Ex parte Matossian et al.

Board of Patent Appeals and Interferences

Jun 11, 1998

08113550 (B.P.A.I. Jun. 11, 1998)

Application for patent filed August 27, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JESSE N. MATOSSIAN, JOHN D. WILLIAMS
and WILFRIED KRONE-SCHMIDT
________________
Appeal No. 95-3366
Application No. 08/113,5501
________________
ON BRIEF
________________
Before KIMLIN, OWENS and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 12-16,
20 and 28-36. Claims 25-27 have been allowed by the examiner.
Claims 17-19, the other claims remaining in the present
application, stand objected to as being dependent upon a rejected
base claim. Claim 12 is illustrative:
Appeal No. 95-3366
Application No. 08/113,550
Our understanding of the Japanese '280, Japanese '250 and2
European '550 references is from the translations of record.
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12. A method of heat treating at least one workpiece,
comprising the steps of:
providing at least one workpiece;
selecting a heat treatment procedure for the at least one
workpiece;
forming a plasma of an ionizing gas around the at least one
workpiece, the plasma containing free electrons therein;
accelerating electrons from the plasma to the at least one
workpiece with a series of pulses of positive voltage, relative
to the plasma, applied to the workpiece to heat the workpiece;
and
continuing the step of accelerating until the heat treatment
procedure has been performed in the at least one workpiece.
The examiner relies upon the following references as
evidence of obviousness:
Pendse 3,503,787 Mar. 31, 1970
Fridlyand 4,317,984 Mar. 2, 1982
Enomoto 4,500,564 Feb. 19, 1985
Giacobbe 4,872,926 Oct. 10, 1989
Dexter et al. (Dexter) 4,900,371 Feb. 13, 1990
Japanese '280 1-51280 Sep. 14, 1990
(Japanese Kokai patent application)
Japanese '250 2-161250 Feb. 20, 1992
(Japanese Kokai patent application)
European '550 0,062,550 Oct. 13, 19822
Appellants' claimed invention is directed to a method of
heat treating a workpiece comprising forming a plasma of an
Appeal No. 95-3366
Application No. 08/113,550
This corresponds to Japanese '280. The examiner has used3
an abbreviation of the publication number while this panel
employs an abbreviation of the application.
This corresponds to Japanese '250. See footnote 3 supra.4
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ionizing gas, such as nitrogen, around the workpiece, generating
free electrons from the plasma, and accelerating the electrons to
the workpiece with a series of pulses of positive voltage. The
electrons impact the workpiece and heat its surface in a uniform
manner.
The appealed claims stand rejected under 35 U.S.C. § 103 as
follows:
(1) claims 12-14, 28 and 33 over Pendse;
(2) claims 12-14, 28 and 33 over Fridlyand;
(3) claims 12, 13, 15, 28, 30, 31 and 33 over Dexter;
(4) claims 12, 13, 15, 28-31 and 33 over European '550;
(5) claims 12, 13, 16, 28 and 33-36 over Japanese '354 ;3
(6) claims 12, 13, 16, 28 and 33 over Japanese '265 ;4
(7) claims 12, 14, 16, 20, 28 and 33-36 over Giacobbe; and
(8) claim 32 over Pendse, Fridlyand, Dexter, Giacobbe,
European '550, Japanese '265 or Japanese '354 in view of Enomoto.
We will not sustain the examiner's rejections over the
singular disclosures of either Pendse, Fridlyand, Japanese '354,
Japanese '265 or Giacobbe. All the appealed claims require
Appeal No. 95-3366
Application No. 08/113,550
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accelerating electrons from the plasma to the workpiece with a
series of pulses of positive voltage. However, none of these
references teaches or suggests treating a workpiece by a process
that includes voltage pulses. Accordingly, the stated references
fail to evidence a prima facie case of obviousness for the
claimed subject matter. The examiner states that "the examiner
assumes that a plasma produced under a given set of conditions
(voltage, power, etc.) would have a resultant certain effect with
respect to an amount of free electrons produced" (page 6 of
Answer). While it is hard to find fault with the examiner's
assumption, the applied references do not teach or suggest the
conditions of voltage pulses required by the appealed claims.
We will sustain the examiner's rejections under European
'550 and Dexter. It is well settled that when a claimed process
reasonably appears to be substantially the same as a process
disclosed by the prior art, the burden is on the applicant to
prove with objective evidence that the prior art process does not
necessarily or inherently possess characteristics attributed to
the claimed process. In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977). In the present case, although
neither European '550 nor Dexter expressly states that the
disclosed plasma-treating processes result in the impingement of
Appeal No. 95-3366
Application No. 08/113,550
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electrons on the workpiece, we find that the process parameters
disclosed in the references bear such a close correspondence to
the parameters disclosed in appellants' specification that it is
reasonable to conclude that the prior art processes generate
electrons which impinge the surface of the workpiece being
treated. We invite particular attention to a comparison of the
paragraph bridging pages 12 and 13 of appellants' specification
and claims 7 and 8 of European '550. Claim 7 of the reference
recites high-voltage pulses at a frequency of 100 Hz, a value
that falls directly within appellants' range of 10 Hz to about
3,000 Hz. Likewise, claim 7 of the reference and appellants'
specification employ a pulse lasting 1 microsecond. Also, claim
8 of the reference applies a voltage of 1,500 volts, which falls
directly within appellants' voltage of 1 kilovolt to about 100
kilovolts. Accordingly, based upon this close correspondence in
operating conditions for generating a plasma of nitrogen for
