10667883 (B.P.A.I. Sep. 17, 2010)

Ex Parte Liu

Board of Patent Appeals and InterferencesSep 17, 2010

10667883 (B.P.A.I. Sep. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/667,883 09/23/2003 Hanqing Liu 14595.0001 8625 7590 09/17/2010 STEPTOE & JOHNSON LLP 1330 Connecticut Avenue, NW Washington, DC 20036-1795 EXAMINER MARCANTONI, PAUL D ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 09/17/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HANQING LIU ____________ Appeal 2009-003485 Application 10/667,883 Technology Center 1700 ____________ Before ALLEN R. MACDONALD, Vice-Chief Administrative Patent Judge, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-003485 Application 10/667,883 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-4 and 7-32. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellant’s claimed invention is directed to self-reducing cold- bonded pellets containing iron-oxide material, a carbonaceous reducing agent, and Portland cement clinker, as a binder, each in specified amounts. Also, a process of producing the pellets is claimed. The pellets are disclosed as being useful in iron and steel production (Spec. 6 and 7). Claim 1 is illustrative and reproduced below: 1. Self-reducing, cold-bonded pellets, comprising, by weight, about 60-79% iron oxide-containing material, a main portion of said material being between about 200 mesh or smaller, about 10-26% carbonaceous reducing agent with a particle size of about 48 mesh or smaller, and about 10-20% finely divided Portland cement clinker as a binder wherein about 90% or more of the total volume of the cement clinker particles measure less than 0.08 mm and the portion of dicalcium silicate contained in the cement clinker is less than about 20% by weight, the cement clinker contains about 50% by weight or more of tricalcium silicate, the cement clinker contains tricalcium silicate and tricalcium aluminate in a ratio from about 5:1 to 10:1, with the total weight of the iron oxide-containing material, carbonaceous reducing agent and cement clinker being 100 %. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Skalny 4,135,941 Jan. 23, 1979 Shaoying (CN ‘022) CN 861,06022A Mar. 23, 1988 Meizhu (CN ‘903) CN 1158903A Sep. 10, 1997 U.S. Dep’t of the Interior Water and Power Resources Service, Concrete Manual: A Water Resources Technical Publication 47 (8th ed., 1981) (hereafter “Concrete Manual”). 2 Appeal 2009-003485 Application 10/667,883 Sandor Popovics, Concrete-Making Materials 14-15 (1979) (hereafter “Popovics”). Claims 1-4 and 7-32 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over CN 1158903 (CN ‘903) and CN 86106022 (CN ‘022) alone or in view of Skalny, Concrete Manual, or Popovics. It is well settled that the burden of establishing a prima facie case of non-patentability resides with the Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The failure of the Examiner to present a prima facie case of anticipation or obviousness represents a dispositive issue that we resolve in Appellant’s favor. Accordingly, we reverse the stated rejection. Anticipation Prong The factual determination of anticipation requires the disclosure in a single reference of every element of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellant correctly argues that neither CN ‘022 nor CN ‘903 teach cold bonded pellets which include the Portland cement clinker, as claimed (App. Br. 2-4; Reply Br. 4-5).2 CN ‘022 is drawn to a modified Portland cement employed in the building/construction industry (para. bridging pp. 7-8). The Examiner argues that CN ‘022 “teaches a pellet and process that would appear to meet 2 App. Br. refers to the Appeal Brief filed January 18, 2007 and Reply Br. refers to the Reply Brief filed May 09, 2008. 3 Appeal 2009-003485 Application 10/667,883 the limitations of the applicants’ claimed invention” (Ans. 5). 3 However, the Examiner does not explain nor do we find where CN ‘022 describes cold-bonded pellets or a method of making same, as claimed by Appellant. See generally CN ‘022 and Ans. CN ‘903 discloses cold-cured pellets made with iron-oxide containing material, carbonaceous material (non-coking coal), and cement clinker. However, the Examiner does not point to, nor do we find where CN ‘903 discloses the use of a Portland cement clinker, much more a Portland cement clinker of the composition required by the appealed claims, as the cement clinker employed in the cold-cured pellets thereof. See generally CN ‘903 and Ans. The other cited prior art documents relate to Portland cement and/or Portland cement clinker compositions and do not establish an inherent anticipation by either CN ‘903 or CN ‘022. Thus, the Examiner has not established that either CN ‘903 or CN ‘022 anticipate the claimed subject matter. Obviousness Prong As for the obviousness alternative expressed in the stated rejection, a sustainable obviousness rejection must be accompanied by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). 3 Ans. is a reference to the Supplemental Examiner’s Answer dated March 10, 2008. 4 Appeal 2009-003485 Application 10/667,883 The Examiner generally asserts that “[f]or the primary references above, overlapping ranges of amounts would have been prima facie obvious to one of ordinary skill in the art” (Ans. 5). However, the Examiner does not articulate what would have prompted one of ordinary skill in the art to have combined the teachings of the applied references in a manner that would have resulted in the claimed subject matter, such as by furnishing a rationale basis for the use of a Portland cement clinker, particularly selecting a composition from the prior art that meets the clinker required by Appellant, as the cement clinker binder employed in the cold-cured pellets of CN ‘903, which latter reference is the only applied reference drawn to cold-cured pellets. On this appeal record, we do not sustain the stated rejection. ORDER The Examiner’s decision to reject claims 1-4 and 7-32 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over CN 1158903 and CN 86106022 alone or in view of Skalny, Concrete Manual, or Popovics is reversed. REVERSED ssl STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE, NW WASHINGTON, DC 20036-1795 5