Ex parte Burgie et al.

Board of Patent Appeals and Interferences

Sep 29, 1998

07891132 (B.P.A.I. Sep. 29, 1998)

Application for patent filed June 1, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD A. BURGIE and ERIC M. FLEMING
____________
Appeal No. 95-3422
Application 07/891,1321
____________
ON BRIEF
____________
Before WINTERS, GRON, and PAK, Administrative Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
Introduction
This is an appeal under 35 U.S.C. § 134 from an
examiner’s rejection of Claims 1-21, all claims pending in the
Appeal No. 95-3422
Application 07/891,132
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application.
Claims 1-3 stand rejected under 35 U.S.C. § 103 as
being unpatentable in view of the teaching of Levin, U.S.
4,737,348, patented April 12, 1988, and the acknowledged prior
“existence of a commercially available material comprising a
silicon carbide coated carbon fiber composite, page 12 of the
specification” (Examiner's Answer, p. 4). Claims 4-9 and 12-
21 stand rejected under 35 U.S.C. § 103 as being unpatentable
in view of the combined teachings of Levin, Richerson et al.
(Richerson), U.S. 3,895,219, patented July 15, 1975, and the
acknowledged prior “existence of a commercially available
material comprising a silicon carbide coated carbon fiber
composite, page 12 of the specification” (Examiner's Answer,
p. 4). Claims 10-11 stand rejected under 35 U.S.C. § 103 as
being unpatentable in view of the combined teachings of Levin
and Richerson.
In the Examiner’s Answer, pp. 9-14, the examiner entered
NEW GROUNDS of rejection of Claims 1-21 under 35 U.S.C. § 103
as being unpatentable in view of the aforementioned
combination of prior art teachings and acknowledgments,
further in view
Appeal No. 95-3422
Application 07/891,132
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of the teaching of Endou et al. (Endou), U.S. 4,596,741,
patented June 24, 1986, or Galasso et al. (Galasso), U.S.
4,373,006, patented February 8, 1983. However, in the first
paragraph of the Supplemental Examiner’s Answer (Paper # 13,
mailed August 9, 1994), the examiner withdrew the new grounds
of rejection. Claims 1, 4, and 10 are representative of the
subject matter on appeal and read:
1. A reactor comprising: a reaction vessel defining a
chamber for contacting chlorosilane and hydrogen
gases
at temperatures greater than about 600 C, where theO
reaction vessel is formed from a silicon carbide
coated carbon fiber composite.
4. A reactor comprising: a reaction vessel defining a
chamber for contacting chlorosilane and hydrogen
gases
at temperatures greater than about 600 C, where theO
reaction vessel is heated by a heating element
formed
from a silicon carbide coated carbon fiber
composite.
10. A reactor comprising: a reaction vessel defining a
chamber for contacting chlorosilane and hydrogen
gases
at temperatures greater than about 600 C, a heatingO
element, and a silicon nitride insulator
electrically
insulating the heating element.
Discussion
We reverse the examiner’s rejections of Claims 1-21
because the examiner has not met the PTO’s initial burden of
Appeal No. 95-3422
Application 07/891,132
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establishing a prima facie case of unpatentability under 35
U.S.C. § 103. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988):
The PTO has the burden under section 103 to establish a
prima facie case of obviousness. See In re Piasecki,
745 F.2d 1468, 1471-72, 223 USPQ 785, 787-87 [sic, 88]
(Fed. Cir. 1984). It can satisfy this burden only by
showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill
in the art would lead that individual to combine the
relevant teachings of the references.
The statements made in Fine at 1075, 5 USPQ2d at 1599, equally
apply to the rejections of the subject matter claimed in this
case under section 103:
Obviousness is tested by “what the combined
teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
But it “cannot be established by combining the
teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting
the combination. . . . And “teachings of references can
be combined only if there is some suggestion or incentive
to do so.” . . . Here, the prior art contains none.
The examiner has rejected Claims 1-9 and 12-21 based on a
finding that appellants’ acknowledgment of the prior existence
of a commercially available material comprising a silicon
carbide coated carbon fiber composite prima facie would have
led persons having ordinary skill in the art to form both a
“reaction vessel defining a chamber for contacting
Appeal No. 95-3422
Application 07/891,132
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chlorosilane and hydrogen gases at temperatures greater than
about 600 C” (Claim 1), the walls of which had been made ofO
silicon carbide coated graphite or carbon material (Levin,
col. 3, l. 58-63), and/or its “heating element” (Claim 4),
which had been made of silicon carbide and/or silicon nitride
(Richerson, col. 2, l. 24-27 and 49-55), from the same
commercially available material. The examiner’s finding is
clearly erroneous. For obviousness under section 103, the
prior art “teachings . . . can be combined only if there is
some suggestion or incentive to do so.” In re Fine, supra.
