Ex Parte Kienzle et al

Patent Trial and Appeal Board

Sep 27, 2016

12544649 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/544,649 08/20/2009
62008 7590 09/29/2016
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Andreas Kienzle
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.
07780019US 9747
EXAMINER
CAPOZZI, CHARLES
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
patent@maierandmaier.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS KIENZLE, JOHANN DAIMER,
RUDI BACK, OTTO MEDERIE, MATTHIEU SCHWARTZ,
and JENS ROSENLOCHER
Appeal2015-004902
Application 12/544,649
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 22-32. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Audi AG. Appeal
Br. 2.
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Application 12/544,649
STATEMENT OF THE CASE
Appellants describe the present invention as providing a treatment of
creating carbon materials that are infiltrated with silicon. Spec. 1-2. Such
materials could be used as friction elements for brake and clutch systems in
automobiles. Id. at 1.
The claims at issue here are directed at an apparatus having means for
providing such a treatment. Claim 22, reproduced below with emphasis
added to certain key recitations, is the only independent claim on appeal and
is illustrative of the claimed subject matter:
22. An apparatus for forming a body of silicon carbide,
compnsmg:
a housing providing a plurality of chambers each of which
is constructed to receive a body of porous carbon, be sealed
closed and discharge a received body;
means for flushing gases from a first of said chambers
upon receiving said body;
means for heating said body in said first chamber upon
having flushed the gases therefrom, at a first temperature and a
first pressure;
means for impregnating said body pretreated in said first
chamber with molten silicon, in a second of said chambers, at a
second temperature greater than said first temperature and a
pressure lower than said first pressure;
means for heating said body impregnated in said
second chamber, in a third of said chambers, at a third
temperature greater than said second temperature, to anneal
said body;
means for cooling said body in a fourth of said chambers;
and
means for transporting said body successively to and
through said chambers.
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Application 12/544,649
Appeal Br.2 8 (APPENDIX A: Claims on Appeal).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Bielefeldt us 3,699,295 Sept. 28, 1971
Krieder et al. us 3,879,165 Apr. 22, 1975
(hereinafter "Krieder")
DeHollander us 3,930,787 Jan. 6, 1976
Farthing et al. us 5,037,588 Aug. 6, 1991
(hereinafter "Farthing")
McEntire et al. US 6,512,206 Bl Jan.28,2003
(hereinafter "McEntire")
Kodama et al. US 2004/0089987 Al May 13, 2004
(hereinafter "Kodama")
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 22 and 23 under 35 U.S.C. § 112, second
paragraph as being indefinite. Ans. 2. 3
Rejection 2. Claims 22, 25, 26, 27, 29, and 31under35 U.S.C. § 103
as unpatentable over Farthing in view of Bielefeldt. Id. at 3.
Rejection 3. Claims 23 and 24 under 35 U.S.C. § 103 as unpatentable
over Farthing in view of Bielefeldt and in further view of McEntire. Id. at 6.
Rejection 4. Claim 28 under 35 U.S.C. § 103 as unpatentable over
Farthing in view of Bielefeldt and in further view of DeHollander. Id. at 7.
2 In this decision, we refer to the Final Office Action mailed April 11, 2014
("Final Act."), the Appeal Brief filed November 4, 2014 ("Appeal Br."), the
Examiner's Answer mailed January 27, 2015 ("Ans."), and the Reply Brief
filed March 27, 2015 ("Reply Br.").
3 Although the Examiner does not reference the written description
requirement of 35 U.S.C. § 112, the Examiner appears to also reject claim 23
based upon that requirement. Ans. 3.
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Rejection 5. Claim 30 under 35 U.S.C. § 103 as unpatentable over
Farthing in view of Bielefeldt and in further view of Kodama. Id. at 7.
Rejection 6. Claim 32 under 35 U.S.C. § 103 as unpatentable over
Farthing in view of Bielefeldt and in further view of Krieder. Id. at 8.
ANALYSIS
Rejection 1: The Examiner rejects claims 22 and 23 as indefinite
under 35 U.S.C. § 112. In particular, with respect to the recitations "means
for flushing gases" and "means for flushing with an inert gas," the Examiner
"maintains that the Appellant's original disclosure ... fails to disclose the
corresponding structure for the claimed means-plus-function limitations."
Ans. 9-10. We agree with the Examiner on this point.
Here, the "means for flushing gases from a first of said chambers
upon receiving said body" recitation of claim 22 is governed by 35 U.S.C. §
112, paragraph 6 because the recitation uses the "means for" phrasing and
does not otherwise provide a sufficiently definite meaning as the name for
structure. vVilliamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015) (en bane) (stating that "use of the word 'means' in a claim element
creates a rebuttable presumption that§ 112, para. 6 applies" and further
stating that "the essential inquiry is ... whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure").
35 U.S.C. § 112, paragraph 6, controls the construction of means-
plus-function claim limitations:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
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material, or acts described in the specification and equivalents
thereof.
To interpret a claim pursuant to 35 U.S.C. § 112, paragraph 6, we must first
identify the claimed function (i.e., the recited function) and, second,
"determine what structure, if any, disclosed in the specification corresponds
to the claimed function." Williamson, 792 F.3d at 1351-52.
In claim 22, the recited function at issue is "flushing gases from a first
of said chambers upon receiving said body." For structure to correspond to
this function, the intrinsic evidence must clearly link or associate that
structure with the recited function. Williamson, 792 F.3d at 1352. Here, the
Specification states very little about flushing gases from the first chamber.
The following passage comes the closest to linking the Specification
narrative to the recited function: "After closing the lock 10, the chamber I is
flushed according to step a of the method with a wave of inert gas by means
of a system for flushing a gas through the chamber, preferably with nitrogen
or argon, and after the displacement of the air by means of optionally several
sequences of inert gases flushing and evacuation .... " Spec. 5; see also
Reply Br. 2.
The Specification's narrative above is akin to that assessed by our
reviewing court in BioMedino, LLC v. Waters Techs. Corp., 490 F.3d 946
(Fed. Cir. 2007). In that decision, the recited "control means" was linked to
a box labeled "Control" in Figure 6 and the Specification's statement that
the process may be "'controlled automatically by known differential
pressure, valving and control equipment."' Id. at 950. The court held that,
despite these descriptions, "[i]n the present case, there is nothing to suggest
a structure for the claimed control means." Id. at 952. The court further
explained that"§ 112, i-f 6 requires some disclosure of structure in the
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specification corresponding to the claimed means." Id. (emphasis added).
Where disclosure of linked structure is lacking, Section 112 is not satisfied.
Id.; see also In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
bane) ("if one employs means-plus-function language in a claim, one must
set forth in the specification an adequate disclosure showing what is meant
by that language. If an applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112. ")
Here, the Specification's recitation of "a wave of inert gas by means
of a system for flushing a gas" does not set forth structure. Rather, "system
for flushing gas" is not structure and is no more a name for structure than
"means for flushing gases .... " Moreover, "a wave of inert gas" (even
when combined with "a system for flushing gas") does not recite adequate
structure because "the patentee must disclose adequate corresponding
structure to perform all of the claimed functions." Williamson, 792 F.3d at
-1 ,..... ,.. -1 ,.. " LL • .. .. ' .. ' '.. ' t.t:.. " • ' .,., • '.. ' "
U) 1-)L~ Appeuams ao not argue mat --a wave or men gas· wnnout, ror
example, some directional guidance apparatus is a structure capable of
"flushing gases from a first of said chambers upon receiving said body," and
the evidence in the record does not support such a finding.
Appellants argue that a person of skill "would readily appreciate that
flushing a gas out of a chamber would obviously include a gas discharge
4 For purposes of the obviousness analysis, the Examiner interpreted "means
for flushing gases" as "a wave of inert gas or the equivalent thereof" Final
Act. 3. The Examiner was clear in the Answer, however, that the Examiner
bases the Section 112 rejection, at least in part, on lack of adequate
corresponding structure. Ans. 9-10 ("[N]o structure is disclosed in
Applicant's specification for carrying out the processes of flushing gases as
recited in claims 22 and 23 .... ").
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means" (Reply Br. 2), but Appellants do not identify a gas discharge
structure in the Specification. The issue of whether or not a person of skill
in the art would be capable of implementing a way of flushing gases is not
pertinent to the analysis; the issue at hand is disclosure in the Specification.