treating a workpiece, we find no merit in appellants' contention
that "[t]here is no disclosure of heating the article by pulsed
electron bombardment from a plasma" (page 13 of Brief).
Appellants have not proffered the requisite objective evidence
which establishes that the process of European '550 does not
necessarily produce a pulsed electron bombardment. We also are
not persuaded by appellants' argument that "[t]his reference does
Appeal No. 95-3366
Application No. 08/113,550
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not relate to heat treating" (page 13 of Brief). The reference
specifically states that the disclosed process is for
thermochemical treatment of metals.
We also disagree with appellants' argument that European
'550 "does not teach an ionizing gas that is reactive with the
workpiece (claim 13)" (page 13 of Brief). Like appellants, the
reference forms a plasma from nitrogen gas under the same process
parameters. We note the disclosure at page 12 of appellants'
specification that "[t]he use of nitrogen as the ionizing gas can
result in not only heating but also formation of a hard nitride
layer at the surface of the workpiece." As for the discontinuous
pulses of claim 15, this much is suggested at page 4 of the
reference, first paragraph. Regarding the claim 33 requirement
of providing at least two workpieces, we find that it would have
been prima facie obvious for one of ordinary skill in the art to
treat any number of workpieces that can be practically
accommodated in a reactor.
For the rejection over Dexter our analysis is essentially
the same. Dexter discloses the pulsed plasma thermochemical
treatment of a workpiece and evidences that it was known in the
art to use a high-voltage electrical discharge to generate a
continuous plasma which envelopes the workpiece and heats it to
the necessary temperature (see column 1). Although the reference
Appeal No. 95-3366
Application No. 08/113,550
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does not specify the particulars of voltage, frequency and time
for the process, European '550 evidences that the parameters
employed by appellants were known to the skilled artisan.
Appellants' argument that Dexter discloses ion plasma treatment
rather than electron plasma treatment does not satisfy
appellants' burden of placing of record objective evidence that
the Dexter process does not necessarily result in an electron
plasma treatment of the workpiece. In re Spada, 911 F.2d at 708,
15 USPQ2d at 1658; In re Best, 562 F.2d at 1255, 195 USPQ at 433.
We will also sustain the examiner's rejection of claim 32
under § 103 over either European '055 or Dexter in view of
Enomoto. We agree with the examiner that based on the teachings
of these references it would have been obvious for one of
ordinary skill in the art to mask a portion of the workpiece
being treated. Frankly, we do not understand appellants'
statement that "Enomoto does not deal at all with plasma
technology" (page 17 of Brief). We find it quite evident from
the reference disclosure of an ion-bombardment surface treatment
by the discharge of thermionicelectrons within an atmosphere of
reacted gas that a plasma is generated. In any event, even
without the Enomoto disclosure, we find it would have been
obvious for one ordinary skill in the art to mask the portions of
a workpiece for which heat treatment is not desired.
Appeal No. 95-3366
Application No. 08/113,550
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Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection:
(1) Claim 14 is rejected under 35 U.S.C. § 103 as being
unpatentable over European '550. The reference discloses at
column 4, first paragraph, the claim requirement for a continuous
series of pulses.
(2) Claims 16 and 34 are rejected under 35 U.S.C. § 103 over
European '550 in view of the admitted state of the prior art and
Japanese '280. Appellants' specification, at page 2, and
Japanese '280 at, for example, page 7 of the English translation,
evidence that accelerated cooling of the treated workpiece was
known in the art.
(3) Claim 20 is rejected under 35 U.S.C. § 103 as being
unpatentable over European '550 in view of Giacobbe. As
explained above, we find that it would have been obvious for one
of ordinary skill in the art to employ the process of the
European reference to treat at least two workpieces rather than
just one. Also, Giacobbe discloses that only a very small number
of system modifications are required in order to facilitate the
heat treatment of a large number of specimens (column 2, lines 40
et seq.).
In conclusion, based on the foregoing, the examiner's
rejection of claims 12, 13, 15, 28-31 and 33 over European '550
Appeal No. 95-3366
Application No. 08/113,550
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and the rejection of claims 12, 13, 15, 28, 30, 31 and 33 over
Dexter is sustained. A new ground of rejection under 37 CFR
§ 1.196(b) has been entered for claims 14, 16, 20 and 34.
In addition to affirming the examiner's rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, "[a] new ground of rejection shall
not be considered final for purposes of judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(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 ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c)
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
Appeal No. 95-3366
Application No. 08/113,550
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(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
Should the appellants elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for reconsideration
thereof.
Appeal No. 95-3366
Application No. 08/113,550
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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 - 37 CFR § 1.196(b)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-3366
Application No. 08/113,550
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