Ex Parte Jeanvoine et al

Board of Patent Appeals and Interferences

Jun 10, 2009

10841549 (B.P.A.I. Jun. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PIERRE JEANVOINE, TANGUY MASSART,
and ANNE BERTHEREAU
____________

Appeal 2009-002742
Application 10/841,549
Technology Center 1700
____________

Decided:1 June 10, 2009
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

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 2009-002742
Application 10/841,549

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21-31, 33, 34, 37, and 41-43.2 (App. Br. 3-4). We have
jurisdiction pursuant to 35 U.S.C. § 6(b).3
We AFFIRM-IN-PART.
THE INVENTION
Appellants describe a process (claim 21) and an apparatus (claim 30)
for refining a molten vitrifiable material. Claims 21 and 30, reproduced
below, are representative of the subject matter on appeal.
21. Process for refining a molten vitrifiable material,
comprising the steps of:

subjecting a molten vitrifiable material to centrifugal
force under subatmospheric pressure; and

subjecting said molten vitrifiable material to centrifugal
force at ambient pressure.

30. Apparatus for refining a molten vitrifiable materials [sic]
under a centrifugal force and under subatmospheric pressure
comprising:

a device adapted to be rotated such that a molten
vitrifiable material therein is centrifugally refined; and

at least one subatmospheric-pressure zone adapted to
receive the molten vitrifiable material,

wherein the said device includes an upper zone at
subatmospheric pressure and a lower zone at an ambient
pressure.

2 Claims 1-20, 32, and 38-40 have been canceled. Claims 35 and 36 have
been objected to as depending from a rejected base claim. (Appeal Brief
filed February 6, 2008, hereinafter “App. Br.,” 1).
3 Oral arguments were heard in this Appeal on May 13, 2009.
2
Appeal 2009-002742
Application 10/841,549

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Richards 3,754,886 Aug. 28, 1973
Jung 4,040,795 Aug. 09, 1977
Schwenninger 4,780,122 Oct. 25, 1988
Matesa 4,780,121 Oct. 25, 1988
Yabuki 5,246,478 Sep. 21, 1993
Takei 6,119,484 Sep. 19, 2000

There are five grounds of rejection under 35 U.S.C. § 103(a) for
review on appeal: (1) the Examiner rejected claims 21, 24, 25, 37, and 42 as
being unpatentable over Jung in view of Richards; (2) the Examiner rejected
claims 22 and 23 as being unpatentable over Jung in view of Richards, and
further in view of Takei; (3) the Examiner rejected claims 26-29 as being
unpatentable over Jung in view of Richards, and further in view of Matesa;
(4) the Examiner rejected claims 30, 31, 33, 34, and 43 as being
unpatentable over Schwenninger in view of Richards; and (5) the Examiner
rejected claim 41 as being unpatentable over Schwenninger in view of
Richards and Yabuki. (Examiner’s Answer entered April 25, 2008,
hereinafter “Ans.,” 3-8).
3
Appeal 2009-002742
Application 10/841,549

Rejection of claims 21, 24, 25, 37, and 42 as being unpatentable over
Jung in view of Richards

ISSUE
We frame the issue as:
Have Appellants shown that the Examiner reversibly erred in
determining that one of ordinary skill in the art would have combined Jung’s
method of forming amorphous silica using centrifugal force at sub-
atmospheric pressure with a method of removing glass inclusions from
molten glass by centrifugal force at ambient pressure as disclosed by
Richards?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Jung describes a process for converting crystalline silica to
amorphous silica by rotating a furnace where “[t]he furnace
interior is evacuated during the conversion process to draw-off
gaseous by-products.” (Col. 3, ll. 1-11).
2. Jung states: “[a] vacuum, preferably established before start of the
conversion process, is maintained throughout conversion in order
to increase the insulation capacity of the furnace and to draw off
the gaseous by-products.” (Col. 8, ll. 8-11).
3. Richards describes a method and apparatus for refining molten
glass by rotating a mass of glass in a chamber. (Col. 2, ll. 49-65).
4
Appeal 2009-002742
Application 10/841,549

4. Richards does not disclose the application of a vacuum to the
rotating chamber. (See Richards, generally).
5. Richards states:
[t]he refining operation of this invention eliminates the
need for prolonged heating of large baths of molten
glass, over long periods of time, to remove gaseous
inclusions . . . and reduces the residence time of the
molten glass in the refining operation, thereby reducing
costs and minimizing interface reactions, one of the
sources of gaseous inclusions.

