Ex Parte Dwivedi

Board of Patent Appeals and Interferences

Apr 30, 2008

10883896 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RATNESH K. DWIVEDI
____________

Appeal 2008-1117
Application 10/883,896
Technology Center 1700
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Decided: April 30, 2008
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Before CHARLES F. WARREN, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of

claims 11 and 12. We have jurisdiction under 35 U.S.C. § 6.1

1 An Oral Hearing took place on April 08, 2008.
Appeal 2008-1117
Application 10/883,896

Appellants’ invention relates to a method of isolating device regions.
(Specification 1). Representative claim 11 appears below:
11. A microporous metal part formed from sintered metal powder and
having uniformly distributed closed interior pores with a diameter less
than 1000 microns and a dense surface skin.

The Examiner relies on the following reference in rejecting the
appealed subject matter:
Lindstein 5,972,284 Oct. 26, 1999
The following rejections are presented for review:
I. Claim 11 is rejected under 35 U.S.C. § 102(b) as anticipated by
Lindsten.
II. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lindsten.
We AFFIRM.
Claim 11 is rejected under 35 U.S.C. § 102(b) as anticipated by
Lindsten.
The issue before us is whether Appellant has shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 102(b). The issue turns on
whether the Examiner has established a reasonable belief that the property or
characteristic recited in the claims would have been inherent to the product,
and whether the Appellant has adequately rebutted the Examiner's position
by showing that the characteristic or property is not possessed in the cited
reference. Specifically, the issue is whether the Examiner has shown that
Lindsten describes a microporous metal part having uniformly distributed
closed interior pores with a diameter less than 1000 microns and a dense
surface skin and, if so, whether Appellant has established that the resulting
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product of Lindsten does not possess the recited characteristics. We answer
the first question in the affirmative and the second question in the negative.
To properly address the issue before us, we must analyze the claim
language to determine the scope and meaning of each contested limitation.
See Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). During
prosecution before the Examiner, claim terms are given their broadest
reasonable meaning in their ordinary usage as they would be understood by
one of ordinary skill in the art, taking into account any definitions or
enlightenment contained in the written description of Appellant’s
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
“[T]he specification ‘is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc). The Specification discloses:
The present invention provides a process for producing metal
parts with uniformly distributed porosity of small size and good
surface finish. In the present process, a metal injection molding
(MIM) feedstock is processed to produce a “green part”
containing uniformly distributed porosity under 1000 microns
in size, and preferably in the range between 10 and 100 microns
in size. Once the green part having the porous structure has
been formed, the binder is removed by conventional
debindering procedures, and the porous green part is sintered.
During the sintering process, the interstitial porosity, that is the
porosity between the metal powder particles, is eliminated,
leaving behind the uniformly distributed porosity, generally
closed, that was produced by the gas during the molding
process. The metal parts formed by the present process have a
dense, generally pore-free surface. The process can also be
used to extrude microporous metal structures. (Spec. 3-4).

