Ex Parte Pfeiffer

Board of Patent Appeals and Interferences

Jan 7, 2009

09929267 (B.P.A.I. Jan. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANS-WULF PFEIFFER
____________

Appeal 2008-4420
Application 09/929,267
Technology Center 1700
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Decided: January 07, 2009
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a method for increasing a boundary strength
layer of a ceramic workpiece. Claim 1 is illustrative:
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1. A method for increasing a boundary layer strength of
a ceramic workpiece comprising the steps of:

providing a workpiece consisting of ceramic, the temperature of
which is not elevated above room temperature and which does not comprise
zirconia;

providing a tool which has at least a partially rounded contour with a
predetermined diameter, the tool comprising at least the same order of
hardness as the ceramic workpiece;

contacting the ceramic workpiece with the tool within a
predetermined surface area, said predetermined surface area being less than
the total surface area of the ceramic workpiece and being selected based
upon the composition of the workpiece;

producing a plastic deformation on the predetermined surface area;
and

generating internal compressive strain within the ceramic workpiece
in the vicinity of the predetermined surface area;

wherein the predetermined diameter for the tool does not exceed a
critical value ranging from about .1 mm to about 4 mm, the critical value
depending upon the composition of the ceramic workpiece selected such
that, upon contacting the ceramic workpiece with the tool, generation of
damage in the form of brittle fracture processes in the predetermined surface
area is substantially avoided and the boundary layer strength of the ceramic
workpiece is increased.

The Examiner relies upon the following prior art references:
Rice 5,228,245 Jul. 20, 1993
Thomas 3,573,023 Mar. 30, 1971
Brookes 5,128,083 Jul. 07, 1992
Rokutanda 6,153,023 Nov. 23, 2000
Tanaka (abstract) JP 4108675 A Apr. 9, 1992
(hereinafter JP 675)
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Kingery, W.D. Introduction to Ceramics 3 573-575 (2nd ed., 1976) (1960).
(hereinafter Kingery textbook)

The Examiner rejected:
a) claims 1-18 under 35 U.S.C. § 112, first paragraph as failing to
comply with the enablement requirement;
b) claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over
Brookes in view of Thomas, Rokutanda, and JP 675; and
c) claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over
the combined teachings of Brookes, Thomas, JP 675 and Rice1.
Appellants do not separately argue with any reasonable specificity the
claims in any of the three grounds of rejection on appeal (App. Br. 6-17;
Reply Br. 2-11).
Therefore, we select independent claim 1 to decide the issue in each
ground of rejection on appeal. 37 C.F.R. § 41.37(c)(1)(vii)(2006).
ISSUES ON APPEAL
Appellant’s dispute with each of the Examiner’s rejections hinges on
the meaning of the claim term “ceramic”. Appellant contends that one of
ordinary skill in the art would understand that “ceramic” as used in the
claims is limited to “true ceramics” (see, e.g., App. Br. 7-8; Exhibit A,
Declaration of inventor Mr. Hans Wulf Pfieffer).
The Examiner contends that “ceramics” is a broad term that may
include all materials which have as their essential component inorganic

1 Although the Examiner’s statement of this rejection states “Brookes,
Thomas, or the abstract of JP [675] in view of Rice” (Ans. 11), it is apparent
that this rejection is based on the combined teachings of the four cited
references as discussed by the Examiner and Appellant.
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nonmetallic materials, including cermets (Ans. 15; Kingery textbook, pp. 3,
573-574).
The Appellant and Examiner also disagree on whether undue
experimentation would be required to practice the claimed invention (App.
Br. 7-11; Ans. 5-8).
The issues arising from these contentions are:
1. Has the Appellant shown that the Examiner reversibly erred in
rejecting the claims under 35 U.S.C. 112, first paragraph, because one of
ordinary level of skill in the art would have been able to practice the entire
breadth of the claimed invention without undue experimentation?
2. Has the Appellant shown that the Examiner reversibly erred in
rejecting the claims under 35 U.S.C. 103(a) because the term “ceramic”, as
used in claim 1, is limited to “true ceramics” as Appellant contends?
We answer both of these questions in the negative.
FINDINGS OF FACTS
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in later
sections including the analysis portions of the opinion.
1. As found by the Examiner, “ceramics” is a broad term that may
include all materials which have as their essential component inorganic
nonmetallic materials, including cermets (Ans. 15; Kingery textbook,
pp.3,and 573-574).
2. Appellant’s Specification provides no explicit definition of
ceramics. Appellant’s Specification refers to “brittle, hard materials, which
encompass the ceramic materials such as silicon nitrides” (Spec. 2, [0004];
emphasis provided).
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3. Appellant’s Specification, in the Background to the Invention
section, discusses Brookes (Spec. 6, ¶ [0016]). Brookes describes a method
for modifying the surface of “hard engineering ceramic materials” (Brookes,
col. 1, ll. 5-6). Brookes defines ceramics as:
These materials include compounds (oxides, carbides, nitrides,
borides) of the elements silicon, boron and other transition
metals, and for the purposes of the present invention can be
generally defined as having a room temperature Knoop
indentation hardness, using a 1 kg normal load, greater than
1000 kg/mm2 (or 10 GPa).

