Ex Parte Agrawal et al

Patent Trial and Appeal Board

Nov 13, 2013

10378360 (P.T.A.B. Nov. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANOJ AGRAWAL, DANA BAUER
and ROBERT PIPPENGER
____________

Appeal 2011-004363
Application 10/378,360
Technology Center 3700
____________

Before SALLY C. MEDLEY, KRISTEN L. DROESCH and
ERIC B. CHEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a Final
Rejection of claims 1-5, 8, 9, 11-13 and 15-311. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The Appellants’ disclosed invention relates to a reactor including a
reaction chamber surrounded by a heating element, a thermal insulator and a
pressurizable shell. The reaction chamber includes a diverter, an outer
cylinder, an inner cylinder and a fastener. The reaction chamber, heating
element and thermal insulator can be made of a silicon carbide-based
material. Spec. pp. 5-7, 14.
Independent claims 1 and 22 are illustrative and are reproduced below
(disputed limitations in italics):
1. An apparatus comprising:
a reactor comprising
i) a pressurizable shell,
ii) a thermal insulator surrounded by the pressurizable
shell,
iii) a heating element surrounded by the thermal
insulator, and
iv) a reaction chamber surrounded by the heating
element, wherein the reaction chamber comprises
a) a diverter forming the top of the reaction
chamber,
b) an outer cylinder surrounded by the heating
element, and
c) an inner cylinder surrounded by the outer
cylinder, and
d) a fastener connecting the diverter to the outer
cylinder;

1 Claims 6, 7, 10 and 14 have been cancelled.
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where a gas flow path is formed between the outer
cylinder and the inner cylinder;
where a reaction zone is formed in the center of the inner
cylinder; and
where at least one of the outer cylinder, the inner cylinder, the
diverter, and the fastener consists essentially of Ceramic SiC.

22. An apparatus comprising:
a reactor comprising
i) a pressurizable shell;
ii) a thermal insulator surrounded by the pressurizable
shell, where the thermal insulator comprises
a) an insulation layer consisting essentially of SiC
Insulation, and optionally b) a heat shield surrounded
by the insulation layer, when present;
iii) a heating element surrounded by the thermal
insulator; and
iv) a reaction chamber surrounded by the heating
element, wherein the reaction chamber comprises
a) a diverter forming the top of the reaction chamber,
b) an outer cylinder surrounded by the heating
element, and
c) an inner cylinder surrounded by the outer cylinder,
and
d) a fastener connecting the diverter to the outer
cylinder;
where a gas flow path is formed between the outer cylinder
and the inner cylinder; and
where a reaction zone is formed in the center of the inner
cylinder.
Rejections
Claims 1-3, 11-13, 15-19, 21 and 31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Burgie (US 5,906,799) (“Burgie ´799”) and
Tashiro (US 5,082,597).
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Claims 4, 5 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burgie ´799 and McCrary (US 3,391,016) or alternatively
over Burgie ´799, Tashiro and McCrary.
Claims 22-24, 27, 28 and 30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Burgie ´799, and Shimazu (US 5,709,543) or Wei
(4,481,179); or alternatively over Burgie ´799, Tashiro, and Shimazu or Wei.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burgie ´799, Shimazu or Wei, and Burgie (US 5,126,112)
(“Burgie ´112”); or alternatively over Burgie ´799, Tashiro, Shimazu or Wei,
and Burgie ´112.
Claims 25, 26 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burgie ´799, Shimazu or Wei, and McCrary; or
alternatively over Burgie ´799, Tashiro, Shimazu or Wei, and McCrary.
ISSUES
1. Did the Examiner err in determining that it would have been obvious to
one with ordinary skill in the art at the time the invention was made to
modify the device of Burgie ´799 in light of Tashiro’s teachings of Ceramic
SiC, such that “at least one of the outer cylinder, the inner cylinder, the
diverter, and the fastener consists essentially of Ceramic SiC,” as recited in
claim 1, and similarly recited in independent claim 18?
2. Did the Examiner err in determining that it would have been obvious to
one with ordinary skill in the art at the time the invention was made to
modify the device of Burgie ´799 in light of Shimazu’s teachings or Wei’s
teachings of using silicon carbide as a heat insulating material, such that “the
thermal insulator comprises . . . an insulation layer consisting essentially of
SiC Insulation,” as recited in independent claim 22?
