Ex Parte Zacharias

Board of Patent Appeals and Interferences

May 14, 2002

09244044 (B.P.A.I. May. 14, 2002)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DONALD R. ZACHARIAS

Appeal No. 2001-0220
Application No. 09/244,044

ON BRIEF

Before KIMLIN, OWENS and TIMM, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 13-19
and 24-32. Claims 20-23, the only other claims remaining in the
present application, have been objected to by the examiner as
being dependent upon rejected claims. Claims 13, 14 and 30 are
illustrative:
13. A tundish having a normal maximum operating level of
molten steel therein, said tundish comprising:
a floor having an outlet, a pour zone, and side walls
extending upwardly from said floor, said side walls extending
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Application No. 09/244,044
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above the normal maximum operating level of molten steel in said
tundish;
an impact pad positioned on said tundish floor in said pour
zone, said impact pad comprising a base, an impact surface, an
upwardly extending sidewall along the periphery of said base,
said sidewall having an inner surface with an undercut portion
facing incoming steel being poured in a stream into said pour
zone, said undercut portion shaped to receive and reverse the
direction of flow of the incoming steel stream;
a dam positioned on said floor between said impact pad and
said outlet, said dam having at least one hole therein allowing
the passage of molten steel therethrough, so that molten steel
may flow over said dam and through said at least one opening; and
said dam extending upwardly from said floor a distance
between about 40-60% of the normal maximum operating level of
molten steel in said tundish.
14. For use in a tundish having a normal maximum operating
level of molten steel therein, a floor having an outlet, a pour
zone, and side walls extending upwardly from said floor, said
side walls extending above the normal maximum operating level of
molten steel in said tundish, a tundish furniture kit, said kit
comprising:
an impact pad for positioning on said tundish floor in said
pour zone, said impact pad comprising a base, an impact surface,
an upwardly extending sidewall along the periphery of said base,
said sidewall having an inner surface with an undercut portion
for facing incoming steel being poured in a stream into said pour
zone, said undercut portion shaped for receiving and reversing
the direction of flow of an incoming steel stream;
a dam for positioning said floor between said impact pad
and said outlet, said dam having at least one hole therein
allowing the passage of molten steel therethrough, so that when
said dam is installed molten steel may flow over said dam and
through said at least one opening; and
said dam having a height such that when installed it extends
upwardly from said floor a distance between about 40-60% of the
normal maximum operating level of molten steel in said tundish.
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Application No. 09/244,044
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30. A dam for a tundish comprising:
a body of refractory material and having an upstream side
and a downstream side;
said dam having holes consisting essentially of a pair of
holes substantially uniformly spaced across the width of said
dam;
said dam having a bottom, and a top, and a height dimension
corresponding to the distance between said bottom and said top;
and
wherein the distance from said bottom to the closest edge of
each hole is from 25 mm to 50% of the height of said dam,
measured on said upstream side of said dam.
In the rejection of the appealed claims, the examiner relies
upon the following references:
Soofi (Soofi '175) 5,064,175 Nov. 12, 1991
Soofi (Soofi '667) 5,295,667 Mar. 22, 1994
Schmidt 5,551,672 Sep. 03, 1996
Appellant's claimed invention is directed to a tundish
comprising a dam which extends upwardly from the tundish floor "a
distance between about 40-60% of the normal maximum operating
level of molten steel in said tundish" (claim 13, last two
lines). Appellant also claims a kit comprising an impact pad and
the dam for use in a tundish, and a dam, per se (claims 30-32).
Appealed claims 13, 15-19 and 24 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Schmidt. Claims 30
and 31 also stand rejected under 35 U.S.C. § 102(e) as being
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anticipated by Schmidt, whereas claims 30 and 31 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by each of
Soofi '175 and Soofi '667. In addition, claim 32 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over each of
Soofi '667, Soofi '175 and Schmidt.
We will not sustain the examiner's rejection of claims 13,
15-19 and 24 under § 102 over Schmidt. We do not subscribe to
the examiner's position that:
[T]he requirement that the dams extend upwardly to 40%
to 60% of the normal operating level of the tundish, is
a limitation dealing with the use of the claimed
apparatus, and it has been well settled that the manner
or method of use of an apparatus cannot be relied upon
to further limit claims to the apparatus itself [page 3
of Answer, second paragraph].
In our view, the Morales Declaration submitted by appellant
establishes on this record that the normal maximum operating
level of molten steel in a tundish is readily understood by one
of ordinary skill in the art to be a predetermined level for any
particular tundish design (see paragraph 3 of Declaration).
Accordingly, "[e]ven though the normal maximum operating level of
molten steel in a tundish varies from tundish to tundish" (id.),
we are satisfied that appealed claim 13 positively defines a
tundish comprising a dam having the recited structural
relationship regarding the height of the dam. Accordingly, we
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find that the examiner has committed reversible error in
dismissing the claim limitation concerning the dam and not
establishing, prima facie, that the tundish/dam arrangement of
Schmidt meets the claim limitation.
As for the § 102 rejection of claims 30 and 31, we do not
agree with appellants that the claim language "said dam having
holes consisting essentially of a pair of holes substantially
uniformly spaced across the width of said dam" provides a
patentable distinction over Schmidt. We say this because it is
not clear what meaning to ascribe to the language "substantially
uniformly spaced across the width of said dam," i.e., does the
language mean that each of two holes have to be equally spaced
from the nearest side edge of the dam, or must the two holes be
