Ex Parte Fahrenbruck et al

Patent Trial and Appeal Board

Sep 17, 2018

13246180 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/246, 180 09/27/2011
24222 7590 09/19/2018
Maine Cernota & Rardin
547 Amherst Street
3rd Floor
Nashua, NH 03063
FIRST NAMED INVENTOR
Scott Fahrenbruck
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
GT020-US 9817
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
09/19/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@mcr-ip.com
dwitmer@mcr-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT FAHRENBRUCK and BRUCE HAZEL TINE
Appeal 2017-011075
Application 13/246, 180
Technology Center 1700
Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 13-20, 22, and 23. 3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In this Decision, we refer to the Specification filed September 27, 2011
("Spec."), the Final Office Action dated July 18, 2016 ("Final Act."), the
Appeal Brief filed February 15, 2017 ("Appeal Br."), the Examiner's
Answer dated June 27, 2017 ("Ans."), and the Reply Brief filed August 28,
2017 ("Reply Br.").
2 Appellants identify the real party in interest as GTAT Corporation. Appeal
Br. 3.
3 Claims 24--26 were canceled in an Amendment After Final filed
February 14, 2017, which was entered by the Examiner in the Advisory
Action dated March 2, 2017.
Appeal2017-011075
Application 13/246, 180
The subject matter of the claims on appeal relates to methods for
preparing trichlorosilane using a heater. Spec. 3, 11. 1-8. Claims 13 and 19,
reproduced below from the Claims Appendix of the Appeal Brief, are
illustrative of the claims on appeal.
13. A method of preparing trichlorosilane, comprising:
introducing a reactant stream comprising silicon
tetrachloride into an inlet of a heater having:
a pressure shell enclosing a heating chamber;
a heat shield disposed within the heating chamber;
a heating element disposed within an interior
volume of the heat shield; and
a spacer disposed within an interior volume of the
heating element, said spacer being configured to require
all gas flowing within the interior volume of the heat
shield to flow through an annular heating region
defined between an outermost surface of the spacer and
an inner surface of the heat shield;
causing at least a portion of said reactant stream to flow
through the annular heating region , thereby bringing said
reactant stream into direct physical contact with the heating
element;
passing electrical current through the heating element,
thereby heating the reactant stream to a target reactant stream
temperature;
introducing the heated reactant stream into a reactor from
an outlet of the heater; and
converting at least a portion of the silicon tetrachloride
into trichlorosilane within the reactor.
2
Appeal2017-011075
Application 13/246, 180
19. A method of facilitating trichlorosilane production,
compnsmg:
introducing a reactant stream containing at least one of
silicon tetrachloride and hydrogen into an inlet of a heater
having:
a pressure shell enclosing a heating chamber;
a heat shield shaped as an open-ended cylinder,
said cylindrical heat shield being disposed within the
heating chamber and concentric therewith;
at least one heating element shaped as an open-
ended cylinder, said cylindrical heating element being
disposed within an interior volume of the cylindrical heat
shield and concentric therewith; and
a spacer shaped as a closed-ended cylinder, said
spacer being disposed within an interior volume of the
cylindrical heating element;
causing at least a portion of said reactant stream to flow
through an annular heating region defined by said cylindrical
heat shield and said spacer, thereby bringing the reactant stream
into direct physical contact with the cylindrical heating element;
and
directing said reactant stream through an outlet of the
heater and into an inlet of any of a hydrochlorination reactor
and a hydrogenation reactor.
Spec. 24, 25 ( emphasis added to highlight key disputed limitations).
3
Appeal2017-011075
Application 13/246, 180
REJECTIONS 4
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 13-20, 22, and 23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 2);
Rejection 2: Claims 13, 16, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Hamster et al. (US 4,536,642, issued August 20, 1985)
("Hamster") (Ans. 4);
Rejection 3: Claims 14 and 16-18 under 35 U.S.C. § 103(a) over
Hamster in view of Burgie et al. (US 5,422,088, issued June 6, 1995)
("Burgie"), alone or further in view of the admitted prior art ("AP A") at
pages 1-2 of the Specification (Ans. 6, 9); and
Rejection 4: Claims 13, 15, and 22 under 35 U.S.C. § 103(a) over
Hamster in view of the AP A (Ans. 8).
DISCUSSION
Rejection 1- Claims 13-18 and 22
The Examiner finds that there is not sufficient support in the
Specification, as originally filed, for the limitation "said spacer being
configured to require all gas flowing within the interior volume of the heat
shield to flow through an annular heating region defined between an
4 The rejection of claims 22 and 23 under 35 U.S.C. § 112, first paragraph
regarding support for the recitation "the reactant stream flows from the inlet
to the outlet through a channel that does not reverse its direction," the
rejection of claims 13-18, 22, and 24--26 under 35 U.S.C. § 112, second
paragraph, and the rejection of claim 26 under 35 U.S.C. § 103(a) over
Hamster alone, or further in view of the AP A have been withdrawn by the
Examiner. Ans. 10.
4
Appeal2017-011075
Application 13/246, 180
outermost surface of the spacer and an inner surface of the heat shield," in
claim 13. Final Act. 2. The Examiner acknowledges that Appellants'
Specification discloses "a first or to be heated stream directed to flow within
a first region that includes at least a portion, typically all, of the heating
surfaces of heating element 130" (Spec. 7, 11. 26-27), but contends that
because Appellants' Specification also discloses that the inlet stream "can
further comprise one or more second or barrier streams, any one or more of
such is typically directed to flow in a barrier region that is an annular
volume C that is at least partially defined between an interior surface of shell
100 and shield 120" (Spec. 8, 11. 2-5), "there is no sufficient support for 'all
gas' that [is] flowing within the interior volume of the heat shield must flow
through an annular heating region defined between an outermost surface of
the spacer and an inner surface of the heat shield." Final Act. 3.
Appellants note that in addition to disclosing that the inlet stream can
comprise a first or to be heated stream directed to flow within a first region
that includes heating surfaces ofheating element 130 (Spec. 7, 11. 25-27),
the Specification also discloses that, "the first or heating region can be an
annular volume H that is at least partially defined by, and is typically within,
heat shield 120 and, where utilized, spacer 140" (Spec. 7, 1. 28- 8, 1. 1), as
depicted in Figure 2 of Appellants' application, reproduced below.
5
Appeal2017-011075
Application 13/246, 180
FiG. 2
Figure 2 depicts a cross-sectional view along line 2-2 of Appellants'
heater depicted in Figure 1.
Appellants argue that Figures 1 and 2, of their application, and the
corresponding disclosure at pages 7-8 of the Specification conveys with
reasonable clarity to one of ordinary skill in the art a spacer "being
configured to require all gas flowing within the interior volume of the heat
shield to flow through an annular heating region defined between an
outermost surface of the spacer and an inner surface of the heat shield," as
recited in claim 13. Appeal Br. 11.
"[T]he test for [ compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Although the Specification
does not contain the limitations of the claims in haec verba, we find that
Appellants' Specification provides adequate written description for the
subject matter of independent claim 13 as of the application filing date.
Ariad, 598 F.3d at 1352 (there is no requirement "that the specification
6
Appeal2017-011075
Application 13/246, 180
recite the claimed invention in haec verba."). Accordingly, we do not
sustain the § 112, first paragraph, rejection of claims 13-18 and 22.
Rejection 1- Claims 19 and 23
The Examiner finds that there is not sufficient support in the
Specification for the limitations "a heat shield shaped as an open-ended
cylinder," "at least one heating element shaped as an open-ended cylinder,"
and "a spacer shaped as a closed-ended cylinder," as recited in claim 19.
Final Act. 3.
Appellants argue, and the Examiner agrees, that Figures 3 and 4 of the
application show that the heating element is an "open-ended cylinder."
Appeal Br. 15; Ans. 19 ("Fig. 3 and Fig. 4 show that at least one end of the
heating element is open-ended."). Thus, there is no dispute that there is
adequate written description in Appellants' Specification for a heating
element shaped as an "open-ended cylinder."
With regard to the heat shield, Appellants argue that "[i]f the heat
shield were close-ended, then gas could not flow through region H, because
region H lies within the heat shield[,]" and thus, "the heat shield must be
open-ended." Appeal Br. 15.
Because Appellants' argument appears to be reasonable, and the
Examiner does not respond to Appellants' argument in the Answer
(Ans. 19), on this record, we agree with Appellants that the Specification
provides adequate written description support for a heat shield shaped as "an
open-ended cylinder."
With regard to the spacer, Appellants argue that in the embodiments
depicted in Figures 1 and 2, and described in the corresponding disclosure in
the Specification, the spacer is configured to exclude the reactant stream
7
Appeal2017-011075
Application 13/246, 180
from its interior so that the "to be heated" reactant stream is forced to flow
near the heater in the region Hof Figure 2. Appeal Br. 15; Spec. 7, 1. 25 - 8,
1. 1. Further, Appellants contend that Figure 1 of the application shows
vertical lines terminating the spacer at each end. Appeal Br. 15.
The Examiner responds that there is not a sufficient showing in any of
the Figures for the "closed-ended cylinder." Ans. 19. Appellants, however,
have the better position given that Figure 1 clearly depicts a vertical line
terminating at least one end, and arguably both ends of the spacer. We note
that claim 19 does not require that the spacer is closed at both ends.
In view of the foregoing, we do not sustain the§ 112, first paragraph,
rejection of claims 19 and 23.
Rejection 2 - Claims 13, 16, and 22
The dispositive issue with regard to Rejection 2 is whether the
Examiner reversibly erred in finding that Hamster discloses or teaches "a
spacer disposed within an interior volume of the heating element," the
spacer "being configured to require all gas flowing within the interior
volume of the heat shield to flow through an annular hearing region defined
between an outermost surface of the spacer and an inner surface of the heat
shield," a limitation that appears in independent claim 13.
