Ex Parte Abell et al

Board of Patent Appeals and Interferences

Jan 30, 2012

12278901 (B.P.A.I. Jan. 30, 2012)

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.
12/278,901 09/10/2008 Bradley David Abell 1006/0114PUS1 5540
60601 7590 01/30/2012
Muncy, Geissler, Olds & Lowe, PLLC
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
01/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRADLEY DAVID ABELL, KLAUS DIETER
FORSTER, BERND GRUNENWALD, ANDREAS JENSEIT,
and CORD VOLKER
____________________

Appeal 2011-005978
Application 12/278,901
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, KARL EASTHOM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/278,901

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
33. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
The claims are directed to a process for brazing components. (Spec.
1, ll. 4-11.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A process for the flux-free brazing of components made from
aluminum or aluminum materials or aluminum alloys in a
continuous brazing furnace or a batch-type brazing furnace
which comprises a muffle that is flushed with shielding gas in
order to create a shielding gas atmosphere, wherein during the
brazing of the components the muffle is supplied with shielding
gas at a rate sufficient to create a low-oxygen shielding gas
atmosphere in the muffle, said low-oxygen shielding gas
atmosphere having an oxygen content in a brazing region of the
brazing furnace of less than about 50 ppm (parts per million).
(Appeal Brief, Claims Appendix
1
16.)

THE REJECTIONS
2

I. The Examiner rejected claims 1-5, 7, 22, 29, 30, and 33 under
35 U.S.C. § 102(b) as anticipated by Kendziora et al. (US
3,882,596, issued May 13, 1975). (Examiner’s Answer, dated
September 28, 2010, “Ans.” 5-7.)

1
Appeal Brief filed August 5, 2010, hereinafter “App. Br.” and “Claims
App’x,” respectively.
2
Rejection V was entered as a new grounds of rejection in the Answer.
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II. The Examiner rejected claims 6, 8-13, 21, 31, and 32 under
35 U.S.C. § 103(a) as unpatentable over Kendziora. (Ans. 7-11.)

III. The Examiner rejected claims 14-19 and 23-28 under
35 U.S.C. § 103(a) as unpatentable over Kendziora in view of
Syslak et al. (US 2004/0185293 A1, published September 23,
2004). (Ans. 11-13.)

IV. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Kendziora in view of Sakamoto et al. (US
6,382,964, issued May 7, 2002). (Ans. 13.)

V. The Examiner rejected claims 9-13 and 31-32 under
35 U.S.C. § 112, second paragraph, as indefinite. (Ans. 3-5.)

ISSUES
Rejections I-IV
The Examiner found that Kendziora discloses the process of
Appellants’ claim 1, including “a muffle that is flushed”
3
and the required
oxygen content of the shielding gas atmosphere. (Ans. 5-6.) With respect to
the claim language “a muffle that is flushed,” the Examiner proffered a
definition for “flush,” based on a Random House Dictionary definition, as
“to flow with a rush; flow and spread suddenly,” and asserted that Kendziora
describes “flow with a rush.” (Final Rejection, dated March 18, 2010,
“Final” 11.) With respect to the required oxygen content of the shielding
gas atmosphere, the Examiner found that because Kendziora’s gas has an
oxygen content of less than 5 ppm, the rate at which it flows is always

3
The other two independent claims, namely claims 9 and 29, recite the
same or similar language.
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sufficient to create a low-oxygen atmosphere of less than 50 ppm. (Ans.
15.)
Appellants argue that the Examiner erred by relying on the intransitive
verb definition of “flush.” (App. Br. 5.) Appellants contend that the word
“flush” is used with an object (i.e., muffle) in claim 1, such that the pertinent
dictionary definition is the definition of the transitive verb flush. (App. Br.
5.) Appellants also argue that the Examiner has not shown that Kendziora’s
introduction of purified liquid nitrogen gas into a sealed chamber such as the
one in Kendziora necessarily results in Appellants’ recited low-oxygen
shielding gas atmosphere. (App. Br. 6.)

Rejection V
The Examiner determined that claims 9-13 and 31-32 are indefinite
because it is unclear what the claimed characteristic values (i.e., SQ, SO,
SB, SM, MB) represent and what units of measurement are associated with
these values. (Ans. 4-5.)
Appellants contend that one of ordinary skill in the art would
understand the meaning of the claimed characteristic values because one
would interpret these terms based on the Specification, which provides a
discussion of the characteristic values and the units in which they are
expressed. (Reply Brief, dated November 23, 2010, “Reply Br.” 4-6.)
Thus, the dispositive issues on appeal are:
(1) Whether the Examiner erred in relying on the intransitive verb
definition of “flush” in finding that Kendziora discloses “a muffle
that is flushed with shielding gas,” as recited in claim 1?
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(2) Whether the Examiner erred in finding that Kendziora’s
introduction of a purified nitrogen gas into the furnace muffle
necessarily results in the “said low-oxygen shielding gas
atmosphere having an oxygen content in a brazing region of the
brazing furnace of less than about 50 ppm,” as recited in claim 1?
(3) Whether the Examiner erred in concluding that one of ordinary
skill in the art would not have been reasonably apprised of the
scope of the characteristic values recited in claims 9-13 and 31-32
such that those claims are indefinite?

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Inherency may not be
established by mere probabilities or possibilities - i.e., it is insufficient to
merely show that a certain thing may result from a given set of
circumstances. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999);
accord MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed.
Cir. 1999).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether one skilled in the relevant art would understand the bounds of the
claim when read in light of the specification. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). That is, a
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claim complies with the second paragraph of Section 112 if, when read in
light of the specification, it reasonably apprises those skilled in the relevant
art of the scope of the invention. See Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986).

ANALYSIS
Issue One
We agree with Appellants that the Examiner erred in relying upon the
intransitive dictionary definition of “flush.” In this regard, the Examiner did
not properly first consult the Specification for guidance as to the meaning of
the term “flush.” While under Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005), dictionary definitions may be pertinent to understanding claim
terms, such evidence is unlikely to result in a reliable interpretation of a
claim unless considered in the context of the Specification. Id. at 1318-19.
The Random House College Dictionary defines “flush” as
“v.i. [] 11. to flow with a rush; flow and spread suddenly.” THE RANDOM
HOUSE COLLEGE DICTIONARY 509 (Rev. Ed. 1975). Thus, the definition
used by the Examiner, discussed supra, would be understood by one of
ordinary skill in the art to be the definition for the intransitive verb flush, as
indicated by the “v.i.” annotation prior to this definition. However,
Appellants’ Specification provides interpretive guidance (see e.g., Spec. 3,
ll. 4-19) as to the meaning of the term “flush,” which does not support the
Examiner’s use of the intransitive verb definition of flush. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997) (stating that “it would be unreasonable
for the PTO to ignore any interpretive guidance afforded by the applicant’s
written description.”).
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Rather, the Specification indicates, as does the claim, that “flush” is
used with an object (i.e., the muffle), or in its transitive sense. In other
words, the Specification indicates that the term “flush” modifies the object
muffle insofar as gas is supplied in a manner sufficient to flow through the
muffle and replace the existing atmosphere to create a shielding gas
atmosphere having the recited oxygen content. In light of the
Specification’s disclosure, the Examiner has not shown that Kendziora’s
introduction of an unspecified amount of gas and recirculation thereof
through a blower (col. 2, l. 64 to col. 3, l. 3) necessarily results in
replacement of the existing atmosphere and creation of a shielding gas
atmosphere having the recited oxygen content.
By not relying mainly on the Specification, and instead overly relying
on a dictionary definition of “flush” in a vacuum without consulting the
guidance offered in the Specification, which states that a “greatly excess
quantity of [shielding] gas” is required to produce a “low-oxygen shielding
gas atmosphere in the muffle,” further guiding the meaning of “flush,” the
Examiner has reversibly erred. Because the Examiner did not otherwise
account for the excess flow rate requirement implicit in the claim language,
the Examiner failed to establish that claim 1 is anticipated by Kendziora.
For similar reasons, the Examiner has also failed to establish that
independent claims 9 and 29 and the additional dependent claims rejected
under 35 U.S.C. § 102 are anticipated or that the dependent claims rejected
under 35 U.S.C. § 103 would have been obvious.

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Issue Two
With respect to the limitation of “said low-oxygen shielding gas
atmosphere having an oxygen content in a brazing region of the brazing
furnace of less than about 50 ppm,” as recited in claim 1, the Examiner has
not offered an obviousness rationale, but rather relied on the inherent
presence of such an atmosphere in Kendziora’s furnace. We agree with
Appellants that the Examiner has not shown that Kendziora’s introduction of
purified nitrogen gas into a furnace muffle necessarily results in the low-
oxygen shielding gas atmosphere claimed by Appellants. While the purified
nitrogen gas taught by Kendziora contains less than 5 ppm O2 (Col. 4, ll. 57-
60), the Examiner has not directed us to any evidence in Kendziora that
indicates the oxygen content in the brazing region, during brazing, would
necessarily be less than about 50 ppm. In this regard, Kendziora discloses
that the purified nitrogen gas is introduced into the muffle (Col. 3, ll. 1-3),
but does not further disclose, inter alia, the quantity or amount of gas
introduced into the muffle. Contrarily, Appellants’ Specification discloses
supplying a “greatly excess quantity of gas” to the brazing furnace muffle in
order to achieve the necessary low-oxygen shielding gas atmosphere. (Spec.
3, ll. 4-19.) Because anticipation based on inherency may not be established
by mere probabilities or possibilities, the Examiner has failed to establish a
prima facie case of anticipation with respect to claim 1. See In re Robertson,
169 F.3d at 745.

Issue Three
Lastly, we do not agree with the Examiner that dependent claims 9-13
and 31-32, when read in light of the Specification, would not reasonably
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apprise those skilled in the relevant art of the scope of the invention. As
pointed out by Appellants, the Specification provides an equation for each of
Appellants’ characteristic values (i.e., SQ, SO, SB, SM, MB). (Spec. 18, l.
29 – Spec. 19, l. 32.) The Specification also provides units of measurement
for the initial values input into these equations and the final values output by
these equations. (Id.) Thus, we agree with Appellants that the characteristic
values recited in claims 9-13 and 31-32, would have been definite to one of
ordinary skill in the art when read in light of the Specification.

CONCLUSIONS
The Examiner erred in relying on the intransitive verb definition of
“flush” in finding that Kendziora discloses “a muffle that is flushed with
shielding gas,” as recited in claim 1.
The Examiner erred in finding that Kendziora’s introduction of a
purified nitrogen gas into the furnace muffle necessarily results in the “said
low-oxygen shielding gas atmosphere having an oxygen content in a brazing
region of the brazing furnace of less than about 50 ppm,” as recited in claim
1.
The Examiner erred in concluding that one of ordinary skill in the art
would not have been reasonably apprised of the scope of the characteristic
values recited in claims 9-13 and 31-32 such that those claims are indefinite.

DECISION
We reverse the Examiner’s rejection of claims 1-5, 7, 22, 29, 30, and
33 under 35 U.S.C. § 102(b) as anticipated by Kendziora.
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We reverse the Examiner’s rejection of claims 6, 8-13, 21, 31, and 32
under 35 U.S.C. § 103(a) as unpatentable over Kendziora.
We reverse the Examiner’s rejection of claims 14-19 and 23-28 under
35 U.S.C. § 103(a) as unpatentable over Kendziora in view of Syslak.
We reverse the Examiner's rejection of claim 20 under 35 U.S.C. §
103(a) as unpatentable over Kendziora in view of Sakamoto.
We reverse the Examiner’s rejection of claims 9-13 and 31-32 under
35 U.S.C. § 112, second paragraph, as indefinite.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

REVERSED

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Muncy, Geissler, Olds & Lowe, PLLC
4000 Legato Road
Suite 301
Fairfax, VA 22033