Ex Parte Wei et al

Patent Trial and Appeal Board

May 5, 2014

10905326 (P.T.A.B. May. 5, 2014)

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.
10/905,326 12/28/2004 George C. Wei 04-1-758 2326
24252 7590 05/06/2014
OSRAM SYLVANIA INC
100 ENDICOTT STREET
DANVERS, MA 01923
EXAMINER
BREVAL, ELMITO
ART UNIT PAPER NUMBER
2889
MAIL DATE DELIVERY MODE
05/06/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE C. WEI,
ROLAND HUETTINGER, WALTER P. LAPATOVICH,
and KLAUS GUENTHER
____________

Appeal 2012-006209
Application 10/905,326
Technology Center 2800
____________

Before PETER F. KRATZ, JAMES C. HOUSEL, and GEORGE C. BEST,
Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006209
Application 10/905,326
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On February 14, 2011, the Examiner finally rejected claims 1-13 of
Application 10/905,326 under 35 U.S.C. § 103(a) as obvious. Appellants1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM. In so doing, however,
we rely upon different reasoning and findings of fact from the Examiner.
Accordingly, we designate our affirmance as containing a new ground of
rejection under 37 C.F.R. § 41.50(b). See In re Stepan Co., 660 F.3d 1341,
1344 (Fed. Cir. 2011).
BACKGROUND
The ’326 Application describes ceramic discharge vessels of the type
generally used in high-intensity discharge lamps such as high-pressure
sodium lamps. Spec. ¶ 2.
Claim 1 is the only independent claim in the ’326 Application and is
reproduced below:
1. A ceramic discharge vessel comprising a ceramic body
and at least one expanded reaction-bonded aluminum oxide
member hermetically sealed to the ceramic body.
(App. Br. 6 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-8 and 11-13 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Kees2 and Claussen.3 (Ans. 4.)

1 Osram Sylvania Inc. is identified as the real party in interest. (App. Br. 2.)
2 U.S. Patent No. 5,742,124, issued April 21, 1998.
Appeal 2012-006209
Application 10/905,326
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2. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Kees, Claussen, and Evans.4 (Ans. 6.)
DISCUSSION
Appellants rely upon a single argument—based upon the limitations
in claim 1, the sole independent claim—for reversal of both rejections.
(App. Br. 3-5.) In particular, Appellants argue that the Examiner did not
establish a prima facie case of obviousness because Claussen does not
describe or suggest an “expanded reaction-bonded aluminum oxide
member.” (Id. at 3.)
This appeal, therefore, can be resolved by addressing a single
question: Did the Examiner reversibly err in finding that Claussen describes
or suggests the use of an expanded reaction-bonded aluminum oxide
member as part of a ceramic discharge vessel? Because we answer this
question in the negative, we affirm.
We begin, as we must, with the claim language. During prosecution,
an application’s claims are given their broadest reasonable scope consistent
with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The words used in a claim must be read in light of
the specification, as it would be interpreted by one of ordinary skill in the
art. Id.
Appellants argue the Examiner erred in interpreting the word
“expanded” in the claim term “expanded reaction-bonded aluminum oxide
member.” (App. Br. 3-4; Reply Br. 2.) In particular, Appellants argue that

3 U.S. Patent No. 5,843,859, issued Dec. 1, 1998.
4 U.S. Patent No. 4,155,758, issued May 22, 1979.
Appeal 2012-006209
Application 10/905,326
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“expanded,” when viewed in the context of the ’326 Application’s
Specification, requires that the member, after sintering, be greater in size
than the green body. (Id.)
The Examiner, however, gives the term “expanded” a broader scope.
Although not expressly set forth, the Examiner apparently concluded that
any member that experiences some degree of expansion due to the reaction-
bonding process is “expanded,” even if the amount of expansion is
insufficient to offset the shrinkage that normally occurs during sintering.
(See Ans. 7.)
After reviewing the ’326 Application’s Specification, we conclude
that the Examiner’s interpretation of the term “expanded” is unreasonably
broad. A person of ordinary skill in the art would have understood that the
term “expanded” requires that the sintering process result in a net increase in
the size of the member.
Our inquiry, however, does not end with claim construction. The
Examiner found that Claussen describes or suggests the creation of an
“expanded reaction-bonded aluminum oxide member.” (Ans. 4 (citing
Claussen, col. 3, ll. 9-24).) Appellants argue that, under the correct claim
construction, the Examiner’s finding constitutes reversible error. For the
reasons set forth below, we disagree.
The portion of Claussen expressly cited by the Examiner states:
The moulded body is fabricated by mixing one or several
inorganic disperse phases, preferably Al2O3 powder, with an
aluminium powder, then moulding and subsequently annealing
in air at temperatures between 900° and 1600° C. During this
process the metallic phase bonds the Al2O3 powder particles (or
other inorganic particles) while at the same time being reacted
to form Al2O3. The volume expansion associated with this
reaction fills out most of the pores present in the compacts and
Appeal 2012-006209
Application 10/905,326
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compensates for the shrinkage caused by the sintering. By
suitable choice of the compacting pressure for the green body
and of the ratio of Al2O3 (or other inorganic phases or phase
mixtures) to the Al powder it is possible to completely avoid a
change in volume between the green body and final body. The
product can be denoted reaction-formed Al2O3 (RBAO) in
analogy to reaction-formed Si3N4.
Claussen, col. 3, ll. 9-24 (emphasis added).
To be sure, the passage quoted above does not expressly state that it is
possible to create an expanded RBAO member. It, however, does suggest
that such a result is possible. The cited portion of Claussen states that the
reaction of aluminum and oxygen to create alumina compensates for
sintering-induced shrinkage. This portion of Claussen neither states nor
suggests that it is not possible to overcompensate for the shrinkage. Thus,
the portion of Claussen cited by the Examiner suggests to a person of
ordinary skill in the art that one could create an expanded RBAO member.
Furthermore, portions of Claussen not cited by the Examiner
expressly describe the formation of the expanded member through
Claussen’s process. Figure 1, for example, shows that, for a particular
composition, compression of a green body to 70% of theoretical density
followed by sintering results in a final product having a density that is 88-
95% of the theoretical density and exhibiting a positive change in linear
dimension, i.e., the final product exhibits a lengthwise expansion and is
longer than the green body. Similarly, Example 11 describes the creation of
an annealed body that exhibits 0.8% expansion relative to the green body.
Claussen, col. 12, ll. 50-56.
In sum, Appellants have not demonstrated that the Examiner
reversibly erred in finding that Claussen describes or suggests the creation of
an expanded reaction-bonded aluminum oxide member.
Appeal 2012-006209
Application 10/905,326
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CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1-
13 of the ’326 Application as obvious.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)

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