Ex Parte McIver et al

Patent Trial and Appeal Board

May 7, 2018

12996550 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/996,550 12/06/2010
30948 7590 05/09/2018
Clocktower Law LLC
537 Massachusetts Ave., Suite 301
Acton, MA 01720-2954
FIRST NAMED INVENTOR
Martin Mclver
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.
2013-1355 8497
EXAMINER
DUNNER, DIALLO IGWE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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@clocktowerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN McIVER, HELEN SEA TON,
STANLEY MOUG, and JOHN BEATSON 1
Appeal2017-007205
Application 12/996,550
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1-12 and 16-22. Appeal Br. 1, 6. Claims 13-15 are
cancelled. Id. at 52 (Claims App'x). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Sandvik Limited is identified as the real party in interest. Appeal Br. 1.
Appeal2017-007205
Application 12/996,550
CLAIMED SUBJECT MATTER
Claims 1 and 4 are independent. Claim 1 is reproduced below.
1. A silicon carbide heating element comprising one or
more hot zones and two or more cold ends each having cross-
sectional areas, wherein:
the cross-sectional area of each cold end is, beginning from a
cold end side nearest to one of the hot zones, less than the cross-
sectional areas of the one or more hot zones; and
at least part of each cold end comprises a body of
unimpregnated recrystallized silicon carbide material coated with a
conductive coating having an electrical resistivity lower than that of
the recrystallized silicon carbide material.
REJECTIONS
Claims 2-5, 16, and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Andersen (US 3,964,943, iss. June 22, 1976). 2
Claims 1-7, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Andersen and Boecker (US 4,610,934, iss. Sept. 9,
1986). 3
Claims 8-10 and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Andersen and Boyer (US 1,818, 191, iss. Aug. 11, 1931 ).
Claims 11, 12, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Andersen, Boyer, and Boecker.
2 Although the caption of this rejection lists only claim 4, the Examiner
provides findings for claims 2-5, 16, and 17. See Final Act. 2--4. Claims 2
and 3 depend from claim 1. Appeal Br. 21, 51 (Claims App'x). We also
treat the reference to "Anderson" as a typographical error and refer to the
reference as "Andersen" throughout this decision.
3 Although the caption of this rejection lists only claims 1--4, the Examiner
provides findings for claims 1-7, 16, and 17. Final Act. 4--7.
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Application 12/996,550
Claims 1 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Boyer and Boecker.
ANALYSIS
Claims 2-5, 16, and 17
As Anticipated By Andersen
The Examiner finds that Andersen discloses a silicon carbide heating
element 8 as recited in independent claim 4, including hot zone 2, cold ends
(end portions 3, 4 and contacts 6, 7) with the same cross-sectional area as
hot zone 2, and body 8 of an unimpregnated recrystallized silicon carbide
material (alpha SiC granules) coated with a conductive material (aluminum,
silver, or gold) having an electrical resistivity lower than the recrystallized
silicon carbide material. Final Act. 2-3. The Examiner interprets the term
"unimpregnated" as a method, not a structure, and as a product-by-process
limitation. Ans. 14. The Examiner defines "unimpregnated" as "the lack of
causing to be filled, imbued, permeated or saturated" or "a coating." Id.
at 15 (citing Merriam-Webster dictionary definition of "impregnation").
We agree with Appellants that Andersen teaches a silicon carbide end
portions 3, 4 that are impregnated with free silicon (Si). Andersen, 3: 15-26,
2: 14--17. Andersen illustrates the free Si that impregnates ends 3, 4 as dots
in Figures 1-3 and teaches that median portion 2, which forms a hot zone, is
etched to remove all free Si and is illustrated as dot-free in Figures 1 and 2.
Id. at 2:46-59, 2:67-3:4, 3:15-26; see Appeal Br. 18 (Andersen's teaching
of free ends 3, 4 containing free Si "is impregnation, exactly opposite of
what is claimed, and specifically detailed in the present specification as the
example of impregnation which is opposite to the claim"); Reply Br. 2-3
("If a material is impregnated with another material (such as additional
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Application 12/996,550
silicon impregnating a silicon carbide), it is different structurally and has
different properties (such as an altered electrical resistivity).").
Appellants disclose conventional cold end material is made of silicon
carbide that is impregnated with materials such as silicon metal or silicon to
provide lower electrical resistivity than unimpregnated silicon carbide. See
Spec. 2:21-24, 9:12-13. The claimed heating element makes cold ends of
unimpregnated recrystallised silicon carbide material, which, due to its
porosity, provides a lower thermal conductivity than prior art impregnated
silicon carbide cold ends and reduces heat loss through the cold ends. Id. at
8:24--26, 9:3-5. Appellants apply a low electrical resistivity coating onto the
cold ends to form a good electrical path, thereby providing high electrical
conductivity and low thermal conductivity at the cold ends. Id. at 8:28-32.
In contrast to the claimed unimpregnated recrystallized silicon carbide
material, Andersen impregnates cold ends 3, 4 with free Si to lower specific
resistance so ends 3, 4 are less severely heated than hot zone portion 2 when
current passes through them, and metal contacts applied to the cold ends are
not thermally loaded above their melting temperature. Id. at 1:46-2:17.
Andersen processes a porous SiC blank with a liquid free Si, which migrates
