Ex Parte Kmetz et al

Patent Trial and Appeal Board

Feb 27, 2013

12566339 (P.T.A.B. Feb. 27, 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.
12/566,339 09/24/2009 Michael A. Kmetz PA0008774U-U73.12-483KL 2228
164 7590 02/27/2013
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
GROUP, KARL E
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
02/27/2013 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 MICHAEL A. KMETZ and KIRK C. NEWTON
____________

Appeal 2012-001017
Application 12/566,339
Technology Center 1700
____________

Before EDWARD C. KIMLIN, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 14-20. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 14 is illustrative:
14. A highly densified ceramic matrix composite (CMC) having a
final density formed by:
forming a preform of a matrix formed from a non-oxide ceramic and
continuous ceramic fibers and adding an interface coating;
partially densifying the preform with a resin to increase the density of
the preform using a polymer infiltration pyrolysis (PIP) process; and
infiltrating the preform using a chemical vapor infiltration (CVI)
process to a final density of from about 90% to essentially 100%.

Appeal 2012-001017
Application 12/566,339

2
The Examiner relies upon the following references in the rejection of
the appealed claims:
Suyama et al. (Suyama) 5,990,025 Nov. 23, 1999
Petrak 6,743,393 B1 Jun. 1, 2004
Kohyama et al. (Kohyama) 7,318,906 B2 Jan. 15, 2008

Appellants’ claimed invention is directed to a highly densified
ceramic matrix composite (CMA). The composite is formed by partially
densifying a preform of a ceramic matrix with a resin by a polymer
infiltration pyrolysis (PIP) process, and infiltrating the preform with a
chemical vapor infiltration (CIV) process. The final composite has a density
of from about 90% to essentially 100%.
Appealed claims 14-20 stand rejected under 35 U.S.C. § 102(b), or in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over any one of
Petrak, Suyama or Kohyama.
Appellant does not separately argue any particular claim on appeal.
Accordingly, all the appealed claims stand or fall together.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is unpatentable over the cited prior art.
Accordingly, we will sustain the Examiner’s rejections for the reasons set
forth in the Answer, and we add the following primarily for emphasis.
The appealed claims are drafted in product-by-process format and,
therefore, certain principles of patent law apply. It is well settled that if the
product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process. In re Thorpe, 777 F.2d 695, 697
Appeal 2012-001017
Application 12/566,339

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(Fed. Cir. 1985). When the prior art disclose a product which reasonably
appears to be either identical with or only slightly different than a product
claimed in a product-by-process claim, a rejection based alternatively on
either Section 102 or Section 103 of the statute is eminently fair and
acceptable. This is so because, as a practical matter, the United States Patent
and Trademark Office is not equipped to manufacture products by the
myriad of processes put before it and then obtain prior art products and make
physical comparisons therewith. In re Brown, 459 F.2d 531, 535 (CCPA
1972).
In the present case, the Examiner has made the case that the ceramic
matrix composites of the cited references reasonably appear to be essentially
the same as composites within the scope of the appealed claims. Appellants
argue that since the CIV processes of Petrak and Suyama are performed first,
the resultant product cannot have the claimed density. Appellants also
maintain that the one-step process of Kohyama cannot have the claimed
density. However, as pointed out by the Examiner, each of the references
discloses a final ceramic matrix composite having densities within the
claimed range. Significantly, Appellants have not addressed, let alone
rebutted, the basis of the Examiner’s rejections. Appellants have provided
no explanation why the ceramic matrix composites of the cited references,
having densities within the claimed range, fall outside the scope of the
appealed claims, other than stating they are made by different processes.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
Appeal 2012-001017
Application 12/566,339

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The decision of the Examiner is affirmed.
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)(iv).
AFFIRMED

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