Ex parte Tenbrink et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

08020304 (B.P.A.I. Apr. 30, 1998)

Application for patent filed February 19, 1993.1
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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHANNES TENBRINK, PAUL PUNISKA,
VOLKER GLUECKLICH and KLAUS HEINE
__________
Appeal No. 95-3209
Application No. 08/020,3041
__________
ON BRIEF
__________
Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1 through 3, 6 through 11, 15 and 18
as amended subsequent to the final rejection. The only other
claims remaining in the application, which are claims 4 and 5,
Appeal No. 95-3209
Application No. 08/020,304
2
have been objected to by the examiner as depending from art
rejected claims but otherwise allowable.
The subject matter on appeal relates to a method for
manufacturing a superconductive composite member which
comprises the step of hot-shaping an intermediate composite of
super- conductor material at a temperature such that the
material is present in at least a partially molten state.
This appealed subject matter is adequately illustrated by
independent claim 1 which reads as follows:
1. In a method for manufacturing a superconductive
composite member by introducing an oxide ceramic
superconductor material into an envelope to form an
intermediate composite, shaping the intermediate composite
into a final composite by a cross sectional-reducing, and
thermal heat-treating the final composite for recovering and
for setting the oxygen concentration, the improvements
comprising the shaping steps including heating the
intermediate composite to a temperature at which the
superconductor material is present in at least a partially
molten state, and subjecting the intermediate composite at
said temperature to at least one hot-shaping step.
The references relied upon by the examiner as evidence of
obviousness are:
Yamamoto et al. (Yamamoto) 5,169,831 Dec. 8,
1992
Appeal No. 95-3209
Application No. 08/020,304
The Perng reference has been relied upon by the2
examiner as evincing the solid/molten characteristics of
Yamamoto’s composite material.
3
Japanese Kokai patent 56-59530 May 23,
1981
(Takizawa)
Perng et al. (Perng), “Y-Ba-Cu-O superconducting films grown
on (100) magnesia and sapphire substrates by a melt growth
method without crucible,” Supercond. Sci. Technol., Vol. 3
(1990) pp.
233-237.2
Claims 1, 2, 6, 8, 11, 15 and 18 are rejected under 35
U.S.C. § 103 as being unpatentable over Yamamoto in view of
the admitted prior art on pages 1 and 2 of the Appellants’
Specification.
Claims 3, 7, 9 and 10 are rejected under 35 U.S.C. § 103
as being unpatentable over Yamamoto in view of the admitted
prior art as applied above, and further in view of Takizawa.
As a preliminary matter, we observe that the appealed
claims will stand or fall together as grouped in the above
noted rejections; see page 4 of the Brief.
OPINION
Appeal No. 95-3209
Application No. 08/020,304
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We will sustain each of these rejections for the reasons
set forth below.
Appeal No. 95-3209
Application No. 08/020,304
5
The Rejection based on Yamamoto in view
of the Admitted Prior Art
The propriety of this rejection depends upon the
interpretation given to Yamamoto’s disclosure at lines 10
through 16 in column 5 and at lines 39 through 44 in column
11. According to the appellants’ interpretation of this
disclosure, “the reference specifically states that you do not
want to melt any of the powder during the heating process,
which accomplishes sintering, and during which deforming or
shaping can occur” (Brief, page 6). Stated otherwise, the
appellants interpret Yamamoto’s heating/sintering disclosure
in columns 5 and 11 as teaching “that the temperature is
selected to be in a range of below the lowest melting point of
any constituent” (Supplemental Reply Brief, page 2). We do
not agree with the appellants’ interpretation of Yamamoto.
In the first place, the appellants are plainly incorrect
in arguing “the [Yamamoto] reference specifically states that
you do not want to melt any of the powder during the heating
process” and in arguing “Yamamoto [states] that the
temperature is selected to be in a range of below the lowest
melting point of any constituent.” No such statements appear
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in the reference. Rather, patentee’s heating/sintering
temperature disclosure expressly teaches “an upper limit
corresponding to the lowest melting point of any one of
constituent components in the material powder” (column 5,
lines 11-13) and “an upper limit which is defined by a melting
point which corresponds to the lowest melting point of any one
of constituent components in the material powder” (column 11,
lines 40-43). From our perspective, one with ordinary skill
in the art would have interpreted these explicit teachings as
defining a heating/sintering temperature range as including an
upper limit temperature equal to the lowest melting point
temperature of the constituent components in the material
powder. When conducting patentee’s sintering and shaping
operations at such an upper limit temperature, the material
powder would unquestionably be “in at least a partially molten
state” as recited in the independent claims on appeal.
In addition to the foregoing, it is our opinion that the
examiner has provided a reasonable basis for believing that
the material in Yamamoto’s Example 1 would be in at least a
partially molten state when heated to the 910EC temperature of
this Example during the sintering and wire-drawing operations.
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Under these circumstances, we consider it fair to require the
appellants to prove that patentee’s Example 1 material is not
in at least a partially molten state at this 910EC
temperature. Whether the rejection is based on “inherency”
under 35 U.S.C. § 102, on “prima facie obviousness” under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the inability of
the Patent and Trademark Office to manufacture products or to
obtain and compare prior art products or their methods of
manufacture. In re Best, 562 F.2d 1252, 1254-1255, 195 USPQ
430, 433-434 (CCPA 1977).
For the above stated reasons, we will sustain the
examiner’s § 103 rejection of claims 1, 2, 6, 8, 11, 15 and 18
as being unpatentable over Yamamoto in view of the admitted
prior art.
The Rejection based on Yamamoto, the Admitted Prior Art
and Takizawa
We agree with the examiner’s conclusion that it would
have been obvious for one with ordinary skill in the art to
provide the method of Yamamoto with a die or roller heating
step in order to obtain the benefits of this technique which
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is shown by Takizawa to be well known in the prior art. We
also agree with the examiner’s conclusion that an artisan with
ordinary skill would have found it obvious to determine
workable or even optimum temperatures for this heating step,
thereby achieving the temperature range defined by the here
rejected claims. In re Boesch, 617 F.2d, 272, 276, 205 USPQ
215, 219 (CCPA 1980).
According to the appellants, Takizawa “does not teach or
suggest drawing while in a partially molten state, since most
wire drawing systems, if the wire were in a partially molten
condition at the time of drawing, would result in breaking or
tearing apart of the wire” (Supplemental Reply Brief, page 3).
As correctly indicated by the examiner, however, this argument
is unsupported by evidence and accordingly is unpersuasive for
this reason alone. In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974). Additionally, the argument is
controverted by our previous discussion concerning Yamamoto’s
disclosure in columns 5 and 11 in which we explained that
patentee’s composite material would be in a partially molten
condition when conducting the sintering and shaping (e.g., die
drawing) operations at the upper temperature limit. Finally,
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the argument does not appear to be germane to the claims under
review since these claims do not require that the die or
roller temperatures be high enough to effect a molten
condition of any kind much less one which would be expected to
“result in breaking or tearing apart of the wire” as urged by
the appellants.
Under these circumstances, we will also sustain the § 103
rejection of claims 3, 7, 9 and 10 as being unpatentable over
Yamamoto in view of the admitted prior art and further in view
Takizawa.
Conclusion
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
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Application No. 08/020,304
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EDWARD C. KIMLIN )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge)
Appeal No. 95-3209
Application No. 08/020,304
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