Ex Parte Johansen et alDownload PDFPatent Trial and Appeal BoardMay 14, 201813574101 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/574, 101 08/28/2012 Johan Arnold Johansen 20311 7590 05/16/2018 LUCAS & MERCANTI, LLP 30 BROAD STREET 21st FLOOR NEW YORK, NY 10004 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. E-1110 2801 EXAMINER RUMP, RICHARD M ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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): info@lmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHAN ARNOLD JOHANSEN, STEN YNGVE LARSEN, and HERMANN GRAN 1 Appeal2017-006798 Application 13/574,101 Technology Center 1700 Before TERRY J. OWENS, DONNA M. PRAISS, and A VEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 2 Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify the real party in interest as Elkem Carbon AS, the assignee of the above-captioned application. Appeal Br. 2. 2 In our Decision we refer to the Specification filed July 19, 2012 ("Spec."), the Final Office Action appealed from dated September 4, 2015 ("Final Act."), the Appeal Brief filed March 7, 2016 ("Appeal Br."), and the Examiner's Answer dated August 1, 2016 ("Ans."). Appeal2017-006798 Application 13/574,101 STATEMENT OF THE CASE The subject matter on appeal relates to a method for the production of graphite bodies prepared from electric calcined coke particles that avoids the use of conventional inhibitors to prevent nitrogen and sulfur puffing. Spec. 2. The "obtained graphite bodies hav[e] a high density, low open porosity and air permeability compared to conventional[] graphite bodies." Id. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Method for production of graphite bodies, comprising: selecting electric calcined coke particles calcined in an electric calcining furnace at a non-uniform temperature between 1200 and 3000°C; the selected electric calcined coke particles comprising individual coke particles vary from each other in sulfur content and in nitrogen content, the varying content of sulfur of the individual coke particles varying between 0 and 1.5% by weight, the varying content of nitrogen of the individual coke particles varying between 0 and 1.5% by weight; forming a mixture from the selected electric calcined coke particles, the mixture having an average sulfur content less than 0.6% by weight and an average nitrogen content of less than 0.6% by weight; forming carbon bodies from the mixture of the selected electric calcined coke particles and a binder; baking the carbon bodies at a temperature between 700 and 1400°C; and graphitizing the baked carbon bodies at a temperature above 2300°C. Appeal Br. 10 (Claims App'x). REJECTIONS The Examiner maintains the following rejections: 2 Appeal2017-006798 Application 13/574,101 A. Claims 1--4 and 6-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Greenhalgh3 in view of Johansen. 4 Final Act. 4. B. Claim 5 stands rejected under 35 U.S.C § 103(a) as unpatentable over Greenhalgh and Johansen in further view of Tucker. 5 Id. at 7. Appellants seek our review of Rejections A and B. Appeal Br. 3. Because the basis for our reversal is common to all pending claims, we limit our discussion below to claim 1 (Rejection A). OPINION The Examiner rejects claim 1 as obvious over Greenhalgh and Johansen. Final Act. 4. The Examiner finds that Greenhalgh describes a method of producing graphite bodies comprising the recited steps, but that "Greenhalgh [sic] is silent to the nitrogen and sulfur content ... [and] Greenhalgh does not disclose electric calcination." Id. at 4--5. However, the Examiner finds that Greenhalgh does teach that the presence of sulfur and nitrogen causes an undesired reduction in density. Id. at 5. The Examiner also finds that Johansen teaches electric calcination to produce graphite. Id. The Examiner further finds that "electric calcination's usage would make one of ordinary skill in the art find these properties (the varied sulfur and nitrogen contents and the average sulfur and nitrogen contents[)]" present such that the Office can require the Applicant to show that the prior art does 3 Geoffrey Harvey Greenhalgh, GB 789,663 A, published Jan. 29, 1958 ("Greenhalgh"). 4 Johansen et al., US 6,157,667, issued Dec. 5, 2000 ("Johansen"). 5 Kenneth W. Tucker, US 4,308,177, issued Dec. 29, 1981 ("Tucker"). 