Ex parte Mariner et al.

Board of Patent Appeals and Interferences

Apr 23, 2001

08771373 (B.P.A.I. Apr. 23, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN T. MARINER and DOUGLAS A. LONGWORTH
_____________
Appeal No. 1999-1136
Application No. 08/771,373
______________
ON BRIEF
_______________
Before CALVERT, COHEN, and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
6, all the claims in the application.
As summarized on page 2, lines 9 to 20 of the
specification, appellants' invention concerns a flash
evaporator vaporization boat made of graphite coated with
Appeal No. 1999-1136
Application No. 08/771,373
We note that in claim 3, "the metal to be vaporized" has1
no antecedent basis.
2
pyrolytic boron nitride (PBN), such a boat being disclosed in
the Morris patent, infra. The basic invention is disclosed as
residing in the discovery that (page 2, lines 16 to 19):
the useful life of the vaporization boat may be
extended by increasing the density of the PBN outer
coating in contact with the metal to be vaporized to
a density above at least 2.19 gm/cc and preferably
between 2.19 gm/cc and 2.2 gm/cc.
Claim 1, the only independent claim on appeal, defines
the subject matter in issue as:
1. A flash evaporator vaporization boat comprising:
a graphite body having a recessed cavity and an outer
surface coating composed of a high density pyrolytic boron
nitride having a hexagonal crystal structure and a density
above at least 2.19 gm/cc, wherein the coating is deposited by
chemical vapor deposition at a temperature of between 1800° C
to 2200° C.
Claims 1 to 6 are reproduced in the appendix of appellants'
brief.1
The references applied in the final rejection are:
Basche 3,152,006 Oct. 6,
1964
Tanji et al. (Tanji) 4,849,146 Jul. 18,
1989
Finicle 5,158,750 Oct. 27,
1992
Appeal No. 1999-1136
Application No. 08/771,373
3
Morris 5,239,612 Aug. 24,
1993
The appealed claims stand finally rejected under 35
U.S.C.
§ 103(a) as follows:
(1) Claims 1 and 2, unpatentable over Morris in view of
Basche.
(2) Claim 3, unpatentable over Morris in view of Basche and
Tanji.
(3) Claims 4 to 6, unpatentable over Morris in view of Basche,
Tanji and Finicle.
Rejection (1)
There is no disagreement that the PBN coating of the
Morris boat has a hexagonal crystal structure, and that it
would have been obvious to apply the PBN coating using the
method disclosed by Basche; in fact, at col. 3, lines 10 to
13, Morris incorporates the Basche patent's disclosure by
reference as teaching the chemical vapor deposition of boron
Appeal No. 1999-1136
Application No. 08/771,373
Appellants and the examiner agree that the patent number2
"3,152,226" at col. 3, line 12 of Morris should be "3,152,006"
(the Basche patent).
4
nitride. The process disclosed by Basche involves depositing2
a coating of PBN on a surface by the thermal decomposition and
reaction of ammonia with a boron halide (e.g., BCl ). At col.3
3, lines 40 to 60, Basche discloses that the reactor should be
maintained at a temperature of 1450 to 2300° C., and that
(col. 3, lines 54 to 60):
The process, however, is very efficient if the
temperature of the reactor is maintained between a
preferential temperature range of 1850° C. and 2200°
C. and especially at about 2000° C. Boron nitride
produced within the latter range has a density
between about 1.99 and 2.20 grams/cm and is quite3
stable in water.
In view of this disclosure of Basche, the only
difference, if any, between the subject matter recited in
claims 1 and 2 and the combination of Morris and Basche is in
the particular values of the coating density and the
deposition (reactor) temperature.
Appellants argue that the combination of Morris and
Basche does not establish a prima facie case of obviousness.