(Col. 2, ll. 11-19).
PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Supreme
Court further explained, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the
applicant.

5
Appeal 2009-002742
Application 10/841,549

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In determining
whether prior art references teach away from the claimed combination, the
nature of the teachings is highly relevant. Id.
“Synergism is one factor to be considered in the ultimate
determination of obviousness.” In re Huellmantel, 324 F.2d 998, 1003
(CCPA 1963). Synergism must be unexpected in order to provide evidence
of nonobviousness. Id.

ANALYSIS
We confine our discussion to appealed claim 21, which contains claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii).4
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of the invention:
to have modified the method of treating glass by centrifugal
force at subatmospheric pressure as taught by Jung, by adding a
step of refining molten glass by centrifugal force at atmospheric
pressure as taught by Richards since Richards teaches that this
is an effective method of removing unwanted gaseous
inclusions from molten glass.

(Ans. 3-4).
Appellants contend that Jung teaches away from refining at ambient
pressure by teaching that a vacuum is maintained throughout the entire
conversion of crystalline silica to amorphous silica. (App. Br. 4-5).

4 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
6
Appeal 2009-002742
Application 10/841,549

Appellants also argue that if combined, Richards would have taught the
replacement of sub-atmospheric pressure with atmospheric pressure. (App.
Br. 6). Appellants further contend that the present method benefits from a
synergy obtained from both centrifugal refining at sub-atmospheric pressure
and centrifugal refining at ambient pressure, where “the low pressure zone in
the centrifugal refiner helps suck the glass into the refiner, and the ambient
pressure zone 30 in the refiner permits the thin layer of glass under
centrifugation to be discharged from the bottom of the refiner without
restriction.” (App. Br. 6).
The Examiner stated that “Jung does not teach away from later further
refining the molten glass through known methods, including that taught by
Richards” and that
[c]ombining the references in this manner would not result in
the sub-atmospheric pressure of Jung being replaced in any
way by the atmospheric pressure of Richards since the two
represent separate steps to be performed sequentially and do
not require either of the steps to be changed from how they
are taught in their respective references.
(Ans. 9-10).
We are unpersuaded by Appellants’ argument that Jung teaches away
from further refining the molten glass by applying Richard’s refining
process after the completion of Jung’s conversion process. Although Jung
discloses that a vacuum is maintained throughout the conversion process
from crystalline silica to amorphous silica to achieve increased insulation
capacity and to draw off gaseous by-products, Jung does not disclose that
atmospheric pressure is to be avoided in any subsequent refining steps.
Moreover, Richards discloses that a centrifugal refining step eliminates the
need for prolonged heating. (FF 5). Thus, because Jung’s process includes
7
Appeal 2009-002742
Application 10/841,549

conversion of crystalline silica to amorphous silica in addition to removing
gaseous by-products, Jung’s benefit of increased insulation capacity cannot
be considered a teaching away from performing further refining processes at
atmospheric pressure. Similarly, while Jung discloses that sub-atmospheric
pressure is maintained to draw off gaseous by-products, Richards discloses
that gaseous occlusions may be removed from molten glass by centrifugal
refining. (FF 2 and 5). Jung does not disclose that the centrifugal refining
process disclosed by Richards would be insufficient to remove gaseous
occlusions from molten glass. In addition, at oral argument, Appellants
indicated that the amorphous silica obtained in Jung’s process could undergo
refining through additional refining processes. (Transcript, p. 14, ll. 9-14).
Therefore, Jung does not teach away from subjecting the molten glass
obtained in Jung’s conversion process to subsequent refining steps as
disclosed in Richards.
Appellants have also not directed us to any evidence that the synergy
resulting from combining a sub-atmospheric step with an atmospheric step
would have been unexpected. As a result, we decline to find that the
Examiner erred in rejecting claim 21 as being unpatentable over Jung in
view of Richards.
Regarding the rejections of claims 22 and 23 as being unpatentable
over Jung in view of Richards, and further in view of Takei and claims 26-
29 as being unpatentable over Jung in view of Richards, and further in view
of Matesa, Appellants have not presented separate arguments for these
rejections. Therefore, we affirm these rejections for the same reasons.