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ANALYSIS
Issue 1
The Examiner finds that Burgie ´799 teaches the structure recited in
claim 1, but does not explicitly disclose Ceramic SiC for at least one of the
outer cylinder, inner cylinder, the diverter or fastener. Ans. 4; Fig. 1; col. 3,
ll. 17-20; col. 4, ll. 1-6, 32-47. Burgie ´799 instead teaches an outer tube 7,
inner tube 6, and diverter 8 preferably formed of silicon carbide coated
carbon fiber composite. Col. 3, ll. 17-20; col. 4, ll. 39-47. The Examiner
finds Tashiro teaches “a well known sintered ceramic SiC that is suitable for
providing a high mechanical strength and high heat impact resistance.” Ans.
4. The Examiner determined that it would have been obvious to one with
ordinary skill in the art at the time the invention was made to substitute
Ceramic SiC in place of the silicon carbide coated carbon fiber composite
disclosed by Burgie ´799 since Ceramic SiC is well known in the art for
thermal and chemical resistance. Id.
The Appellants assert that one with ordinary skill in the art would
avoid using materials for the reactor of Burgie ´799 that react with
chlorosilanes, hydrogen feed, and/or HCl to form by-products or materials
that may contaminate the produced hydrogen chlorosilanes that are produced
in the reactor. App. Br. 17. In support of their argument, the Appellants
direct attention to the discussion in Burgie ´799 related to the detrimental
features of carbon based materials used for the construction of reaction
chambers in the prior art, specifically: 1) carbon-based materials can react
with chlorosilanes and hydrogen feed to form by-products, such as silicon
carbide, in the reactor during operation, and 2) formation of silicon carbide
results in deterioration of the reactor and can cause contamination of the
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hydrogen chlorosilanes produced in the reactor. App. Br. 16-17 (citing
Burgie ´799 col. 1, ll. 34-47); see also Reply Br. 5. The Appellants further
assert: 1) Tashiro’s sintered SiC composites contain chromium; 2) it is well
known in the art that chromium is a contaminant to hydrogen chlorosilanes
and even extremely low amounts of chromium are undesirable; and 3) those
with skill in the art would expect the formation of chromium silicides when
chromium is present along with silane and hydrogen gas or HCl. App. Br.
17. In sum, the Appellants argue: 1) given the disclosure in Burgie ´799 of
the detrimental effects of by-product formation, and potential contamination
of chlorosilanes and given the narrow range of suitable materials for the
reactor disclosed by Burgie ´799, one with ordinary skill in the art would not
have: 1) reasonably expected to modify the materials of the Burgie ´799
reactor with the materials of Tashiro.
We are not persuaded by the Appellants’ arguments. We acknowledge
that, based on the Burgie ´799 disclosure, one with ordinary skill in the art at
the time of the invention would have been mindful of avoiding materials that
could potentially react with chlorosilanes, hydrogen feed, and/or HCl to
form by-products, and potentially cause contamination. However, the
Appellants do not direct us to objective evidence, such as declaration
testimony, to support their assertions that it is well known that chromium is
a contaminant to hydrogen chlorosilanes, and those with ordinary skill in the
art would expect the formation of chromium silicides when chromium is
present along with silane and hydrogen gas or HCl. Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977).
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Related to the previous arguments, the Appellants argue that one with
ordinary skill in the art would not have had a reasonable expectation of
success in using Tashiro’s materials without contaminating the chlorosilanes
produced in the reactors of Burgie ´799, especially since Tashiro does not
mention the suitability of its materials for use in reactors for hydrogenation
of chlorosilanes. App. Br. 18; see also Reply Br. 7.
The Appellants’ arguments are unpersuasive. The Appellants do not
direct us to objective evidence to support its arguments. To the extent that
the Appellants argue that there must be a teaching or suggestion in the prior
art to make the combination in order for there to be a reasonable expectation
of success in making the combination, we are also not persuaded. The
“determination of obviousness ‘does not require absolute predictability of
success . . . . [A]ll that is required is a reasonable expectation of success.’”
Brown & Williamson Tobacco Corp. v. Phillip Morris Inc., 229 F.3d 1120,
1125 (Fed. Cir. 2000) (quoting In re O’Farrell, 853 F.2d 894, 903-904 (Fed.
Cir. 1988)). Given that Burgie ´799 describes using a coating of silicon
carbide to protect a carbon fiber composite material from deterioration due
to exposure to feed materials and corrosive by-products (col. 3, ll. 17-23, 48-
51), one with ordinary skill in the art would have had a reasonable
expectation of success in substituting Ceramic SiC for the construction of
the reactor parts, in place of silicon carbide coatings on reactor parts
constructed of carbon composite materials, and would have expected the
Ceramic SiC to also provide protection against deterioration.