(Brookes, col. 1, ll. 7-12; emphasis provided).

4. Tungsten is a transition metal. Brookes’ definition of ceramics
therefore includes, e.g., tungsten carbide.
5. Appellant’s Specification does not distinguish the ceramic materials
used in the invention over those described in Brookes.
6. Kirk-Othmer 2 states “Ceramics comprise all engineering materials
or products (or portions thereof) that are chemically inorganic, except metals
or alloys” and “that there are no distinct boundaries between ceramic and
metallic or polymeric materials” (p. 234). Kirk-Othmer lists over 100
materials used in the manufacture of ceramic products including boron
carbide and tungsten carbide (“other materials too numerous to list here are
[also] used”) (p. 251-252).
6. Appellant’s Specification states that “the prevailing understanding”
regarding “brittle, hard materials” (e.g., ceramic materials) was that a further
increase of their strength was not possible (Spec. 2, ¶ [0005]).

2 5 Kirk-Othmer Encyclopedia of Chemical Technology 234, 251-252 (3d
ed. 1979) (hereinafter Kirk-Othmer).
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7. Appellant’s Specification also states that:
(a) previous mechanical methods of increasing the strength of the skin
or boundary layer of “brittle, hard materials” (e.g., ceramics) has so far
neither been known or applied in practice without elevating the temperature
of the material (Spec. 3-4, ¶ [0009]);
(b) prior art stated that the increase in boundary layer strength
achieved on metal components by shot-peening is not obtained on “ceramic
materials” (Spec. 4, ¶ [0010]); and
(c) “In general, brittle, hard materials such as ceramics” do not “have
the ability to undergo a plastic deformation at room temperature” (Spec. 4, ¶
[0011]).
8. Appellant’s Specification contains no working examples of the
claimed invention.
9. The amount of experimentation needed to practice the claimed
invention over the broad genus of all ceramics which do not comprise
zirconia as claimed would be vast.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a claim is given its
broadest reasonable construction “‘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). Although claims are to be
interpreted in light of the specification, limitations from the specification are
not to be read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184-85
(Fed. Cir. 1993); see also, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
1989). An applicant seeking a narrower construction must either show why
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the broader construction is unreasonable or amend the claim to expressly
state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir.
1997).
“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.” Id. at 1056.
Enablement
“To be enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.”’ Genentech, Inc. v. Novo Nordisk, A/S,
108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557,
1561 (Fed. Cir. 1993) (emphasis added).
As stated in In re Wands, 858 F.2d 731 (Fed. Cir. 1988):
Factors to be considered in determining whether a
disclosure would require undue experimentation . . . include (1)
the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. at 737.

All of the factors need not be reviewed when determining whether a
disclosure is enabling. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200,
1213 (Fed. Cir. 1991) (noting that the Wands factors “are illustrative, not
mandatory. What is relevant depends on the facts”).

