Ex Parte McIver et alDownload PDFPatent Trial and Appeal BoardMay 7, 201812996550 (P.T.A.B. May. 7, 2018) Copy Citation 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. 2 Appeal2017-007205 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 3 Appeal2017-007205 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' 4 Appeal2017-007205 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 5 Appeal2017-007205 Application 12/996,550 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 6 Appeal2017-007205 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 7 Copy with citationCopy as parenthetical citation