through the pores to provide a greater quantity of free Si in the end portions.
Id. at 2:47-3:5; see also Spec. 2:21-24 (the prior art lowers the resistivity of
cold end materials by impregnating the pore structure of the silicon carbide
end material with a silicon metal in a process known as "siliconising").
Even if "unimpregnated" is a product-by-process limitation, it is well-
settled that "[i]f the process by which a product is made imparts 'structural
and functional differences' distinguishing the claimed product from the prior
art, then those differences 'are relevant as evidence of no anticipation'
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Application 12/996,550
although they 'are not explicitly part of the claim."' Greenliant Sys., Inc. v.
Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012) (internal citation omitted).
In this case, we interpret "unimpregnated" to mean that the pores of
the recrystallized silicon carbide material are not filled with any material or
substance. This meaning is consistent with an ordinary meaning of the term
"impregnation" as set forth in the Answer. Ans. 15. It also is consistent
with the Specification's disclosure that a recrystallized silicon carbide has an
open porosity, i.e., a porous structure. Spec. 4:20-25, 9:3-5. Pores of a
recrystallized silicon carbide can be impregnated with metals or silicon to
increase thermal and electrical conductivity. Id. at 4:23-25, 8:24--26, 9: 12-
13. Conductive coatings do not impregnate the pores. Id. at 8:24--9:5.
Thus, "a body of unimpregnated recrystallized silicon carbide"
conveys a structure even if it also connotes a process of making the body.
See In re Nordt Develop. Co., LLC, 881F.3d1371, 1375-76 (Fed. Cir.
2018) (internal citations omitted). Appellants disclose an unimpregnated
body as having pores and a lower thermal and electrical conductivity than an
impregnated body of silicon carbide, as discussed above.
As discussed above, Andersen discloses an impregnated SiC material
for cold ends 3, 4. Thus, Anderson does not disclose every feature in claim
4 and, as a result, does not anticipate claim 4 or its dependent claims 5, 16,
and 17. See In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (reversing
a rejection of claims as anticipated because the rejection was based on an
unreasonably broad claim construction and explaining "[a ]nticipation cannot
be found, as a matter of law, if any claimed element or limitation is not
present in the reference"). Nor do we sustain the rejection of claims 2 and 3
as anticipated by Andersen because claims 2 and 3 depend from claim 1, and
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the Examiner has not demonstrated that claim 1 is anticipated by Andersen.
See Final Act. 2--4; Appeal Br. 21.
Claims 1-4, 6, 7, 16, and 17
Rejected Over Andersen and Boecker
Independent claim 1 recites a silicon carbon heating element having
similar elements to those recited in claim 4, except the cross-sectional areas
of each cold end are "less than the cross-sectional areas of the one or more
hot zones" rather than "the same or less than" as recited in claim 4. The
Examiner relies on Boecker to teach this feature and Andersen to teach a
body of unimpregnated recrystallized silicon carbide material coated with a
conductive coating as in claim 4. Final Act. 4--7. Boecker does not remedy
the failure of Andersen to disclose a body of an unimpregnated recrystallized
silicon carbide material as recited in claim 1 or claim 4. Thus, we do not
sustain the rejection of claims 1--4, 6, 7, 16, and 17.
Rejections of Dependent Claims 8-12 and 18-22
Rejected Over Andersen, Boyer, and Boecker
The Examiner relies on Boyer or Boecker to teach features of claims
8-12 and 18-22. See Final Act. 7-11. These references, however, do not
remedy Andersen's failure to teach unimpregnated recrystallized silicon
carbide as recited in claims 1 and 4 from which claims 8-12 and claims 18-
22 depend respectively. See Appeal Br. 29, 33. Thus, we do not sustain the
rejections of claims 8-12 and 18-22.
Claims 1 and 4
Rejected Over Boyer and Boecker
The Examiner has not established that Boyer and Boecker teach or
suggest a body of unimpregnated recrystallized silicon carbide material as
recited in claims 1 and 4. See Final Act. 12 (finding that Boyer discloses
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Application 12/996,550
this feature in paragraph 3 8 and that Boyer does not disclose a cold end with
such a body in paragraph 39 of the Final Office Action); Appeal Br. 46.
We agree with Appellants that Boyer does not disclose a body of
unimpregnated recrystallized silicon carbide as claimed. Appeal Br. 46-4 7.
Boyer is directed to aluminum alloy contact terminals for electric heating
appliances. Boyer, 1: 1-7. As such, Boyer applies a thin metal film to the
ends of a rod (id. at 1:71-77) including aluminum and iron alloys films that
provide self-compensating contacts (id. at 2:101-3:7), and aluminum iron
alloy contact surfaces (id. at 3: 123-25). See Final Act. 12 (citing Boyer,
1:71-77, 2:101-3:7, and 3:123-25 as disclosing a body ofunimpregnated
recrystallized silicon carbide).
Nor has the Examiner explained where Boecker discloses this feature.
See Final Act. 12-13. We find no such disclosure. Instead, Boecker teaches
a method of using metal brazing to secure silicon carbide ceramic materials
to metal and metal alloy structures of engine components. Boecker 1 :5-20.
Such brazed joints may be used to join a silicon carbide shaft 24 to a metal
shaft 30 as illustrated in Figure 2 of Boecker. Id. at 5:21-23.
Thus, we do not sustain the rejection of claims 1 and 4.
DECISION
We reverse the rejections of claims 1-12 and 16-22.
REVERSED
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