Ex Parte Haidar

Board of Patent Appeals and Interferences

Dec 27, 2011

10560804 (B.P.A.I. Dec. 27, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/560,804 12/15/2005 Jawad Haidar CU-4560 BWH 7414
26530 7590 12/28/2011
LADAS & PARRY LLP
224 SOUTH MICHIGAN AVENUE
SUITE 1600
CHICAGO, IL 60604
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
12/28/2011 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 JAWAD HAIDAR
________________

Appeal 2011-006104
Application 10/560,804
Technology Center 1700

________________

Before FRED E. MCKELVEY, HUBERT C. LORIN, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2011-006104
Application No. 10/560,804

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The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellant’s claims 1-26, 31, 32, 36-40, 45, 52-55, and 62 (App. Br. 5.)
Appellant has cancelled claims 27-30, 33-35, 41-44, 46-51, 56-61, and 63.
(See App. Br. 18-23, Claims App’x.) The real party-in-interest is said to be
Commonwealth Scientific and Industrial Research Organization. (App. Br.
3). We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention is directed to methods of producing metal
compounds and alloys. (Spec., p. 1.)
The Examiner relied on two patent documents:
Number Date Abbreviation
US 5,397,375 issued March 14, 1995 O’Donnell
US 2004/0050208 A1 published March 18, 2004 Nie

The Examiner maintained the following rejections:
 Claims 1-7, 11-26, 31, 32, 36-40, 45, 52-55, and 62 under
35 U.S.C. § 103(a) over Nie (Ans. 3-6); and
 Claims 8-10 under 35 U.S.C. § 103(a) over Nie and
O’Donnell (Ans. 6.)
We do not reach the merits of the rejections under 35 U.S.C. § 103(a).
Instead, we enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph, of claims 1-26, 31-32, 45, 52-55, and 62.
We also dismiss without prejudice the appeal as to all claims on
appeal, specifically addressing concerns we have with respect to
Claims 36-40.
Analysis
Claim 1 recites [indentation and bracketed matter added]:
Appeal No. 2011-006104
Application No. 10/560,804

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A stepwise method of producing titanium-aluminium
compounds and/or titanium-aluminium alloys, comprising a
first step of:
[1] reducing an amount of titanium chloride (TiCl4) with
an amount of aluminium at a temperature to trigger reactions to
form titanium subchloride(s) and aluminium chloride (AlCl3)
products; and then
a second [optional] step of:
[2] mixing said products, with the addition of more
aluminium if required, and
[a third step of]
[3] heating the mixture in a reaction zone to a
temperature above 300C [3.1] to form AlCl3 in a gas phase, and
[3.2] to produce an end product in the reaction zone of the
titaniumaluminium compounds and/or titanium-aluminium
alloys.
(App. Br. 18, Claims App’x.)
Appellant admits that reducing TiCl4 with aluminum was known.
(See App. Br. 10-11, citing U.S. Patent No. 3,252,823 (“Johnson”) and
Gerdemann and Alman, “Titanium Aluminide powder production via
reaction between TiCl4 and Al,” Gama Titanium Aluminides 1999, ed. Kim,
et al., (1999) (“Gerdemann”), pp. 341-46, at 345 (“Clearly, it is possible to
make TiAl by reduction of TiCl4 by Al.”).)
Appellant argues, though, that the claimed invention differs from
Johnson and Gerdemann inter alia because
[t]he inventor has unexpectedly found that if the reaction
between TiCl4 and Al is separated into two parts, whereby the
heat generated in the first step is prevented from affecting the
reactions carried out in the second step, then the reduction of
TiCl4 with Al can be controlled, which allows for control of the
nature of the end products.

(App. Br. 12, italics added.)
Appeal No. 2011-006104
Application No. 10/560,804

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Thus, Appellant argues that the claimed method advances what was
known in the art by separating the reduction step and the heating step, to
prevent the reduction step from affecting the subsequent heating step.
Claim 1 recites, essentially, reducing TiCl4 with aluminum and
heating the products. There is no requirement that would prevent heat
generated in the first step from affecting the second step. Because Appellant
has told us in the Appeal Brief that the invention requires “prevented from
affecting” and further because that requirement is not claimed, we enter a
new rejection under 35 U.S.C. § 112, second paragraph, on the basis that
Appellant is not claiming what he regards as his invention. Cf. In re Prater,
415 F.2d 1393, 1404 (CCPA 1969) (inasmuch as claim 9 . . . reads on
subject matter which appellants do not regard as his invention, the claim
fails to comply with 35 U.S.C. § 112 which requires that “the specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention.”).
We therefore do not reach the merits of any § 103(a) rejections of the
claims. Cf. In re Wilson, 424 F2d 1382, 1385 (CCPA 1970) (“If no
reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious-the claim becomes indefinite.”);
In re Steele, 305 F.2d 859, 862 (CCPA 1962) (same).
Independent Claim 31 suffers the same fate as Claim 1 because it too
lacks a requirement for “preventing from affecting”.
Claims which depend directly or indirectly from Claims 1 and 31
likewise lack the necessary requirement.
Independent Claim 37 reads:
Appeal No. 2011-006104
Application No. 10/560,804

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A method for the production of vanadium and/or
vanadium compounds, comprising the steps of mixing
aluminum with a precursor material including vanadium
subhalide, and heating the mixture to form aluminum halides
and vanadium and/or vanadium compounds.

Independent Claim 39 is similar except that it calls for zirconium or
zirconium compounds in place of vanadium or vanadium compounds.
The Examiner rejected Claims 36-40 over Nie, grouping them with
dependent Claims 14-21. (Answer, page 5.) However, the Examiner does
not address Claims 36-40 apart from Claims 14-21 despite the difference
between (1) Claim 1 (from which Claims 14-21 depend) and (2) Claims 37
and 39.
Likewise, Appellant does not address the Examiner’s rejection of
independent Claims 37 and 39 or dependent Claim 38 and 40.
We decline in the first instance to undertake a § 103(a) analysis of
Claims 36-40 vis-à-vis the prior art.
The appeal from the § 103 rejections will be dismissed without
prejudice as to all claims on appeal, including Claims 36-40.
In the event of further prosecution, we recommend that the Examiner
address Claims 36-40 independently of the remaining claims and that
Appellant respond to the rejections.
ORDER

Upon consideration of the appeal and for the reasons given,
ORDERED that the appeal of the rejection of claims 1-7, 11-26, 31,
32, 36-40, 45, 52-55, and 62 under 35 U.S.C. § 103(a) over Nie is dismissed
without prejudice; and
Appeal No. 2011-006104
Application No. 10/560,804

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FURTHER ORDERD that the appeal of the rejection of claims 8-10
under 35 U.S.C. § 103(a) over Nie and O’Donnell is dismissed without
prejudice.
FURTHER ORDERED that we enter a new ground of rejection of
claims 1-26, 31, 32, 45, 52-55, and 62 under 35 U.S.C. § 112, second
paragraph, for reasons set forth herein. 37 C.F.R. § 41.50(b).
FURTHER ORDERED that 37 C.F.R. § 41.50(b) provides that, “[a]
new grounds of rejection pursuant to this paragraph shall not be considered
final for judicial review.”
FURTHER ORDERED that 37 C.F.R. § 41.50(b) also provides that
the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of proceedings as to the
rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner …
(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52 by
the Board upon the same record.

DISMISSED WITHOUT PREJUDICE
NEW GROUNDS ENTERED 37 C.F.R. § 41.50(b)