MELIOR INNOVATIONS, INC.

Patent Trials and Appeals Board

Oct 13, 2021

2020006177 (P.T.A.B. Oct. 13, 2021)

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.
14/864,162 09/24/2015 Andrew R. Hopkins 18872.0012 Melior m12b-1 9876
116359 7590 10/13/2021
Belvis Law -Melior
P.O. Box 11317
Chicago, IL 60611
EXAMINER
LANGMAN, JONATHAN C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
10/13/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@belvislaw.com
gbelvis@belvislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW R. HOPKINS,
ASHISH P. DIWANJI, WALTER J. SHERWOOD,
DOUGLAS M. DUKES, GLENN SANDGREN,
MARK S. LAND, and BRIAN L. BENAC
____________

Appeal 2020-006177
Application 14/864,162
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 39, 41, 43, and 45 of Application
14/864,162. Final Act. (January 2, 2019). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Pallidus, Inc. as the real party in interest. Appeal Br. 2.
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I. BACKGROUND
The ’162 Application describes methods for making silicon carbide
(SiC) and silicon carbide compositions. Spec. ¶ 2. Silicon carbide is a
material that can be used as an abrasive, friction member, insulation, optics,
electronics, or ballistic and impact resistant materials. Id. ¶¶ 6, 123.
Claim 1 is representative of the ’162 Application’s claims on appeal
and is reproduced below from the Appeal Brief’s Claims Appendix.
1. A high purity polymer derived ceramic SiC composition,
the composition comprising:
a. an SiC4 configuration;
b. the composition defining a surface, wherein the
composition surface is resistant to oxidation under standard
ambient temperature and pressure, whereby the surface is
essentially free of an oxide layer at standard ambient
temperature and pressure; and,
c. wherein the composition is substantially free from
impurities, whereby the total impurities are less than 1 ppm.
Appeal Br. 23.
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–5, 39, 41, 43, and 45 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Aoki.2 Final Act. 2.

2 US 2012/0219798 A1, published August 30, 2012.
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2. Claims 1–5, 39, 41, 43, and 45 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Kim.3 Final Act. 3.
3. Claims 1–5 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Aoki, Zwieback,4 and/or Kusunoki.5 Final Act. 5.
III. DISCUSSION
A. Rejection of claims 1–5, 39, 41, 43, and 45 as anticipated by Aoki
Claim 1 requires, inter alia, that the silicon carbide composition have
a surface that “is resistant to oxidation under standard ambient temperature
and pressure” and “is essentially free of an oxide layer at standard ambient
temperature and pressure.”
We begin by considering the proper interpretation of the phrase
“resistant to oxidation under standard ambient temperature and pressure.” In
particular, we must determine how a particular silicon carbide composition’s
resistance to oxidation should be determined.
During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other enlightenment provided by the written

3 WO 2012/177097 A2, published December 27, 2012. The Examiner uses
US 2014/0127512 A1, published May 8, 2014, as the “English equivalent.”
It is unclear why the Examiner is following this practice, since the
International Publication is an English language document. Nonetheless, for
the sake of consistency, we also shall cite the US publication.
4 US 2013/0309496 A1, published November 21, 2013.
5 US 2012/0211769 A1, published August 23, 2012.
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description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997).
We have reviewed the ’162 Application’s Specification. The
Specification does not describe any test for determining the silicon carbide
composition’s oxidation resistance under standard ambient temperature and
pressure. Nor does it describe the baseline for comparison of degrees of
oxidation to determine relative oxidation resistance. However, each instance
of the phrase “resistant to oxidation under standard ambient temperature and
pressure” is followed by the statement “whereby the surface is essentially
free of an oxide layer at standard ambient temperature and pressure.” See
Spec. ¶¶ 27, 41, 44.
In view of the foregoing, we conclude that the phrase “resistant to
oxidation under standard ambient temperature and pressure” means that the
claimed silicon carbide powder may be stored indefinitely under standard
ambient temperature and pressure under a normal atmosphere and the
surface will remain essentially free of an oxide layer.
In the Final Action, the Examiner does not explain where Aoki
expressly describes its silicon carbide composition as having such a surface.
See Final Act. 2–3 (citing Aoki ¶ 25). Rather, the Examiner finds that “[a]s
the particles of Aoki et al. have 1ppm impurities[,] they are free of an oxide
layer.” Id. at 3. Thus, the Examiner is inferring from Aoki’s description of
the impurity levels in its silicon carbide composition that the silicon carbide
composition is resistant to oxidation and lacks a surface oxide layer.
Aoki’s paragraph 25, however, reveals that the Examiner’s inference
is unjustified. Paragraph 25 identifies exemplary impurity elements. Except
for boron, each of the listed impurity elements is a metal. See Aoki ¶ 25.
Oxygen is not identified as an exemplary impurity element. Id. Moreover,
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Aoki describes the oxygen content of the silicon carbide powder produced in
each of its examples as less than 0.2% by mass. Aoki ¶¶ 137, 145, 154.
Significantly, Aoki reports the results of its oxygen content analysis
separately from the results of its analysis of impurity elements. See Aoki ¶¶
139, 147, 156. This indicates that Aoki does not regard oxygen as an
impurity element subject to its description of having less than 1 ppm
impurities.
Based on the foregoing, it is clear that the Examiner’s finding that
Aoki’s silicon carbide composition has a surface that is oxidation resistant
and essentially oxide layer-free at standard ambient temperature and
pressure is not supported by the evidence. We, therefore, reverse the
rejection of claim 1 as anticipated by Aoki. Thus, we also reverse the
rejection of claims 2–5, 39, 41, 43, and 45 as anticipated by Aoki.
B. Rejection of claims 1–5, 39, 41, 43, and 45 as anticipated by or, in the
alternative, unpatentable over Kim
Appellant argues for reversal of this rejection based upon the
limitations in independent claim 1. See Appeal Br. 13–19. Thus, we select
claim 1 as representative of the group of claims subject to this rejection. 37
C.F.R. § 41.37(c)(1)(iv) (2020). We limit our discussion accordingly.
Appellant argues for reversal of the rejection for three reasons. We
address each of these arguments separately below. Appellant has not
persuaded us of reversible error in the Examiner’s conclusion that the
subject matter of claim 1 is unpatentable over Kim.
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1. Appellant argues that Kim does not disclose a “polymer
derived ceramic silicon carbide composition”
Claim 1 recites “[a] high purity polymer derived ceramic [silicon
carbide] composition.”
According to Appellant, the Examiner ignored the limitation requiring
a “polymer derived ceramic SiC” in rejecting claim 1 based upon Kim.
Appeal Br. 13.
This argument is not persuasive.
As the Examiner explained, the claim language “polymer derived” is a
product-by-process limitation. See Final Act. 9; Answer 13. The Examiner
correctly determined that Kim describes a high purity silicon carbide
ceramic powder. Answer 13. Thus, Appellant has the burden of showing that
its polymer derived silicon carbide ceramic powder has a different structure
than Kim’s non-polymer derived silicon carbide ceramic powder.
Appellant has not done so.
We, therefore, do not reverse the rejection of claim 1 on the basis of
this argument.
2. Appellant argues the Kim does not disclose a silicon carbide
composition having a surface that is resistant to oxidation and
is essentially oxide layer free
Appellant argues that the Examiner ignored the claim language
requiring that the silicon carbide composition have a surface that is “resistant
to oxidation under standard ambient temperature and pressure.” Appeal Br.
14–16. Appellant further argues that the Examiner has not established that
Kim’s silicon carbide composition has a surface that “is essentially free of
an oxide layer at standard ambient temperature and pressure.” Id. at 16–18.
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For the reasons discussed above, we have concluded that the claim
language “is resistant to oxidation under standard ambient temperature and
pressure” requires that the surface remain essentially free of an oxide layer
while the silicon carbide composition is stored under a normal atmosphere at
standard ambient temperature and pressure.
Kim describes the manufacture of silicon carbide ceramic powder
having a purity of about 99.999% to about 99.99999999%. Kim ¶ 37.
Expressed as parts per million, Kim describes impurity levels ranging from
0.0001–10 ppm.6 Based on this description, the Examiner finds that Kim
describes a silicon carbide powder that is oxide layer free. Final Act. 3.
On appeal, Appellant argues that the rejection should be reversed
because Kim does not disclose either the surface properties of its silicon
carbide or the presence or absence of surface layers, oxides or surface oxide.
Appeal Br. 14–18.
This argument is not persuasive of the existence of reversible error.
First, in describing the chemical reactions occurring during its
synthesis process, Kim explains that oxygen present in the silicon-containing
starting material is transformed via reaction with the carbon-containing
starting material to carbon monoxide gas. See Kim ¶ 30. Thus, a person
having ordinary skill in the art would expect Kim’s silicon carbide powder
to contain very low levels of oxygen.7 Appellant does not explain why this
expectation would be incorrect.

