Ex Parte Ott et al

Board of Patent Appeals and Interferences

Apr 7, 2010

11142786 (B.P.A.I. Apr. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC ALLEN OTT, ANDREW PHILIP WOODFIELD,
DAVID PAUL MOURER, JOHN FREDERICK ACKERMAN,
JON RAYMOND GROH, ROBERT EDWARD SCHAFRIK,
KENNETH REES BAIN, MICHAEL FRANCIS XAVIER GIGLIOTTI,
and MATTHEW BERNARD BUCZEK
____________________

Appeal 2009-013873
Application 11/142,786
Technology Center 1700
____________________

Decided: April 7, 2010
____________________

Before: CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-6, 8, 9, and 11-24. We have jurisdiction under 35
U.S.C. § 6(b).
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We REVERSE.
Claim 1 is illustrative of Appellants’ invention:
1. A method for making an article, comprising the
steps of:
furnishing a plurality of powder particle substrates made
of a substrate metal; providing a nonmetallic precursor of a
metallic coating material, wherein the metallic coating material
comprises an alloying element that is thermophysically melt
incompatible with the substrate metal;
contacting the powder particle substrates with the
nonmetallic precursor;
chemically reducing the nonmetallic precursor to form
coated powder particles comprising the powder particle
substrates having a surface-enriched layer of the metallic
coating material thereon, wherein the step of chemically
reducing is performed without melting the powder particle
substrates; and
processing the coated powder particles to form the
article, wherein the step of processing is performed without
melting the powder particle substrates.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Blum
Askey
Hazelton
Arimoto (as translated)1
Kagohashi (as translated)2
US 4,381,942
US 4,860,567
US 4,892,579
JP 2002-339006 A
JP 2004-27242 A
May 3, 1983
Aug. 29, 1989
Jan. 9, 1990
Nov. 27, 2002
Jan. 29, 2004

1 An English language translation of Arimoto prepared by FLS, Inc. (PTO
09-4357 April 2009) was made of record in an Office Communication
mailed April 22, 2009.
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The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 1, 3, 9, 11-14, and 24 under 35 U.S.C. § 103
as unpatentable over Blum;
2. The rejection of claim 2 under 35 U.S.C. § 103 as unpatentable over
Blum in view of Askey;
3. The rejection of claim 4 under 35 U.S.C. § 103 as unpatentable over
Blum in view of Arimoto;
4. The rejection of claim 5 under 35 U.S.C. § 103 as unpatentable over
Blum in view of Kagohashi;
5. The rejection of claims 6 and 8 under 35 U.S.C. § 103 as unpatentable
over Blum in view of Hazelton;
6. The rejection of claims 15, 16, and 18-23 under 35 U.S.C. § 103 as
unpatentable over Blum in view of Askey, Arimoto, and Hazelton;
7. The rejection of claim 17 under 35 U.S.C. § 103 as unpatentable over
Blum in view of Askey, Arimoto, Hazelton, and Kagohashi.
II. DISPOSITIVE ISSUE
Appellants assert, and the Examiner does not contest, that Blum
teaches the presence of some degree of localized melting (Br. 7; Ans. 4 and
7-8). However, Appellants contend that the term “without melting” in claim
1 is properly interpreted such that any degree of melting is excluded from
the claim (Br. 7-9). The Examiner contends that the term “without melting”
is properly interpreted as “without melting the powder particle substrates
completely while partial or local melting such as melting at the interface of

2 An English language translation of Kagohashi prepared by FLS, Inc. (PTO
09-4363 April 2009) was made of record in an Office Communication
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the metallic coating material and the powder particle substrates is not
excluded” (Ans. 4).
Thus, the dispositive issue is: did Appellants identify a reversible
error arising from the Examiner’s interpretation of the term “without
melting”? We answer this question in the affirmative.
III. FINDINGS OF FACT
Appellants’ Specification is directed to solving the problem of
forming metal alloy powder particles when, for thermodynamic or kinetic
reasons, one of the alloying elements cannot be melted with the metal (Spec.
¶¶ [0004] and [0007]). Thus, the present invention is directed to a process
where the metal is made into powder particles (by melting or another
process) and then coated with a chemically reduced form of the alloy
element (Spec. ¶¶ [0006]-[0007]).
Appellants’ Specification is replete with the phrase “without melting”
but fails to provide an express definition thereof (see generally Spec.).
Appellants’ Specification states that the powder particle “is not melted
as the alloying element is being introduced so that the potential
thermophysical melt incompatibility is avoided” (Spec. ¶ [0013]).
Appellants’ Specification also states that “[t]he present approach
provides a technique to minimize and desirably avoid the detrimental effects
by the elimination of melting in the preparation and processing of the alloy
(Spec. ¶ [0025]).
Appellants’ Specification also states that “adverse effects are avoided
in the present melt-less approach” (Spec. ¶ [0036]).

mailed April 22, 2009.
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IV. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (“The inquiry into how a person of ordinary skill in the art
understands a claim term provides an objective baseline from which to begin
claim interpretation”). “Although the PTO must give claims their broadest
reasonable interpretation, this interpretation must be consistent with the one
that those skilled in the art would reach.” In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999)
Review of the specification is required as it would be unreasonable to
ignore any interpretive guidance afforded by the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). However, “limitations are not to be
read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).
V. ANALYSIS
The Examiner’s interpretation is inconsistent with the ordinary
meaning of the phrase “without melting” to one of ordinary skill in the art.
One of ordinary skill in the art would have recognized that “melting” is a
process that can occur over time. One of ordinary skill in the art would thus
read the phrase “without melting” as without commencing the process of
melting, i.e., where no melting has occurred. For example, an ice cube
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would be considered to be “melting” even if some portion of the cube has
yet to undergo the phase change to water.
Moreover, the Examiner’s interpretation is inconsistent with the
meaning conveyed to one of ordinary skill in the art by the Specification.
While Appellants rely on paragraph [0025] to support their interpretation, we
find it even more persuasive that one of ordinary skill in the art would
understand the phrase to mean without any melting because the
Specification describes the invention as a “melt-less approach.”
Thus, the Examiner erred in interpreting the term “without melting” as
without melting completely. All of the claims require chemically reducing
“without melting,” and Blum’s partial or localized melting does not meet the
requirements of the claims. Since the Examiner’s rejections all rely, at least
in part, on the Examiner’s application of Blum as discussed above, we
cannot say the Examiner’s rejections adequately address all the limitations
of the claims.
VI. CONCLUSION
On the record before us, we do not sustain the rejections maintained
by the Examiner.
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VII. DECISION
We reverse the Examiner’s decision.

REVERSED

kmm

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