Ex Parte Burns et al

Board of Patent Appeals and Interferences

Jun 11, 2009

10606436 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN M. BURNS and STEVEN P. HAHN
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Appeal 2008-004945
Application 10/606,436
Technology Center 1700
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Decided:1 June 11, 2009
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Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of February 20, 2009
(“Decision”), wherein we sustained the Examiner's rejection of the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-004945
Application 10/606,436

appealed claims under 35 U.S.C. § 103(a).
We have carefully considered the arguments set forth in Appellants’
Request, but we remain of the opinion that the Examiner drew the proper
legal conclusion that the claimed subject matter would have been obvious to
one of ordinary skill in the art within the meaning of § 103.
Appellants submit that we misapprehended their argument with
respect to Burns not teaching a diffusion heat treating step. However,
Appellants expressly state in their Reply Brief that “there is nothing here [in
Burns] which teaches a diffusion heat treating step” (Reply Br. 3, first para.).
As set forth in our Decision, Burns provides a specific teaching of such and
Appellants’ Request does not dispute this.
As for the claim recitation “gas being injected at a workpiece center
location”, Appellants submit that “there is one, and only one, interpretation
of the phrase” (Request 4, second para.). However, while there is only one
center of the workpiece, the claimed step of injecting the gas can be
performed in a variety of ways such that the gas impinges other areas of the
workpiece and at the center location from a variety of angles. We note that
Appellants do not dispute our finding that the appealed claims are
sufficiently broad to encompass injecting gas at the entirety of the
workpiece, including its center location. Appellants have not refuted our
rationale that it would have been obvious for one of ordinary skill in the art
to inject gas at the entirety of Burns’s workpiece during the diffusion heat
treating step and, thereby, perform the claimed step of injecting gas at a
workpiece center location. Nor have Appellants submitted any reason why
the diffusion heat treating step of Burns would not result in gas being
injected at the center of the workpiece.
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Appeal 2008-004945
Application 10/606,436

Appellants also contend that we have erroneously ignored the factual
and objective evidence of unexpected results represented by Figures 3 and 4
of the present Specification. In response to our statement in the Decision
that Appellants have not presented the requisite analysis of the Specification
Figures, and “[i]t is not for this Board to ferret out factual data in the record
and interpret it in a light most favorable to the applicant” (Decision 5, third
para.), Appellants maintain that “the differences in coatings are clear from a
mere viewing of Figures 3 and 4 – no explanation is required” (Request 6,
emphasis added). However, it is fundamental that the burden of
demonstrating unexpected results rests on the party asserting them,2 and that
Appellants must demonstrate that the evidence is reasonably commensurate
in scope with the degree of protection sought by the appealed claims,3 that
the evidence presents a comparison with the closest prior art,4 and that the
evidence would have been considered truly unexpected by one of ordinary
skill in the art.5 Manifestly, Appellants have not carried their burden on this
record.
In conclusion, based on the foregoing, Appellants’ Request to
reconsider our Decision has been granted, but is denied with respect to
making any change therein.
DENIED

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

2 In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
3 In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
4 In re Johnson, 747 F.2d 1456, 1461 (Fed. Cir. 1984).
5 In re Merck & Co., 800 F.2d 1091, 1098-99 (Fed. Cir. 1986).
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Appeal 2008-004945
Application 10/606,436

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