Ex Parte Garcia-Alonso et al

Board of Patent Appeals and Interferences

Mar 15, 2012

11815353 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/815,353 08/02/2007 Nuria Garcia-Alonso WAS0881PUSA 6713
22045 7590 03/16/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
03/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NURIA GARCIA-ALONSO, CHRISTOPH RUEDINGER, and HANS-
JUERGEN EBERLE
____________

Appeal 2010-009187
Application 11/815,353
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 10-24 under 35 U.S.C. § 112, first paragraph, written
description requirement, and under 35 U.S.C. § 103(a) as unpatentable over
Weigert (US 4,217,334, issued Aug. 12, 1980) in view of Hamster (US 4,536, 642,
issued Aug. 20, 1985) .2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Final Office Action mailed Jun. 16, 2009.
2 Appeal Brief filed Dec. 11, 2009 (“App. Br.”), 3; Examiner’s Answer mailed
Mar. 4, 2010 (“Ans.”), 4 (eliminating the optional reliance on LePage).

Appeal
Applica

“
(‘tetra’)
tempera
inventio
Brief:
1
tetrachl
containi
tempera
mixture
product
reaction
where A
product
2
the reac
line.
2
least sub

T
underly
process
Specific
2010-0091
tion 11/81
The claime
to trichlor
ture.” (Ap
n and are
0. An indu
orosilane w
ng reactan
ture of fro
, and cooli
mixture b
gases in t
= 4000, 6
gas remov
3. The pro
tor and co
4. The pro
stantially
he respect
ing dispute
.” Both th
ation (An
87
5,353
d inventio
osilane (‘s
p. Br. 9.)
reproduce
strial proc
ith hydro
t gas and a
m 700 to 1
ng the pro
eing coole
he heat ex
≤ B ≤ 50
ed via the
cess of cla
nnected to
cess of cla
the same a
ive positio
over the
e Examine
s. 5; App.
n is direct
itri’) by re
Claims 10
d below fr
ess for pro
gen, comp
hydrogen
500°C to
duct mixtu
d to a temp
changer τ[
, and 100°
heat exch
im 10, wh
a reaction
im 23, wh
s the temp
Claim I
ns of the E
scope and
r and App
Br. 5) and
2
ed to the c
action of t
, 23, and
om the Cla
ducing tri
rising reac
-containin
form a tric
re by mea
erature T
ms], wher
C≤ TCooling
anger is us
erein the h
zone in th
erein the t
erature of
nterpretat
xaminer a
meaning o
ellants agr
, therefore
onversion
etra with h
24 are repr
ims Appe
chlorosilan
ting a silic
g reactant
hlorosilan
ns of a he
cooling over
e
≤ 900°C,
ed to heat
eat exchan
e reactor b
emperatur
the reacti
ion
nd Appell
f the claim
ee this ter
, is not exp
of tetrach
ydrogen a
esentative
ndix to the
e by react
on tetrach
gas in a r
e-containi
at exchang
a residenc

and the en
the reacta
ger is loc
y means o
e of the he
on zone.
ants are b
term “ind
m does no
licitly def
lorosilane
t high
of the
Appeal
ion of
loride-
eactor at a
ng produc
er, the
e time of t
ergy of th
nt gases.
ated outsid
f a heated
ated line i
ased on an
ustrial
t appear in
ined there

t
he
e
e

s at

the
in.
Appeal 2010-009187
Application 11/815,353

3
However, Appellants contend “the specification is replete with terms which are
only applicable to commercial processes, such as ‘economic viability’ on page 2,
line 37, ‘large amounts’ on page 1, lines 10 - 11; ‘in industry’ on page 1, line 15,
‘product costs,’ and ‘improves energy balance’ on page 3, lines 16 - 26.” (App.
Br. 7.) Appellants thus contend one of ordinary skill in the art would have
understood the term “industrial” as referring to a “commercial process.” (App. Br.
5.)
The Examiner contends the Specification language relied upon by
Appellants “do[es] not give any indication to the scale of the claimed process.”
(Ans. 8.) The Examiner maintains one of ordinary skill would interpret an
industrial process as including laboratory scale processes which are “developed
within the industry.” (Id. at 8-9.)
Where the specification does not assign or suggest a particular definition to a
claim term, it is appropriate to consult a general dictionary definition of the word
for guidance in determining the ordinary and customary meaning of the claim term
as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc.,
596 F.3d 1343, 1348 (Fed. Cir. 2010).
The most applicable definition of the term “industrial” is: “Employed, required, or
used in industry.” The American Heritage® Dictionary of the English Language,
Houghton Mifflin, Boston, MA (2007),
http://www.credoreference.com/entry/hmdictenglang/industrial. “Industry” is
defined as: “Commercial production and sale of goods,” and “commercial” is
defined as: “Of, relating to, or being goods, often unrefined, produced and
distributed in large quantities for use by industry,” or “Of or relating to
commerce,” where “commerce” is: “The buying and selling of goods, especially
Appeal 2010-009187
Application 11/815,353

