Ex Parte Panter et al

Board of Patent Appeals and Interferences

Dec 15, 2006

09780303 (B.P.A.I. Dec. 15, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte RONALD L. PANTER and THOMAS A. HEROLD
________________

Appeal 2007-0174
Application 09/780,303
Technology Center 1754
________________

Decided: December 15, 2006
________________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
THOMAS A. WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 9-17 and 20-27.
Claims 1-8, 18, and 19 have been allowed by the Examiner, and claims
28-38 stand withdrawn from consideration. Claim 9 is illustrative:
9. A method for making carbon fibers, the method including the steps of:
providing an elongated precursor fiber;
providing a plurality of furnaces disposed adjacent one another
in a serial side-by-side relationship and configured to heat the fiber to
different respective temperatures as the fiber is drawn through the furnaces;
Appeal 2007-0174
Application 09/780,303

2
stabilizing the precursor fiber by heating the precursor fiber in
an oxidizing environment as it is drawn through respective heating
chambers of an initial group of the plurality of furnaces while applying
tension to the precursor fiber; and
continuously carbonizing the stabilized fiber by further heating
the fiber in an oxidizing environment as it is drawn through the heating
chamber of a final one of the plurality of furnaces.
The Examiner relies upon the following references as evidence of
obviousness:
Pepper US 4,526,770 Jul. 2, 1985
Berkebile (deceased) US 5,316,654 May 31, 1994
McCullough US 5,700,573 Dec. 23, 1997
Uchida US 5,733,484 Mar. 31, 1998
Appellants’ claimed invention is directed to a method for making
carbon fibers from an elongated precursor fiber utilizing a plurality of
furnaces disposed adjacent to one another in a serial side-by-side
relationship. The precursor fiber is first stabilized by heating in an oxidizing
environment as the fiber is drawn through an initial group of furnaces, and is
then stabilized by heating the fiber in an oxidizing environment as it is
drawn through the heating chamber of a final one of the plurality of
furnaces.
Appealed claims 9, 13-17, 20-24, and 27 stand rejected under
35 U.S.C . § 103(a) as being unpatentable over Pepper in view of Uchida.
Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over the stated combination of references further in view of Berkebile. Also,
Appeal 2007-0174
Application 09/780,303

3
claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pepper in view of Uchida and McCullough.
Appellants have not set forth separate arguments for any particular
claim in the separately rejected groups of claims. Nor have appellants
advanced separate substantive arguments for the separate § 103 rejections of
claims 10-12 and 25-26, respectively. For the separate § 103 rejections of
claims 10-12 and 25-26 appellants simply rely upon the arguments set forth
for independent claim 9, upon which claims 10-12 and 25-26 depend.
Accordingly, all the appealed claims stand or fall together, and we will limit
our consideration to the examiner’s § 103 rejection of claim 9.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
Appellants do not dispute the Examiner’s factual determination that
Pepper, like Appellants, discloses a method for making carbon fibers which
includes stabilizing the precursor fiber by heating it in an oxidizing
environment under tension, and then continuously carbonizing the stabilized
fiber by further heating it in a final one of a plurality of furnaces. As
Appeal 2007-0174
Application 09/780,303

4
recognized by the Examiner, Pepper carbonizes the stabilized fiber in a non-
oxidizing atmosphere rather than in the claimed oxidizing atmosphere.
However, as properly pointed out by the Examiner, Uchida provides the
requisite evidence that one of ordinary skill in the art would have found it
obvious to employ an oxidizing environment in the carbonizing furnace of
Pepper as an alternative to a non-oxidizing atmosphere. In relevant part,
Uchida discloses the following:
Regarding the atmosphere of this case, calcination is
preferably performed in a vacuum or under a reduced pressure,
or a non-oxidizing atmosphere of nitrogen gas, argon gas,
helium gas, or the like under a reduced pressure, elevated
pressure, or normal pressure. The calcination can be performed
even in an oxidizing atmosphere, e.g., air, as far as it is
performed at a comparatively low temperature, e.g., 400° to
600° degrees C., within a short period of time.
Uchida at col. 6, ll. 5-12. Accordingly, based on the collective teachings of
Pepper and Uchida, we have no doubt that one of ordinary skill in the art
would have found it obvious to resort to the option of using an oxidizing
atmosphere in the carbonizing furnace of Pepper. Also, we agree with the
Examiner that the optional use of an oxidizing atmosphere taught by Uchida
would have offered the obvious advantages of avoiding the higher cost of
inert gases and higher operating temperature.
Appellants offer no rationale, based on factual evidence or scientific
reasoning, why one of ordinary skill in the art would have been dissuaded
from using an oxidizing atmosphere in the carbonizing furnace of Pepper.
Rather, the Appellants maintain that the Examiner has not identified either
Appeal 2007-0174
Application 09/780,303

5
an explicit teaching or an implicit suggestion to modify or combine the
teachings of Pepper and Uchida. According to Appellants, “[i]dentifying an
advantage merely shows that, in hindsight, there’s an advantage to
combining the elements [but] does not show an implicit suggestion”
(principal Br. 7, last paragraph). However, as explained by the Examiner,
inasmuch as both Pepper and Uchida are directed to the same field of
endeavor, namely, processing carbon preform fibers into carbon fibers
through stabilization and carbonization, the references are from an
analogous art and, thereby, combinable. Being properly combinable, it is
appropriate to look to the explicit teaching in Uchida regarding the optional,
alternative use of either an oxidizing or non-oxidizing atmosphere in a
carbonization furnace of the type disclosed in Pepper. Also, we find that the
motivation articulated by the Examiner is in accordance with the logic and
sound scientific reasoning that Appellants acknowledge is a valid basis for
establishing motivation (see footnote at page 2 of Appellants’ Reply Brief).
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the prima facie case of obviousness established by the
Examiner.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
Appeal 2007-0174
Application 09/780,303

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2004).
AFFIRMED

clj

Reising, Ethington, Barnes, Kisselle,
Learman & McCulloch, P.C.
P.O. Box 4390
Troy, MI 48099