10244010 (B.P.A.I. Nov. 29, 2011)

Ex Parte Irie et al

Board of Patent Appeals and InterferencesNov 29, 2011

10244010 (B.P.A.I. Nov. 29, 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. 10/244,010 09/16/2002 Kazuyoshi Irie 503.36712PX2 5882 20457 7590 11/30/2011 ANTONELLI, TERRY, STOUT & KRAUS, LLP 1300 NORTH SEVENTEENTH STREET SUITE 1800 ARLINGTON, VA 22209-3873 EXAMINER NGUYEN, NGOC YEN M ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 11/30/2011 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 KAZUYOSHI IRIE, TOSHIHIRO MORI, HISAO YOKOYAMA, TAKAYUKI TOMIYAMA, TOSHIHIDE TAKANO, SHIN TAMATA, and SHUICHI KANNO __________ Appeal 2011-000929 Application 10/244,010 Technology Center 1700 ____________ Before CHARLES F. WARREN, CATHERINE Q. TIMM, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000929 Application 10/244,010 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-4, 6-10, 27, 28, and 33-40. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). An oral hearing was held in this appeal on November 10, 2011. We REVERSE. Appellants’ invention is said to be directed to a method of processing perfluorocarbon using a catalyst (Spec. 6:2-3). Claim 1 is illustrative: 1. A method of processing a perfluoride compound, comprising the steps of: removing SiF4 from an exhaust gas containing a perfluoride compound and the SiF4 by contacting the exhaust gas with water, heating the exhaust gas containing the perfluoride compound, and at least one of water and steam added after removal of the SiF4 , after removing the SiF4, supplying said heated exhaust gas and at least one of water and steam to a catalyst layer filled with a catalyst which is able to decompose the perfluoride compound contained in the exhaust gas upon contact with the catalyst, cooling to 100ºC or lower, by water, the exhaust gas containing decomposed gas generated by the decomposition of the perfluoride compound, which is exhausted from said catalyst layer, in a cooling apparatus arranged at a portion below said catalyst layer, and releasing the cooled exhaust gas, wherein the cooling step is performed under a condition that the exhaust gas is kept at a negative pressure. Appeal 2011-000929 Application 10/244,010 3 Appellants appeal the following rejections: 1. Claims 1-4, 6-10, 27, 28, and 33-40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rossin (US 6,069,291 issued May 30, 2000) in view of Tom (US 6,030,591 issued Feb. 29, 2000), Seppänen (US 5,674,797 issued Oct. 7, 1997), Lienau (US 3,852,430 issued Dec. 3, 1974) and optionally in view of Suggitt (US 4,468,376 issued Aug. 28, 1984). 2. Claims 1-4, 6-10, 27, 28, and 33-40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rossin in view of Imamura (US 5,649,985 issued July 22, 1997), Tom, Lienau, Seppänen and optionally in view of Suggitt. Appellants argue that the prior art does not teach the use of an apparatus including a casing having the catalyst layer and having the heater, the catalyst layer being arranged detachably in the casing required by claims 27 and 36 (App. Br. 14). Appellants contend that the particular apparatus structure is important and must be considered because it provides efficiencies in preforming the process and saves valuable space (id. at 30). Appellants maintain that the art does not teach recycling the cooling water used to cool the exhaust gas for use in removing SiF4 as required by claims 35 and 36 (id. at 15). Appellants further argue that the Examiner failed to consider the feature of claims 1, 27, 35 and 36 which requires the cooling apparatus to be arranged at a portion below the catalyst layer (id. at 30). Appeal 2011-000929 Application 10/244,010 4 DISPOSITIVE ISSUE Did the Examiner reversibly err in failing to address the apparatus limitations in claims 1, 27, 35 and 36 that are used in practicing the claimed method? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Appellants’ arguments regarding the structure of the apparatus recited in the method claims 1, 27, 35, and 36 are persuasive. The Examiner’s failure to give patentable weight to the relationship of the catalyst in the casing, the heater and the flow of the exhaust gas through the device and the position of the cooling apparatus constitutes reversible error (Ans. 5). The Examiner relies on In re Tarczy-Hornoch, 397 F.2d 856 (CCPA 1968) for the proposition that “[f]or the apparatus limitations in the process claims, apparatus limitation would not render the patentably difference for the claimed process unless the process itself is different of some unexpected results” (Ans. 5). The Examiner further indicates that various structural requirements of the claims are “not seen as a patentable difference” because the same function would still be performed regardless of where the structures are located (id.). Our review of Tarczy-Hornoch does not support the Examiner’s position. Tarczy-Hornoch concerned a rejection made, under no particular statutory basis, on the grounds that a method claim was unpatentable because it merely defined the function of the appellant’s apparatus. Id., at 856. The case does not stand for the proposition that apparatus limitations recited in method claims are not given weight. There were no apparatus limitations at issue in the method claim central to the appeal of Tarczy- Appeal 2011-000929 Application 10/244,010 5 Hornoch. Rather, the court in Tarczy-Hornoch overruled previous case law and held that process claims, otherwise patentable, should not be rejected merely because the application of which they are part discloses apparatus which will inherently carry out the recited steps. Tarczy-Hornoch, 397 F.2d at 857. See also, Manual of Patent Examining Procedure (MPEP) § 2173.05(v) (Rev. 6, Sept. 2007). In our view the method claims 1, 27, 35, and 36 as argued by Appellants recite structure that is tied to and permits the claimed method to be practiced. Accordingly, we do not see any reason for not giving patentable weight to these argued features as part of practicing the claimed methods. Because the Examiner has not dispensed with the burden of establishing a prima facie case of obviousness where all the features of the claims are taught or suggested by the prior art, we are constrained to reverse the Examiner’s § 103 rejections (1) and (2). DECISION The Examiner’s decision is reversed. ORDER REVERSED bar