Ex parte Reed et al.

Board of Patent Appeals and Interferences

Jul 27, 1999

08296307 (B.P.A.I. Jul. 27, 1999)

Application for patent filed August 25, 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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LARRY E. REED, RONALD E. BROWN,
TIMOTHY P. MURTHA, TIMOTHY P. HARPER,
JAMES P. DEGRAFFENRIED, MARK D. SCHARRE
and GIL J. GREENWOOD
_____________
Appeal No. 96-1770
Application 08/296,3071
______________
ON BRIEF
_______________
Before WINTERS, OWENS, and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
Appeal No. 96-1770
Application No. 08/296,307
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examiner’s final rejection of claims 1 through 14, which are
the only claims in this application.
According to appellants, the invention is directed to a
method of controlling the decomposition temperature of an
organosilicon compound by adding an organotin compound in
order to improve the laydown of silicon upon metal surfaces
(Brief, page 2). Illustrative claim 1 is reproduced below:
1. A method of promoting the decomposition of an
organosilicon compound, said organosilicon compound having a
decomposition temperature required to achieve a given
percentage decomposition, in a process for depositing silicon
upon a metal surface, said method comprising the steps of:
admixing with said organosilicon compound an organotin
compound in an amount effective to lower said decomposition
temperature of said organosilicon compound to a reduced
decomposition temperature required to achieve said given
percentage decomposition to form an admixture; and
contacting said admixture with said metal surface at said
reduced decomposition temperature to thereby deposit silicon
thereon.
The examiner has relied upon the following reference as
evidence of obviousness:
Porter et al. (Porter) 4,692,234 Sep. 8, 1987
Claims 1 through 14 stand rejected under 35 U.S.C. § 103
as unpatentable over Porter (Answer, page 3, citing the final
rejection dated Mar. 21, 1995, Paper No. 5). We reverse this
Appeal No. 96-1770
Application No. 08/296,307
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rejection for reasons which follow.
Appeal No. 96-1770
Application No. 08/296,307
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OPINION
The examiner finds that Porter discloses the application
of organotin compounds with organosilicon compounds to metal
substrates in order to prevent coke deposition on the metal
surfaces of thermal cracking reactors (Final Rejection, page
3, citing Porter, column 2, lines 35-36; 68-69; column 3,
lines 38-44; 38[sic]-65; column 5, line 58-column 6, line
8). The examiner states that Porter teaches the improvement
obtained by adding organotin compounds to the organosilicon
(Id., citing Porter, Table 1, column 9, lines 40-45).
The examiner concludes that, since applicants do not
perform any different process steps than the reference, the
result observed “must be inherent in the Porter process.”
(Id.). Although the examiner does not mention inherency in
the Answer, the examiner arrives at the same conclusion:
Porter as well as the Appellant adds the two
compounds and apply the mixture to cracking
equipment surfaces, to prevent coke deposition. . . .
[R]egardless of the number of given variables the
appellants define, they employ the same steps as
they did in the Porter reference. (Answer, pages 3-
4).
Apparently the examiner is basing this conclusion on the
premise that, since the steps in the claims and the prior art
Appeal No. 96-1770
Application No. 08/296,307
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are the same, the results must inherently be the same. In re
Sussman, 141 F.2d 267, 269-70, 60 USPQ 538, 540-41 (CCPA
1944); Ex parte Marhold, 231 USPQ 904, 905 (Bd. Pat. App. &
Int. 1986) (Since the steps are the same, the results must
inherently be the same unless they are due to conditions not
recited in the claims).
Appellants argue that Porter does not teach the method
steps for controlling the decomposition temperature and
percentage decomposition of organosilicon (Brief, page 6).
Appellants further argue that the examiner has ignored the
temperature and decomposition limitations of the claims
(Brief, page 12). The initial burden of establishing
unpatentability rests with the examiner. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
“Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.
[Citations omitted].” In re Robertson, 169 F.3d 743, 745,
49 USPQ2d 1949, 1951 (Fed. Cir. 1999). In fact, the examiner
admits that Porter does not disclose that the decomposition
temperature of the organosilicon is reduced by the addition of
Appeal No. 96-1770
Application No. 08/296,307
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the organotin compound (Final Rejection, page 3). The
examiner merely reiterates that the steps of Porter and the
claims on appeal are the same (Answer, page 4).
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Application No. 08/296,307
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In our view, the examiner has not established that the
process steps of the claims on appeal are the same as the
steps disclosed by Porter. The method of appealed claim 1
requires that the admixture of organosilicon and organotin is
contacted with the metal surface “at said reduced
decomposition temperature . . ." to thereby deposit silicon
thereon. The examiner has failed to point to any disclosure
or teaching in Porter of contacting the admixture of compounds
at a reduced decomposition temperature. Although not
discussed by the examiner, Porter does disclose that the
antifoulant admixture is applied to the metal surface and then
treated by heating to 700EC. in air for one minute “to
decompose the antifoulant to its oxide . . . ” (column 8,
lines 30-36). However, Porter teaches the same decomposition
temperature for the organosilicon compound per se as used for
the organosilicon and organotin admixture (see Example 1 in
column 8, solutions C and D). Even if there was evidence of
record as to the decomposition temperature of the
organosilicon compounds (specifically tetraethylorthosilicate,
see solution C), this disclosure by Porter of the same
treating temperature for organosilicon compounds and the
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organosilicon-organotin admixture would not have suggested the
“reduced decomposition” temperature limitation required for
the organosilicon-organotin admixture in the method of the
claims on appeal. Therefore the examiner has failed to
establish that Porter provides any disclosure or teaching of
employing a reduced decomposition temperature for the
organosilicon-organotin admixture as required by claim 1 on
appeal.
In addition to the limitation regarding a reduced
decomposition temperature found in claim 1 on appeal, the
method of claim 8 on appeal requires a step of “defining said
given percentage decomposition . . . .” The examiner has not
presented any evidence or pointed to any disclosure or
teaching in Porter that would have shown or suggested this
limitation.
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness.
Accordingly, the examiner’s rejection of claims 1-14 under §
103 as unpatentable over Porter cannot be sustained.
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Application No. 08/296,307
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The decision of the examiner is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:svt
Appeal No. 96-1770
Application No. 08/296,307
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