The Appellants further argue that, even assuming that Tashiro is
analogous art to the claimed invention, the mere fact that Tashiro is
analogous art does not nearly go far enough to establish obviousness of the
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claimed invention in view of the combined teachings of Burgie ´799 and
Tashiro. App. Br. 18; see also Reply Br. 3. The Appellants assert that the
Examiner’s comments to the effect that Tashiro’s Ceramic SiC is suitable for
providing high mechanical strength and high heat impact resistance is
completely insufficient to carry the burden of providing a reasoned
explanation as to why the claimed invention would have been obvious to a
person of skill in the art, and fails to account for the conditions and
requirements of the particular applications of Burgie ´799 that one of
ordinary skill in the art would clearly have considered if such a person
would have sought alternatives to the materials used in Burgie ´799. Reply
Br. 4-5; see also Reply Br. 2-7. (“[T]he Examiner has completely failed to
provide any rationale whatsoever . . . ,” “[T]he Examiner has failed to
employ any of the exemplary rationales, and . . . failed to provide any
reasoning whatsoever . . . ,” “[T]he Examiner’s rejections are completely
lacking in a reasoned explanation . . . ,” “[T]here is no reasonable basis that
can be identified . . . without the benefit of hindsight . . . .”)
We are not persuaded by the Appellants’ arguments. The Examiner
determined that it would have been obvious to one with ordinary skill in the
art at the time the invention was made to substitute Ceramic SiC for the
silicon carbide coated carbon composites described by Burgie ´799. “When a
[] claim[ed] [] structure already known in the prior art [] is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383
U.S. 39, 50-51 (1966)).
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For these reasons, we are not persuaded by the Appellants’ arguments
that the Examiner erred in establishing prima facie obviousness.
The Appellants direct us to secondary considerations of non-
obviousness, specifically, the Appellants’ evidence of unexpected results.
App. Br. 18-19; Reply Br. 7-8. Appellants argue that unexpected results are
illustrated through the experimentation submitted in the Affidavit of Michael
Zalar dated September 16, 2009. Id. Appellants assert:
[i]n particular, in paragraph 6, it is indicated that silicon
carbide coated carbon fiber composite (as used in Burgie et al.
´799) showed degradation and weight loss of up to 50% of the
material in some areas of the reactor over 2 years. Conversely,
SiC Ceramic coupons used in the same areas as the silicon
carbide coated carbon fiber composite showed no detectable
degradation and no detectable weight loss over a period of 2
years and 1.5 years, respectively.
App. Br. 19; Reply Br. 8.
The Appellants do not direct us to, and we cannot find, where the Declarant,
Mr. Zalar, states that the results are unexpected. Instead, statements that the
results are unexpected are made in the Briefs. App. Br. 18-19; Reply Br. 7-8.
“[U]nexpected results must be established by factual evidence.” In re
Geisler, 116 F.3d. 1465, 1470 (Fed. Cir. 1997). “[A]ttorney argument is
insufficient to establish unexpected results.” Id. at 1471 (quotations
omitted). In addition, we note that the basis for comparison between the
recrystallized silicon carbide part (a species of Ceramic SiC, see Spec. ¶
0012) and the silicon carbide coated carbon fiber composite in the reactor is
unclear. For example, it is unclear whether the only difference between the
recrystallized silicon carbide part and the silicon carbide coated carbon fiber
composite is the material of construction. Were the recrystallized silicon
carbide part and the silicon carbide coated carbon fiber composite part
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mentioned in the Declaration of identical size, shape, and weight, and
subject to identical levels of hydrogen or chlorosilanes in the reactor?
Likewise, the basis for comparison between the SiC Ceramic coupon and the
silicon carbide coated carbon fiber composite in the reactor is also unclear
for the same reasons. We also note that the declaration indicates that the
time period in the reactor for the SiC Ceramic coupon was different than the
time period for the silicon carbide coated carbon fiber composite part; 1.5
years versus 2 years.
To the extent that Appellants argue that the Examiner has not properly
considered the test results illustrated with the SiC Ceramic coupons (App Br.
19; Reply Br. 8), we do not agree. The Examiner addresses the evidence
(Ans. 8-9), but does not give substantial weight to the evidence of secondary
considerations sufficient to overcome the determination of obviousness.
