Ex parte Dye et al.

Board of Patent Appeals and Interferences

Apr 30, 2001

08692310 (B.P.A.I. Apr. 30, 2001)

1
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not written for publication and is not binding precedent of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. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES L. DYE, AHMED S. ELLABOUDY and KUO-LIH TSAI
__________
Appeal No. 1998-2257
Application 08/692,310
___________
ON BRIEF
___________
Before OWENS, TIMM, and DELMENDO, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 32 and 37-39, which are all of the claims remaining in
the application.
THE INVENTION
The appellants’ claimed invention is directed toward an
AuZn, AuCu or ZnCu alloy made by reducing metal salts with an
Appeal No. 1998-2257
Application 08/692,310
1 McCormick is not prior art.
2
electride or alkalide reducing agent. Claim 32 is
illustrative:
32. An alloy of two or more metals as particles produced
by reducing two or more metal salts with a reducing agent
selected from the group consisting of an electride and an
alkalide alone in absence of an oxidizing atmosphere wherein
the alloys are selected from the group consisting of AuZn,
AuCu and ZnCu and the alloy is shown by an X-ray photoelectron
spectrum and by a scanning electron microscope as shown in
Figures 36 to 42.
THE REFERENCES
Ballas et al. (Ballas) 3,890,455 Jun. 17, 1975
Sinfelt et al. (Sinfelt) 3,989,674 Nov. 2, 1976
Dye et al. (Dye ‘180) 4,107,180 Aug. 15, 1978
Sedlak et al. (Sedlak) 4,294,608 Oct. 13, 1981
Goretta et al. (Goretta) 4,363,752 Dec. 14, 1982
Bushey 4,678,505 Jul. 7, 1987
Bogdanovic et al. (Bogdanovic) 4,713,110 Dec. 15, 1987
Nakajima et al. (Nakajima) 5,091,114 Feb. 25, 1992
(filed Aug. 18, 1989)
McCormick et al. (McCormick) 5,328,501 Jul. 12, 1994
(§ 102(e) date Aug. 19,
1991)1
James L. Dye (Dye article), “Macrocyclic chemistry in reducing
environments: From concentrated metal solutions to crystalline
electrides”, 61 Pure & Appl. Chem. 1555-62 (1989).
Melvyn Kilner et al. (Kilner), “A New Technique for the
Preparation of Metallic Magnetic Fluids from Metal Atoms”, J.
Chem. Soc., Chem. Commun. 356-57 (1987).
Appeal No. 1998-2257
Application 08/692,310
3
Reuben D. Rieke, (Rieke) “Preparation of Organometallic
Compounds from Highly Reactive Metal Powders”, 246 Science
1260-64 (1989).
THE REJECTIONS
Claims 32 and 37-39 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention. The claims
stand rejected under 35 U.S.C. § 103 as follows: claims 32 and
37-39 over Rieke in view of Dye ‘180 or the Dye article,
further in view of Kilner and Nakajima; claims 32 and 37 over
Ballas in view of Nakajima; claims 32 and 38 over Sinfelt in
view of Nakajima; claims 32 and 39 over Goretta in view of
Nakajima; claims 32 and 37-39 over Bogdanovic in view of
Sedlak and Nakajima; claims 32 and 37-39 over Bushy in view of
Nakajima; and claims 32 and 37-39 over McCormick in view of
Nakajima.
OPINION
We reverse the aforementioned rejections. We need to
address only claim 32.
Rejection under 35 U.S.C. § 112, second paragraph
Appeal No. 1998-2257
Application 08/692,310
2 Citations herein are to the examiner’s answer mailed on
March 11, 1998 (according to the file wrapper), paper no. 33.
4
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner argues that “[c]laim 32 is vague and
indefinite because the expression ‘as shown in Figures 36 to
42’ is indefinite because it does not set forth specially
[sic, specifically] which figure limits which alloy and does
not set forth specifically what characteristics of which
alloys are being shown, in fact Fig(C) shows characteristics
of ‘Au only’” (answer, page 4).2 The examiner, however, does
not explain why the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of
Appeal No. 1998-2257
Application 08/692,310
5
the appellants’ specification and the prior art, fails to set
out and circumscribe a particular area with a reasonable
degree of precision and particularity. The examiner’s mere
assertion that the figures do not set forth the alloy to which
they apply is not such an explanation. Moreover, the
descriptive titles of the figures which show that
figures 36(B) and 37-39 pertain to AuZn, figures 40 and 41
pertain to AuCu, and figure 42 pertains to ZnCu, indicate that
the examiner’s assertion is incorrect.
Accordingly, we reverse the rejection under 35 U.S.C.
§ 112, second paragraph.
Rejection under 35 U.S.C. § 103 over Rieke
in view of Dye ‘180 or the Dye article,
further in view of Kilner and Nakajima
The examiner argues (answer, pages 4-5) that Rieke
discloses producing finely divided powders by the reduction of
metal salts and that convenient systems of reducing agents and
solvents include potassium and tetrahydrofuran, sodium and
1,2-dimethoxyethane, and sodium or potassium with benzene or
toluene (page 1261), the Dye article discloses electrides as
reductants (page 1555), Dye ‘180 discloses alkali metal anion
Appeal No. 1998-2257
Application 08/692,310
6
salts of alkali metal cations of bicyclic polyoxadiamine
compounds as two-electron reducing agents (col. 6, lines 44-
48), and Kilner discloses the desirability of preparing small
metallic particles (page 356). The examiner argues that it
would have been obvious to one of ordinary skill in the art to
use an electride in an organic solvent as a reductant for the
production of metal powders because electrides are strong
reductants in organic solvents, and that Rieke, Dye ‘180 and
the Dye article would have suggested making alloys (answer,
page 5).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
The examiner does not explain why the prior art itself would
have fairly suggested, to one of ordinary skill in the art,
combining the teachings therein so as to arrive at the claimed
Appeal No. 1998-2257
Application 08/692,310
7