BioMedino, LLC, 490 F.3d at 952 ("consideration of the understanding of
one skilled in the art in no way relieves the patentee of adequately disclosing
sufficient structure in the specification") (quoting Atmel Corp. v. Info.
Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999)).
We therefore agree with the Examiner that claim 22 is indefinite
under 35 U.S.C. § 112. Claim 23 is indefinite because it depends from claim
22. Ex parte Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that claims
dependent upon indefinite claims are "rejectable for the same reason"). We
also agree with the Examiner that claim 23 is indefinite because the
recitation "means for flushing with an inert gas" lacks corresponding
structure for the same reasons as the "means for flushing gases ... "
addressed above. Ans. 9-10. We thus sustain the Examiner's rejection of
claims 22 and 23. 5
Rejection 2. The Examiner rejects claims 22, 25, 26, 27, 29, and 31
under 35 U.S.C. § 103 as obvious over Farthing in view of Bielefeldt. Id. at
3. Appellants do not separately argue claims 22. We therefore limit our
discussion to claim 22. Claims 22, 25, 26, 27, 29, and 31 stand or fall with
that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner identifies structure corresponding with the means-plus-
function recitations of claim 22. Final Act. 3--4. The Examiner then finds
5 If further prosecution occurs, the Examiner should consider whether other
claims depending from claim 22 (i.e., claims 24--32) are indefinite because
of their dependency on indefinite claim 22. Ex parte Jolly, 172 F.2d at 567.
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that Farthing and Bielefeldt collectively teach each recited element of claim
22 and provides sound reasoning for combining the references. Final Act.
9-10. We agree with the Examiner's findings and the Examiner's
obviousness conclusion.
Appellants argue that Farthing does not teach the various means
recited in claim 22. Appeal Br. 4--5. Appellants, however, provide no
reasoned explanation disputing the Examiner's findings of fact. Moreover,
Appellants argue only against Farthing when the Examiner's rejection is
based upon the combination of Farthing and Bielefeldt. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellants also discuss the "method" of Farthing. Appeal Br. 5
("Farthing et al discloses nothing more than a method .... Farthing et al
does not impregnate a porous body .... Farthing et al teaches merely a
method .... "). Claim 22, however, is directed to an apparatus. Each of the
means-plus-function recitations cover only "corresponding structure,
material, or acts described in the specification and equivalents thereof."
35 U.S.C. § 112, paragraph 6. Thus, Appellants' discussion of Farthing's
method does not establish Examiner error because it fails to distinguish
between the claim 22' s structure and the structure of the Farthing/Bielefeldt
combination.
In reply, Appellants argue that neither Farthing nor Bielefeldt teach a
"means for an annealing of a silicon graphite product formed by the infusion
of silicon into a porous carbon body." Reply Br. 2. Claim 22 does not
literally recite a "means for an annealing." Rather, it recites a "means for
heating said body impregnated in said second chamber, in a third of said
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chambers, at a third temperature greater than said second temperature, to
anneal said body." Appeal Br. 8 (Appendix A: Claims on Appeal).
This recitation is governed by 35 U.S.C. § 112, paragraph 6, because it
recites "means for" and does not otherwise provide structure for performing
the recited function. The recited function is "heating said body ... at a third
temperature greater than said second temperature, to anneal said body." The
structure linked to this function in the Specification is a heater (i.e., heater
31 ). Spec. 6 (final paragraph). We thus construe the recited "means for
heating ... to anneal said body" as covering a heater.
Appellants do not dispute that the Farthing/Bielefeldt combination
includes a heater. Nor do Appellants persuasively argue that the disclosed
heater would be incapable of performing the recited function. Appellants
also do not dispute the Examiner's explanation for why it would have been
obvious to employ a third chamber "for the benefit of additional heat
treatment." Accordingly, this argument also does not identify Examiner
error.
For the reasons above as well as those expressed in the Final Office
Action and Answer, we therefore sustain the Examiner's rejection of claims
22, 25, 26, 27, 29, and 31.
Rejections 3---6. Appellants do not make any separate arguments with
respect to dependent claims 23, 24, 28, 30, or 32. We thus sustain these
rejections for the reasons explained above.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
22-32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED
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