Ex parte NARA

Board of Patent Appeals and Interferences

Feb 11, 1999

08189833 (B.P.A.I. Feb. 11, 1999)

Application for patent filed February 1, 1994.1
1
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte AKIKAZU NARA
__________
Appeal No. 96-0661
Application 08/189,8331
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
refusal to allow claims 1, 4, 5, 8 through 18, 21 and 22 as
Appeal No. 96-0661
Application 08/189,833
2
amended subsequent to the final rejection in a paper filed
November 15, 1994 (Paper No. 9). Claims 2, 3, 6, 7, 19 and 20
have been canceled.
Appellant's invention relates to a heating apparatus
utilizing microwaves to heat a heating element which is
capable of absorbing the microwaves and thus being heated to a
high temperature, i.e., to an operating temperature in the
range of about 30ºC to about 2,000ºC. Claim 1 is
representative of subject matter on appeal and reads as
follows:

1. A heating apparatus utilizing microwaves comprising:
(a) a heating element for heating a fluid passing
therethrough, mainly made of carbon powder, alumina powder and
silicon carbide powder in proportions preselected to provide
an operating temperature in the range of about 30EC to about
2,000EC, and sintered in a honeycomb structure, (b) a
microwave generator irradiating microwaves to said heating
element and (c) an air blower blowing air to the said heating
element.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Appeal No. 96-0661
Application 08/189,833
A copy of a translation of each of these Japanese documents prepared for the U.S.2
Patent and Trademark Office is appended to this decision.
3
Matsubara et al. (Matsubara) 4,822,966 Apr.
18, 1989
Nitta et al. (Nitta) 4-298623 Oct. 22, 1992
(Japanese Kokai)2
Fukuda et al. (Fukuda) 4-301122 Oct. 23, 1992
(Japanese Kokai)

Claims 1, 4, 5, 8 through 18, 21 and 22 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Fukuda
(Japanese ‘122) or Nitta (Japanese ‘623) in view of Matsubara.
Rather than reiterate the examiner's full explanation of
the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 14, mailed May 12, 1995) and supplemental examiner’s
answer (Paper No. 16, mailed September 18, 1995) for the
examiner's reasoning in support of the rejection, and to
appellant's brief (Paper No. 12, filed February 16, 1995) and
Appeal No. 96-0661
Application 08/189,833
4
reply brief (Paper No. 15, filed July 12, 1995) for
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of this review, we have made the determinations
which follow.
Looking first to independent claim 1, it is the
examiner’s position that Fukuda (Japanese ‘122) or Nitta
(Japanese ‘623) discloses the claimed invention except for the
particular composition of the heating element required in
appellant’s claim 1 on appeal. Appellant has not indicated or
urged otherwise and, in fact, references these two documents
on pages 1 and 2 of the specification as being representative
Appeal No. 96-0661
Application 08/189,833
5
of the known prior art. Appellant acknowledges that the filter
(e.g., 18 of Fukuda) constructed of a honeycomb structure of
porous ceramic material and the microwave absorption materials
therein (e.g., 29) are heated by being irradiated with
microwaves, but urges that such materials are not heated to a
temperature in the vicinity of 1000ºC because the usual
microwave absorption materials are not stable at such a high
temperature. Fukuda (translation, page 11) indicates that the
microwave absorbing material therein is comprised of
"at least one type of metallic oxide of zinc, copper,
manganese, cobalt, iron, tin, or titanium, complex
metallic oxide that has a perovskite crystal structure,
or silicon carbide."

To address the particular material of construction of the
heating element in appellant’s claim 1 on appeal, the examiner
turns to Matsubara and notes that this patent teaches that it
is well known in the art of microwave heating to use a
microwave absorption heating element that is mainly made of
carbon powder, alumina powder and silicon carbide powder in
proportions preselected to provide an operating temperature
within the claimed range of "about 30ºC to about 2,000ºC."
Appeal No. 96-0661
Application 08/189,833
6
Matsubara discloses that the microwaveable heating elements
(e.g., 12 or 25) therein may be formed by "sintering" (col. 5,
line 1) and that such heating elements may be comprised of
"a microwave absorption material mainly composed of
carbon and silicon carbide capable of sufficiently
absorbing microwaves, and proper metal particles such
as casting powder, brass powder, and alumina powder,
etc"(col. 5, lines 53-57).

