Ex Parte Schaefer et al

Patent Trials and Appeals Board

Apr 24, 2019

12296219 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/296,219 12/11/2008
22045 7590 04/26/2019
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Marcus Schaefer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
W AS0984PUSA 5488
EXAMINER
BUTLER, MICHAELE
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
04/26/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCUS SCHAEFER and REINER PECH
Appeal 2018-003 803 1
Application 12/296,2192
Technology Center 3600
Before BRUCE T. WIEDER, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Aug. 25,
2017), the Reply Brief ("Reply Br.," filed Feb. 27, 2018), the Examiner's
Answer ("Ans.," mailed Jan. 12, 2018), the Final Office Action ("Final
Act.," mailed Apr. 6, 2017), the prior decision by the Board ("Prior
Decision," mailed Apr. 11, 2016), and the decision on reconsideration
("Recon. Decision," mailed June 27, 2016).
2 According to Appellants, the real party in interest is Wacker Chemie AG.
Appeal Br. 1.
Appeal 2018-003 803
Application 12/296,219
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
33-40 and 48-54. 3 We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
BACKGROUND
The Specification states that "[t]he invention relates to a device and a
method for the flexible classification of polycrystalline silicon fragments."
Spec. 1, 11. 5-7.
CLAIMS
Claims 33 and 48 are the independent claims on appeal. Claim 33 is
illustrative of the appealed claims and recites:
33. A device for the classification of crushed polysilicon
fragments comprising:
a) a mechanical screening system comprising at least one
screen having fine holes which removes fine polysilicon
fragments from the screen through the holes and leaves a residual
polysilicon component,
b) an optoelectronic sorting system which classifies the
residual polysilicon component into a plurality of fractions of
different sizes.
Appeal Br., Claims App. 1.
3 Appellants indicate that claim 48 has been withdrawn. Appeal Br., Claims
App. 3. However, this appears to be a typographical error as that claim is
addressed in the rejection and briefs.
2
Appeal 2018-003 803
Application 12/296,219
REJECTIONS
1. The Examiner rejects claims 33, 34, 48, and 50-54 under 35 U.S.C.
§ 103(a) as unpatentable over Schantz4 in view of Baueregger. 5
2. The Examiner rejects claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Schantz in view of Baueregger and Bohlig. 6
3. The Examiner rejects claim 36 under 35 U.S.C. § 103(a) as unpatentable
over Schantz in view ofBaueregger and Kenny. 7
4. The Examiner rejects claim 37 under 35 U.S.C. § 103(a) as unpatentable
over Schantz in view of Baueregger and Arvidson. 8
5. The Examiner rejects claims 33, 36, 38, 48, and 49 under 35 U.S.C.
§ 103(a) as unpatentable over Schantz in view of Flottmann.9
6. The Examiner rejects claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Schantz in view of Flottmann and Bohlig.
DISCUSSION
As an initial matter, we note the claims at issue here are substantially
different than those addressed in our Prior Decision and Prior Decision on
Reconsideration. See Prior Dec. 2. Specifically, the claims here require a
mechanical screening system that includes at least one screen whereas the
prior claims required only a mechanical screening system without any
specific screening structure. Thus, our previous analysis with respect to
Schantz, in which we determined that Schantz discloses a mechanical
4 Schantz et al., US 6,040,544, iss. Mar. 21, 2000.
5 Baueregger et al., US 4,871,117, iss. Oct. 3, 1989.
6 Bohlig et al., US 2005/0242006 Al, pub. Nov. 3, 2005.
7 Kenny, US 2006/0081514 Al, pub. Apr. 20, 2006.
8 Arvidson et al., US 2003/0159647 Al, pub. Aug. 28, 2003.
9 Flottmann et al., US 6,375,011 Bl, iss. Apr. 23, 2002.
3
Appeal 2018-003 803
Application 12/296,219
screening system, is not applicable to the claims here, as is apparent from the
discussion below. See Prior Decision 7-8; Recon. Decision 2-3.
Rejection 1
We are persuaded that the Examiner's conclusions regarding
obviousness of the independent claims are not supported on the record
before us.
With respect to independent claim 33, the Examiner finds that Schantz
teaches a device for classification of polysilicon fragments including "a
mechanical screening system which removes fine polysilicon fragments
from the screen through the holes and leaves a residual polysilicon
component," as well as an optoelectronic sorting system as claimed. Final
Act. 3 (citing Schantz col. 3, 1. 19-col. 4, 1. 12) (emphasis omitted). The
Examiner further relies on Baueregger as teaching "[t]he mechanical
screening system comprises at least one screen having fine holes for
removing polysilicon fragments." Id. ( citing Baueregger col 6, 11. 37-46;
col. 6, 1. 55-col. 7, 1. 6; col. 7, 11. 42-58). The Examiner concludes that it
would have been obvious to modify Schantz "to use a screen with fine holes
to separate the silicon as the screen holes can separate premised upon size by
passing smaller silicon as a function of size of the hole relative the sortant
from the main sortant stream as taught by [Baueregger]." Id.
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner can satisfy this
