Ex Parte Phillips et al

Board of Patent Appeals and Interferences

Jan 30, 2009

10724248 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD PHILLIPS and IRA L. FRIEDMAN
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Appeal 2008-2792
Application 10/724,248
Technology Center 1700
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Decided:1 January 30, 2009
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Before CHUNG K. PAK, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request for Rehearing (“Request”), dated
October 30, 2008, of our Decision, mailed September 25, 2008 (“Decision”),

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2792
Application 10/724,248

wherein we affirmed the Examiner’s § 103 rejection of appealed claims 1-
10.
Appellants contend that (1) the Board misstated the issue on appeal.
Specifically, Appellants contend that “[t]he issue presented is not ‘did
Appellants identify reversible error in the Examiner's rejection of claims 1-
10 under §103’, as stated in the Decision at page 4.” Rather, Appellants
contend the issue presented is whether or not Allroth discloses the invention
substantially as claimed. (Request 2). Appellants also contend that Fact-
Finding (2) is in error. (Request 4).
We do not find Appellants’ contentions persuasive of error in our
Decision. We find that many of Appellants’ contentions presented in the
Request have previously been made and addressed in our Decision (Dec. 3
and 8-9).
Regarding the issue presented for appeal, Appellants have the burden
on appeal to the Board to demonstrate error in the Examiner's position. See
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board,
an applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Regarding Fact-Finding (2), we note Appellants correctly identify the
Specification as describing, inter alia, synthetic graphite, which is inclusive
of the graphite taught by Allroth, as a liquid phase former. Appellants have
not established that a person of ordinary skill in the art would have
recognized the graphite taught by Allroth is not included by the claimed
liquid phase former. That is, Appellants have failed to demonstrate that
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Appeal 2008-2792
Application 10/724,248

under appropriate compression conditions and temperature, Allroth’s
graphite is not a material that is able to liquefy and uniformly distribute on
the particles of a metal powder.
Appellants’ arguments (Request 4) regarding the solid-state diffusion
properties of graphite have been considered. However, Apppellants have
not shown that the pressure and sintering conditions taught by Allroth would
not uniformly distribute its graphite as the liquid film former on particles of
metal powder.
For the above stated reasons and for the reasons expressed in our
Decision, the evidence of record continues to support a prima facie case of
obviousness, and Appellants continue to fail in their attempts to show error
in this obviousness conclusion.
The Request for Rehearing is DENIED.

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).

DENIED

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FRANCIS C. HAND, ESQ.
C/O CARELLA, BYRNE, BAIN, GILFILLAN, CECCHI,
STEWART & OLSTEIN
5 BECKER FARM ROAD
ROSELAND, NJ 07068
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