Ex Parte Bentley et al

Patent Trial and Appeal Board

Jan 16, 2018

12995931 (P.T.A.B. Jan. 16, 2018)

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.
12/995,931 02/24/2011 David Charles Bentley DC10767PCT1/071038.00693 4300
14205 7590 01/18/2018
Howard & Howard Attorneys PLLC
Dow Corning Corp.
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
IPDocket@howardandhoward.com
dtrost @ HowardandHoward. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHARLES BENTLEY, CLAIRE BRITTON, and
JOSEPH PETE KOHANE
Appeal 2017-002738
Application 12/995,931
Technology Center 1700
Before ROMULO H. DELMENDO, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 2,
4—6, 8—10, 12—14, 17, 21, 22, 25, and 26.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 “DOW CORNING CORPORATION” is listed as the real party in interest
(Appeal Brief filed March 8, 2016, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 18—33; Reply Brief filed December 7, 2016, hereinafter “Reply
Br.,” 2—6; Final Office Action entered October 8, 2015, hereinafter “Final
Act.,” 2—10; Examiner’s Answer entered October 7, 2016, hereinafter
“Ans.,” 2-14.
Appeal 2017-002738
Application 12/995,931
I. BACKGROUND
The subject matter on appeal relates to a process for preparing
organohalosilanes or halosilanes (Specification filed December 2, 2010,
hereinafter “Spec.,” 11). Representative claims 1 and 25 are reproduced
from the Claims Appendix to the Appeal Brief (Appeal Br. 35, 40-41), with
key limitations emphasized, as follows:
1. A process for the preparation of organohalosilanes or
halosilanes, the process comprising:
I providing a fluidised bed reactor having an entrance
and an exit;
II charging the fluidised bed reactor with the
following ingredients to form a contact mass:
i comminuted silicon, wherein the silicon
particle size of the comminuted silicon is up
to 150 pm and wherein the silicon particle
size of the comminuted silicon has a particle
size mass distribution characterized by a 10th
percentile from 1 to 4 pm, a 50th percentile
from 7 to 20 pm, and a 90th percentile from
30 to 45 pm ;
ii at least one catalyst for a Direct Process
reaction, provided that when HC1 is fed to the
reactor in step (III) no catalyst is added;
iii at least one promoter for the Direct Process
reaction, provided that when HC1 is fed to the
reactor in step (III) no promoter is added;
III thereafter, providing an organohalide or hydrogen
halide to the reactor to form a fluidised bed in the
reactor;
IV allowing the ingredients to interact and react to
produce organohalosilanes or halosilanes at a
desired ratio and at a desired rate;
V enabling the organohalosilanes or halosilanes to
leave the fluidised bed reactor whereby the
organohalosilanes or halosilanes and unreacted
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Application 12/995,931
organohalide or hydrogen chloride elutriate a
proportion of the contact mass;
VI periodically or continuously removing contact
mass from the fluidised bed reactor by direct
removal at any location from beneath the surface
of the fluidised bed using gravitational or
differential pressure techniques',
VII replacing at least some of the contact mass
removed in steps (V) and (VI) with fresh silicon;
and
VIII reintroducing at least som e of the removed contact
mass from step (VI) to the fluidized bed reactor;
wherein a cumulative silicon conversion in the range of
from 70% to <100% is maintained through removal of a
portion of the contact mass during the continuous phase of
the process while fresh silicon is still being fed to the
reactor.