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Application 10/883,896

Applying the preceding legal principles, we determine that claim 11
on appeal is directed to a microporous metal part having a dense surface
skin. As can be seen from the above description of the invention, the dense
surface skin does not exclude the presence of pores. This portion of the
Specification also reveals that the uniformly distributed porosity of the metal
part is obtained by injection molding a metal feedstock material to form a
green part that is subsequently sintered. This interpretation of the claim
language in question is consistent with the requirement that the claims of an
application are given the broadest reasonable interpretation consistent with
the Specification as they would be construed by one of ordinary skill in the
art. See In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
Where the Examiner establishes a reasonable belief that the property
or characteristic recited in the claim would have been inherent to the prior
art product or process, the burden of proof shifts to Appellant to show that
this characteristic or property is not possessed by the prior art. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990).
The Examiner has carried the burden of making out a prima facie case
of anticipation in the first instance by pointing out where each and every
element of the claimed invention, arranged as required by the claim, is
described identically in the reference, either expressly or under the principles
of inherency. We agree with the Examiner’s description of the embodiments
of the Lindsten reference that describe the formation of a microporous metal
part formed from sintered metal powder by forming a green body that has
closed interior pores with a diameter less than 1000 microns and a dense
surface skin. Lindsten discloses the solid porous body can be formed by
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injection molding techniques to form green bodies. (Col. 5, ll. 22-46). The
green bodies produced are dried to remove water and treated for removal of
the protein and optional other organic substances. Suitable removal
techniques include heating at 500oC to 600oC in a separate step or from the
heating during an early part of the final sintering process. (Col. 5, ll. 51-60).
Lindsten discloses the final porosity can be controlled within desired ranges
and size of the pores can vary from 20 to 1000 µm. (Col. 4, ll. 56-65).
According to Appellant’s Specification, cited above, these processing
conditions result in a dense surface skin. Appellant has not directed us to
evidence that the microporous metal part of Lindsten formed by a process
comprising injection molding the feedstock to produce a green body that is
subsequently heat-treated followed by sintering to form the final product
does not possess the argued characteristics of the resulting product. It
appears that the Appellant is doing no more than what Lindsten discloses.
That is, Lindsten describes the formation of a microporous metal part
formed from sintered metal powder and having closed interior pores with a
diameter less than 1000 microns and a dense surface skin. The mere
recitation of a property or characteristic not disclosed by the prior art does
not necessarily confer patentability to a composition or a method of using
that composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
Appellant’s arguments (App. Br. 9-11; Reply Br. 4-5) regarding the
characteristics of the “surface skin” of the microporous metal part of
Lindsten and the Examiner’s interpretation of the term “uniform” are not
persuasive.2 The techniques disclosed by Appellant to be suitable for

2 In the claimed invention the term “uniformly” refers to the
distribution of the pores, not to the pore size.
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forming the claimed product are utilized by Lindsten in forming the
described microporous metal part. That is, Lindsten, like the claimed
invention, discloses the solid microporous body is formed by injection
molding techniques to form a green body that is subsequently subjected to
sintering that reasonably appears to result in “dense surface skin”. As stated
above, Appellant has not directed us to evidence that the microporous metal
part of Lindsten formed by these processing conditions does not possess the
argued characteristics of the resulting product.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lindsten.
We summarily affirm this rejection advanced by the Examiner
because Appellant has neither requested review of this ground of rejection
nor addressed the merits of this rejection in the Briefs (Briefs in their
entirety). See 37 C.F.R, §§ 41.37(c)(1)(vi) and (vii); Manual of Patent
Examining Procedure § 1205.02.
Appellant contends that the declaration of Ratnesh K. Dwivedi, signed
04 January 2006, further explains why Lindsten’s teaching could not
inherently produce the claimed part. (App. Br. 12-13).
Although factual evidence is preferable to opinion testimony,
such testimony is entitled to consideration and some weight so long as
the opinion is not on the ultimate legal conclusion at issue. While an
opinion as to a legal conclusion is not entitled to any weight, the
underlying basis for the opinion may be persuasive. In re Chilowsky,
306 F.2d 908, 916 (CCPA 1962); In re Lindell, 385 F.2d 453, 456
(Although an affiant’s or declarant’s opinion on the ultimate legal
issue is not evidence in the case, “some weight ought to be given to a
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persuasively supported statement of one skilled in the art on what was
not obvious to him.” (emphasis omitted)).
The Declaration of Ratnesh K. Dwivedi, executed 04 January 2006, is
not persuasive. The Declarant indicates that “I would expect the foamed
porous bodies formed by the process disclosed in the cited reference to have
non-uniform interior pores.” (Declaration ¶ 9). The Declarant indicates that
Example 3 of the cited reference was utilized in developing the stated
opinion (Declaration ¶ 10). The Declarant’s opinion appears to be based
solely upon this evidence. However, the Declarant does not affirmatively
provide an opinion regarding the injection molding techniques described in
Lindsten. The Declarant also does not indicate that a person of skill in the
art would not have recognized that the injection molding techniques
described in Lindsten would have produced uniformly distributed porosity of
the metal part produced.
ORDER
The rejections of claim 11 under 35 U.S.C. § 102(b) and of claim 12
under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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