3 Appeal2017-006798 Application 13/574,101 not inherently possess these properties. Id. The Examiner further finds that the two electrodes of Johansen provide for non-uniform temperatures. Id. The Examiner reasons that the person skilled in the art would have performed the Greenhalgh method in combination with the electric calcination of Johansen "to control [the] calcined product quality." Id. at 6. The Examiner further explains that because Greenhalgh desires the calcined material to be substantially free of nitrogen and sulfur to control density, the sulfur and nitrogen content is a result-effective variable with density. Id. Appellants argue that the Examiner's rejection relies on impermissible hindsight based on Appellants' Specification. Appeal Br. 4. Appellants contend that the Examiner has failed to make the necessary showings to support inherency. Id. Appellants explain that "Greenhalgh is silent as to the nitrogen and sulfur content," and "Greenhalgh's invention deals with these amounts by 'heating a mass of [gas] calcined carbonaceous material substantially free from sulfur, nitrogen, and oxygen to a graphitizing temperature, preferably 2200 to 2700 C." Id. at 5. Appellants urge that there is no reason to make the combination as proposed by the Examiner because the calcined material of Greenhalgh is substantially free of sulfur and nitrogen. Appeal Br. 6. We agree with Appellants that the Examiner's prima facie case of obviousness based on inherency is lacking. "To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference .... Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations 4 Appeal2017-006798 Application 13/574,101 and internal quotations omitted). In relying upon the theory of inherency, the examiner must provide a basis in fact and/ or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Here, the Examiner finds that Greenhalgh does not teach the nitrogen and sulfur content as claimed. Final Act. 5. And, the Examiner identifies no teaching in Johansen regarding sulfur and nitrogen content. Id. But, the Examiner finds that through use of electric calcination, "the varied sulfur and nitrogen contents and the average sulfur and nitrogen contents" would necessarily or inherently be present. Id. Missing from the Examiner's analysis is a reason to believe the claimed percentages would necessarily be present in the combination of Greenhalgh or Johansen. Therefore, the Examiner failed to make out a prima facie case of obviousness. We further observe that Greenhalgh describes a calcined product that is substantially free of sulfur and nitrogen and a volatile content below 1.0%. See Greenhalgh, col. 2, 11. 68-73 and col. 3, 11. 3-8. Thus, further lacking from the rejection is a reason to incorporate the teachings of Johansen to include electric calcined coke particles as Greenhalgh is already substantially free of sulfur and nitrogen. See Appeal Br. 6. The Examiner explains that "there is a need to further reduce the sulfur and nitrogen contents" of Greenhalgh which is why Greenhalgh additionally heats the calcined coke particles to 2000Q C. Ans. 6 (citing Greenhalgh, col. 2, 11. 58- 64). However, nothing in Johansen indicates that the sulfur and nitrogen content of electric calcined particles are reduced to a level below that of the gas calcined particles taught by Greenhalgh. The Examiner references 5 Appeal2017-006798 Application 13/574,101 Appellants' experimental data to show that "one of ordinary skill in the art would understand that electric calcination results in lower sulfur and nitrogen contents as the temperature is raised." Ans. 7. But, that understanding relies upon Appellants' own data (submitted after the fact) and not knowledge present at the time of invention as evidenced by the prior art. Although Greenhalgh recognizes a similar relationship between reducing sulfur and nitrogen by heating temperatures above 2000Q C, the cited record on appeal does not support the interchangeability of electric calcined coke particles and gas calcined coke particles. Greenhalgh, col. 2, 11. 55-63. Therefore, without more, there is no reason of record to substitute the gas calcined coke particles of Greenhalgh with the electric calcined coke particles of Johansen. 6 CONCLUSION Appellants have identified reversible error in the Examiner's rejection of claims 1--4 and 6-10 under 35 U.S.C. § 103(a) as unpatentable over Greenhalgh in view of Johansen. Appellants have identified reversible error in the Examiner's rejection of claim 5 under 35U.S.C§103(a) as unpatentable over Greenhalgh and Johansen in further view of Tucker. 6 Notably absent from the Examiner's analysis is any finding that electric calcined coke particles are a known substitute for gas calcined coke particles or that the method of making such particles would not have any appreciable difference in the sulfur and nitrogen content of the resulting particles. 6 Appeal2017-006798 Application 13/574,101 DECISION For the above reasons, the Examiner's rejection of claims 1-10 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation