Ex Parte Ludtke et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10548723 (B.P.A.I. Sep. 28, 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.
10/548,723 10/03/2005 Arndt Ludtke SB-549 2836
24131 7590 09/28/2010
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
JOHNSON, KEVIN M
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
09/28/2010 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 ARNDT LUDTKE and GERHARD LEICHTFRIED
____________

Appeal 2009-011068
Application 10/548,723
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 22, 23, 25, 29-39, and 41. We have jurisdiction
under 35 U.S.C. § 6.

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 2009-011068
Application 10/548,723

We REVERSE.

Appellants claim a method of producing a diamond-containing
composite material which comprises shaping an intermediate product
containing diamond grains and then heating to a temperature below 1000°C
the intermediate product and a eutectic or near-eutectic infiltrate alloy
having a solidus temperature of less than 900°C thereby causing infiltration
of the intermediate product by the infiltrate alloy, wherein the alloy contains
for example Ag and for example Si (claim 22).
Representative claim 22, the sole independent claim on appeal, reads
as follows:

22: A method of producing a diamond-containing composite
material, which comprises the following steps:

shaping, in a pressureless or pressure-aided shaping process, an
intermediate product containing diamond grains having a mean particle size
of from 5 to 300µm and, optionally, metallic components of high thermal
conductivity and/or binder, and setting a proportion of diamond after
shaping from 40 to 90%, based on a total volume of the intermediate
product;

heating, in a pressureless or pressure-aided heating process, the
intermediate product and a eutectic or near-eutectic infiltrate alloy having a
solidus temperature of < 900°C and containing at least a metallic component
of high thermal conductivity with an element or an alloy from the group
consisting of Cu, Ag, Au and at least one element from the group consisting
of Si, Y, Sc, rare earth metals, and optionally < 3 atom% of one or more
elements from the group consisting of Ni, Cr, Ti, V, Mo, W, Nb, Ta, Co, Fe
that promote wetting, wherein near-eutectic alloys encompass compositions
having a liquidus temperature of < 950°C, to a temperature above a liquidus
temperature of the infiltrate alloy but below 1000°C, causing an infiltration
of the intermediate product by the infiltrate alloy and a filling of pores of the
intermediate product to an extent of at least 97%.

2
Appeal 2009-011068
Application 10/548,723

The Examiner rejects claims 22, 23, 25, 29-33, 37-39, and 41 under
35 U.S.C. § 103(a) as being unpatentable over WO '240 (WO 02/42240
published May 30, 2002). The Examiner correspondingly rejects claim 34
and claims 35 and 36 over this reference and further in view of Kiyota (EP
0356131 published February 28, 1990) and Sawtell (US Patent 6,003,221
issued December 21, 1990) respectively.
The Examiner's obviousness conclusion for claim 22 is set forth
below:

It would have been obvious to one skilled in the art at
the time of the invention that an Si-Ag alloy with a eutectic
composition could have been substituted for the Si utilized in
the examples disclosed by Kloub [i.e., WO '240] and that a
composition of this type would have a solidus temperature of
<700°C and a liquidus temperature of <950°C. Such a
modification would have been motivated by the teaching of
Kloub that Si-Ag could be substituted for the Si infiltrate
utilized in the examples, and the desire to minimize
manufacturing costs in the process taught by Kloub by
reducing the amount of heating required by the infiltration
step.

(Ans. 4.)

Appellants argue that WO '240 contains no teaching or suggestion of
the claim 22 requirement for an infiltrate alloy which is a eutectic or near-
eutectic and which has a solidus temperature of less than 900°C or the claim
22 requirement for heating the intermediate product and the infiltrate alloy to
a temperature above the liquidus temperature of the infiltrate alloy but below
1000°C (App. Br. 7-8).
This argument is persuasive.
3
Appeal 2009-011068
Application 10/548,723

The WO '240 reference contains no express disclosure concerning any
of the above-noted claim requirements, and the Examiner does not contend
otherwise. Instead, the Examiner finds that the broadly disclosed Si-Ag
infiltrate alloys in WO '240 include alloys containing a minority of Si2 and
that these latter alloys would include eutectics having the characteristics
required by claim 22 (Ans. 4, 6-7). The Examiner then concludes that it
would have been obvious for one with ordinary skill in this art to use such
eutectic infiltrate alloys in the method of WO '240 in order to minimize
manufacturing costs by lowering infiltration temperatures (id.).
The Examiner has not provided this record with any evidence in
support of the above findings and the conclusion resulting therefrom. As
indicated previously, WO '240 contains no teaching that any of the infiltrate
alloys disclosed therein are eutectic or near-eutectic alloys having a solidus
temperature of less than 900°C as required by claim 22. Likewise, WO '240
contains no teaching of heating the intermediate product and infiltrate alloy
to a temperature below 1000°C thereby causing infiltration of the
intermediate product by the infiltrate alloy as also required by claim 22.
"[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

2 The Examiner concedes that a commonly used alloy naming convention
would not support interpreting the Si-Ag alloy of WO '240 as containing a
minority of Si (Ans. para. bridging 6-7). Nevertheless, the Examiner urges
that such an interpretation is correct "when utilizing the broadest reasonable
interpretation of the claim language" (id.). The Examiner fails to provide
any legal authority or technical explanation for the proposition that one with
ordinary skill in this art would interpret the Si-Ag disclosure of WO '240 via
the broadest reasonable interpretation standard used by the PTO for
interpreting claims undergoing examination.
4
Appeal 2009-011068
Application 10/548,723

obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Here, the Examiner has not articulated reasoning with rational
underpinning in support of an obviousness conclusion. Based on the record
before us, the Examiner's unsupported findings are speculative and
conclusory. It follows that we cannot sustain any of the § 103 rejections
advanced by the Examiner in this appeal.
The decision of the Examiner is reversed.

REVERSED

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LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
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