Ex parte Carman et al.

Board of Patent Appeals and Interferences

Apr 28, 2000

08192088 (B.P.A.I. Apr. 28, 2000)

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publication in a law journal and (2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LEE A. CARMAN
and SHUYUAN LIU
__________
Appeal No. 1996-3472
Application 08/192,088
___________
ON BRIEF
___________
Before PAK, OWENS and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 5 and 7. Claim
6 is the only remaining claim in this application and has been
objected to by the examiner as depending on a rejected base
claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any
intervening claims (Answer, page 1).
Appeal No. 1996-3472
Application 08/192,088
All reference and citation is from the revised Brief1
dated Apr. 8, 1996, Paper No. 24.
See the Brief, pages 2 and 7.2
2
According to appellants, the invention is directed to an
abrasive tool which is a composite of sol-gel alumina abrasive
grains bonded together by a glass-ceramic bond material, which
composite has specified amounts of volume void spaces, volume
of bond material at the bond posts or in the coating, and a
volume proportion of bond to grain (Brief, page 2). 1
Illustrative claim 1 is reproduced below:
1. An abrasive tool that comprises sol-gel alumina
abrasive grains bonded together by a glass-ceramic bond
material, the tool comprising from about 35 to 65 % by volume
void spaces, wherein at least about 75% of the volume of the
bond material is located in the bond posts or in a coating on
the abrasive grains and in which the volume proportion of bond
to grain is from about 0.06 to 0.6.
The examiner has relied upon the following reference as
evidence of obviousness:
Clark et al. (Clark), “A Novel Technique for Producing a
Glass-Ceramic Bond in Alumina Abrasives,” Am. Ceram. Soc.
Bull., 65(11) 1506-12 (1986).
Appellants have relied upon the following references in
rebuttal of the examiner’s position:2
Rue 4,543,107 Sep. 24,
1985
Appeal No. 1996-3472
Application 08/192,088
3
Cottringer et al. (Cottringer) 4,623,364 Nov. 18,
1986
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative, under 35 U.S.C. §
103 as unpatentable over Clark (Answer, page 3). We reverse
these rejections by the examiner for reasons which follow.
OPINION
It is the examiner’s position “that the burden is upon
appellant [sic] to show by way of tangible evidence that the
claimed abrasive tool does in fact have different properties
.” (Answer, sentence bridging pages 3-4). However, it is well
settled that the examiner bears the initial burden of
presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
The examiner has considered the claimed limitation “sol-
gel” to be a process limitation which does not further limit
the claimed product (Answer, page 4). Appellants argue that
“sol-gel alumina abrasive grains” are described in the
specification (page 6, lines 1-15) and are not a process
limitation but a physically different grain than traditional
Appeal No. 1996-3472
Application 08/192,088
See also the meaning of sol-gel alumina abrasive grains3
as disclosed by the prior art, i.e., Rue and Cottringer.
4
alumina abrasive grains (Brief, pages 2 and 8). In any
anticipation or obviousness analysis, the claim must first be
correctly construed to define the scope and meaning of each
contested limitation. Gechter v. Davidson, 116 F.3d 1454,
1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir.
1997).
Claims in an application are to be given their broadest
reasonable interpretation consistent with the specification,
and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary
skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983). Giving the broadest reasonable
interpretation to the claimed term “sol-gel alumina abrasive
grains” consistent with pages 5-6 of the specification, we
agree with appellants that one of ordinary skill in the art
would have interpreted this term to mean alumina with specific
physical characteristics. As appellants point out on page 63
of the Brief, the examiner has failed to identify any
Appeal No. 1996-3472
Application 08/192,088
5
disclosure or teaching in Clark of a sol-gel alumina abrasive
grain.
Regarding the examiner’s position that appellants have
not shown that Clark does not inherently possess the
properties of the claimed composite (Answer, page 4), we have
discussed above that any such initial burden is born by the
examiner. See Oetiker, supra. The examiner, if relying on a
theory of inherency, must provide a basis in fact and/or
technical reasoning to reasonably support the determination
that the allegedly inherent characteristics necessarily flow
from the teachings of the applied prior art. In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
On this record, the examiner has not provided any such support
for an inherency theory.
For the foregoing reasons, we determine that the examiner
has not shown that all of the claimed limitations are
described in Clark within the meaning of 35 U.S.C. § 102(b).
Accordingly, the rejection of the claims on appeal under 35
U.S.C. § 102 (b) is reversed.
The only statement the examiner has made regarding
obviousness is that “[u]se of sol-gel grains if the process
Appeal No. 1996-3472
Application 08/192,088
See the Answer, page 4, where the examiner explicitly4
states that Cottringer is not used in the rejection.
6
limitation is given weight in determining the patentability
would at least be obvious.” (Answer, page 4). When
determining the patentability of a claimed invention which
combines two known elements, “the question is whether there is
something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the
combination.” Lindemann Maschinenfabrik GMBH v. American
Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984); see also In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). The examiner has failed to show any suggestion,
motivation or reasoning to use sol-gel alumina abrasive grains
with the glass-ceramic product of Clark. The examiner has not
taken official notice, used appellants’ admissions in the
specification, or employed Cottringer to support the
conclusion of obviousness. The examiner has also failed to4
reply to appellants’ reliance on Rue as “teaching away” from
the claimed invention (see the Brief, page 7).
Appeal No. 1996-3472
Application 08/192,088
7
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view
of Clark. Since we determine that no prima facie case has
been presented, we need not reach the sufficiency of the
comparative showing presented in appellants’ specification
(Brief, pages 7-8, citing Examples 2 and 3 on pages 12-18 of
the specification).
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed.
Cir. 1987). Accordingly, the examiner’s rejection of the
claims on appeal under 35 U.S.C. § 103 as unpatentable over
Clark is reversed.
The decision of the examiner is reversed.
OTHER ISSUES
Upon the return of this application to the jurisdiction
of the examiner, the examiner and applicants should review the
admissions in the specification, the Rue and Cottringer
patents, and the Clark article to determine whether there is
any suggestion in the prior art as a whole to use glass-
ceramic bonding, for the advantages taught by Clark with
conventional alumina abrasives, with well known sol-gel
alumina abrasive grains that have vitreous bonding, disclosed
Appeal No. 1996-3472
Application 08/192,088
8
as superior to conventional alumina by Rue and Cottringer.
The examiner should also consider, in detail, the comparative
data presented by appellants on pages 12-18 of the
specification. Specifically, the examiner should determine if
the variable firing schedule recited in Table III on page 13
of the specification would affect the results presented in
Table IV on page 14 of the specification (see the sentence
bridging pages 8-9 of the specification) and if all of the
results for the example from Clark composition #4 are
truly unexpected (see the specification, pages 16 and Table
VII on page 18).
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 1996-3472
Application 08/192,088
9
)
)
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW/kis
Brian M. Kolkowski
NORTON COMPANY, I.P. Law Dept.
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Box No. 15008
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