25. A process for the preparation of organohalosilanes or
halosilanes, the process comprising:
(I) providing a fluidised bed reactor having an entrance and an
exit;
(II) charging the fluidised bed reactor with the following
ingredients to form a contact mass[:]
i comminuted silicon;
ii at least one catalyst for a Direct Process reaction,
provided that when HC1 is fed to the reactor in step (III) no
catalyst is added;
iii at least one promoter for the Direct Process reaction,
provided that when HC1 is fed to the reactor in step (III) no
promoter is added;
(III) thereafter, providing an organohalide or hydrogen halide to
the reactor to form a fluidized bed in the reactor;
(IV) allowing the ingredients to interact and react to produce
organohalosilanes or halosilanes at a desired ratio and at a
desired rate;
(V) enabling the organohalosilanes or halosilanes to leave the
fluidised bed reactor whereby the organohalosilanes or
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Application 12/995,931
halosilanes and unreacted organohalide or hydrogen chloride
elutriate a proportion of the contact mass;
(VI) periodically or continuously removing contact mass from
the fluidised bed reactor by direct removal at any location from
beneath the surface of the fluidised bed during a continuous
phase of the process;
(VII) replacing at least some of the contact mass removed in
steps (V) and (VI) with fresh silicon; and
(VIII) reintroducing at least some of the removed contact mass
from step (VI) to the fluidized bed reactor after stopping after
the direct purge of contact mass from the fluidised bed.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections, which are listed as
follows:
A. Claim 25 under pre-AIA 35U.S.C. § 112 12, as indefinite; and
B. Claims 1, 2, 4—6, 8—10, 12—14, 17, 21, 22, 25, and 26 under
35 U.S.C. § 103(a) as unpatentable over Dotson3 optionally in
view of Freebume et al.4 (hereinafter “Freebume”).
(Ans. 2—14; Final Act. 2—10.)
III. DISCUSSION
Rejection A. The Examiner states that claim 25’s scope is indefinite
because “there is no clear antecedent basis for ‘the direct purge’” and that “it
is unclear what is required by ‘after stopping after the direct purge of contact
mass from the fluidised bed’”—i.e., “it is unclear if ‘stopping’ is a positive
process step” (Ans. 2). Regarding “the direct purge” limitation, the
Examiner explains that it is unclear whether the limitation “refers back to the
3 US 3,133,109, issued May 12, 1964.
4 US 5,312,948, issued May 17, 1994.
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Application 12/995,931
‘elutriate a proportion of the contact mass’ in step V or the ‘removing
contact mass from the fluidized bed reactor’ in step VI” {id. at 7).
Regarding the “after stopping” limitation, the Examiner states that it is
unclear “whether ‘stopping’ is for the reaction or for the ‘direct purge of
contact mass of the fluidi[s]ed bed’” {id.).
The Appellants state that the limitations at issue were introduced by
amendment “to more clearly set forth the claimed invention of claim 25”
(Appeal Br. 18—19). According to the Appellants, claim 25’s scope is
definite when read in light of the disclosure in the Specification flflf 50, 54
(Example 2) and Figure 2 (Appeal Br. 19).
In the examination context, our reviewing court stated that “claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms” as “[i]t is the claims that notify the public of what is within the
protections of the patent, and what is not.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). When an examiner provides “a well-grounded
identification of clarity problems” during the examination process, an
applicant must provide a satisfactory response. Id. at 1313—14. The
response must “focus on the claim-language difficulties” and may “propose
clarifying changes or show why, on close scrutiny, the existing claim
language really was as reasonably precise as the circumstances permitted.”
Id. at 1314.
Applying these principles, we conclude that the Examiner’s rejection
is based on “a well-grounded identification of clarity problems” and the
Appellants’ arguments on appeal fail to “show why, on close scrutiny, the
existing claim language really was as reasonably precise as the
circumstances permitted.” Id. at 1313—14. Specifically, we agree with the
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Application 12/995,931
Examiner that claim 25, even when considered in light of the cited
descriptions in the Specification and Figure 2, would not reasonably apprise
one skilled in the relevant art of its scope. See, e.g., In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994).
Claim 25 recites two instances in which the contact mass is removed
or purged from the fluidized bed: (1) “the organohalosilanes or halosilanes
and unreacted organohalide or hydrogen chloride elutriate a proportion of
the contact mass” in step V; and (2) “periodically or continuously removing
contact mass from the fluidised bed reactor by direct removal at any location
from beneath the surface of the fluidised bed during a continuous phase of
the process” in step VI. Because the claim does not specify whether “the
direct purge” in step VIII refers to the removal in step V, step VI, or both,
the claim language in question (“the direct purge of contact mass” in step
VIII) is ambiguous on its face.
