Ex Parte Kienzle et al

Patent Trial and Appeal Board

Sep 18, 2013

12544702 (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/544,702 08/20/2009 Andreas Kienzle 8369.050.DVUS00 9862
77407 7590 09/18/2013
Novak Druce Connolly Bove + Quigg LLP
1875 I St NW
Suite 1100
Washington, DC 20006-5409
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
09/18/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte ANDREAS KIENZLE and INGRID KRATSCHMER
____________

Appeal 2012-005374
Application 12/544,702
Technology Center 1700
____________

Before HUBERT C. LORIN, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005374
Application 12/544,702

2

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 8-10 and 12-19. We have jurisdiction under 35 U.S.C.
§ 6.
STATEMENT OF THE CASE
Claim 8 is representative of the subject matter on appeal and is set
forth below:
8. Process for producing ceramic materials, comprising in sequence:

preparing a mixture containing carbon particles with a spherical shape
and an average diameter of 0.2 µm to 800 µm, and a binder selected from
artificial resins and pitches and optionally fibers of carbon with a diameter
from 4 µm to 12 µm and a length from 0.1 mm to 48 mm;

compacting the mixture into an essentially pore-free body;

carbonizing the body by heating to a temperature from 705° C to
1300° C into a porous carbon body; and

covering the porous carbon body with a carbide-forming element or a
mixture of several carbide-forming elements at a temperature in the range of
the melting point of the carbide-forming elements at a temperature in the
range of the melting point of the carbide-forming element or a mixture of
these several carbide-forming elements to a temperature of 500 K above the
indicated melting point, at least 10% of the mass of the carbon in the carbon
body being reacted into carbide.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Weisensel et al. (Weisensel) US 2007/0032370 A1 Feb. 8, 2007
Rahaman, M.N., "Ceramic Processing and Sintering", Materials
Engineering 10, Marcel Dekker, 264-72, (1995).

Appeal 2012-005374
Application 12/544,702

3

THE REJECTION1
Claims 8-10 and 12-19 are rejected under 35 U.S.C. §103(a) as
obvious over Weisensel in view of Rahaman.

ANALYSIS

It is the Examiner’s position that Weisensel discloses a process as
claimed which is similar such that the recitation of “at least 10% of the mass
of the carbon in the carbon body being reacted into carbide” would result.
The Examiner admits that Weisensel does not disclose the shape of the
carbon particles. The Examiner relies upon Rahaman for this teaching. The
Examiner concludes that it would have been obvious to have used the
spherical particles of Rahaman to achieve a higher packing density. Ans. 5.
It is Appellants’ position that the combination of Rahaman and
Weisensel is not obvious because Weisensel seeks porous ceramics and
Rahaman uses spherical particles having a bimodal distribution to increase
packing density, which, as acknowledged by the Examiner, would result in
less porous ceramics. Br. 5. Reply Br. 4-6.
Appellants also argue that Rahaman uses spherical particles having a
bimodal distribution, whereas Weisensel employs a unimodal size
distribution to achieve porous ceramics. Appellants submit that therefore
the combination is improper for this reason also. Br. 5-6. Reply Br. 3-4.

1 The Examiner has objected to claim 19. Ans. 4. This issue is outside the
Board’s jurisdiction and therefore not appealable. MPEP 1000.
Appeal 2012-005374
Application 12/544,702

4
We agree with Appellants’ position for the reasons provided by
Appellants in their Brief and Reply Brief. We emphasize that Appellants’
argument that the Examiner’s findings regarding the percentage of porosity
(Ans. 7) does not adequately take into account that Weisensel’s definition of
porosity is provided in terms of “a solid porous article” rather than in terms
of “real powders” as used by the Examiner (Ans. 7) is convincing. This,
combined with the fact that the Examiner does not address Appellants’ point
that Rahaman uses spherical particles having a bimodal distribution (two
clear peaks), whereas Weisensel discloses a unimodal size distribution (a
single peak) as depicted in Weisensel’s Figure 6. Weisensel discloses in
para. [0092] that the molded article has a differential pore distribution
having “a peak”. Figures 4, 5, and 6 each depicts a unimodal (single peak)
distribution. The Examiner does not adequately address Appellants’
argument as to why one of ordinary skill would have substituted spherical
particles having a unimodal size distribution (a single peak) with spherical
particles having a bimodal distribution (two clear peaks), while maintaining
the objectives of Weisensel which teaches unimodal distribution.
In view of the above, we reverse the rejection.
CONCLUSIONS OF LAW AND DECISION
The rejection is reversed.
REVERSED

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