Ex Parte Nilsson et al

Board of Patent Appeals and Interferences

Feb 13, 2007

11109274 (B.P.A.I. Feb. 13, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT T. NILSSON
and
ROBIN P. ZIEBARTH
____________

Appeal 2007-0738
Application 11/109,274
Technology Center 1700
____________

Decided: February 13, 2007
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-29. Claim 1 is
illustrative:
1. A method of increasing the strength of a porous ceramic body
comprising:

Appeal 2007-0738
Application 11/109,274

(a) exposing a porous ceramic body comprised of ceramic grains
essentially chemically bound together to a source of boron, wherein the
source of boron is uniformly distributed within the porous ceramic body and

(b) heating the porous body in an oxygen containing atmosphere to a
temperature sufficient to form the porous ceramic body having increased
strength.

The Examiner relies upon the following reference in the rejection of
the appealed claims:
DiChiara, Jr. (DiChiara) US 6,919,103 B2 Jul. 19, 2005
Appellants' claimed invention is directed to a method of increasing the
strength of a porous ceramic body comprising exposing the body to a source
of boron so as to uniformly distribute boron within the porous ceramic body.
The porous body is heated after treatment with the boron. Examples of the
source of boron are boron carbide and boron nitride. Also, the porous body
can be exposed to the source of boron by impregnating a liquid having boron
dissolved therein into the ceramic body.
Appealed claims 1-9, 15, 20-24, and 29 stand rejected under
35 U.S.C. § 102(b) as being anticipated by DiChiara. Claims 10-14, 16-19,
and 25-28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over DiChiara.
Appellants present separate arguments for the following groups of
claims: (I) claims 3 and 4, (II) claim 15, (III) claim 7, (IV) claims 12 and 18,
(V) claims 14 and 27, and (VI) claim 28. Accordingly, claims 1, 2, 5, 6,
8-11, 13, 16, 17, 19-26, and 29 stand or fall together.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we find that the Examiner's § 102 and § 103
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Application 11/109,274

rejections are well-founded and supported by the prior art reference relied
upon. Accordingly, we will sustain the Examiner's rejections.
We consider first the Examiner's rejection under § 102. There is no
dispute that DiChiara, like Appellants, discloses treating a porous ceramic
body with an aqueous composition comprising boron and then drying the
porous body to remove the water and leave boron within the pores of the
body. DiChiara discloses that the source of boron can be an aqueous
composition of boron carbide or boron nitride (see col. 3, ll. 34-40).
A principal argument of the Appellants is that the reference does not
describe within the meaning of § 102 that the source of boron is uniformly
distributed within the porous ceramic body. Appellants point to DiChiara's
incorporation by reference of US Patent Nos. 5,702,761 and 5,928,775 to
DiChiara for an illustration that the boron is not distributed uniformly
throughout the ceramic body, i.e., from it surface to its core. However, we
do not interpret the present claim language as requiring the same
concentration of boron at the surface and at the core of the ceramic body,
i.e., throughout the porous ceramic body. Rather, the claims only require
that there is a uniform distribution within the ceramic body. Hence, since
the patent drawings referenced by Appellants illustrate a substantially
uniform distribution within different thicknesses of the ceramic body, we
find that such uniform distribution in DiChiara meets the requirement of the
appealed claims. It can be seen in the patent drawings that the boron is
substantially uniformly distributed within a certain depth from the surface of
the body.
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Application 11/109,274

Appellants submit that "DiChiara only describes drying by heating or
at room temperature their impregnated body and when Applicants used
heating to dry their impregnated porous ceramic body, a non-uniform
distribution resulted" (page 7 of Br., last para.). However, we fail to see any
correspondence between Appellants' Specification Example 7 which dried
the body at 110 C. in an oven, and DiChiara's "letting the ceramic body dry
at room temperature to remove the solvents" (col. 4, ll. 57-58). Also, claim
1 does not require any particular method of drying to remove the solvent.
Appellants also maintain that "DiChiara fails to describe precipitating
the boron source from solution and teaches away from having the boron
compound in a solution at all" (page 11 of Br., first full para.). However,
since DiChiara uses boron carbide or boron nitride in composition with
water, as do Appellants, it is reasonable to conclude that the aqueous slurry
of Dichiara comprises the boron compound in solution to at least some
degree.
Appellants submit for separately argued claim 7 that "the porous
ceramic body is exposed by volitalizing a boron source by heating a separate
source of boron in the presence of the porous ceramic body" (page 11 of Br.,
second full para.). However, this argument is not commensurate in scope
with the language of claim 7. Claim 7 does not recite any volitalizing of a
boron source, but only that "the porous ceramic body is exposed to the
source of boron by heating, simultaneously, a separately provided source of
boron along with the porous ceramic body." This step does not distinguish
from DiChirara's heating the boron compound in aqueous composition while
impregnated in the pores of the ceramic body.
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Application 11/109,274

Separately argued claims 12 and 18 specify that the ceramic body is
mullet. The Examiner properly points out, however, that DiChiara teaches
that the ceramic powder in the aqueous composition can be mullet or
cordierite and that the powder "is preferably made of a ceramic material
other than the ceramic material of a ceramic body to be protected" (col. 3, ll.
14-16). Consequently, we agree with the Examiner that one of ordinary skill
in the art would have found it obvious to select cordierite as the ceramic
powder and mullet for the ceramic body.
As for separately argued claims 14, 27, and 28, which recite that the
porous ceramic body is a diesel particulate filter, appellants make the
argument that DiChiara does not disclose using the treated ceramic body as a
filter. However, inasmuch as the boron-treated porous ceramic body of
DiChiara reasonably appears to have essentially the same structure as
Appellants' boron-treated porous ceramic body, we find it reasonable to
conclude that the treated porous ceramic body of DiChiara is capable of
serving as a filter. It is well settled that when a product reasonably appears
to be substantially the same as a product disclosed by the prior art, the
burden is in the applicant to prove that the prior art product does not
necessarily or inherently possess characteristics attributed to the claimed
product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977). In the present case Appellants have not advanced any argument, let
alone the requisite objective evidence, that demonstrates that the boron-
treated porous ceramic body of DiChiara is not capable of functioning as a
diesel particulate filter.
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Application 11/109,274

As a final point, with respect to the § 103 rejection, we note that
Appellants base no argument upon objective evidence of nonobviousness,
such as unexpected results.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED

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The Dow Chemical Company
Intellectual Property Section
P. O. Box 1967
Midland, MI 48641-1967
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