Contrary to the Appellants’ belief, the Specification (namely H 50
and 54) and Figure 2 do not serve to clarity this ambiguity. According to the
Appellants, the claim language “after stopping after the direct purge of
contact mass from the fluidized bed” refers to the time after step VI (Appeal
Br. 19) (citing Spec. 1 54 (Example 2)). But, as the Examiner points out
(Ans. 7), limitations found in the Specification as preferred embodiments are
not read into a claim absent a basis (e.g., a definition) to do so. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e look
to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation. . . . [A]s applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee.”).
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Application 12/995,931
Moreover, the Specification states that the process may be improved
by “purging] from the reactor by combination of direct discharge of contact
mass from the homogeneous fluidised mixture and elutriation of fines
particles out of the fluidised mixture” (Spec. 1 50). That description appears
to contradict the Appellants’ assertion that “the direct purge” recited in step
VIII refers to the “direct removal” in step VI. Thus, rather than providing
clarification, the description adds to the ambiguity. In re Prater, 415 F.2d
1393, 1395 (CCPA 1969) (“Inasmuch as claim 9, thus interpreted, reads on
subject matter for which appellants do not seek coverage, and therefore
tacitly admit to be beyond that which ‘applicant regards as his invention,’ we
feel that the claim fails to comply with 35 U.S.C. §112... .”).
In addition, we discern no reversible error in the Examiner’s position
that it is unclear whether the “stopping” in “after stopping after the direct
purge” refers to stopping the reaction or the direct purge. The Appellants
rely on the description in the Specification (| 50) and Figure 2 to establish
that “stopping” refers to stopping the “direct purge” (Appeal Br. 19). But
that is not language recited in claim 25, which states “after stopping after the
direct purge” (emphasis added), which we find incomprehensible. Packard,
751 F.3d at 1313 (“The examiner here, having ample grounds, set forth a
variety of ways in which he found the claims imprecise or confusing,
sometimes not even understandable, considering them in light of the written
description.”) (emphasis added).
For these reasons, we sustain Rejection A.
Rejection B. The Appellants do not argue any particular claim
separately pursuant to the requirements of 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/995,931
Therefore, as provided by this rule, all claims stand or fall with claim 1,
which we select as representative.
The Examiner finds that Dotson would have suggested to one of
ordinary skill in the art a process including every limitation recited in
claim 1 (Ans. 2—6). Regarding the disputed step VII limitations, the
Examiner finds that Dotson discloses adding powdered make-up silicon
during the reaction {id. at 3). Regarding the disputed step VIII limitations,
the Examiner finds that Dotson’s Figure 1 discloses a process in which “the
solids withdrawn from the fluidized bed reactor, after passing through the
fluid energy mill, are returned to the fluidized bed” and that this is the “same
as step VIII in the instant claims 1, 17, 25 and 26 or the ‘reintroducing’ step
in the instant claim 2 when combined with the return of the elutriated solids”
{id. at 4). Regarding the disputed silicon particle size and particle size mass
distribution limitations recited in step II, i, the Examiner determines that
Dotson would have suggested the specified distribution because Dotson
describes average particle size diameters that overlap those recited in claim 1
{id. at 6). Alternatively, the Examiner relied on Freebume’s teachings in
concluding that “[i]t would have been obvious to one of ordinary skill in the
art to use the silicon with the particle size distribution as suggested by
Freebume ... in the process of Dotson . . . because such particle size
distribution is preferred in an analogous process” {id.).