Matsubara (col. 7, lines 31-36) makes note of a composition
for the heating element therein which can reach a temperature
of about 900ºC in a short time, while column 9, lines 21-28,
thereof describes a heating element for a home kiln that is
capable of raising the temperature in the kiln to about
1000ºC.
After a careful review of the collective teachings of the
applied references and of the specific combination thereof
posited by the examiner, particularly the teachings of Fukuda
and Matsubara, we must agree with the examiner that it would
have been obvious to one of ordinary skill in the art at the
time of
Appeal No. 96-0661
Application 08/189,833
7
appellant’s invention to utilize a microwave absorption
material having a composition like that taught in Matsubara in
place of the microwave absorption material (e.g., 29) of
Fukuda so as to improve the speed of temperature rise of the
heating element therein (e.g., Matsubara, col. 7, lines 41-45)
and so as to allow such heating element of Fukuda to attain a
temperature level of 1000ºC or above.
Contrary to appellant’s assertion on page 7 of the brief,
we see no reason why it would have been improper to combine
Fukuda and Matsubara in the manner noted supra. In our
opinion, one of ordinary skill in the art would have found
ample motivation in the collective teachings of Matsubara and
Fukuda (as we have noted above) for using a heating element
having a composition such as that taught in Matsubara in
Fukuda. As for appellant’s assertion (brief, page 6) that
Matsubara does not describe the specific claimed combination
of carbon, silicon carbide and alumina powders nor selecting
the proportions of each to provide an operating temperature in
the range of about 30ºC to about 2000ºC, we note column 4,
lines 21-22 and column 6, lines 53-57, of Matsubara wherein it
Appeal No. 96-0661
Application 08/189,833
8
is indicated that the heating element
therein may be mainly composed of powdered carbon and silicon
carbide mixed and proper metal particles such as alumina
powder, and column 9, lines 21-28, which notes that a heating
element of
the composition disclosed in Matsubara is capable of attaining
a temperature of about 1000ºC, a temperature well within
appellant’s claimed range.
Appellant’s apparent belief that the applied references
must teach or suggest compositions for the heating elements
therein that would allow for temperature variations covering
the entire range of about 30ºC to about 2000ºC, and
particularly the upper temperature level of about 2000ºC, is
misplaced given the broad recitations in claims 1 and 5 on
appeal. These claims merely require that the heating element
be "mainly made of carbon powder, alumina powder and silicon
carbide powder in proportions preselected to provide an
operating temperature in the range of about 30ºC to about
Appeal No. 96-0661
Application 08/189,833
9
2000ºC" (emphasis added), not that the heating element must
exhibit an operating temperature which encompasses the entire
range set forth in the claims. Moreover, we note that such an
understanding is belied by appellant’s own specification (page
4) which indicates that
"[b]y adjusting a mixture ratio of the carbon powder and
the alumina powder, it is possible to adjust the
generated temperature within a range from about
30ºC to about 2000ºC,"
and that the temperature of the heating element is changed in
accordance with the mixture ratio (page 4, lines 16-18).
On the basis of the foregoing, we will sustain the
examiner’s rejection of claim 1 under 35 U.S.C. § 103. On
page 4 of the brief appellant has grouped claims 1 and 5
together for purposes of this appeal, and thus we conclude
that claim 5 will fall with claim 1.
On page 7 of the brief, appellant has argued that none of
the applied references appear to disclose or suggest a
honeycomb structure prepared by sinter forging as set forth in
dependent claims 21 and 22 on appeal. However, we note that
Appeal No. 96-0661
Application 08/189,833
10
Matsubara discloses (col. 5, line 1) that the heating element
therein may be formed by sintering, while Fukuda discloses a
similar heating element/filter (18) that is of a honeycomb
construction. Given the collective teachings of these
references we are convinced that it would have been obvious to
one of ordinary skill in the art at the time of appellant’s
invention to form a heating element of the composition
disclosed in Matsubara in a honeycomb form by sinter forging.
Thus, we will also sustain the examiner’s rejection of claims
21 and 22 under 35 U.S.C. § 103.
Claims 4 and 8 on appeal require that the surfaces of the
heating elements of independent claims 1 and 5 be "covered
with membranes to prevent a thermal oxidation." Claims 11
through 18 on appeal similarly require the surfaces of the
heating elements of independent claims 1 and 5 to be "coated
with a material to prevent thermal oxidation" and that such
material be a fine metal oxide powder, such as an oxide of
zirconium, aluminum or nitriding aluminum, and that the
coating be coated to a thickness of "at least 20 microns." In
Appeal No. 96-0661
Application 08/189,833
11
treating these claims, the examiner has taken the position
(answer, page 6) that
"the use of a coating of a metal oxide powder on a
heating element used in a heating apparatus is considered
well known and routine of which the Examiner takes judicial
notice. The exact composition and the thickness of the
coating would have been a matter of engineering design
depending on the material to be heated and the desired
heating temperature and obvious to an ordinary artisan and
could be easily determined through routine trial and error
experimentation."
The examiner has likewise taken "judicial notice" of the
subject matter set forth in appellant’s claim 9 on appeal,
urging that tortuous channels in a fluid heating container are
also well known in the art of fluid heaters.
In the brief, pages 6-7, appellant has argued that none
of the applied references disclose or suggest the subject
matter of claims 4, 8, 9 and 11 through 18 on appeal, and
notes, in addition, that the references also do not teach or
suggest a means to introduce jets of water to the exhaust gas
which emanates from the heating element, as required in claim
10 on appeal. In the reply brief, pages 3-4, appellant has
traversed the examiner’s assertions based on "judicial notice"
and requested that the examiner provide appropriate references
Appeal No. 96-0661
Application 08/189,833
12
to support such contentions.
We note the examiner's citation in the supplemental
answer (Paper No. 16, page 2) of several prior art patents
which purportedly show features the examiner had previously
taken "judicial notice" of, however, the examiner has not
added any of these references to the rejection before us on
appeal. Given that these patents have not been set forth in
the statement of the § 103 rejection presently before us, or
in any other rejection made by the examiner, they form no part
of the issues presented for review by this panel of the Board.
As pointed out by the Court in In re Hoch,428 F.2d 1341,
1342,166 USPQ 406, 407 n.3(CCPA 1970), where a reference is
relied upon to support a rejection, whether or not in a minor
capacity, there would appear to be no excuse for not
positively including the reference in the statement of the
rejection.
Since the subject matter of claims 4 and 8 through 18 on
Appeal No. 96-0661
Application 08/189,833
We note in particular that the examiner has, throughout the prosecution of this3
application, apparently not ever addressed the means to introduce jets of water as
recited in appellant’s claim 10 on appeal. As for the newly cited patents, if the
examiner is of the view that they in fact render obvious the claimed subject matter as
defined in claims 4 and 8 through 18 on appeal, then he should make the appropriate
rejections and provide an appropriate explanation of those rejections as set forth in
Sections 2141, 2142, 2143 and 2143.01 of the Manual of Patent Examining Procedure.
13
appeal is not taught or suggested by the applied prior art
references, and it has not been demonstrated by the examiner
that such subject matter would have been obvious to one of
ordinary
skill in the art in the context of the applied prior art
references, it follows that the examiner’s rejection of claims
4 and 8 through 18 before us on appeal is factually deficient
and will therefore not be sustained.3
In light of the foregoing, the decision of the examiner to
reject claims 1, 5, 21 and 22 under 35 U.S.C. § 103 is
affirmed, while the decision to reject claims 4 and 8 through
18 on the same statutory basis is reversed.
Appeal No. 96-0661
Application 08/189,833
14
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
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-0661
Application 08/189,833
15
CEF/pgg
Leydig, Voit & Mayer
Suite 300
700 Thirteenth Street, N.W.
Washington, DC 20005