ANALYSIS
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The first underlying question is one of claim interpretation. Appellant
contends that the Examiner has taken an unreasonable interpretation
regarding the meaning of the word “ceramic”. Appellant proposes that his
invention is limited to “true ceramics” and excludes, e.g., tungsten carbide.
We disagree. Appellant has failed to provide a specific definition of
ceramics in the Specification. “It is the applicant’s burden to precisely
define the invention, not the PTO’s.” In re Morris, 127 F.3d at 1056 (“The
problem in this case is that appellants failed to make their intended meaning
explicitly clear.”)
“Ceramics” encompasses a wide variety of materials (FF 1-6).
Indeed, Appellant’s discussion of Brookes in the Specification implicitly
endorses Brookes’ broad definition of a ceramic material (FF 3-5).
We therefore agreewith the Examiner that the invention as claimed
encompasses increasing the boundary layer strength of any ceramic material
in accordance with the Examiner’s reasonable textbook definition of
ceramics, so long as the ceramic “does not comprise zirconia” as recited in
claim 1.
Issue 1- Enablement
After having properly determined the scope of the claim at issue, we
turn to the issue of enablement. In order to establish a prima facie case of
non-enablement, the Examiner must provide a reasonable explanation as to
why the scope of protection provided by a claim is not adequately enabled
by the disclosure. See In re Wright, 999 F.2d at 1561-62. An Appellant who
chooses broad language must make sure the broad claims are fully enabled.
The threshold step in resolving this issue is to determine whether the
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Examiner has met his burden of proof by advancing acceptable reasoning
inconsistent with enablement.
In the present case, it is the Examiner's position that the Specification
does not set forth sufficient guidance and teachings to enable how to make
and/or use a process for increasing the boundary strength layer of a ceramic
workpiece (which does not comprise zirconia) at room temperature without
undue experimentation (Ans. 5-8). The Examiner bases this determination
on several factors, including that: the skilled artisan would not expect
mechanical deformation to increase the boundary strength layer of ceramics,
there are no working examples, and the genus of ceramic materials
encompassed by the claim is very large (id.; see also, Ans. 11-14).
The Examiner has therefore determined that, based on the
Specification and state of the art, it would require undue experimentation to
practice the claimed invention within the scope of the pending claims, which
broadly encompasses all ceramics that do not comprise zirconia.
Appellant’s contentions that the Specification includes specifics
relating to the method as claimed are not persuasive (App. Br. 8-9; Reply Br.
6). While the Specification describes some parameters for a tool for use in
the process, the Specification provides no working examples as guidance.
Further, the Specification does not describe to those of ordinary skill in the
art what force was used to treat any specific ceramic material, nor what
“predetermined surface area” was used of any specific ceramic material.
The mere statement that “it was possible” to demonstrate a 15% increase in
boundary layer strength of “silicon nitrite” (Spec. 8, ¶ [0025]) does not
reasonably appear to teach one how to make and/or use the invention for
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silicon nitrite, and certainly not for all ceramics that exclude zirconia as
claimed.
It would also appear that the nature of the invention, mechanically
treating ceramics at room temperature to increase their boundary layer
strength, is generally an unpredictable technology. Appellant’s Specification
repeatedly indicates that it was generally accepted that “hard, brittle”
ceramics, such as silicon nitrides, could not be successfully mechanically
treated at room temperature.
Thus, the Examiner’s position appears to be reasonable. Appellant
has not shown that the Examiner erred in establishing that it would require
undue experimentation on the part of one of ordinary skill in the art to
determine how to use the claimed method at room temperature on any and
all ceramics which do not comprise zirconia, in order to practice the method
of the invention within the full scope of claims 1-18.
Issue 2- Obviousness
ADDITIONAL PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1730-31 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S.
1, 17-18 (1966).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007). The question
to be asked is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 127 S. Ct.
at 1740.
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (“in a section 103 inquiry, ‘the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.”’ (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976))).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. “The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of . . . the explicit
content of issued patents.” KSR, 127 S. Ct. at 1741. The Supreme Court
also noted in KSR that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
ADDITIONAL FINDINGS OF FACT
10. As found by the Examiner, Brookes describes a method of
mechanically deforming a ceramic workpiece to increase the boundary layer
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strength as claimed except that (a) Brookes does not explicitly teach the
diameter of the tool, and (b) Brookes does not explicitly teach performing
the method at room temperature.
11. Brookes teaches the temperature “will usually be in the range of
0.3 Tm [i.e., the melting temperature of the ceramic] to 0.5 Tm” (col. 2, ll.
32-34; emphasis provided).
12. Thomas describes that surface hardening by a mechanical
deformation process (e.g., via shot peening) for some ceramics (e.g.,
tungsten carbide, boron carbide) can occur at room temperature, whereas
other ceramics require an elevated temperature (col. 3, ll. 49-65).
13. Rokutanda describes that 0.2mm to 0.35mm diameter of a shot
(i.e., the tool) for a shot peening surface hardening process is conventional
(Fig. 3; col. 1, ll. 30-36).
14. One of ordinary skill in the art would have appreciated that the
diameter of the shot (i.e., the tool) is a known result effective variable (e.g.,
Rokutanda, Fig. 3; col. 1, 24-28).
15. One of ordinary skill in the art would have appreciated that
surface hardening (e.g., via shot peening) of ceramic workpieces may be
applied to only a “predetermined area” of the workpiece (see, e.g., JP 675,
abstract)
16. One of ordinary skill in the art would have known that mechanical
deformation surface hardening of ceramics via grit blasting (e.g., with
.05mm to .58mm particle size) is known (Rice; col. 3, ll. 46-50; col. 4, ll. 8-
11). Rice describes that “[a]ny transformation toughened material may be
treated”; “ceramics are particularly suitable for treatment” and ceramic
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materials containing zirconia are “especially preferred” (Rice, col. 2, ll. 15-
50; col. 3, ll. 20-25; emphasis provided).
ANALYSIS
Appellant’s dispute with the Examiner’s § 103 rejections hinges on
the meaning of the claim term “ceramic”. Appellant contends that the
Examiner has taken an unreasonably broad interpretation regarding the
meaning of the word “ceramic”. However, we find no basis in the claim
language or in the disclosure in the Specification on which to read the
disputed language in the narrow sense urged by Appellant for all the reasons
previously discussed.
We agree with the Examiner’s factual findings and conclusion of
obviousness with respect to the § 103 rejections (i.e., the rejection based on
the combined teachings of Brookes, Thomas, Rokutanda and JP 675 and the
alternative rejection based on the combined teachings of Brookes, Thomas,
JP 675 and Rice).
Appellant’s contention that Thomas directly teaches “that the
Examiner’s proposed modification cannot be done with a ceramic” is not
well taken (App. Br. 12-13). Claim 1, when read in its broadest reasonably
light, includes treating a workpiece consisting of ceramics such as boron
carbide, or tungsten carbide. These materials are taught and/or suggested by
Thomas to be amenable to mechanical deformation at room temperature (FF
12).
Appellant’s contend that the “method taught in Rice includes zirconia
in each case and will not work for ceramics at room temperature unless they
contain zirconia” (App. Br. 16). This is not persuasive, since Rice also
describes treating ceramics that do not contain zirconia (FF 16).
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The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. Here, the
combined teachings of the applied prior art exemplify that all the claimed
steps are known in the art of surface hardening materials including ceramic
materials. Thus, to modify Brookes for the reasons proposed by the
Examiner would have been prima facie obvious (Ans. 8-11).
One of ordinary skill in the art is a person of ordinary creativity, not
an automaton. KSR, 127 S. Ct. at 1742. The claim encompasses a vast
number of ceramic materials and also does not require that any specific
amount of strength increase is achieved. An artisan would have appreciated
that a surface hardening process as rendered obvious by the combined
teachings of the applied prior art would have reasonably been expected to
increase a boundary layer strength to at least some extent of at least some
ceramics at room temperature.
Therefore, for the foregoing reasons and those stated in the Answer,
we agree with the Examiner’s findings and legal conclusion of obviousness
of claim 1 (as well as all other not separately argued claims) based on the
combined teachings of Brookes, Thomas, Rokutanda, and JP 675 and as
alternatively based on Brookes, Thomas, JP 675, and Rice.
CONCLUSION
Appellant has not shown that the Examiner reversibly erred in
rejecting the claims under 35 U.S.C. 112, first paragraph, because one of
ordinary level of skill in the art would have been able to practice the entire
breadth of the claimed invention without undue experimentation.
Appellant has also not shown that the Examiner reversibly erred
because the term “ceramic” as used in claim 1 is limited to “true ceramics”.
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Appellant has therefore not shown that the Examiner erred because the
applied prior art does not render obvious the method for treating a workpiece
“consisting of ceramic . . . which does not comprise zirconia” as claimed.
It follows that we sustain the § 112 rejection of claims 1-18 as well as
the § 103 rejections of claims 1-18 advanced by the Examiner in this appeal.
ORDER
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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Application/Control No.

09/929,267
Applicant(s)/Patent Under
Reexamination

Notice of References Cited
Examiner

John Hoffmann
Art Unit

1700

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U.S. PATENT DOCUMENTS

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FOREIGN PATENT DOCUMENTS

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NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

Kirk-Othmer Encyclopedia of Chemical Technology, 1979, John Wiley & Sons, 3d ed., Vol. 5, p. 234, 251-252.

V

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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