Ex Parte Goela et al

Board of Patent Appeals and Interferences

Aug 23, 2010

10872746 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JITENDRA S. GOELA
and MICHAEL A. PICKERING
__________

Appeal 2009-007753
Application 10/872,746
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007753
Application 10/872,746

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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 11-20, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a method of making a
silicon carbide article. Claim 11, reproduced below, is illustrative.
11. A method of making a silicon carbide article comprising
reacting silicon carbide precursors in a nitrogen atmosphere of
at least 56% by volume of reactants and depositing the silicon
carbide on a substrate.

App. Br., Claims Appendix.2
The following Examiner’s rejections are before us on appeal:
(1) Claims 11 and 18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hirota.3
(2) Claims 12-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hirota.
(3) Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hirota and Verhaverbeke.4
B. ISSUE
The Examiner contends that Hirota describes the claimed method and
relies on column 13, lines 45-59 and column 14, lines 32-37 for support.
Ans. 3.5

2 Appeal Brief dated February 20, 2007.
3 US 6,334,335 B1 to Hirota et al., issued January 1, 2002.
4 US 2003/0045098 A1 to Verhaverbeke et al., published March 6, 2003.
5 Examiner’s Answer dated September 17, 2008.
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Application 10/872,746

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The Appellants contend that there is no disclosure in Hirota of making
silicon carbide in a nitrogen atmosphere. App. Br. 8.
Thus, the sole issue on appeal is:
Did the Examiner err in finding that Hirota describes a method of
making a silicon carbide article in a nitrogen atmosphere as recited in claim
1?
C. DISCUSSION
Referring to the portion of Hirota relied on by the Examiner, the
Appellants argue:
Hirota et al. teach that a press forming mold 39 (Figure 5) is
obtained by using a sintered silicon carbide blank 31 and
grinding it into the shape of a press forming mold. The blank is
further ground to a mirror finish and into a shape of a final glass
article. The sintered silicon carbide blank 31 is used to form
both the lower die 34 and the upper die 35 (Col. 13, lines 45-61
and Figures 1 and 5). There is no teaching that the sintering
process for forming the sintered silicon carbide blank 31 is
done in a nitrogen atmosphere.

Reply Br. 8.
The Appellants’ position is supported by the record. Indeed, the
portion of Hirota relied on by the Examiner as describing a nitrogen
atmosphere (i.e., col. 14, ll. 32-37) does not indicate that the sintered silicon
carbide blank 31 is formed in this atmosphere.
On this record, the Examiner does not explain why it would have been
obvious to one of ordinary skill in the art to make a silicon carbide article in
a nitrogen atmosphere as recited in claim 1. Likewise, the Examiner does
not explain why the teachings of Verhaverbeke cure the above-noted
deficiencies of Hirota. In this regard, we note that paragraph [0129] of
Verhaverbeke, which was relied on by the Examiner, discloses that a
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Application 10/872,746

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nitrogen containing gas enables the formation of silicon oxynitride films, not
silicon carbide as recited in claim 1. See App. Br. 11.
For the reasons set forth above, we are constrained to reverse the
§ 102(b) and § 103(a) rejections on appeal.
C. DECISION
The decision of the Examiner is reversed.

REVERSED

kmm

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