burden by showing "some articulated reasoning with some rational
4
Appeal 2018-003 803
Application 12/296,219
underpinning to support the legal conclusion of obviousness." KSR Int'! Co.
v. Teleflex, Inc., 550 U.S. 398,418 (2007). Here, we agree with Appellants
that the conclusion of obviousness is not adequately supported. See Appeal
Br. 7-8. Specifically, we determine that the Examiner's conclusion that it
would have been obvious to one of ordinary skill in the art to combine
Schantz with a screen as taught by Baueregger lacks any articulated
reasoning to support the conclusion that the claim is obvious.
The Examiner's reasoning, quoted above, merely explains what the
result of the combination might be and does not provide any reasoning, or
further explanation, for why or how one of ordinary skill in the art would
have made the combination proposed. Specifically, the Examiner essentially
concludes that the combination would be obvious in order to separate silicon
based on size. Although a screen may provide such separation, this does not
provide a reason to modify Schantz's device, which already separates silicon
based on size.
Further, we agree with Appellants that Schantz discloses certain
disadvantages for providing mechanical screens as claimed, including that
they may abrade the silicon being classified and may become blocked due to
irregular shapes. See Schantz col. 1, 1. 49-col. 2, 1. 5. Thus, Schantz
employs a system in which no screens with holes are used. Id. at col. 2,
11. 29-39. In light of this disclosure, the Examiner does not explain
adequately why one of ordinary skill in the art would have had a reason to
modify Schantz to include a mechanical screen. For example, the Examiner
does not point to any teaching that indicates the art of record using
mechanical screens overcomes the disadvantages addressed in Schantz.
5
Appeal 2018-003 803
Application 12/296,219
Further, we note that the Examiner also determines that"[ o ]ne of
ordinary skill in the art would know that one could cascade a polysilicon
mesh from [Baueregger] ahead or behind the optical sorter of [Schantz] with
a predictable expectation of success in classifying into several factions."
Final Act. 12. The Examiner further determines that using a polysilicon
mesh would "overcome the problems applicant argues would exist in using a
metal screen." Id. The Examiner does not adequately support these
determinations. The Examiner does not explain adequately, in light of the
disadvantages of using a screen described in Schantz, why one of ordinary
skill in the art would have had a reasonable expectation of success when
adding "a polysilicon mesh" to Schantz's system. In particular, although the
use of polysilicon in the screen may prevent abrading, there is no indication
in the cited portions of the art that the polysilicon mesh would prevent
blockage, as explained in Schantz.
Based on the foregoing, we are persuaded of error in the rejection of
claim 33 as obvious over Schantz in view of Baueregger. Accordingly, we
do not sustain this rejection. For the same reasons, we also do not sustain
the rejection of independent claim 48, which is a method claim that requires
classifying using a mechanical screen. Further, we do not sustain the
rejection of dependent claims 34 and 50-54 for the same reasons.
Rejection 5
The Examiner alternatively finds that the independent claims would
have been obvious over Schantz in view of Flottmann. The Examiner relies
on Schantz as discussed above. Final Act. 8. The Examiner relies on
Flottmann as teaching "a mechanical screening system which removes fine
polysilicon fragments from the at least one screen ... through the holes and
6
Appeal 2018-003 803
Application 12/296,219
leaves a residual polysilicon component." Id. ( citing Flottmann Fig. 2; col.
4, 11 16-47) ( emphasis omitted). The Examiner concludes that "[i]t would
have been obvious at the time of the invention for [Schantz] to use a screen
with fine holes to separate the silicon as the screen holes can separate
premised upon size by passing or block[ing] silicon as a function of size of
the hole relative the sortant as taught by [Flottman]." Id. Further, the
Examiner determines that Flottmann "overcome[ s] the problems applicant
argues would exist in using a metal screen." Final Act. 12.
We determine that the rejection of the independent claims here is
deficient for the same reasons discussed above in the rejection over Schantz
in view of Baueregger. As discussed above, the Examiner does not explain
adequately why one of ordinary skill in the art would have had a reason to
include a mechanical screen in Schantz's system in light of Flottmann's
teachings. Accordingly, we also do not sustain the rejection of independent
claims 33 and 48 as obvious over Schantz in view of Flottmann. Further, we
do not sustain the rejection of dependent claims 36, 38, and 49 for the same
reasons.
Rejections 2--4 and 6
The rejection of dependent claims 35-37 do not cure the deficiency in
the rejections of independent claim 33. Thus, we also do not sustain the
rejections of claims 3 5-3 7.
CONCLUSION
We REVERSE the rejections of claims 33-40 and 48-54.
REVERSED
7