Ex Parte Speyer et al

Patent Trial and Appeal Board

Dec 27, 2012

11311026 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/311,026 12/19/2005 Robert F. Speyer P/4783-7 1705
7590 12/27/2012
OSTROLENK, FABER, GERB & SOFFEN, LLP
Attorneys at Law
1180 Avenue of the Americas
New York, NY 10036-8403
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
12/27/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT F. SPEYER, ZHIHAO BAO,
and NAMTAE CHO
____________

Appeal 2011-010031
Application 11/311,026
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-010031
Application 11/311,026

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 7, 8, 10, 11, 13, 15-25, and 27-34. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ claimed invention relates to a method of preparing a
boron carbide article from undoped boron carbide particles. Claim 1 is
illustrative:
1. A method of preparing a boron carbide article comprising:
forming a boron carbide green body from undoped boron carbide particles
coated by boron oxide;
driving said boron oxide out of said boron carbide green body at a
removal temperature higher than 1100°C and lower than 1400°C to obtain a
reduced boron carbide body;
pressureless sintering said reduced boron carbide body at a
pressureless soaking temperature selected from the range 2200 °C - 2317 °C
for a soak time that is no longer than required for said reduced boron carbide
body to reach a shrinkage rate of 0.005% per minute followed by cooling
said reduced boron carbide body to obtain a pressureless sintered boron
carbide body having a relative density of at least 93%; and
hot isostatically pressing said pressureless sintered boron carbide body
at a temperature of at least 2000°C.

Appellants request review of the following rejection (App. Br. 4-5)
from the Examiner’s final office action:
Claims 1, 7, 8, 10, 11, 13, 15-25, and 27-34 under 35 U.S.C. §103(a)
as unpatentable over the combination of Schwetz, (U.S. 4,195,066 issued
Mar. 25, 1980) in view of Lee, Sintering of Boron Carbide Heat-Treated
with Hydrogen; J. Am. Ceram. Soc.; 2002; 85[8]; pp. 2131-33 and Sigl
(U.S. 5,505,899 issued Apr. 9, 1996).
Appeal 2011-010031
Application 11/311,026

3
OPINION1
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE for the reasons presented by
the Appellants and add the following.
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejection (Ans. 3-7).
The Examiner found that Schwetz teaches a method utilizing boron
carbide particles which are subject to pressureless sintering at a temperature
of 2100-2200°C until a relative density of at least 90% of theoretical is
achieved. (Id. at 3-4). The Examiner recognized that the exemplified
embodiments of Schwetz all include sintering additives. (Id. at 4).
However, the Examiner found that it would have been obvious to exclude
the sintering additives. (Id.). The Examiner also recognized that Schwetz
does not disclose the driving boron oxide out of the boron carbide green
body at a removal temperature within the range of 1100°C to 1400°C as
required by the claimed invention. (Id.). The Examiner found that it would
have been obvious to drive boron oxide out of the boron carbide green body
at a removal temperature within the claimed range because Lee discloses
driving boron oxide out of the boron carbide green body at a removal
temperature of 1350°C. (Id.). The Examiner found that Sigl discloses a
method of making a boron carbide body where after a green body is formed
it is pressurelessly sintered at 2100-2250°C, followed by hot isostatically
pressing (HIPing) at 1900-2150°C to create a denser product. (Id. at 5). The
Examiner concluded:

1 We limit our discussion to independent claims 1 and 27.
Appeal 2011-010031
Application 11/311,026

4
It would have been obvious to one skilled in the art, at
the time of invention by applicant, to have modified the method
of Schwetz in view of Lee by adding a HIPing treatment at the
end as taught by Sigl in order to form a product with a higher
density. Since the references as discussed above render obvious
substantially the same process using substantially the same
materials and results in substantially the same relative density,
it is assumed that the process of these combined references is
stopped when a shrinkage rate of 0.005% is reached. (Id.).

We agree with Appellants that the cited prior art does not teach or
suggest the method of forming a boron carbide article from undoped boron
carbide particles coated by boron oxide as required by independent claims 1
and 27. (App. Br. 6-13). Schwetz’s invention is directed to utilizing boron
carbide doped with carbon so that sintering can be carried out at a lower
temperature. (Paragraph bridging cols. 2-3). We agree with Appellants that
the statements in Schwetz’s background discussion (col. 2, ll. 26-33) provide
insufficient suggestion or motivation to apply Schwetz’s inventive method to
a green body formed with undoped boron carbide powder. (Id. at 6).
Further, the Examiner has not directed us to evidence to support the
assumption that the pressureless sintering process in Schwetz was terminated
before reaching the shrinkage rate of 0.005% per minute. (Ans. 5). The
Examiner has not provided an adequate explanation supported by evidence
to support the stated rejection.

On the present record, the Examiner has failed to meet the initial
burden of establishing a prima facie case of obviousness. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 2011-010031
Application 11/311,026

5
For the reasons stated above and those presented by Appellants, the
rejection of claims 1, 7, 8, 10, 11, 13, 15-25, and 27-34 under 35 U.S.C. §
103(a) is reversed.

ORDER
The rejection of claims 1, 7, 8, 10, 11, 13, 15-25, and 27-34 under 35
U.S.C. § 103(a) is reversed.

REVERSED

kmm/sld