Ex Parte GeertsenDownload PDFPatent Trial and Appeal BoardDec 29, 201714052559 (P.T.A.B. Dec. 29, 2017) Copy Citation 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. 14/052,559 10/11/2013 Robert J. Geertsen 4550-91871-01 1630 24197 7590 01/03/2018 KLARQUIST SPARKMAN, LLP 121 SW SALMON STREET SUITE 1600 PORTLAND, OR 97204 EXAMINER LEUNG, JENNIFER A ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 01/03/2018 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): docketing @klarquist.com AS CChair @klarquist. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. GEERTSEN Appeal 2017-004788 Application 14/052,559 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 9—13 and 18 of Application 14/052,559 under 35 U.S.C. § 103 as obvious. Final Act. (Apr. 13, 2016). Appellant1 seeks reversal of the rejection2 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. 1 REC Silicon Inc. is identified as the applicant and real party in interest. Appeal Br. 3. 2 Claims 14—17 are withdrawn from consideration and, thus, are not subject to the appealed rejection. Final Act. 1; Appeal Br. 14. Appeal 2017-004788 Application 14/052,559 BACKGROUND The ’559 Application describes a polycrystalline silicon transportation device for ultra-high purity silicon production. Spec 1:6—9. According to the ’559 Application, the device inhibits or mitigates metal-contact contamination during production of polycrystalline silicon through a fluidized bed reactor. Id. Claim 18 is representative of the ’559 Application’s claims and is reproduced below from the Claims Appendix to the Appeal Brief: 18. A fluidized bed reactor unit for production of polycrystalline silicon, comprising: a vessel defining a reactor chamber; and at least one flexible synthetic resin tube, external to the reactor chamber, comprising an inner surface that defines a passageway that is in communication with the reactor chamber, the inner surface being at least partially coated with a protective layer comprising a microcellular elastomeric polyurethane having a bulk density of at least 800 kg/m3 and a Shore Hardness of at least 65A, an outer layer comprising a soft synthetic resin united with the protective layer, and a reinforcement member buried in or attached to the outer layer. Appeal Br. 17 (Claims App.). 2 Appeal 2017-004788 Application 14/052,559 REJECTION On appeal, the Examiner maintains the following rejection: 1. Claims 9-13 and 18 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Kim,3 Weidhaus,4 Akedo,5 and Olson.6 Final Act. 2; Answer 2. Appellant argues for the reversal of the obviousness rejection to claims 9—13 and 18 on the basis of limitations present in independent claim 18. See Appeal Br. 4—14; Reply Br. 2—5. We select claim 18 as representative, and claims 9—13 will stand or fall with claim 18. 37 C.F.R. § 41.37(c)(l)(iv). Rejection 1. Appellant argues that this rejection should be reversed because: (1) there is no teaching or suggestion that Akedo’s and Olson’s polyurethanes for conveying slurries and sludge are suitable for manufacture of ultrapure poly crystalline silicon, Appeal Br. 12, (2) one of ordinary skill in the art would have no motivation to modify Akedo with Olson in view of the teachings of Kim, Weidhaus, and Akedo that polyurethane only requires high purity and wear resistance, id. at 13, (3) Olson’s shape memory retentive polyurethane liner is incompatible with the method for making Akedo’s flexible tube, id. at 13—14, and (4) one of ordinary skill in the art would have no motivation to replace Akedo’s tube, nor Akedo’s method of making the tube, with Olson’s preformed polyurethane liner in view of 3 US 2010/0047136 Al, published Feb. 25, 2010. 4 US 2007/0040056 Al, published Feb. 22, 2007. 5 US 5,918,642, issued July 6, 1999. 6 US 2008/0174110 Al, published July 24, 2008. 3 Appeal 2017-004788 Application 14/052,559 Akedo’s failure to recognize a polyurethane shrinkage problem. Reply Br. 4—5. First, Appellant argues that Akedo and Olson are non-analogous art. Appeal Br. 12. To rely upon a reference as a basis for an obviousness rejection of Appellant’s claims, the reference must either (i) be in the field of the inventor’s endeavor or (ii) be reasonably pertinent to the particular problem with which the inventor was concerned. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). In this case, the Examiner correctly determined that Akedo and Olson was reasonably pertinent to the particular problem with which the inventor was concerned. As the Examiner explained, both Akedo and Olson are concerned with “the conveyance of a highly abrasive material through piping provided with an inner protective lining.” Answer 17. For example, Akedo is concerned with an abrasion-resistant pipe structure, comprising a polyurethane protective layer, for the conveyance of solids. Akedo 1:49-55; 6:10—13. Olson specifically exemplifies polyurethane liners, which exhibited no wear after pumping 17,000 cubic yards of concrete. Olson 143. In view of the foregoing, we agree with the Examiner that both Akedo and Olson are reasonably pertinent to a problem which the inventor faced and, therefore, is analogous art. Second, Appellant’s arguments (2) and (3) assert that the rejection of claim 18 should be reversed because the Examiner’s proposed combination of Akedo and Olson is erroneous. Appeal Br. 13—14. Appellant argues that the ordinary skilled artisan would have lacked any motivation to modify Akedo’s wear resistant flexible tube for high purity processing with Olson’s 4 Appeal 2017-004788 Application 14/052,559 teachings. Id. at 13. Appellant further argues that such an artisan would have recognized that “Olson’s shape memory retentive polyurethane liner is incompatible with the method for making Akedo’s flexible tube.” Id. at 14. We note that the subject matter of claim 18 is drawn to a fluidized bed reactor unit—limitations are silent with respect to any methods of manufacture. “Many of appellant’s arguments fail from the outset because, . . . they are not based on limitations appearing in the claims . . . .” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore, Appellant’s arguments are not persuasive because they do not overcome the applied prior art’s disclosure that: (i) Akedo discloses that it is desirable to form the polyurethane protective layer from a polyoxytetramethylene glycol-series polyol, Akedo 3:46—51, (ii) Olson specifically exemplifies polyurethane liners formed from prepolymers of polytetramethylene ether glycol, Olson 139, and (iii) polyurethane liners cured in-situ shrink, thereby rendering the protective layer in a tube “impracticable for transferring abrasive materials” through a tube because the liner can be “tom out by the shear stress of abrasive material. . . sliding through the pipe.” Id. at 123; see In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). As the Examiner found, [o]ne of ordinary skill in the art would have understood that a modification of the protective layer to comprise the cured polyurethane of Olson would have required a modification in the process for assembling the tube and applying the polyurethane protective layer to the inner surface of the tube. Instead of using a lamination and curing process applicable for thermoplastic polyurethane, the cured polyurethane of Olson would be provided on the inner surface of the tube by elongating the 5 Appeal 2017-004788 Application 14/052,559 preformed polyurethane liner to reduce its outer diameter, inserting the liner into the tube, and reducing the tension on the liner such that its outer diameter increases and expansion pressure by the liner maintains the liner in the tube. Furthermore, one of ordinary skill in the art would have been motivated to substitute the cured polyurethane of Olson for the thermoplastic polyurethane used in the modified apparatus of Kim et al. because, when a thermoplastic polyurethane liner is cured in-situ, it experiences cure shrinkage and shrinks a few percent from its procured size. Answer 21—22 (emphasis added) (citing Olson || 8 and 23; Example). Appellant’s arguments have not identified reversible error in the Examiner’s reasoned determination that the ordinary skilled artisan would have recognized that Olson’s cured polyurethane liner and method of making such a liner in a tube configuration would be suitable for making Akedo’s flexible tube. The Supreme Court has made clear that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, the Examiner identified a reason for a person of ordinary skill in the art to combine Akedo and Olson. As explained by the Examiner, the use of Olson’s cured polyurethane for Akedo’s thermoplastic polyurethane would have circumvented the problems associated with in-situ cure shrinkage in the prior art, namely liners tom out by the shear stress of materials sliding through the tube. Answer 20 (citing Olson 123). We note that Appellant does not dispute the Examiner’s finding that Akedo’s flexible tube is formed in-situ. Answer 20; Reply Br. 2—5. 6 Appeal 2017-004788 Application 14/052,559 Fourth, Appellant’s argue that the Examiner reversibly erred in combining the teachings of Akedo and Olson because Akedo’s teachings fail to recognize a polyurethane shrinkage problem. Reply Br. 4—5. Appellant’s argument is not persuasive. The Supreme Court has held that such combinations as Olson’s known process for assembling a cured polyurethane liner to a tube’s inner surface with Akedo’s known flexible tube are likely to be obvious. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appellant has not persuaded us that the Examiner erred in concluding that their claimed combination of familiar elements would have been obvious. The Supreme Court has explained that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. The Court went on to explain that [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Id. We, therefore, agree with the Examiner that the ordinary skilled artisan would have recognized that a modification of Akedo’s flexible tube protective layer to comprise Olson’s cured polyurethane would have also required a modification in the process for assembling the tube and applying the polyurethane protective layer to the inner surface of the tube. 7 Appeal 2017-004788 Application 14/052,559 We, therefore, affirm the Examiner’s rejection of claim 18 as unpatentable over the combination of Kim, Weidhaus, Akedo, and Olson. Claims 9-13 will fall with claim 18. 37 C.F.R. § 41.37(c)(l)(iv). CONCLUSION For the reasons set forth above, we affirm the rejection of claims 9—13 and 18 of the ’559 Application. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation