Ex Parte Mizuno et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11384254 (B.P.A.I. Jan. 17, 2012)

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.
11/384,254 03/21/2006 Toru Mizuno ISH-0215/CON 9794
23353 7590 01/17/2012
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
PRICE, CARL D
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
01/17/2012 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 TORU MIZUNO, HIROKAZU MIZUNO,
ICHIRO YANASE, and HYUNG-BAE KIM
____________________

Appeal 2010-001727
Application 11/384,254
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001727
Application 11/384,254
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 4,
6, 7, and 9. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a quartz glass burner. Claim 4, reproduced
below, is illustrative of the claimed subject matter:
4. A quartz glass burner for heat processing, comprising:
a burner body portion fabricated from quartz glass;
a burner head portion provided at a distal end of the
burner body portion and fabricated from quartz glass, the burner
head portion formed as an integral construction with the burner
body portion; and
a quartz glass single hole nozzle releasably attached to
the burner head portion, the quartz glass single hole nozzle
operative for feeding fluid and including:
a nozzle body portion made of a quartz glass material;
and
an attaching portion made of a quartz glass material,
provided at the proximal end of the nozzle body portion and
forming an integral construction with the nozzle body portion,
wherein a fluid feed path is a single bore extending along
a longitudinal axis and formed in the interior of the nozzle body
portion and the attaching portion of the nozzle body portion
with the attaching portion being threadably attachable and
threadably detachable to the quartz glass burner head portion,
wherein the attaching portion is cylindrically shaped and
the nozzle body portion is conically shaped and connected to
the attaching portion as an integral construction such that the
nozzle body portion tapers from the attaching portion as the
nozzle body portion extends longitudinally,
wherein the attaching portion extends along the
longitudinal axis at a first length and the nozzle body portion
extends along the longitudinal axis at a second length being at
least twice as long as the first length,
Appeal 2010-001727
Application 11/384,254
3
wherein the quartz glass material is a synthetic quartz
glass material,
wherein the attaching portion is provided with an
external thread or an internal thread and the attaching portion of
the nozzle body portion is detachably attachable to the distal
end of the burner body for heat processing, and
wherein the single hole has a first hole portion and a
second hole portion in direct communication with the first hole
portion, the first hole portion having a first hole portion
diameter and extending along the first length of the attaching
portion and the second hole portion having a second hole
portion diameter smaller than the first hole portion diameter and
extending along the second length of the nozzle body portion.

REJECTION
Claims 4, 6, 7 and 9 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Johanson (U.S. Patent 1,357,324, iss. Nov. 2, 1920) in
view of Applicant’s own disclosure (making burners from quartz glass),
Bruckner (U.S. Patent 935,458, iss. Sept. 28, 1909) or Dzutsoff (U.S. Patent
1,453,385, iss. May 1, 1923), Michihiro (Japanese Patent JP07-321101,
publ. Dec. 8, 19951,2), Russell (U.S. Patent 4,261,518, iss. Apr. 14, 1981)
and Guest (U.S. Patent 2,727,126, iss. Dec. 13, 1955) or Pfeil (German
patent DE 23 500403, publ. Apr. 10, 1975); and supported by Loxley (U.S.
Patent 6,012,304, iss. Jan. 11, 2000), Miller (U.S. Pre-grant Patent
Publication 2001/0003898 A1, publ. Jun. 21, 2001) and Takeshi (Japanese
patent JP 07-277751, publ. Oct. 24, 1995). Ans. 4

1 References to Michihiro refer to the certified English-language translation
entered into the record Nov. 19, 2009. A machine translation of this
reference was entered into the record Mar. 13, 2007.
2 Referred to as “Hayashi” at oral argument.
3 References to Pfeil refer to the English-language translation entered into
the record June 4, 2007.
Appeal 2010-001727
Application 11/384,254
4

OPINION
Although the Examiner relies upon eleven sources of evidence, some
in the alternative, to support the rejection above, in light of the issues raised
by Appellants, we can limit our discussion to Russell, Pfeil, and Michihiro.
Appellants’ position regarding all the claims before us for review can be
summarized as follows:
It is respectfully submitted that none of the applied art,
alone or in combination, teaches or suggests a quartz glass
burner comprising a burner body portion fabricated from quartz
glass, a burner head portion provided at a distal end of the
burner body portion and fabricated from quartz glass with the
burner head portion formed as an integral construction with the
burner body portion and a quartz glass single hole nozzle as
recited in claim 4. Furthermore, it is respectfully submitted that
none of the applied art, alone or in combination, teaches or
suggests a quartz glass single hole nozzle releasably attached to
the quartz glass burner head portion.
App. Br. 11, 15. We agree with the Examiner’s characterization that this
argument amounts to an assertion that a particular combination of claimed
elements is not disclosed in any one prior art reference read in isolation. See
Ans. 11-12. While this may be the case, this fact alone, without more, does
not demonstrate error in the Examiner’s determination of obviousness
wherein that determination is predicated upon a combination of prior art
disclosures. See In re Keller, 642 F.2d 413, 425 (CCPA 1981; In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Even if we were to adopt
Appellants assertion that
the Examiner must, in part, then articulate the following:
(1) a finding that the prior art included each element claimed
although not necessarily in a single prior art reference, with the
only difference between the claimed invention and the prior art
Appeal 2010-001727
Application 11/384,254
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being the lack of actual combination of the elements in a single
prior art reference
(App. Br. 14), Appellants own conclusion that
[i]n order to satisfy this Graham factual inquiry, the Examiner
must show a quartz glass burner body portion that is capable of
being releasably, i.e., threadably attachable and threadably
detachable, from a quartz glass nozzle
(Id.) seems to be in direct conflict with such an obligation.
The prior art and Appellants’ Specification make it clear that quartz
burners were known in the art. See Spec. 1:18-20; Pfeil p. 4; Michihiro p. 5.
More specifically, quartz burners having the particular structure claimed by
Appellants, absent those features relating to the removable nozzle, were
known in the art. See Pfeil figs. 1, 2. The prior art also evidences that it was
recognized that replacing an entire quartz burner, due to, for example,
devitrification, is a costly operation. Michihiro p. 7. Further, it shows that
such a problem could be solved by replacing only the tip of the nozzle,
resulting in a reduced cost. Michihiro p. 8. The prior art also demonstrates
that it was known to employ mating threaded structures in order to attach
and detach nozzles that may be fabricated from quartz to “conventional”
burners. Russell fig. 1, col. 1, ll. 63-64, col. 3, ll. 4-6, 31-33. In light of the
combined teachings of these references we conclude that modifying a
structure such as Pfeil’s to have a threadably detachable quartz nozzle
amounts to applying known techniques to a known device in order to
achieve the predictable result of decreasing the cost to replace an inoperative
or damaged nozzle. We therefore agree with the Examiner that the claimed
subject matter would have been obvious to one having ordinary skill in the
art.
Appeal 2010-001727
Application 11/384,254
6
The fact that the Examiner relies on some references discussing metal
burners does not alter our analysis. If anything, those references that
specifically suggest quartz as a substitute for metal (see, e.g., Ans. 8 citing
Pfeil) strengthen the Examiner’s position. Simply using an alternate
material, such as metal, or failing to mention quartz cannot be said to
criticize, discourage or otherwise discredit, and therefore, “teach away” from
the use of quartz. Contra App. Br. 13; see In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Furthermore, we are obligated to consider all prior art
disclosures and weigh each reference for its power to suggest solutions to
the artisan of ordinary skill. In re Lamberti, 545 F.2d 747, 750 (CCPA
1976); see also In re Young, 927 F. 2d 588, 591 (Fed. Cir. 1991). In light of
the noted disadvantages of metal burners (see Ans. 8 citing Pfeil), if the prior
art before us can be said to lead the skilled artisan away from anything, it
would be away from metal burners in favor of those made of quartz.

DECISION
The Examiner’s rejection of claims 4, 6, 7 and 9 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

mls