Here, the teachings provide no suggestion or incentive to use
the commercially available material for any reason. We might
speculate as to possible reasons for the substitution.
However, we find that the examiner’s basis for the
substitution is the hindsight of appellants’ disclosure rather
than any prior art teachings. Moreover, there is no evidence
of record that
persons having ordinary skill in the art were aware of
problems associated with Levin’s reaction vessel or the
graphite heating elements used in Levin’s reactor. Absent
recognition of problems with Levin’s reactor or heating
elements, we fail to see why persons having ordinary skill in
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Application 07/891,132
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the art would have wanted to solve them. Accordingly, we
reverse the examiner’s rejections of Claims 1-9 and 12-21.
Claims 10 and 11 present a slightly different issue
because Richerson describes a silicon nitride electrical
insulating layer or jacket integrally bonded to a silicon
carbide/silicon nitride heating element (Richerson, col. 2, l.
49-68). The examiner argues that it would have been prima
facie obvious in view of Richerson’s teaching to apply a high
temperature resistant silicon nitride electrical insulating
layer or jacket to the
heating element of Levin’s reactor. On consideration of the
prior art teaching as a whole, we find the examiner’s argument
untenable.
First, Richerson describes a silicon nitride electrical
insulating layer or jacket hot-pressed to a silicon carbide/
silicon nitride heating element. Richerson does not indicate
that silicon nitride electrical insulating layers or jackets
may be applied to, or are useful as electrical insulators for,
heating elements generally. See Richerson’s Example 1, col.
5, l. 35-51:
A graphite mold set-up was assembled with the exception
of the top plate. An 81.0 gram quantity of the silicon
nitride powder was spread in the mold, followed by 21.7
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Application 07/891,132
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grams of the silicon carbide-silicon nitride mixture
which was spread level; then the center was scraped out
with a flat edge scraper to provide a thin section 4 in
Fig. 1. This results in the end portions 5 having twice
the thickness of the center 4. This was then followed by
a 77.3 gram quantity of the silicon nitride powder which
was uniformly spread and leveled. The graphite mold
plate
was put in position and the tri-layered content of the
mold cavity was hot-pressed at 2,000 p.s.i. at 1,750 C forO
60 minutes.
Electrical leads were connected to the silicon
nitride-silicon carbide resistor core of the plate thus
producing an insulated heating element . . . .
On the other hand, referring to the reactor depicted in
Fig. 1, Levin teaches (Levin, col. 5, l. 17-24):
[T]he outer cylinder 12 is provided with suitable entry
ports for copper or like conduits 28 which conduct
current
for energizing graphite, “picket fence” type resistance
heaters 30 surrounding the inner reactor apparatus 10.
The resistance heaters 30 and the inner reactor apparatus
32 are separated from one another by a high temperature
resistant electrical insulator 31.
We have considered the teachings of Levin and Richerson
as a whole. We fail to see why persons having ordinary skill
in the art would have been led by the combined teachings to
insulate Levin’s energizing graphite, “picket fence” type
resistance heaters 30 from the graphite or other carbon
reactor material which forms the walls of Levin’s reactor 32
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Application 07/891,132
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using a high temperature resistant electrical insulator 31
made of silicon nitride. While we find from Richerson’s
teaching that silicon nitride is indeed a high temperature
resistant electrical insulator for silicon carbide-silicon
nitride heating elements, the examiner has not explained why
Richerson’s use of silicon nitride hot-pressed to a silicon
carbide-silicon nitride heating element would have suggested
hot-pressed silicon nitride for use in electrically insulating
graphite reactor walls from graphite heating elements. The
reasons for the combination escape us.
Accordingly, we also reverse the examiner’s rejection of
Claims 10 and 11 under section 103. In so doing, we repeat
the wisdom of In re Fine, 837 F.2d at 1074, 5 USPQ2d at 1598:
The PTO has the burden under section 103 to establish a
prima facie case of obviousness . . . [and] can satisfy
this burden only by showing some objective teaching in
the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that
individual
to combine the relevant teachings of the references.
Conclusion
We reverse all the examiner’s rejections of Claims 1-21
under 35 U.S.C. § 103.
REVERSED
Appeal No. 95-3422
Application 07/891,132
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Sherman D. Winters )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Chung K. Pak )
Administrative Patent Judge )
tdc
Appeal No. 95-3422
Application 07/891,132
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Dow Corning Corporation
Patent Department, Mail 1232
Midland, MI 48686-0994