We answer this question in the negative, based on the findings of fact,
and rebuttals to arguments well expressed by the Examiner in the Final
Office Action and the Answer. We add the following.
The Examiner finds that Hamster's Figure 4, reproduced below,
teaches a heating device that includes housing 1, heat insulating material 2
( corresponding to claim 13 's "heat shield"), and graphite tube 21
8
Appeal2017-011075
Application 13/246, 180
( corresponding to claim 13 's "spacer") that divides the space within the heat
exchanger into different portions. Final Act. 6.
Figure 4 depicts a cross-sectional view of an embodiment of
Hamster's heating device.
The Examiner finds that Hamster's reactant stream (as shown by the
arrows) flows around the spacers (graphite tubes 21 ), not through the interior
of the spacers. Final Act. 6-7. The Examiner further finds that in Hamster's
Figure 4, the entire gas stream that is flowing within the interior volume of
heat shield 2, having an inner covering of graphite foil 3, is passed through
the annular heating region defined between the outermost surface of the
spacer and an inner surface of the heat shield, i.e., between the walls of
9
Appeal2017-011075
Application 13/246, 180
central graphite tube 21 ("spacer") and inner covering graphite foil 3 (the
"inner surface of the heat shield."). Id. at 7.
Appellants argue that although the gas in Hamster is all flowing
within the interior of the heat shield, it is not flowing through the annular
space between elements 16 and 21. Appeal Br. 19. Accordingly, Appellants
contend that Hamster fails to teach claim 13 's spacer. Id.
The Examiner responds, and we agree, that claim 13 only requires that
all gas "flow through an annular heat region" at one point in time, but not "at
any given moment" or "at that same moment." Ans. 20. In other words,
claim 13 does not exclude the flow of "all gas" through some other regions
after flowing through the annular heating region. Thus, a preponderance of
the evidence supports the Examiner finding that Hamster's Figure 4 teaches
all gas flowing within the interior volume of the heat shield flows through an
annular heating region defined between the outermost surface of tube 21
("spacer") and the inner surface of inner covering graphite foil 3 (the "inner
surface of the heat shield."). Final Act. 7.
Appellants' argument in the Reply Brief that Hamster's tube 21 is a
divider, not a spacer, because "the amount of space that is 'maintained,' i.e.,
occupied by the walls themselves, is not significant" is not well-taken.
Reply Br. 7. Appellants admit that the term "spacer," as used in the
Specification and claims is consistent with the dictionary definition provided
by the Examiner-"a piece of material used to create or maintain a space
between two things." Ans. 18 (http://www.dictionary.com/browse/spacer).
Thus, by definition, a piece of material is a spacer as long as it creates or
maintains any amount of space between two things. Moreover, just because
the amount of space occupied by the walls of Hamster's graphite tube 21
10
Appeal2017-011075
Application 13/246, 180
may be shown as "small" in Hamster's Figure 4, does not mean that the
spaced maintained is "not significant." Further, because Hamster does not
indicate that the drawings are to scale or give any dimensions for the
elements in Figure 4, Appellants reliance on Hamster's Figure 4 for the
particular size of graphite tube 21 is improper. Hockerson-Halberstadt, Inc.
v. Avia Group Int'!, Inc., 222 F.3d 951,956 (Fed. Cir. 2000) ("[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.").
Because we are not persuaded that Appellants have identified a
reversible error in the Examiner's finding that Hamster discloses or teaches
claim 13 's spacer, we sustain the rejection of claims 13, 16, and 22.
Re} ections 3 and 4
Appellants' only argument with respect to Rejections 3 and 4 is that
Burgie, the admitted prior art, and the combination of the two fail to
overcome the deficiencies of Hamster identified in regard to Rejection 2.
See Appeal Br. 21-22. As discussed above, we do not agree that such
deficiencies exist. Accordingly, we sustain the§ 103(a) rejections of
claims 14 and 16-18 over Hamster in view of Burgie, alone or in view of the
admitted prior art, and the§ 103(a) rejection of claims 13, 15, and 22 over
Hamster in view of the admitted prior art.
DECISION
The rejection of claims 13-20, 22, and 23 under 35 U.S.C. § 112, first
paragraph, is reversed.
11
Appeal2017-011075
Application 13/246, 180
The rejection of claims 13, 16, and 22 under 35 U.S.C. § 103(a) over
Hamster is affirmed.
The rejection of claims 14 and 16-18 under 35 U.S.C. § 103(a) over
Hamster in view of Burgie, alone or further in view of the AP A is affirmed.
The rejection of claims 13, 15, and 22 under 35 U.S.C. § 103(a) over
Hamster in view of the AP A is 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).
AFFIRMED-IN-PART
12