Ex Parte Hirose et al

Patent Trial and Appeal Board

Jun 15, 2016

12594690 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/594,690 10/05/2009 Y oshiaki Hirose
38834 7590 06/17/2016
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
091187 6041
EXAMINER
BRATLAND JR, KENNETH A
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIAKI HIROSE and TETSUY A YUKI
Appeal2015-001619
Application 12/594,690
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 3, and 5-10. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 12/594,690
Independent claim 1 reads (emphasis added):
1. A method of protecting a carbonaceous crucible by
interposing a protective sheet made of an expanded graphite
material between a quartz crucible and a carbonaceous crucible
on which the quartz crucible is placed, comprising:
installing two or more protective sheet pieces on an inner
surface of the carbonaceous crucible, each of the protective
sheet pieces having such a shape that the protective sheet pieces
are combined integrally to form the protective sheet in
installing the protective sheet between the crucibles, wherein:
each of the protective sheet pieces itself comprises
securing means for securing the protective sheet pieces that are
adjacent to each other in a condition in which the protective
sheet pieces are installed on the inner surface of the
carbonaceous crucible,
the securing means comprising a configuration in which
a protruding portion is provided on an end part of one of the
protective sheet pieces itself that are adjacent to each other
while a recessed portion in which the protruding portion fits is
provided in an end part of another protective sheet piece itself,
so that the protective sheet can be installed by inserting the
protruding portion into the recessed portion, or a configuration
in which a cut is formed in an end of one of the protective sheet
pieces itself, and another protective sheet piece is inserted into
the cut, so that misalignment does not occur in the protective
sheet pieces that are adjacent to each other and have been once
installed at predetermined positions.
The Examiner maintains the following rejections:
(a) Claims 1, 3, and 6 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ota (JP 2001-261481 A, published September 26, 2001,
and relying on an English machine translation dated January 12, 2010),
Tabata (JP 57-111296, published July 10, 1982, and relying on an English
Abstract) and Rudd (US 5,251,808, issued October 12, 1993),
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(b) Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over
Ota, Tabata, Rudd, and Tomzig (US 2003/0113488 Al, published June 19,
2003),
(c) Claims 7, 8, and 10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ota, Matsuo (US 4,888,242, issued December 19, 1989),
Tabata, and Rudd, and
(d) Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over
Ota, Matsuo, Tabata, Rudd, and Tomzig.
Appellants rely on essentially the same line of arguments in
addressing the rejections of independent claims 1 and 7 (Rejections (a) and
(c) 1). Appellants do not present separate arguments addressing any of the
dependent claims in Rejections (a}-(d). See Appeal Brief, generally. We
address the independent claims together in our opinion as representative of
the subject matter before us on appeal and focus our discussion on
Rejections (a) and (c). Claims 3, 5, 6 and 8-10 will stand or fall with their
respective independent claim.
ANALYSIS
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's§ 103 rejections of representative independent
claims 1 and 7. Accordingly, we will sustain all of the Examiner's rejections
1 A discussion of Matsuo, applied in Rejection ( c ), is unnecessary for
disposition of this appeal. The Examiner relied upon Matsuo as teaching a
plurality of pieces of graphite sheet material may be used to cover the
entirety of the crucible. Non-final Act. 8; Matsuo Figures 7-9. We find this
reference duplicative of the teachings of Ota and Tabata.
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Application 12/594,690
for essentially those reasons expressed in the Answer and we add the
following for emphasis.
Rejections (a) and (c) (Independent claims 1 and 7)
Independent claims 1 and 7 are directed to methods of protecting the
inner surface of a carbonaceous crucible by providing a protective sheet
comprising a plurality of sheet pieces adjacently aligned and secured to each
other through a securing means comprising either a recessed portion-
protruding portion securing arrangement or a slit type securing arrangement
to avoid misalignment of the sheet pieces once installed. Independent claim
7 differs from independent claim 1 in that it recites sheet pieces to be applied
to the bottom of the crucible and sheet pieces to be applied to the upper
circumference.
The Examiner found Ota discloses a method of protecting a
carbonaceous crucible by interposing a protective sheet made of sheet pieces
that differs from the claimed invention in that Ota does not explicitly teach
that each of the protective sheet pieces comprise securing means for securing
adjacent protective sheet pieces when installed on the inner surface of the
carbonaceous crucible or the specifically claimed securing means
configuration. Non-final Act. 2--4; Ota Figures 1, 4a, 4b, i-fi-f l-3, 20-21.
The Examiner found Tabata teaches securing mating pieces of a protective
graphite sheet for a carbonaceous crucible using a securing means in the
form of a graphite fiber (8). Non-final Act. 3--4; Tabata Abstract, Figure 4.
The Examiner also found the Rudd discloses the claimed slit type securing