8
Appeal 2009-002742
Application 10/841,549

Rejection of claims 30, 31, 33, 34, and 43 as being unpatentable over
Schwenninger in view of Richards

ISSUE
We frame the issue as:
Have Appellants shown that the Examiner reversibly erred in
determining that replacing Schwenninger’s second chamber with the rotating
chamber of Richards would have rendered the recited apparatus in claim 30
obvious to one of ordinary skill in the art?
ADDITIONAL FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
6. Schwenninger describes a method including three stages, a
liquefaction stage, a dissolving stage, and a vacuum refining stage.
(Col. 5, ll. 49-52).
7. Schwenninger discloses that in the dissolving stage, any unmelted
particles present in the glass materials not liquefied in the first
liquefaction stage are dissolved. (Col. 6, ll. 55-59).
8. Schwenninger discloses a dissolving vessel, which may be heated,
but is silent as to the application of a vacuum to the dissolving
vessel. (Col. 6, l. 65 – col. 7, l. 42).
9. Schwenninger states:
[a]s the molten material passes through the tube 36
and encounters the reduced pressure within the refining
vessel [12], gases dissolved and occluded in the melt
expand in volume, creating a foam layer 50 resting on a
body of liquid 51 . . . Subatmospheric pressure may be
established within the refining vessel through a vacuum
9
Appeal 2009-002742
Application 10/841,549

conduit 52 extending through the upper portion of the
vessel.

(Col. 8, ll. 12-20, Fig. 1).
ADDITIONAL PRINCIPLES OF LAW
It is well settled that all the claim limitations must be taught or
suggested by the prior art to establish a prima facie case of obviousness.
In re Royka, 490 F.2d 981, 984-985 (CCPA 1974). “‘[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 417-418 (2007), quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).
ANALYSIS
In rejecting claim 30, the Examiner found that Schwenninger
discloses: “[t]he molten glass is subjected to a vacuum in a first chamber (11
in Fig. 1), and then passed to a second cylindrical chamber (12 in Fig. 1)
where it is further subjected to a vacuum to continue the refining process.”
(Ans. 7). The Examiner determined that it would have been obvious to
replace the second chamber of Schwenninger with the rotating chamber of
Richards and that as a result “the modified Schwenninger device would have
a top portion fluidly connected to a vacuum chamber, and a lower end
fluidly connected ambient pressure (as is done in Richards).” (Ans. 8). The
Examiner also stated: “a device would be created having an upper portion
(above the separator plate) at a vacuum due to it being fluidly connected to
the vacuum dissolving vessel 11 of Schwenninger.” (Ans. 11).
10
Appeal 2009-002742
Application 10/841,549

Appellants contend that there is no vacuum applied to the dissolving
vessel 11 of Schwenninger to generate the necessary sub-atmospheric
pressure zone recited in claim 30. (App. Br. 8 and 9, Reply Brief filed June
25, 2008, 4).
We agree with Appellants that Schwenninger fails to disclose that the
dissolving vessel 11 is subject to a vacuum. While Schwenninger discloses
that the refining vessel 12 is subjected to a vacuum through a conduit at the
upper portion of the vessel, Schwenninger is silent as to the presence of a
vacuum in dissolving vessel 11. (FF 8 and 9). The Examiner provides no
reference in Schwenninger or other sufficient rationale that dissolving vessel
11 is subjected to a vacuum. Thus, even if the refining chamber of Richards
may be substituted for Schwenninger’s refining vessel 12, the combined
apparatus still fails to include “at least one subatmospheric-pressure zone” as
recited in claim 30. Therefore, we will not sustain the Examiner’s rejection.
We reverse the Examiner’s rejection of claim 41 as being
unpatentable over Schwenninger in view of Richards and Yabuki for the
same reasons.
CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that one of ordinary skill in the art would have
combined Jung’s method of forming amorphous silica using centrifugal
force at subatmospheric pressure with a method of removing glass inclusions
from molten glass by centrifugal force at ambient pressure as disclosed by
Richards.
Appellants have shown that the Examiner reversibly erred in
determining that replacing Schwenninger’s second chamber with the rotating
11
Appeal 2009-002742
Application 10/841,549

chamber of Richards would have rendered the recited apparatus in claim 30
obvious to one of ordinary skill in the art.

ORDER
We affirm the Examiner’s decision rejecting claims 21, 24, 25, 37,
and 42 under 35 U.S.C. § 103(a) as being unpatentable over Jung in view of
Richards, claims 22 and 23 as being unpatentable over Jung in view of
Richards, and further in view of Takei; and claims 26-29 as being
unpatentable over Jung in view of Richards, and further in view of Matesa.
We reverse the Examiner’s decision rejecting claims 30, 31, 33, 34,
and 43 under 35 U.S.C. § 103(a) as being unpatentable over Schwenninger
in view of Richards and claim 41 as being unpatentable over Schwenninger
in view of Richards and Yabuki.

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

ssl

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314

12