4
on a large scale.” The American Heritage® Dictionary of the English Language,
Houghton Mifflin, Boston, MA (2007),
http://www.credoreference.com/entry/hmdictenglang/industry, commercial, and
commerce.
Appellants’ proposed interpretation of the claim term “industrial process” as
meaning a commercial process is consistent with the dictionary definition of
“industrial” and the language used in the Specification in describing the
background and object of the invention (see supra p. 3). We interpret the claim
language as encompassing any scale of process which is capable of producing
trichlorosilane from tetrachlorosilane and hydrogen in sufficient quantities for use,
purchase, or sale by a business.
Rejection of claims 10-24 under 35 U.S.C. §112, first paragraph, written
description requirement

The Examiner contends there is insufficient support in the Specification for
the limitations “industrial process” in claim 10 and “the heated line is at least
substantially the same as the temperature of the reaction zone” in claim 24.
To satisfy the written description requirement, an “applicant must ‘convey
with reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention,’ and demonstrate that by disclosure in
the specification.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991)). “Whether an applicant has complied with the written
description requirement is a finding of fact, to be analyzed from the perspective of
one of ordinary skill in the art as of the date of the filing of the application.” In re
Alonso, 545 F.3d 1015, 1018 (Fed. Cir. 2008) (citations omitted). Cf. Brookhill-
Appeal 2010-009187
Application 11/815,353

5
Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (“The
words used in the claims are examined through the viewing glass of a person
skilled in the art.”) (citation omitted).
With respect to claim 10, the Examiner’s position is based on a finding that
the Specification “do[es] not give any indication [as] to the scale of the claimed
process” (Ans. 8), and that “even [a] laboratory scale process is developed within
the industry” (id. at 9). For the reasons discussed in our claim interpretation, we
find that one of ordinary skill in the art would have understood from the
Specification disclosure that Appellants were in possession of a commercial scale,
i.e., “industrial,” process.
With respect to claim 24, the Examiner maintains the term “at least” in claim
24 would include temperatures substantially higher than the temperature of the
reaction zone, while the Specification only provides support for temperatures
substantially the same as the temperature of the reaction zone. (Ans. 9.)
We agree with Appellants that the Specification clearly describes keeping
the temperature of the heated line at reaction temperature as a preferred
embodiment. (App. Br. 8 (citing Spec. 5:17-20).) Moreover, because claim 24
depends from claim 10, the temperature range for the heated line is not unlimited,
but must be within a range which allows the requirements of the claim 10 equation
to be satisfied, i.e., to allow a rapid cooling rate as described in the Specification
(see Spec. 4:4-15). Thus, the Examiner’s rejection appears to be based on an
overly broad interpretation of claim 24 as encompassing temperatures for the
heated line which are outside the constraints imposed by independent claim 10.
Appeal 2010-009187
Application 11/815,353

6
In sum, the Examiner’s findings are insufficient to support a rejection of
claims 10-24 under the written description requirement of 35 U.S.C. § 112, first
paragraph. Accordingly we do not sustain this ground of rejection.
Rejection of claims 10-24 under 35 U.S.C. §103(a)
Appellants advance several arguments in support of patentability of claims
10-24 as a group (App. Br. 9-16), as well as separate arguments in support of
patentability of each of claims 17, 19, and 22-24 (id. at 16-18). Appellants’
arguments fail to persuade us of reversible error in the Examiner’s obviousness
determination for the reasons explained in the Examiner’s Response to Argument
(Ans. 10-17). Accordingly, we sustain the rejection of claims 10-24 under 35
U.S.C. § 103(a) as unpatentable over Weigert in view of Hamster for the reasons
expressed in the Answer (Ans. 5-8 and 10-17). We add the following for
completeness.
Appellants’ principal contention in traversing the rejection under 35 U.S.C.
§103(a) is that the Weigert embodiment relied on by the Examiner relates to a
laboratory scale process, and that “Weigert does not teach or suggest the use of a
heat exchanger in an industrial process” as required by the appealed claims. (App.
Br. 13.) The Examiner maintains the “small reactor units” (see e.g. col. 2, l. 34)
used by Weigert in the relied-upon process description are not laboratory scale
units, but industrial scale apparatuses. (Ans. 11.) The Examiner’s position is
supported by Weigert’s disclosure in column 3, lines 7-10 which describe “FIG.1
[a]s a schematic representation of a plant” for the embodiment relied upon by the
Examiner. See plant, The American Heritage® Dictionary of the English
Language, Houghton Mifflin, Boston, MA (2007),
http://www.credoreference.com/entry/hmdictenglang/plant (“The equipment,
Appeal 2010-009187
Application 11/815,353

7
including machinery, tools, instruments, and fixtures and the buildings containing
them, necessary for an industrial or manufacturing operation.”).
We have considered Appellants’ argument that the Examiner applied an
overly broad interpretation of “a heated line” (claims 23 and 24) as encompassing a
line heated by the heat of a gas passing through it. (See Rep. 3 Br. 3.) However,
we find no basis for the narrow definition advanced by Appellants as limited to a
line heated by the application of external heat. (Id.) We find the remaining
arguments advanced by Appellants in the Reply Brief to be unconvincing of
reversible error, as these arguments either fail to address the facts and reasons
relied on by the Examiner, or are not supported by persuasive evidence of non-
obviousness. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument
by counsel cannot take the place of evidence).

We REVERSE the rejection of claims 10-24 under 35 U.S.C. §112, first
paragraph, written description requirement.
We AFFIRM the rejection of claims 10-24 and under 35 U.S.C. §103(a) as
unpatentable over Weigert in view of Hamster.
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).
AFFIRMED

sld

3 Reply Brief filed May 4, 2010.