Ex Parte Schaefer et al

Patent Trial and Appeal Board

Apr 7, 2016

12296219 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/296,219 12/11/2008
22045 7590 04/11/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND 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
3653
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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
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
Appeal2014-000942
Application 12/296,219 1
Technology Center 3600
Before BRUCE T. WIEDER, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
17-21and28-32. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE and enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Wacker Chemie AG.
App. Br. 1.
Appeal2014-000942
Application 12/296,219
BACKGROl.J1'-JD
According to Appellants, "[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 17-21 and 28-32 are on appeal. Claim 17 is illustrative of the
appealed claims and recites:
17. A device for the flexible classification of crushed
polycrystalline silicon, comprising a source of crushed
polycrystalline silicon, a mechanical screening system and an
optoelectronic sorting system, the polycrystalline silicon
fragments of the crushed polysilicon first separated into a fine
polycrystalline silicon component and a residual polycrystalline
silicon component by the mechanical screening system
comprising one or more stages and the residual polycrystalline
silicon component being separated into further fractions by
means of an optoelectronic sorting system comprising one or
more stages.
App. Br, Claims App. 1.
REJECTIONS2,3
1. The Examiner rejects claims 29-32 under 35 U.S.C. § 101 as being
directed to two different statutory classes.
2 The Examiner's rejection of claims 17-21 under 35 U.S.C § 112, second
paragraph, has been withdrawn. See Ans. 3. The Examiner's anticipation
rejections of claims 29 and 32 have been withdrawn. Id.
3 The Examiner lists claim 28 as withdrawn. See Final Action 1.
Appellants list claim 28 as rejected and on appeal. App. Br. 2. However,
none of the pending rejections include claim 28, and thus, claim 28 is not
discussed further in this decision.
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Application 12/296,219
2. The Examiner rejects claims 17 and 21under35 U.S.C. § 103(a)
as unpatentable over To4 in view of Flottmann '011. 5
3. The Examiner rejects claims 17 and 21under35 U.S.C. § 103(a)
as unpatentable over Christiani6 in view of Flottmann 'O 11.
4. The Examiner rejects claims 17 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Schantz7 in view of Arvidson. 8
5. The Examiner rejects claims 17, 20 and 21under35 U.S.C.
§ 103(a) as unpatentable over Flottmann '683 9 in view of
Flottmann 'O 11.
6. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Flottmann '683 in view of Flottmann 'O 11 and
Kenny. 10
7. The Examiner rejects claim 21under35 U.S.C. § 103(a) as
unpatentable over Flottmann '683 in view of Flottmann 'O 11 and
Bohlig. 11
8. The Examiner rejects claims 17 and 21under35 U.S.C. § 103(a)
as unpatentable over Seppanen 12 in view of Flottmann 'O 11.
4 To et al., US 2007/0187035 Al, pub. Aug. 16, 2007.
5 Flottmann et al., US 6,375,011 Bl, iss. Apr. 23, 2002 (hereinafter
"Fl ottmann '011 ").
6 Christiani et al., US 2003/0183705 Al, pub. Oct. 2, 2003.
7 Schantz et al., US 6,040,544, iss. Mar. 21, 2000.
8 Arvidson et al., US 2003/0159647 Al, pub. Aug. 28, 2003.
9 Flottmann et al., US 6,265,683 Bl, iss. July 24, 2001 (hereinafter
"Flottmann '683").
1° Kenny, US 2006/0081514 Al, pub. Apr. 20, 2006.
11 Bohlig et al., US 2005/0242006 Al, pub. Nov. 3, 2005.
12 Seppanen et al., US 5,577,671, iss. Nov. 26, 1996.
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Application 12/296,219
9. The Examiner rejects claims 17, 18, and 21under35 U.S.C.
§ 103(a) as unpatentable over Seppanen in view of Flottmann '011
and Bohlig.
IO.The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Seppanen in view of Flottmann '011 and Kenny.
11. The Examiner rejects claims 17, 20, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Christiani in view of Flottmann '011
and Dumbaugh. 13
12.The Examiner rejects claims 18 and 21under35 U.S.C. § 103(a)
as unpatentable over Christiani in view of Flottmann '011 and
Bohlig.
13. The Examiner rejects claims 29-32 under 35 U.S.C. § 103(a) as
unpatentable over Seppanen in view of Schantz.
14.The Examiner rejects claims 30 and 31under35 U.S.C. § 103(a)
as unpatentable over Christiani in view of Schantz.
DISCUSSION
35 U.S.C. § 1 OJ
The Examiner rejects claims 29-32 as being directed to two different
statutory classes. Final Action 3. Appellants argue that these claims are
"pure process claims, not device claims." App. Br. 4. The Examiner is
correct that a single claim cannot cover more than one statutory class of
subject matter. IPXL Holdings L.L.C v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005). However, such claims have been found to be
13 Dumbaugh, US 4,492,629, iss. Jan. 8, 1985.
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Application 12/296,219
indefinite under 35 U.S.C. § 112, paragraph 2, and the Examiner has not
adequately supported a rejection of these claims under 35 U.S.C. § 101. Id.
Further, with respect to indefiniteness, there is no per se rule that a method
claim cannot include apparatus (structural) limitations in method steps. For
example, the Federal Circuit in Microprocessor Enhancement Corp. v. Texas
Instruments Inc., 520 F.3d 1367, 1374-75 (Fed. Cir. 2008) considered a
method claim that recited structural limitations. The court distinguished
IPXL Holdings, stating the conclusion in that case "was based on [a] lack of
clarity as to when the mixed subject matter claim would be infringed." Id. at
1374. The court in Microprocessor Enhancement Corp. determined that the
method claim had no similar ambiguity because direct infringement of the