We disagree. Since the claimed ranges of temperature and
Appeal No. 1999-1136
Application No. 08/771,373
5
density overlap the ranges of those parameters disclosed by
Basche, supra, claims 1 and 2 are prima facie obvious. See In
re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997), and cases cited therein; see also In re Reven, 390
F.2d 997, 1001, 156 USPQ 679, 681 (CCPA 1968)("absent a
showing to the contrary, discovering particular ranges within
a range disclosed by the prior art would be within the skill
of the art").
Appellants have the burden of rebutting the prima facie
case of obviousness. As stated in In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. See, e.g., Gardner v. TEC Sys., Inc., 725
F.2d 1338, 220 USPQ 777 (Fed. Cir.), cert. denied,
469 U.S. 830 [225 USPQ 232] (1984); In re Boesch,
617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re
Ornitz, 351 F.2d 1013, 147 USPQ 283 (CCPA 1965); In
re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
These cases have consistently held that in such a
situation, the applicant must show that the
particular range is critical, generally by showing
that the claimed range achieves unexpected results
relative to the prior art range. Gardner, 725 F.2d
at 1349, 220 USPQ at 786 (obviousness determination
affirmed because dimensional limitations in claims
did not specify a device which performed and
operated differently from the prior art); Boesch,
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Application No. 08/771,373
6
617 F.2d at 276, 205 USPQ at 219; Ornitz, 351 F.2d
at 1016-17, 147 USPQ at 286; Aller, 220 F.2d at 456,
105 USPQ at 235.
As proof of criticality, appellants have submitted the
declaration under 37 CFR § 1.132 of John Mariner, one of the
appellants (filed Nov. 18, 1997), to show "that high density
PBN is superior to low density PBN relative to useful life"
(brief, page 8).
Before considering Mr. Mariner's declaration, we take
notice of the fact that Basche discloses that the coating
process is especially efficient when the reactor temperature
is 2000° C. (col. 3, line 57), thereby expressly suggesting to
one of ordinary skill that a temperature of 2000° C. be used.
According to appellants' specification at page 4, lines 4 to
7, higher density (i.e., at least 2.19 gm/cc) PBN may be
achieved by keeping the reactor temperature in the range of
1950 to 2000° C. Therefore, if one of ordinary skill were to
coat the boat of Morris using the 2000° C. reactor temperature
recommended by Basche it would appear that, according to
appellants' disclosure, the coating would inherently have a
density of at least 2.19 gm/cc. Inasmuch as the resulting
Appeal No. 1999-1136
Application No. 08/771,373
7
boat would meet all the limitations of claims 1 and 2, those
claims would not be patentable notwithstanding the fact that
appellants may have discovered that a boat as claimed therein
would have a longer than average life, since it is well
settled that "recognition of latent properties in the prior
art does not render nonobvious an otherwise known invention."
In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991).
However, assuming arguendo that the 2000° C. temperature
taught by Basche would not produce a coating having a density
in the range of 2.19 to 2.2 gm/cc, we do not consider that the
declaration of Mr. Mariner establishes the criticality of that
range. In paragraph 6 of the declaration, Mr. Mariner
describes a test in which two PBN samples, one having a
density of 2.19-2.20 g/cm (Fig. B1) and the other having a3
density of 2.00-2.10 g/cm (Fig. B2), were subjected to a3
molten aluminum environment for an unspecified length of time.
The low density sample (Fig. B2) showed an exfoliated pattern,
the same as exhibited by flash evaporators which were tested
using aluminum metal charges until failure occurred (Figs. A1,
A2 and A3), whereas the high density sample (Fig. B1) "shows
Appeal No. 1999-1136
Application No. 08/771,373
8
essentially no penetration of molten aluminum." From this,
Mr. Mariner concludes that "high density PBN is clearly
superior to low density PBN relative to useful life and is
unexpected."
In In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688
(Fed. Cir. 1995), the Court stated:
Mere improvement in properties does not always
suffice to show unexpected results. In our view,
however, when an applicant demonstrates
substantially improved results, as Soni did here,
and states that the results were unexpected, this
should suffice to establish unexpected results in
the absence of evidence to the contrary.
In the present case, Mr. Mariner states that the result of his
test was unexpected, but in our view there is no demonstration
of substantially improved results. At the most, all that the
test shows is that the low density PBN failed prior to the
high density PBN of the claimed invention. However, there is
no indication of how much the life of the high density PBN
would be relative to that of the lower density PBN. As far as
the test is concerned, it appears that a boat coated with
high-density PBN might have a life only one "flash" longer
than the life of a boat coated with lower-density PBN; in
Appeal No. 1999-1136
Application No. 08/771,373
9
other words, there are no test data showing to what extent the
life of a high-density PBN coated boat is increased over the
life of a lower-density PBN coated boat. Absent such data,
there is no basis for concluding that the 2.19 to 2.2 gm/cc
range claimed by appellants is critical and yields unexpected
results vis-a-vis the 1.99 to 2.20 gm/cc range disclosed by
Basche.
Accordingly, rejection (1) will be sustained.
Rejection (2)
At page 9 of their brief, appellants acknowledge that
Tanji teaches the use of plural PBN layers, but argue that it
does not teach the arrangement of PBN layers recited in claim
3.
We note initially that claim 3 does not require that only
the outside layer of PBN be of high density, as appellants
seem to assume, but rather is inclusive of structure in which
all the layers are high density PBN. Since Tanji discloses
that PBN which is vapor deposited at 1850-2100° C. forms a
laminar structure (col. 1, lines 35 to 44), having plural
layers as shown in Fig. 1, the boat of Morris, coated in the
manner disclosed by Basche, would inherently have a layered
Appeal No. 1999-1136
Application No. 08/771,373
10
coating as disclosed by Tanji, and thus would meet all the
limitations of claim 3.
Rejection (2) therefore will be sustained.
Rejection (3)
Claim 4 reads:
4. A flash evaporator vaporization boat as defined in claim
3 having an intermediate layer between the coating of PBN and
said graphite body.
In considering rejection (4), we interpret the recited
"intermediate layer" as requiring a layer composed of a
substance other than PBN, this being consistent with
appellants' disclosure (page 4, line 11 et seq.) and with the
apparent interpretation placed on this claim by appellants and
the examiner.
The examiner states on page 5 of the answer that
appellants' argument concerning Finicle is not persuasive
because:
The claimed invention calls for having an
intermediate layer such as pyrolitic graphite
between a PBN coating and a graphite body. Finicle
shows in Figure 1, an intermediate layer such as
pyrolitic graphite shown as element 8 provided
between a PBN coating and a graphite body. Also,
Finicle is in the same field of endeavor which is in
the field of using PBN coating to insulated heated
vessels or crucibles.
Appeal No. 1999-1136
Application No. 08/771,373
11
We do not consider this rejection to be well taken. As
appellants point out on page 6 of the reply brief, Finicle
does not disclose an intermediate layer of pyrolytic graphite
between a PBN coating and a graphite body, as the examiner
contends, but rather discloses a layer of pyrolytic graphite 8
between a PBN crucible 2 and a PBN coating 10, the purpose of
the graphite layer being to control the temperature uniformity
or profile of the crucible, which is externally heated (col.
1, lines 45 to 51, and col. 2, line 61, to col. 3, line 13).
We find no teaching or suggestion in Finicle which would lead
one of ordinary skill to provide an intermediate pyrolytic
graphite layer between the body 12 and PBN coating 14 of the
boat of Morris, since not only is the body 12 of the Morris
boat made of graphite, rather than the PBN of Finicle crucible
2, but also, unlike the Finicle crucible, the Morris boat is
heated by passing an electrical current therethrough, rather
than being heated externally.
We therefore will not sustain rejection (3).
Conclusion
The examiner's decision to reject claims 1 to 6 is
affirmed as to claims 1 to 3, and reversed as to claims 4 to
Appeal No. 1999-1136
Application No. 08/771,373
12
6.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1999-1136
Application No. 08/771,373
13
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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