positioned at locations one-third and two-thirds of the width of
the dam. Also, it is not clear to us that the claim language
does not encompass any pair of holes depicted by Schmidt that are
uniformly spaced across the width of the dam. However, we cannot
sustain this rejection because appellant's argument that "there
clearly and unequivocally is no teaching of the 25 mm-50% of the
height of the dam limitation set forth in claim 30" (page 10 of
principal brief, second paragraph) has not been addressed by the
examiner. Our review of the examiner's rejection and Response in
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Application No. 09/244,044
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the Answer finds no discussion of how Schmidt describes, within
the meaning of § 102, the claim limitation concerning the
location of the holes from the bottom of the dam. For the same
reason, we will not sustain the examiner's § 102 rejection of
claims 30 and 31 over each of Soofi '175 and Soofi '667.
We will sustain the examiner's rejection of claim 32 under
§ 103 over each of Soofi '667, Soofi '175 and Schmidt. Although
the examiner recognizes that none of the cited references
discloses the claimed "first and second mounting hooks that are
cast into said dam during its manufacture," the examiner has
taken official notice that it was "a well known expedient to
employ cast in place mounting means in refractory components in
order to allow fore [sic, for] easier movement by crane into
place" (page 4 of Answer, second paragraph). On the other hand,
appellant has not challenged the correctness of the examiner's
assertion and has not responded to the examiner's statement that
"[a] statement by the applicant that this is not an expedient
commonly known in the art . . . would overcome this rejection"
(page 6 of Answer, second paragraph). Rather, appellant has
simply responded that if this feature was so well known there
must be a reference that shows it, and that "[t]he burden is on
the Patent and Trademark Office to establish a prima facie case,
Appeal No. 2001-0220
Application No. 09/244,044
1 Appellant states at page 4 of the principal brief that
claims 14 and 29 stand or fall together, as do claims 25, 27
and 28.
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not on the appellant to investigate the practical art and provide
information thereon to the PTO" (page 12 of principal brief,
first paragraph). However, appellant must advance more than a
mere bald challenge, and nothing more, of the validity of the
examiner's finding. In re Boon, 439 F.2d 724, 728, 169 USPQ 231,
234, (CCPA 1971). As stated by the court in Boon, "[w]e feel it
to be perfectly consistent with the principles governing
procedural due process to require that a challenge to judicial
notice by the board contain adequate information or argument so
that on its face it creates a reasonable doubt regarding the
circumstances justifying the judicial notice." Boon, 439 F.2d at
728, 169 USPQ at 234. In the present case, appellant has failed
to present any argument which casts such a reasonable doubt on
the examiner's finding. Accordingly, we will sustain the
examiner's rejection under § 103 of claim 32. See also In re
Fox, 471 F.2d 1405, 176 USPQ 340 (CCPA 1973).
We will also sustain the examiner's § 102 rejection over
Schmidt of claims 14 and 25-29 which are directed to a kit
comprising an impact pad and a dam having at least one hole
therein.1 In our view, the kit claims, comprising only the
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recited impact pad and dam, are described by Schmidt within the
meaning of § 102 inasmuch as the claim language, "said dam having
a height such that when installed it extends upwardly . . .,"
(emphasis added) is merely a statement of intended use that does
not further define the structures for the impact pad and dam.
Unlike the claims, such as claim 13, which define a tundish
comprising an impact pad and a dam, the kit claims require no
tundish or interrelationship between the dam and a tundish. We
note that appellant acknowledges at page 4 of the principal brief
that Schmidt shows an impact pad like that of the present
invention. As for the claimed dam, it can hardly be gainsaid
that the dam of Schmidt has at least one hole therein which
allows the passage of molten steel therethrough.
This case is remanded to the examiner to consider the
obviousness, under § 103, of the tundish of claims 13, 15-19
and 24. Particular attention should be paid to the statement in
paragraph 5 of the Morales Declaration which states that "I chose
a dam height that was between 40-60% of the normal operating
steel level of the tundish because this is the range that I know,
from previous experience, gets the best results." While the
Declaration establishes that one of ordinary skill in the art
would know that every particular tundish has a normal maximum
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operating level of molten steel, it would appear that the
declarant states that the claimed dam height was known to him,
one of ordinary skill in the art. Accordingly, it is incumbent
upon the examiner and appellant to place of record whether the
Morales Declaration is evidence that the claimed dam height was
known in the art at the time of filing the present application.
Also, regarding claim 30 and other appealed claims of similar
scope, the examiner should determine whether Figure 5 of Schmidt
depicts a dam having a hole that is from 25 mm to 50% of the
height measured from the bottom of the dam to the closest edge of
the hole.
In conclusion, based on the foregoing, the examiner's
rejection of claims 13, 15-19, 24 and 30-32 is reversed, whereas
the examiner's rejection of claims 24 and 25-29 is sustained.
Accordingly, the examiner's decision rejecting the appealed
claims is affirmed-in-part. In addition, this application is
remanded to the examiner for the reasons set forth above.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
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This application, by virtue of its "special" status,
requires immediate action by the examiner. See the Manual of
Patent Examining Procedure, § 708.01(D) (8th ed., Aug. 2001). It
is important that the Board of Patent Appeals and Interferences
be informed promptly of any action affecting the appeal in this
case.
AFFIRMED-IN-PART and REMANDED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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)
)
CATHERINE TIMM )
Administrative Patent Judge )
ECK:clm
Appeal No. 2001-0220
Application No. 09/244,044
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