Evidence of secondary considerations, when present, must always be
considered en route to the determination of obviousness. Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Secondary
considerations are only a part of the “totality of the evidence”; its mere
existence does not control the conclusion of obviousness. Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997) (citations omitted).
We have carefully weighed and evaluated the evidence supporting
obviousness and the evidence of unexpected results provided by the
Appellants. Upon careful consideration of the evidence as a whole, and
weighing it anew, the evidence supporting the conclusion of obviousness
outweighs the evidence of non-obviousness. For these reasons, we sustain
the rejection of claims 1-3, 11-13, 15-19, 21 and 31 as being unpatentable
over Burgie ´799 and Tashiro.
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The Appellants do not present separate arguments addressing claims
4, 5 and 20, which depend from claims 1 and 18. App. 24-25. For the same
reasons as those above addressing claims 1-3, 11-13, 15-19, 21 and 31, we
sustain the rejection of claims 4, 5 and 20 as being unpatentable over Burgie
´799, Tashiro and McCrary.
Issue 2
The Examiner finds that Burgie ´799 teaches the structure recited in
claim 22 but does not disclose an insulation layer of SiC Insulation. Ans. 5.
The Examiner finds that Burgie ´799 teaches the insulation layer can be
made of high temperature insulating materials such as carbon or graphite
materials. Id. The Examiner finds that Burgie ´799 further shows that silicon
carbide-based coatings can be provided to a carbon or graphite material.
Ans. 5. The Examiner also finds that Shimazu or Wei shows that it is known
to use a silicon carbide material as a heat insulating material. Ans. 6. The
Examiner determined that it would have been obvious to one with ordinary
skill in the art at the time the invention was made to substitute a thermal
insulator made of SiC Insulation for the insulator of Burgie ´799, or as
modified by Tashiro in order to provide a thermal insulation that can
withstand a high heating temperature. Id.
The Appellants argue that in Shimazu the SiC is a conductor of heat
and the “insulation” function of heat insulation plates 27 is accomplished by
the manner in which the plates are configured within Shimazu’s apparatus.
Reply Br. 9-10 (citing col. 5, ll. 12-14, 26-35; Fig. 2); see also App. Br. 21-
22. We acknowledge that Shimazu’s description of the SiC insulating plates
27 casts doubt on whether the SiC material utilized is itself an insulator.
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Nonetheless, the Examiner’s rejection alternatively relies on the teachings of
Wei for describing SiC insulation.
Regarding the teachings of Wei, the Appellants argue that there is no
suggestion that Wei’s silicon carbide materials are superior to carbon or
graphite felt outside of an oxidizing environment, and there is no teaching in
Wei that the silicon carbide materials should be substituted for the thermal
insulator 2 of Burgie ´799. App. Br. 22-23; Reply Br. 10. We are not
persuaded by the Appellants’ arguments because it is not necessary to find
precise teachings in the prior art directed to the specific subject matter
claimed because inferences and creative steps that a person of ordinary skill
in the art would employ can be taken into account. KSR, 550 U.S. at 418.
The Appellants further assert that absent hindsight, one with ordinary
skill in the art would never have considered substituting silicon carbide
insulating material for the graphite and carbon felt thermal insulators 2 of
Burgie ´799, because there is: 1) no recognition in the prior art that the
thermal insulation is prone to degradation that would direct one of skill in
the art to seek alternatives to carbon or graphite felt, and 2) nothing to
suggest that SiC insulating material could provide any benefit. App. Br. 23;
Reply Br. 10-11. Contrary to the Appellants’ argument, Burgie ´112
(incorporated by reference in Burgie ´799) recognizes that thermal
insulation, particularly those made of carbon and graphite are prone to
degradation due to exposure to hydrogen and tetrachlorosilane. Col. 1, ll. 28-
33, col. 2, ll. 5-9, col. 3, ll. 2-7,12-14, 27-30. Accordingly, we are not
persuaded by the Appellants’ arguments that one with ordinary skill in the
art would not seek alternatives to carbon or graphite felt. We are also not
persuaded by the Appellants’ argument that there is nothing to suggest that
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SiC Insulation could provide any benefit. At the time the invention was
made, based on the teachings of Burgie ´799 and Burgie ´112, one with
ordinary skill in the art would have appreciated that some hydrogen and
chlorosilane gases can leak outside the reactor and contact the insulating
system made of carbon and graphite materials, the carbon and graphite
materials could react with the hydrogen and chlorosilane, and the insulating
capacity and structural integrity of the thermal insulator 2 could be reduced.
