with Boulton and
Warne applied as secondary references to show the obviousness of
substituting louver anode strips in the system of the primary
Appeal No. 1999-1258
Application No. 08/854,332
2The tertiary references to Taki and Metals Handbook were
merely applied by the examiner to show limitations of various
dependent claims (see the Answer, pages 4 and 5). Therefore
these references do not remedy the deficiencies discussed infra.
4
references (Answer, pages 4 and 6). Accordingly, we will limit
our discussion to these references.2
The examiner finds that Bennett discloses a “conventional
system” for protecting concrete with reinforcing bars comprising
an anode strip of expanded mesh made from titanium metal with an
electrocatalytically active coating (Answer, page 3). The
examiner finds that the claimed subject matter differs from
Bennett by requiring an anode strip having a plurality of louvers
(id.). Accordingly, the examiner applies Boulton for the
disclosure of “an anode of Ti with an electrocatalytically active
coating” where the anode is in the form of a strip with louvers
(id.). The examiner also applies Warne for the disclosure of a
cathodic protection anode “[having] the general configuration of
louvers.” Answer, page 4. From these findings, the examiner
concludes that it would have been obvious “for Bennett to adopt
the louver anode strip of Boulton as its anode, because such an
anode can be easily manufactured as discussed at col. 2, line 47
of Boulton.” Id. The examiner also concludes that “louvers have
wider openings than the apertures of a mesh to facilitate the
Appeal No. 1999-1258
Application No. 08/854,332
5
escape of gas that can accumulate at the anode” (id.). Finally,
the examiner concludes that Warne’s disclosure of a cathodic
protection anode with a shape “similar” to louvers “enhances the
obviousness” of using a louver anode in a cathodic protection
system (id.). We disagree.
As correctly argued by appellants (Reply Brief, pages 2-3),
the examiner’s conclusion of obviousness is not based on a proper
factual foundation since Boulton does not disclose or suggest
that louver anodes can be “easily manufactured.” As correctly
quoted by appellants (id.), Boulton merely teaches that “louvres
are conveniently produced from a sheet of film-forming metal”
(col. 2, ll. 47-48, underlining added). Furthermore, the
examiner’s conclusion that “louvers have wider openings than the
apertures of a mesh” (Answer, page 4) is not based on any facts
on the record before us. Similarly, the examiner’s conclusion
that these “wider openings” facilitate the escape of gas has not
been supported by any factual evidence on this record.
We must also agree with appellants (Brief, pages 10-13 and
22) that the examiner has not provided any convincing evidence or
reasoning to support the proposed combination of Bennett and
Boulton, i.e., there is no convincing reasoning or suggestion for
substituting the louver anode strip of Boulton for the mesh anode
Appeal No. 1999-1258
Application No. 08/854,332
6
disclosed by Bennett. See In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999). Bennett specifically teaches
the use of a mesh anode with “a redundancy of current-carrying
paths through the mesh which ensures effective current
distribution throughout the mesh even in the event of possible
breakage of a number of individual strands.” Col. 5, ll. 13-17.
Accordingly, substitution of a louver anode strip would
contradict the advantages taught by Bennett for the mesh anode.
Additionally, Boulton is directed to an electrolytic diaphragm
cell of the filter press type for the electrolysis of brine to
produce chorine, hydrogen and sodium hydroxide (see col. 1, ll.
4-6 and 41-46). Although the examiner submits that cathodic
protection is an electrolytic process, just as the electrolysis
of brine by Boulton (Answer, paragraph bridging pages 7-8), the
examiner has not shown any similarities in the processes of
Boulton and Bennett that would have suggested the interchanging
or substitution of anodes.
The examiner’s citation of Warne does not remedy the
deficiencies discussed above. The examiner has not shown how the
disclosure of U- or V-shaped anodes in the cathodic protection
system of Warne are of the “general configuration of louvers” or
“with a shape similar to louvers” (Answer, page 4; see Fig. 4 of
Appeal No. 1999-1258
Application No. 08/854,332
7
Warne). Furthermore, Warne teaches that the “geometrical shape
of cathodic protection anodes is very important.” Col. 2, ll.
37-38. Therefore the examiner must present evidence of a
suggestion or reason for altering the U- or V-shaped anodes of
Warne to the shape of louvers. See Dembiczak, supra. On this
record, the examiner has not presented any such evidence.
The examiner has applied Bartholomew as a primary reference
for its disclosure of a cathodic protection system comprising a
sacrificial metal anode (zinc). See the Answer, page 6.
However, the examiner applies Boulton and Warne in the same
manner as discussed above (id.). Accordingly, we adopt our
reasoning above for the determination that the examiner has
failed to present convincing evidence or reasoning to support the
proposed combination of references. See Dembiczak, supra.
Appeal No. 1999-1258
Application No. 08/854,332
8
For the foregoing reasons, we determine that the examiner
has not met the initial burden of establishing a prima facie case
of obviousness in view of the reference evidence. Accordingly,
we reverse all of the rejections on appeal.
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:hh
Appeal No. 1999-1258
Application No. 08/854,332
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ANDREW E. PIERCE
161 McCracken Dr.
Seneca, SC 29678