configuration as known for securing adjacently aligned flaps (sheets). Non-
final Act. 4--5; Rudd Figure 1, col. 2, 11. 56-62. The Examiner determined it
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would have been obvious to one skilled in the art to secure the adjacent
protective sheet pieces of Ota to each other as taught by Tabata to prevent
misalignment. Non-final Act. 3--4; Ota Figure 4b, i-fi-13, 20. The Examiner
also determined it would have been obvious to one skilled in the art to use
the securing means of Rudd to secure the sheet pieces of Ota to ensure their
alignment with respect to each other because it is a known alternate
configuration for securing adjacent sheets (slit-tab). Non-final 5; Ans. 15;
Rudd Figure 1.
Appellants argue Ota and Tabata do not teach forming a complete
protective sheet for a carbonaceous crucible by using multiple protective
sheet pieces, nor securing means provided on each of the protective sheet
pieces. App. Br. 12; Ota Figure 4b; Tabata Figure 4.
We are unpersuaded by these arguments and agree with the
Examiner's determination that Ota and Tabata teach applying a protective
liner to substantially cover the surface of the carbonaceous crucible. Non-
final Act. 2-3; Ota Figure 5, i-fi-f l-3, 22; Tabata Abstract, Figure 4--5. While
Appellants argue Ota's embodiment shown in Figures 4a and 4b shows
applying multiple strips of sheet pieces at certain locations without
substantially covering the surface of the carbonaceous crucible (App. Br.
12), it is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom. See In re Fritch, 972 F .2d
1260, 1264--65 (Fed. Cir. 1992). One of ordinary skill would reasonably
infer from Ota's disclosure of applying adjacent sheet pieces to cover part of
the carbonaceous crucible surface also suggests the use of adjacent sheet
pieces to cover a substantial portion of the inner surface of a carbonaceous
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crucible as desired by Ota and Tabata. Appellants have not directed our
attention to any persuasive reasoning or credible evidence to establish error
in the Examiner's determination. Appellants have not adequately explained
why one skilled in the art, using no more than ordinary creativity, would not
have been able to form a protective sheet to substantially cover the inner
surface of a carbonaceous crucible by using Ota's individual sheet pieces
based on the inferences from Ota's disclosure.
Appellants argue Ota and Tabata do not teach providing securing
means on each of the protective sheet pieces to avoid misalignment of the
sheet pieces once installed as claimed. App. Br. 12; Ota Figure 4b; Tabata
Figure 4. Appellants further argue Rudd is nonanalogous art because Rudd
discloses a securing means for closing of cereal boxes that has a
significantly different allowance of misalignment than what would be
required for sheet pieces of a protective sheet for a carbonaceous crucible.
App. Br. 13-14; Rudd Figure 1.
We are also unpersuaded by these arguments for the reasons presented
by the Examiner. As noted by the Examiner, Tabata teaches the concept of
securing adjacent mating pieces to form a protective sheet for a
carbonaceous crucible. Ans. 14; Tabata Figure 4. The Examiner also found
Rudd teaches an alternate configuration for securing adjacent sheets (slit-
tab). Ans. 15; Rudd Figure 1. While Appellants argue Rudd is non-
analogous art because it does not address a protective sheet for an inner
surface of a carbonaceous crucible (App. Br. 13), Appellants have not
adequately explained why one skilled in the art, using no more than ordinary
creativity, would not have been capable of using other well-known securing
techniques, such as the one disclosed by Rudd, to hold the adjacent sheet
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pieces forming the protective sheet for Ota's crucible in alignment given that
Tabata discloses as desirable to secure mating sheets of a protective sheet.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton."); Cf
In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379--80 (Fed. Cir. 2007)
(holding that analogous art with regard to a folding mechanism of a
treadmill, may come from any area describing hinges, springs, latches,
counterweights, or other similar mechanisms); see also Wyers v. Master
Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme Court's
decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 ... (2007),
directs us to construe the scope of analogous art broadly, stating that
''familiar items may have obvious uses beyond their primary purposes . .. ").
With respect to claim 7, Appellants additionally argue the cited art
does not teach the use of sheet pieces to form the protective sheet portions
for the bottom and upper circumferential inner surface sections of the
carbonaceous crucible. App. Br. 16-19. We find this argument also
unavailing for reasons discussed above with respect to the teachings of Ota.
Moreover, one skilled in the art is capable of determining the configuration
of the sheet pieces needed to provide the best fit for the protection of the
inner surface of the carbonaceous crucible without compromising the
integrity of the protective sheet.
Accordingly, we affirm the Examiner's prior art rejections of claims
1, 3, 5-10 under 35 U.S.C § 103(a) (Rejections (a}-(d)) for the reasons
presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 1, 3, 5-10 are affirmed.
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Application 12/594,690
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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