Burgie ´112 col. 1, ll. 28-33, col. 2, ll. 5-9, col. 3, ll. 2-7,12-14, 27-30. One
with ordinary skill in the art at the time the invention was made would have
also appreciated the advantages of using SiC materials in a hydrogen and
chlorosilane reactor since Burgie ´799 teaches using silicon carbide coating
to protect carbon fiber composite from deterioration due to exposure to feed
materials and corrosive by-products such as hydrogen chloride. Burgie ´799
col. 3, ll. 17-23, 48-51. In light of the teachings of Burgie ´799 (including
Burgie ´112 incorporated by reference) and Wei, it would have been obvious
to one with ordinary skill in the art at the time the invention was made to
substitute silicon carbide insulation material as taught by Wei (col. 1, ll. 1-
45) for the graphite or carbon thermal insulator 2 of Burgie ´799. “[W]hen a
[] claim[ed] [] structure already known in the prior art [] is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR, 550 U.S. at
416 (citing Adams, 383 U.S. at 50-51).
For these reasons, we are not persuaded by the Appellants’ arguments
that the Examiner erred in establishing prima facie obviousness of claim 22
over Burgie ´799 and Wei, or over Burgie ´799, Tashiro and Wei.
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The Appellants direct us to secondary considerations of non-
obviousness, specifically the Appellants’ evidence of unexpected results.
App. Br. 24; Reply Br. 11. Appellants argue that unexpected results are
shown in the Affidavit of Michael Zalar dated September 16, 2009. Id.
Appellants assert that SiC insulation showed a weight loss of less than 10
lbs. over a 2 year reactor run during hydrogenation of chlorosilanes
compared to a weight loss of about 150 lbs. for graphite fiber based
insulation. App. Br. 24; Reply Br. 11.
The Appellants do not direct us to, and we cannot find, where the
Declarant, Mr. Zalar, states that the results are unexpected. Instead,
statements that the results are unexpected are made in the Briefs. App. Br.
24; Reply Br. 11. “[A]ttorney argument is insufficient to establish
unexpected results.” Geisler, 116 F.3d. at 1471 (quotation omitted).
Furthermore, the Declaration does not show that the test results are based on
a comparison with the closest prior art. See In re Baxter Travenol Labs, 952
F.2d 388, 392 (Fed. Cir. 1991). The closest prior art is a thermal insulation
formed from carbon fiber or graphite fiber felt, as described by Burgie ´799
via incorporation by reference of Burgie ´112. Burgie ´799, col. 4, ll. 6-11;
Burgie ´112, col. 5, ll. 22-23, 57-64. The Declaration indicates that the SiC
insulation was compared with “graphite fiber based insulation,” but does not
provide additional details about the properties of the “graphite fiber based
insulation,” nor indicate that the “graphite fiber based insulation”
corresponds to the closest prior art.
To the extent that Appellants argue that the Examiner has not properly
considered the test results illustrated with the SiC Ceramic coupons (App Br.
24; Reply Br. 11), we do not agree. The Examiner does not give substantial
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weight to the evidence of secondary considerations sufficient to overcome
the determination of obviousness. The mere existence of evidence of
secondary considerations does not control the conclusion of obviousness.
Richardson-Vicks, 122 F.3d at 1483 (citations omitted).
We have carefully weighed and evaluated the evidence supporting the
determination of obviousness and the evidence of unexpected results
provided by the Appellants. Upon careful consideration of the evidence as a
whole, and weighing it anew, the evidence supporting the conclusion of
obviousness outweighs the evidence of non-obviousness. For these reasons,
we sustain the rejection of claims 22-24, 27, 28 and 30 as being unpatentable
over Burgie ´799 and Wei, or alternatively over Burgie ´799, Tashiro and
Wei.
The Appellants do not present separate arguments addressing claims
8, 9, 25, 26 and 29 which depend from claim 22. App. 24-25. For the same
reasons as those above addressing claims 22-24, 27, 28 and 30, we sustain
the rejection of claims 8 and 9 as being unpatentable over Burgie ´799, Wei
and Burgie ´112, or alternatively over Burgie ´799, Tashiro, Wei and Burgie
´112, and the rejection of claims 25, 26 and 29 as being unpatentable over
Burgie ´799, Wei and McCrary; or alternatively over Burgie ´799, Tashiro,
Wei, and McCrary.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-5, 8, 9, 11-13
and 15-31.
TIME PERIOD
No time period for taking any subsequent action in connection with
the appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED

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