6 We note that Kim’s range of impurities overlaps the range expressed in
claim 1 of less than 1 ppm.
7 Oxygen contained in the carbon-containing starting material (if any) is
eliminated prior in a carbonization process that occurs prior to, and at a
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Second, unlike Aoki, Kim does not discuss the oxygen content of its
silicon carbide powder. Nor does Kim have an identification of impurity
elements that excludes oxygen. Appellant does not argue that Kim describes
its silicon carbide powder as including any particular amount of oxygen or
that Kim’s measured impurity levels failed to include oxygen as an impurity.
Thus, a person having ordinary skill in the art would understand the impurity
levels expressed in Kim to be inclusive of oxygen.
Third, Kim describes its impurity levels as being between 0.1 ppb and
10 ppm. Thus, even if we were to assume that all the impurities were in the
form of surface-bound oxygen, the Examiner could reasonably find that a
person having ordinary skill in the art would interpret Kim as describing a
silicon carbide powder having a very low amounts of a surface oxide layer,
i.e., having “a surface that is essentially free of an oxide layer at standard
ambient temperature and pressure.”
Fourth, we note that Appellant’s Specification describes silicon
carbide as a very stable material. “It is essentially chemically inert, [sic] and
will not react with any materials at room temperature.” Spec. ¶ 7. In view of
this disclosure, it is incumbent upon Appellant to explain why Kim’s silicon
carbide powder, which is produced with very low impurity levels, would
react with oxygen under ambient temperature and pressure conditions to
produce a surface that is not essentially oxide layer free.
Fifth, the Examiner has established a reasonable basis for concluding
that Kim’s silicon carbide powder is substantially identical to the claimed
product. Thus, it is incumbent upon Appellant to demonstrate that Kim’s

lower temperature than, the silicon carbide synthesis reaction. See Kim
¶¶ 28–32.
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silicon carbide powder does not have a surface that is essentially free of an
oxide layer at standard ambient temperature and pressure. In re Best, 562
F.2d 1252, 1255 (CCPA 1977); see also In re Marosi, 710 F.2d 799, 803
(Fed. Cir. 1983). In other words, Appellant must demonstrate that Kim’s
silicon carbide powder has enough surface oxide layer present that it has
materially different basic and novel properties from the claimed silicon
carbide powder. Cf. In re Herz, 537 F.2d 549, 551–52 (CCPA 1976).8
In view of the foregoing, we determine that Appellant has not
demonstrated reversible error in the Examiner’s finding that Kim describes
or suggests a silicon carbide ceramic powder that is oxidation-resistant as
that term is used in the claim and has a surface that is essentially oxide layer
free.
3. Appellant argues that Kim does not describe or suggest the
claimed configurations of silicon carbide
Appellant argues that Kim does not describe or suggest the SiC4
configuration of the silicon carbide required by claim 1. Appeal Br. 19.
The Examiner explains that the SiC4 configuration is implicit to Kim’s
silicon carbide based upon its disclosure of particular silicon carbide
polymorphs, including those recited in dependent claims 2–5. Answer 15–
16.
Appellant’s Reply Brief does not address these arguments or
otherwise explain how the Examiner’s analysis is erroneous.

8 Appellant has the burden of showing the basic and novel properties of the
claimed composition. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
The Specification suggests that oxide layers can be a detriment in
subsequent use of the silicon carbide powder in manufacturing processes.
Spec. ¶ 122.
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In view of the foregoing, we are not persuaded to reverse the
Examiner’s rejection of claim 1 based on the alleged failure to describe or
suggest the claimed configurations of silicon carbide.
C. Rejection of claims 1–5 as unpatentable over the combination of Aoki,
Zwieback, and Kusunoki
As discussed above, we have determined that the Examiner erred by
finding that Aoki describes or suggests a silicon carbide powder with a
surface that is oxidation resistant and essentially oxide-free. In rejecting
claims 1–5 as unpatentable over the combination of Aoki, Zwieback, and
Kusunoki, the Examiner does not find that either Zwieback or Kusunoki
describe a silicon carbide powder with these properties. Final Act. 5–6. The
Examiner, therefore, has not establish a prima facie case of obviousness with
respect to independent claim 1.
Thus, we reverse the rejection of claims 1–5 as unpatentable over the
combination of Aoki, Zwieback, and Kusunoki.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 39, 41, 43, 45 102 Aoki 1–5, 39, 41, 43, 45
1–5, 39, 41, 43, 45 102 Kim 1–5, 39, 41, 43, 45
1–5, 39, 41, 43, 45 103 Kim 1–5, 39, 41, 43, 45
1–5 103 Aoki, Zwieback, Kusunoki 1–5
Overall Outcome 1–5, 39, 41, 43, 45
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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