Ex Parte Riedel et al

Board of Patent Appeals and Interferences

Sep 29, 2009

10503314 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RALF RIEDEL, ALEXANDER KLONCZYNSKI, and
WOLFGANG DRESSLER
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Appeal 2009-003838
Application 10/503,314
Technology Center 1700
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Decided: September 29, 2009
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-003838
Application 10/503,314

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 10 and 13-18, all of the pending claims. (App. Br. 3).
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Claims 17 and 18 are illustrative of the subject matter on appeal and
are reproduced below:
17. A device, comprising:
a sheathed-element glow plug including at least one of an
insulating layer and a conductive layer formed by at least
partial pyrolysis of one starting material mixture and a starting
body containing a polymer precursor material, wherein the
starting mixture or the starting body includes boron and a
proportion of 0.1 wt.% to 60 wt.%.

18. A method for manufacturing a device from a ceramic composite that
material, comprising:

providing one of a starting material and a starting body containing a
polymer precursor material, wherein the starting mixture or the
starting body includes boron and a proportion of 0.1 wt.% to 60
wt.%;

performing at least partial pyrolysis of the one of the starting
mixture in the starting body; and

providing to the one starting mixture in the starting body at least one
filler including one of SiO2, TiO2, and ZrO2;

wherein the device is at least one of an insulating layer and a
conductive layer of a sheathed-element glow plug.

Appeal 2009-003838
Application 10/503,314

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Appellants appeal the following rejection:
Claims 10 and 13-18 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Allman, U.S. Patent No. 5,665,845 issued September 9,
1997, in view of Kita, U.S. Patent No. 6,130,410 issued October 10, 2000.
ISSUE
The dispositive issue before us is whether the Examiner has
established that it would have been obvious within the meaning of §103 to
substitute the dielectric layer of Allman in the glow plug of Kita. We
answer this question in the negative. Therefore, WE REVERSE.1
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art. Verdegaal Bros., Inc. v. Union Oil of Cal., 814 F.2d
628, 631-632 (Fed. Cir. 1987). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417-18 (2007).
The Examiner found that Allman teaches an electrical device with a
dielectric layer that comprises a SiO2 and boron. The Examiner recognized

1 We select independent claims 17 and 18 and as representative of the
rejected subject matter.
Appeal 2009-003838
Application 10/503,314

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that Allman did not disclose a glow plug. The Examiner found that Kita
described a glow plug having a ceramic composite material utilized as a
sheath element. (Ans. 3-4). The Examiner concluded that “[i]t would have
been obvious to one of ordinary skill in the art at the time of the invention to
have employed the dielectric layer of Allman in the invention of Kitna [sic.
Kita] because both are similar dielectric layers, dielectric layers are
commonly used as heating elements, and would be suitable for use as a
heating element and a glow plug.” (Ans. 4).
Appellants contend that the Examiner had not applied the appropriate
standard for establishing a rejection under §103. (App. Br. 3-4). Appellants
contend that there is no apparent reason why the pending claims might be
unpatentable over the combination of Allman and Kita. Appellants contend
that Allman describes boron-oxide doped dielectric layers for integrated
circuits, in which the dielectric layers are exposed. Appellants contend that
the stated purpose of Kita is to prevent deterioration of the heating element
attributable to firing. (App. Br. 5; Kita, col. 1, l. 1). Appellants further state:
Kita indicates only a ceramic heater including a heating element
and a heat-resistant glass layer disposed inside a protective pipe.
(Kita, col. 6, lines 27 to 42). The heat-resistant glass layer
merely fixes the heating element to the protective pipe. (Kita,
col. 6, lines 27 to 31). In addition, since the heating element of
Kita is already sealed inside a protective pipe, the coating of
Allman would be [simply] superfluous if apply to Kita, which
protective pipe has no need of further coating.
(App. Br. 5)

Appeal 2009-003838
Application 10/503,314

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In response to Appellants’ arguments that the Examiner had not
applied the appropriate standard for establishing a rejection under § 103, the
Examiner responded:
The examiner contends that it would have been obvious to one
of ordinary skill in the art at the time of the invention to have
employed a dielectric layer of Allman in the invention of Kitna
[sic. Kita] because both are similar dielectric layers, dielectric
layers are commonly used as heating elements, and would be
suitable for use as heating element in a glow plug. The
polyorganosiloxane of Allman resists shrinking and cracking
when cured (column 1 line 27-32). The purpose of the layer is to
provide improved resistant to ashing and oxygen plasma (column
2 lines 65-68). Therefore, it would have additionally have been
advantageous to provide the similar dielectric layer of Allman in
Kitna [sic. Kita] in order to provide the benefit of resistance to
cracking and shrinkage during heating and resistance to oxygen
plasma that would occur when the heating element is being used
during operation of the glow plug of Kitna [sic. Kita]. (Ans. 4-
5).

As set forth above, the Examiner bears the initial burden of presenting
a prima facie case of obviousness. The statement of the rejection as set forth
in the Final Office Action, pages 2 and 3, dated September 21, 2007, as well
as in the Examiner’s Answer, pages 3 and 4, fails to account for each and
every claim limitation. The Examiner must show that each and every
limitation of the claim is described or suggested by the prior art or would
have been obvious based on the knowledge of those of ordinary skill in the
art. Verdegaal Bros., Inc., 814 F.2d at 631-632. The Examiner asserted that
the rejection was premised on the substitution of one dielectric layer for
another. However, no explanation was provided as to why a person of
ordinary skill in the art would have reasonably expected the exposed
Appeal 2009-003838
Application 10/503,314

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dielectric layer for a semiconductor device to be suitable for a heat-resistant
glass layer disposed inside a protective pipe such as disclosed in Kita.
The decision of the Examiner is reversed.

ORDER
The Examiner's decision rejecting claims 10 and 13-18 is reversed.
REVERSED

PL Initial:
sld

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