The Appellants contend that Dotson does not describe replacing any
removed contact mass with fresh silicon, arguing that “[returning the
removed contact mass is not equivalent to replacing removed contact mass
with fresh silicon” (Appeal Br. 22). According to the Appellants, “Dotson
expressly states that the make-up silicon must be equal to the amount
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Application 12/995,931
removed (via elutriation) or reacted, without any replacement for that which
is periodically or continuously removed, as recited in instant step VII” {id. at
23). Additionally, relying on certain calculations in their Appeal Brief, the
Appellants argue that Dotson does not disclose or suggest the specified
cumulative silicon conversion {id. at 23—26). Further, relying on Jonathan
D. Wineland’s Declaration filed September 29, 2014 pursuant to 37 C.F.R.
§ 1.132 11—29) (hereinafter “Wineland Decl.”; Evidence Appendix), the
Appellants argue that Dotson does not disclose or suggest the silicon particle
size and size distribution limitations and that the embodiments disclosed in
Dotson are outside the ranges specified in the claim (Appeal Br. 27—28).
Finally, the Appellants argue that Comparative Example 1 and Example 2
described in the Specification provide evidence of unexpected results over
Freebume {id. at 31—33).
The Appellants’ arguments fail to identify any reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
1. The Removing/Replacing/Reintroducing Issue
Dotson’s Figure 1 is reproduced as follows:
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Dotson’s Figure 1 above depicts an apparatus and process for producing
methylchlorosilane using a fluidized bed reactor 10 (col. 3,11. 46-48).
Specifically, Dotson describes feeding powdered silicon and catalyst through
line 37 and methyl chloride through line 38 into reactor 10 to form
methylchlorosilane, which, together with unreacted methyl chloride and
some powder particles, leave the reactor through line 16 into separator 17 for
separation, filtration, and distillation, whereby methylchlorosilane is
produced (col. 3,1. 71—col. 4,1. 42). Dotson teaches that during continuous
operation, a portion of the powder 39 is bled through valve 36 and line 35 to
fluid energy mill 36, whereby the powder, together with methyl chloride, is
returned to reactor 10 through line 15 (col. 4,11. 48—64). According to
Dotson, “make-up powdered silicon-copper is continuously added to the
system through line 37” (col. 4,11. 46-47).
As the Examiner explains (Ans. 4), the step VII language “replacing
at least some of the contact mass removed in steps (V) and (VI) with fresh
silicon” is sufficiently broad to include replacing the contact mass removed
in step V alone or step VI alone. Therefore, Dotson’s teaching regarding the
addition of silicon through line 37 meets the requirements set forth in
step VII. In addition, consistent with the Examiner’s position (Ans. 9), any
introduction of silicon—whether in the form of a recycle or new addition—
can reasonably considered “replacing . . . with fresh silicon” because newly
introduced silicon through line 37 is chemically indistinct from unreacted
silicon that may be reintroduced in the reactor from elsewhere (e.g.,
unreacted silicon through line 15). Moreover, in order to maintain a desired
reaction, a person having ordinary skill in the art—who is aware that matter
cannot be created or destroyed—would have accounted for any removal or
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Application 12/995,931
consumption of silicon by introducing more silicon through line 37, which
would include not only the “make-up silicon” (col. 4,11. 65—68) but also
“fresh powder mixture of silicon copper” sufficient to sustain the reaction in
a continuous manner (col. 3,11. 71—74).
For these reasons, we do not find the Appellants’ arguments based on
the limitations recited in steps VI and VII persuasive to identify any
reversible error.
II. Cumulative Silicon Conversion Issue
The Examiner finds that Dotson discloses conversions that fall within
the Appellants’ specified range of “70% to <100%” (Ans. 4) (citing Dotson,
column 9,11. 34-44, Table). We discern no error in that finding. Dotson
discloses “silicon utilization, which is the percentage of the silicon fed to the
reactor which was converted to methylchlorosilanes” of 88.9%, 87.3%,
85.2%, and 80.9%, each of which falls within the Appellants’ specified
range. Under continuous steady state operations, it would reasonably appear
that the conversions disclosed in Dotson would be maintained as product is
continuously removed.
The Appellants rely on certain calculations to support their argument
that Dotson does not disclose the specified conversions (Appeal Br. 23—26).
