Ex Parte Rudolph

Board of Patent Appeals and Interferences

Dec 23, 2003

09178399 (B.P.A.I. Dec. 23, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES W. RUDOLPH
____________
Appeal No. 2003-1362
Application No. 09/178,399
____________
HEARD: December 11, 2003
____________
Before BARRETT, GROSS, and BLANKENSHIP, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 14, which are all of the claims
pending in this application.
Appellant's invention relates to a method and apparatus for
measuring weight during a CVI/CVD process. Claim 1 is
illustrative of the claimed invention, and it reads as follows:
1. A method to determine the change in weight of parts in
a furnace during a CVI/CVD process, comprising the step of:
measuring the change in weight of the entire furnace, including
contents, during the CVI/CVD process.
Appeal No. 2003-1362
Application No. 09/178,399
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Swartzendruber 4,044,920 Aug. 30, 1977
Spoor 4,217,785 Aug. 19, 1980
Yano et al. (Yano) 4,375,838 Mar. 08, 1983
Yoshida et al. (Yoshida) 4,964,734 Oct. 23, 1990
Golecki et al. (Golecki) 5,348,774 Sep. 20, 1994
Piroozmandi 5,770,823 Jun. 23, 1998
Claims 1 through 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Golecki in view of Yoshida, Yano, Spoor,
Piroozmandi, and Swartzendruber.
Reference is made to the Examiner's Answer (Paper No. 30,
mailed September 12, 2002) for the examiner's complete reasoning
in support of the rejection, and to appellant's Brief (Paper
No. 29, filed August 22, 2002) and Reply Brief (Paper No. 31,
filed November 13, 2002) for appellant's arguments thereagainst.
OPINION
As a preliminary matter, we note that appellant indicates on
page 7 of the Brief that the claims do not stand or fall
together. However, appellant has provided no separate argument
for any claim. 37 C.F.R. § 1.192(c)(7) states:
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from the
group and shall decide the appeal as to the ground of
rejection on the basis of that claim alone unless a
statement is included that the claims of the group do
Appeal No. 2003-1362
Application No. 09/178,399
3
not stand or fall together and, in the argument under
paragraph (c)(8) of this section, appellant explains why the
claims of the group are believed to be separately
patentable. Merely pointing out differences in what the
claims cover is not an argument as to why the claims are
separately patentable. (Emphasis ours)
Thus, we will treat the claims as a single group with claim 1 as
representative.
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will affirm the obviousness rejection of claims 1 through 14.
Appellant asserts (Brief, page 9) that "[o]ne of ordinary
skill in the art would not combine the references as suggested by
the Examiner." More specifically, appellant contends (Brief,
page 10) that "[t]here is absolutely no reason to combine Golecki
with any secondary reference since Golecki describes the optional
use of weighing devices." In a related argument, appellant
suggests (Reply Brief, page 2) that "if Golecki wanted to weigh
the entire furnace, he simply would have disclosed such an
embodiment." We disagree. First, if Golecki disclosed an
embodiment in which the entire furnace was weighed, Golecki would
anticipate the claimed invention. If we required such a teaching
in Golecki to combine other references therewith, there would be
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Application No. 09/178,399
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no need for combining. Additionally, although Golecki may not
specify using a weighing device as a preferred embodiment,
Golecki does teach an embodiment including an in-situ weighing
device 13, as shown in Figure 1. Accordingly, the skilled
artisan would have used the teachings of the secondary references
as better methods of weighing for that embodiment of Golecki.
Appellant further argues (Brief, pages 10-11) that "[t]he
secondary references do not deal with a method of weight gain of
a substrate in a CVI process or the weighing of an entire
furnace" and, therefore, "are consequently not in the field of
the applicant's endeavors." Appellant asserts (Brief, page 11
and Reply Brief, page 3) that the secondary references do not
deal with the problem appellant was concerned with, namely
determining the weight change in the parts during processing of
the parts in a CVI/CVD furnace.
We agree with appellant that the secondary references may
not be in appellant's field of endeavor. However, we disagree
with appellant's characterization of the problem solved, and thus
with the conclusion that the references do not deal with the same
problem as that which concerned appellant. Appellant did not
solve the problem of continuously weighing the parts during
processing in a CVI/CVD furnace, as Golecki teaches such
Appeal No. 2003-1362
Application No. 09/178,399
5
continuous weighing. The problem actually solved by appellant is
more accurately weighing the parts inside the furnace. All of
the secondary references deal with problems associated with
weighing parts inside a vessel and/or with weighing parts in a
heated environment (which would include a furnace). Accordingly,
the secondary references all relate to weighing accuracy and,
therefore, are analogous art according to the second criteria of
In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058-59, 1060 (Fed. Cir.
1992), that the reference be pertinent to the particular problem
being solved.
Appellant further states (Brief, page 11, and Reply Brief,
page 5) that "[e]ven if the references were combined in the
manner suggested by the Examiner, they still would not render
obvious the Appellant's invention." However, appellant fails to
explain exactly what would be missing if all of the references
were combined as proposed by the examiner. Instead appellant
(Brief, pages 11-12) summarizes what each reference discloses and
then concludes that the combination would not be the same as
appellant's invention. Such unsupported conclusions are not
convincing.
Last, appellant (Brief, page 12) "submits that the Examiner
is not one of ordinary skill in the art," and that the examiner
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Application No. 09/178,399
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consequently should not be allowed to rely upon "knowledge
available to one of ordinary skill in the art." See also Reply
Brief, page 5. We agree that a factual inquiry whether to modify
a reference must be based on objective evidence of record, not
merely conclusionary statements of the examiner. See In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
Accordingly, "knowledge available to one of ordinary skill in the
art" would be insufficient motivation to combine the references.
However, although the examiner appears to rely upon such
"knowledge," the examiner actually relies upon specific teachings
in the references.
In particular, Yano at column 1, lines 39-42, and Spoor at
column 1, lines 20-44, teach that devices measuring weight are
adversely affected by changes in temperatures, thereby suggesting
that the measurements of Golecki would be more accurate if done
outside of the furnace. Further, Piroozmandi at column 2, lines
30-42, and Swartzendruber at column 1, lines 34-36, and column 2,
lines 50-58, teach that the accuracy in weighing material inside
a vessel is improved by measuring the weight of the vessel with
its contents through installation of load cells under the vessel.
Although both references deal with the weighing of bulk
materials, when combined with the teachings of Yano and Spoor,
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they suggest that the entire furnace should be weighed rather
than only the contents inside the furnace to increase the
accuracy of the measurements. The level of the skilled artisan
should not be underestimated. See In re Sovish, 769 F.2d 738,
743, 226 USPQ 771, 774 (Fed. Cir. 1985). Accordingly, appellant
has not convinced us of any error in the examiner's rejection,
and we will sustain the rejection of claims 1 through 14.
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Application No. 09/178,399
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CONCLUSION
The decision of the examiner rejecting claims 1 through 14
under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
AG/RWK
Appeal No. 2003-1362
Application No. 09/178,399
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BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60611