claim "is clearly limited to practicing the claimed method in a pipeline
processor possessing the requisite structure." Id. at 1375. Here, we find that
claims 29-32 are sufficiently clear as method claims and are directed to a
method of classification of polycrystalline silicon by a device with the
structure described in claim 1 7. For these reasons, we do not sustain the
rejection of claims 29-32 under 35 U.S.C. § 101.
Obviousness Rejections
The Examiner rejects independent claims 17 and 29 as obvious over
various combinations of ten references. The Examiner's obviousness
rejections "cannot be sustained by mere conclusory statements; instead,
there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006); see also KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). Here, we find that that the Examiner has not provided an adequate
rationale for making any of the proposed combinations of art. In most
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Application 12/296,219
instances we find it unclear as to what rationale the Examiner is relying on
to show that the claim would have been obvious in view of the art. For
example, with respect to the rejection over Christiani in view of Flottmann
'011, the Examiner concludes that it would have been obvious to use certain
teachings in Flottmann 'O 11 in Christiani without providing any reason for
doing so. See Final Action 6-7. Further, in response to Appellants'
arguments, the Examiner has stated in most instances simply that the
references are combinable with a predictable expectation of success without
explanation other than to assert that both references are in the field of
classifying. See, e.g., Ans. 6-7. Such conclusory reasoning is not sufficient
to support an obviousness rejection even under the Examiner's broad
interpretation of the field of endeavor. To the extent the Examiner has relied
upon more specific reasoning to support certain combinations, we find that
those reasons still fall short of providing adequate support for the proposed
rejections. Accordingly, we do not sustain any of the obviousness rejections
set forth by the Examiner.
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Application 12/296,219
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Claims 17 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schantz. During prosecution, claims are given "their
broadest reasonable interpretation consistent with the specification" and "in
light of the specification as it would be interpreted by one of ordinary skill in
the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Here, we find that apparatus claim 17 reasonably may be construed
to require only a structure including a mechanical screening system and an
optoelectronic sorting system. See, e.g. Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) ("[A]pparatus claims cover
what a device is, not what a device does."). The remaining claim language
describes certain functions of the device and requires only that the
mechanical screening system and optoelectronic sorting system be capable
of separating polycrystalline silicon as the claim describes.
We find that Schantz at least suggests a device with a mechanical
screening system and an optoelectronic sorting system with the capabilities
described in claim 17. Specifically, Schantz discloses:
An apparatus for the optoelectronic classification of
semiconductor materials, has a separating device 2 and a slide
face 3, the angle of the slide face 3 to the horizontal being
adjustable, and the separating device 2 and the slide face 3 each
having a surface made of the semiconductor material to be
separated. There is a radiation source 5, through the beam path
of which the material to be classified falls, and a shape
recognition device 6, which transmits the shape of the material
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Application 12/296,219
to be classified to a control unit 7, which controls at least one
diverter device 8.
Schantz, Abstract. Schantz further discloses that the separating device is
used to separate semiconductor material, including silicon. See id. at col. 3,
11. 19-30. Schantz suggests separation of each individual piece of material
(see id. at Fig. 1 ), which would necessarily separate fine materials from
residual materials. Further, Schantz includes an optoelectronic device
including a shape recognition device used to detect grain size in order to sort
pieces by size. See id. at col. 3, 11. 54---63; Fig. 1. Based on these
disclosures, we find that Schantz discloses a mechanical screening system
and an optoelectronic sorting system and that one of ordinary skill in the art
would have found it obvious that Schantz's device is capable of classifying
crushed polycrystalline silicon as required by claims 17 and 29.
In rejecting claims 17 and 29, we note that we are primarily a
reviewing body, rather than a place of initial examination. We, therefore,
leave it to the Examiner to determine whether the remaining claims in the
application should be rejected on similar grounds to those set forth herein or
in combination with additional prior art. The fact that we do not enter new
grounds of rejection for any other claims should not be construed to mean
that we consider those claims to be patentable over the prior art of record.
CONCLUSION
For the reasons indicated above, we reverse the rejections of claims
17-21 and 28-32.
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Application 12/296,219
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection, rejecting independent claims 17 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Schantz.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
Rather, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, Appellants must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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