invention. Instead, the examiner relies upon impermissible
hindsight in view of the appellants’ disclosure to piece
together the teachings of the references so as to reach his
conclusion of obviousness. See W.L. Gore & Associates v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
The examiner argues that in a declaration by Dye (filed
February 5, 1996, paper no. 14), it is admitted that Rieke’s
method may produce some alloy (answer, page 6). Rieke does
not disclose the alloys recited in the appellants’ claim 32.
Even if, however, Rieke would have fairly suggested, to one of
ordinary skill in the art, using reagents which produce some
of an alloy recited in the appellants’ claim 32, the examiner
has
not established that Rieke’s method, which does not use an
electride or alkalide as a reducing agent, would produce an
alloy having characteristics shown in the appellants’ figures
Appeal No. 1998-2257
Application 08/692,310
8
36 to 42 as required by claim 32.
The examiner argues that it would have been obvious to
one of ordinary skill in the art to use Nakajima’s testing
method (col. 3, lines 27 and 66) to test the product which
would be produced by following the combined teachings of the
other applied references (answer, page 6). The appellants’
claim 32, however, does not recite a testing step but, rather,
recites, in the form of figures 36-42, alloy characteristics
which are measured by the recited techniques. It is these
characteristics which the prior art relied upon by the
examiner must possess or have fairly suggested to one of
ordinary skill in the art, and the examiner has not
established that the relied-upon prior art meets this
requirement.
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the claimed invention over Rieke in view of
Dye ‘180 or the Dye article, further in view of Kilner and
Nakajima. Consequently, we reverse the rejection over these
references.
Appeal No. 1998-2257
Application 08/692,310
3 Nakajima is relied upon only for a disclosure of a
testing method as discussed above.
9
Other rejections under 35 U.S.C. § 103
In the rejections over Ballas, Sinfelt, Goretta and
McCormick, each in view of Nakajima,3 the examiner points out
that Ballas (col. 2, line 62), Sinfelt (col. 1, line 59),
Goretta (col. 2, line 3) and McCormick (col. 5, line 3) each
discloses an alloy recited in claim 32, and argues that the
appellants’ recited alloys would have been suggested by the
references even if the alloys are made by a different process
(answer, pages 6-11). The examiner provides a similar
argument regarding alloys produced by the combined teachings
of Bogdanovic and Sedlak (answer, pages 7-8 and 11), and
alloys suggested by Bushey (col. 6, lines 66-68). Although
the examiner’s argument is that the applied references suggest
the claimed alloy (answer, pages 10-11), the examiner provides
no explanation as to why the references would have led one of
ordinary skill in the art to modify their teachings so as to
arrive at an alloy having characteristics according to the
appellants’ figures 36-42.
Appeal No. 1998-2257
Application 08/692,310
10
The appellants’ claim 32 is a product-by-process claim.
Whether a rejection of such a claim is under 35 U.S.C. § 102
or § 103, when the appellants’ product and that of the prior
art appear to be identical or substantially identical, the
burden shifts to the appellants to provide evidence that the
prior art product does not necessarily or inherently possess
the relied-upon characteristics of the appellant’s claimed
product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594,
596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745,
180 USPQ 324, 326 (CCPA 1974). The reason is that the Patent
and Trademark Office is not able to manufacture and compare
products. See Best, 562 F.2d at 1255, 195 USPQ at 434; In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). The
examiner, however, has provided no evidence or technical
reasoning which shows that the appellants’ alloys and any of
the prior art alloys appear to be identical or substantially
identical. The examiner apparently assumes that alloys
Appeal No. 1998-2257
Application 08/692,310
4 The rejection over McCormick further is improper because
this reference is not prior art.
11
inherently have the same characteristics regardless of how
they are made. When an examiner relies upon a theory of
inherency, however, “the examiner must provide a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior
art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Int. 1990). Inherency “may not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat.
App. & Int. 1986). The examiner has not provided such a basis
in fact and/or reasoning in support of his argument.4
For the above reasons we reverse the examiner’s
rejections over Ballas in view of Nakajima, Sinfelt in view of
Nakajima, Goretta in view of Nakajima, Bogdanovic in view of
Sedlak and Nakajima, Bushy in view of Nakajima, and McCormick
in view of Nakajima.
Appeal No. 1998-2257
Application 08/692,310
12
DECISION
The rejection of claims 32 and 37-39 under 35 U.S.C.
§ 112, second paragraph, and the rejections under 35 U.S.C.
§ 103 of claims 32 and 37-39 over Rieke in view of Dye ‘180 or
the Dye article, further in view of Kilner and Nakajima,
claims 32 and 37 over Ballas in view of Nakajima, claims 32
and 38 over Sinfelt in view of Nakajima, claims 32 and 39 over
Goretta in view of Nakajima, claims 32 and 37-39 over
Bogdanovic in view of Sedlak and Nakajima, claims 32 and 37-39
over Bushy in view of Nakajima, and claims 32 and 37-39 over
McCormick in view of Nakajima, are reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM )
Appeal No. 1998-2257
Application 08/692,310
13
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
TJO:pgg
Ian C. McLeod
2190 Commons Parkway
Okemos, MI 48864