Consistent with the Examiner’s position, we do not find these calculations,
which are not in sworn declaration form accompanied by expert testimony,
persuasive (Ans. 10-11). Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (mere lawyer’s arguments or conclusory statements, which are
unsupported by objective factual evidence, are entitled to little probative
value).
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III. Silicon Particle Size/Particle Size Distribution Issue
Dotson discloses that the silicon powder, which reacts with the
organic chloride, is in finely divided form and that for optimum results, it
should have an average particle diameter in the range of about 20—200
microns (col. 2,1. 72—col. 3,1. 2). In addition, Dotson teaches that at least
25% by weight of the particles have actual diameters in the range of 20—200
microns (col. 3,11. 2-4). Based on these disclosures, a person having
ordinary skill in the art would have determined—through no more than
routine experimentation—optimum or workable average particle sizes and
distributions, including those that fall within the ranges specified in claim 1.
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)
(‘“[WJhere the general conditions of a claim are disclosed in the prior art, it
is not inventive to discover the optimum or workable ranges by routine
experimentation.’” (quotingIn reAller, 220 F.2d 454, 456 (CCPA 1955))).
Moreover, in a similar fluidized bed reaction process in which an
alkyl halide is reacted with particulate silicon, Freebume teaches that
improvements in terms of efficiency are achieved when the particulate
silicon have particle sizes within a range of 1—85 microns and, preferably, a
mass distribution characterized by a 10th percentile of 2.1 to 6 microns, a
50th percentile of 10 to 25 microns, and a 90th percentile of 30 to 60
microns (Abst.; col. 3,11. 14—30; claims 1—2). Freebume’s disclosed particle
sizes and distributions substantially overlap those recited in claim 1 and are
therefore patentably indistinguishable from those specified in claim 1. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“Aprima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.”).
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The Appellants’ reliance on the Wineland Declaration is misplaced
for the reasons given by the Examiner (Ans. 11—12), which we adopt as our
own. For example, Mr. Wineland states (Wineland Decl. 125):
none of the particle size distributions between and including the
finest possible particle size distribution and coarsest possible
particle size distribution fed (charged) to the fluidized bed in
Dotson at column 8, lines 39-42 can fall completely within the
shaded area, which represents the parameters as set forth in the
subject application at paragraph [0028].
As the Examiner finds (Ans. 12), Dotson’s disclosure is not limited to
specific embodiments described in column 8, lines 39-42. In re Lamberti,
545 F.2d 747, 750 (CCPA 1976).
Finally, the Appellants’ reliance on Example 2 and Comparative
Example 1 (Spec. ^fl[ 51—55) is also ineffective to identify a reversible error.
As the Examiner aptly points out (Ans. 13), the Appellants fail to establish
that the results are attributable to the actual differences between their
specified particle size/particle size distribution and the particle size/particle
size distribution disclosed in Freebume. In re Kao, 639 F.3d 1057, 1068
(Fed. Cir. 2011) (applicant must establish a nexus between the differences
and the results obtained); In re Dunn, 349 F.2d 433, 439 (CCPA 1965)
(“[W]e do not feel it an unreasonable burden on appellants to require
comparative examples relied on for non-obviousness to be truly
comparative. The cause and effect sought to be proven is lost here in the
welter of unfixed variables.”).
Moreover, the Appellants’ Specification descriptions fail to establish
that the results reported would have been considered unexpected by a person
having ordinary skill in the art or that the showing is commensurate in scope
with claim 1. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“The 32—
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Application 12/995,931
43% increase in stress-rupture life . . . does not represent a ‘difference in
kind’ that is required to show unexpected results.”); In re Inland Steel Co.,
265 F.3d 1354, 1366 (Fed. Cir. 2001) (“Inland did not offer comprehensive
test results for the magnetic properties of steel produced under the ’574
claims at antimony levels greater than 0.02%.”).
For these reasons, we uphold the Examiner’s rejection.
IV. SUMMARY
Rejections A and B are sustained. Therefore, the Examiner’s final
decision to reject claims 1, 2, 4—6, 8—10, 12—14, 17, 21, 22, 25, and 26 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).
AFFIRMED
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