Ex Parte Quinton et alDownload PDFPatent Trial and Appeal BoardMar 29, 201713305803 (P.T.A.B. Mar. 29, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/305,803 11/29/2011 Brant Quinton 2011P21991US01 1028 28524 7590 03/31/2017 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 EXAMINER TRAN, BINH X Orlando, EL 32817 ART UNIT PAPER NUMBER 1713 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): ipdadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRANT QUINTON and TROY MARLAR Appeal 2016-0032541 Application 13/305,803 Technology Center 1700 Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and SHELDON M. McGEE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Siemens Medical Solutions USA, Inc. Appeal 2016-003254 Application 13/305,803 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below: 1. A composite crystal growth crucible comprising: a sidewall made of an iridium alloy and a bottom consisting of iridium. The Examiner relies on the following prior art references as evidence of unpatentability: Lanam, et al. US 4,444,728 Apr. 24, 1984 (hereafter “Lanam”) Kunihiro JP 2006-205200 Aug. 10, 2006 THE REJECTIONS 1. Claims 1—2, 4—6, 8—11, 13, and 15—19 are rejected as being obvious under 35 U.S.C. § 103(a) over Kunihiro. 2. Claims 3, 7, 12, 14, and 20 are rejected as being obvious under 35 U.S.C. § 103(a) over Kunihiro in view of Lanam. ANALYSIS We select claim 1 as representative of all the claims on appeal, based upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014). Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer to the Appeal Brief and Final Office Action appealed from, and add the following for emphasis. 2 Appeal 2016-003254 Application 13/305,803 Claim 1 recites “[a] composite crystal growth crucible comprising: a sidewall made of an iridium alloy and a bottom consisting of iridium.” Appellants argue that both references (Kunihiro and Lanam) teach homogeneous material construction crystal growth crucibles (either all iridium or all iridium alloy), and not a composite crucible. Appeal Br. 14. Reply Br. 15. Appellants state that the present inventors conceived the idea to create a composite crystal growth crucible with different materials in the respective sidewall and bottom portions. Appeal Br. 14. Appellants argue that this new perspective led to a sidewall construction of iridium alloy, which resists sidewall circumferential bulging, and a bottom construction consisting of iridium, with its reduced propensity to develop cracks during melt cycles, thus meeting the need in the art identified in paragraph [0012] of the Specification, as well as the objects of the invention set forth in paragraphs [0014]—[0015] of the Specification. Id. Appellants submit that, compared to known crystal growth crucibles constructed of homogeneous iridium or iridium alloy, the present application requires additional expenditure of effort to form the sidewall and bottom from different materials (i.e., an iridium alloy sidewall and a bottom consisting of iridium). Id. at 16. Appellants state that the prior art conventional wisdom in the crucible foundry industry was to not go through the extra effort. Id. Appellants state, however, that the present inventors recognized a new approach, and challenged “conventional wisdom” in the art that crucibles should have homogeneous construction. Id. Reply Br. 16. Under this backdrop, Appellants submit that the rejection lacks proper motivation to make the proposed modification for the reasons 3 Appeal 2016-003254 Application 13/305,803 expressed on pages 15—17 of the Appeal Brief (with specific reference made to 2010 KSR Guidelines), and also on pages 18—19 of the Reply Brief. We are unpersuaded by Appellants’ arguments in the record for the reasons provided by the Examiner on pages 16—18 of the Answer. Therein, the Examiner emphasizes that Kunihiro states that “the present invention carries out weld bonding of the drum section of the cylindrical shape which consists of iridium or an iridium alloy, and the bottom part of the disk shape which consists of iridium or an iridium alloy” in paragraph [0009]. Ans. 17. The Examiner states that Kunihiro’s Abstract discloses “a cylindrical trunk portion made of iridium or an iridium alloy and a circular disk shape bottom portion made of iridium or an iridium alloy.” Id. The Examiner submits that thus Kunihiro teaches it is possible to use iridium or iridium alloy for the sidewall, and iridium or iridium alloy for the bottom part. The Examiner states that because there are only two possible choices of materials (iridium or iridium alloy), it would have been obvious to have chosen a finite number of identified, predictable solutions, with a reasonable expectation of success. Id. The Examiner also points out that Kunihiro never explicitly indicates that the crucible must be of homogenous construction. Id. at 18. The Examiner states that Kunihiro thus suggests that it is possible to choose different materials for the sidewall and the bottom of the crucible. Id. While Appellants submit that no one would have undertaken their claimed subject matter without a recognized reason to do so (Appeal Br. 15), the Examiner has provided a sufficient reason to do so, based on the teachings of Kunihiro, as discussed, supra. We add that the selection of a known material based upon its suitability for the intended use is a design 4 Appeal 2016-003254 Application 13/305,803 consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199 (CCPA 1960). Also, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt 7 Co. v. Teleflex Inc., Ill S.Ct. 1727, 1739 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id., Ill S. Ct. at 1740. In view of the above, we affirm Rejection 1. Appellants do not argue the claims rejected in Rejection 2, so we affirm Rejection 2 for the same reasons that we affirmed Rejection 1. DECISION Each rejection is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a). 5 Appeal 2016-003254 Application 13/305,803 ORDER AFFIRMED 6 Copy with citationCopy as parenthetical citation