Ex Parte Yeckley et al

Patent Trial and Appeal Board

Jun 14, 2016

12618403 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/618,403 11113/2009
27877 7590 06/16/2016
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
FIRST NAMED INVENTOR
Russell Lee Yeckley
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.
K-2747USUS1 6544
EXAMINER
THOMAS, CIEL P
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
larry.meenan@kennametal.com
k-corp. patents@kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL LEE YECKLEY,
ROBINSON LATTIMER,
and SEAN ERIN LANDWEHR
Appeal2014-008444
Application 12/618,403
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
N. WHITNEY WILSON, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision rejecting claims 1, 3, 4, 6-8, 13, 15, 16, and 18-20 under 35 U.S.C.
§ 103 (a) as unpatentable over Alder et al. 1 in view of Cebulak et al.,2 Hazel et al.,3
1 US 4,392,925, issued July 12, 1983 ("Alder").
2 US 4,097 ,567, issued June 27, 1978 ("Cebulak").
3 US 4,275,026, issued June 23, 1981 ("Hazel").
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Application 12/618,403
and Reeve et al. 4 Claims 9-12 are also pending but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated January 13, 2014 ("App. Br.").
1. A composite liner plate of an electrolytic aluminum production
cell, the composite liner plate comprising TiB2 and BN, wherein the
TiB2 comprises from about 50 to about 99 weight percent of the
composite liner plate and is in the form of a continuous interconnected
skeleton throughout a thickness of the liner plate, the BN comprises
from about 1 to about 50 weight percent of the composite liner plate,
the relative amounts of TiB2 and BN are varied at different locations
in the liner plate, and the liner plate has a density above 95%.
App. Br., Claims App. 1.
B. DISCUSSION
The Examiner finds Alder discloses an electrolytic aluminum production cell
comprising side walls and a floor wherein the floor is lined with a liner plate
comprising a material that withstands the conditions of electrolysis. Office Action
4. 5 Alder discloses that the "material is either an insulator on an oxide basis ... , a
refractory nitride, such as boron nitride [BN] ... , or an electrical conductor of
refractory hard metal, for example titanium diboride [TiB2]." Alder, col. 4, 11. 17-
21 (emphasis added). The Examiner finds Alder does not teach that the liner plate
comprises TiB2 and BN as recited in claims 1 and 13. Office Action 4.
The Examiner finds Cebulak discloses materials for use in the electrolytic
aluminum production process. More specifically, the Examiner finds "Cebulak
teaches that ... by forming a material of 90% TiB2 and 10% BN by a cold pressing
4 US 4,599 ,320, issued July 8, 1986 ("Reeve").
5 Office Action dated February 12, 2013.
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Application 12/618,403
method of TiB2 and BN particles[,] a material can be formed that is both resistant
to the aluminum process and low cost." Office Action 4. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art "to modify the
lining of Alder with the material of Cebulak in order to allow for a lining that is
both resistant and cost effective." Office Action 4; see also In re Thompson, 545
F.2d 1290, 1294 (CCPA 1976) (economic factors alone may motivate one of
ordinary skill in the art to make the proposed modification).
The Appellants do not direct us to any error in the Examiner's findings as to
Alder or Cebulak. Rather, the Appellants summarily argue that the modification of
Alder in view of Cebulak, as proposed by the Examiner, "is contrary to the
teachings of Alder." App. Br. 5.
Suffice it to say that the rejection of claims 1 and 13 is based on a
combination of references. Thus, the mere fact that Alder does not disclose a liner
plate comprising TiB2 and BN does not teach away from the combination proposed
by the Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (test for
obviousness is not that the claimed invention must be expressly suggested in any
one or all of the references; rather, the test is what the combined teachings of the
references would have suggested to one of ordinary skill in the art).
Claim 1 also recites that "the liner plate has a density above 95%." App.
Br., Claims App. 1. Although Alder discloses that the material of the lining is
dense (Alder, col. 4, 11. 21-24), the Examiner finds the combination of Alder and
Cebulak does not teach the density recited in claim 1. However, the Examiner
finds:
Hazel also discusses the formation of resistant materials formed from
the cold pressing of TiB2 particles for use in aluminum electrolytic
cells. Hazel teaches that this cold pressing method can be used to
form materials with greater than 95% density in order to allow the
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Application 12/618,403
materials to function well in the severe conditions present in an
aluminum electrolysis cell (Column 1, Lines 6-55).
Office Action 4 (emphasis omitted).
The Appellants argue that the density disclosed in Hazel is for a material
comprising TiB2 and 0.1 to 5 weight percent carbon or carbides, not a material
comprising TiB2 and BN as recited in claims 1 and 13. The Appellants argue there
is no teaching in Hazel that a density of greater than 95% can be achieved for a
material comprising TiB2 and BN. App. Br. 5.
In response, the Examiner finds that the liner material disclosed in Hazel
comprises "a main TiB2 component." Ans. 3--4.6 The Appellants have not directed
us to any evidence or provided any technical reasoning showing that one of
ordinary skill in the art would not have had a reasonable expectation of
successfully densifying the material of Cebulak, which also comprises a main TiB2
component, above 95% using the cold pressing method disclosed in Hazel. See In
re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness under§ 103,
all that is required is a reasonable expectation of success.").
Finally, claim 1 recites that "the TiB2 ... is in the form of a continuous
interconnected skeleton throughout a thickness of the liner plate" and "the relative
amounts of TiB2 and BN are varied at different locations in the liner plate." App.
Br., Claims App. 1.
The Examiner finds the "pressing method [of Hazel,] forming a material
with greater than 95% density out of 90% TiB2 and just 10% BN[,] would result in
a lining plate with a substantially continuous interconnected skeleton of TiB2."
Office Action 5. However, the Examiner finds "the combination of A[ld]er,
6 Examiner's Answer dated June 4, 2014.
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Application 12/618,403
Cebulak and Hazel fails to teach that the compositions of the TiB2 and BN are
varied at different locations of the liner plate." Office Action 5.
The Examiner relies on Reeve to teach that limitation. The Examiner finds:
Reeve teaches that the TiB2 materials should be varied throughout a
thickness (a plane) of the cell lining approaching 100% at the surface
in contact with the molten salt and approaching 0% at the opposite
surface in order to allow for the lining to be cost effective while also
providing high protection of the lining against wettability (Column 1,
Line 7 to Column 2, Line 29).
Office Action 5 (emphasis omitted).
There is no dispute on this record that Reeve discloses that the concentration
of TiB2 is progressively reduced with increasing distance from the surface of the
tile (i.e., the surface exposed to molten aluminum and/or electrolyte). See Reeve,
col. 2, 11. 20-26. Rather, the Appellants argue that in Reeve "the tiles contain zero
percent TiB2 at their 'downstream' sides and, therefore, cannot form a continuous
interconnecting skeleton of TiB2 throughout the thickness of the plate, as recited in
Claims 1and13." App. Br. 6 (emphasis omitted).
The Examiner finds the disclosure in Reeve of a range of values from 100%
TiB2, but at least 25%, at the surface of the tile progressively reducing to zero
towards the opposite face of the tile is merely exemplary and Reeve does not
disclose that these values are critical. Ans. 4; see also Reeve, col. 2, 11. 20-26
(producing an insulating tile wherein TiB2 progressively reduces to zero is a
"preferred method of manufacture").7 The Examiner finds Reeve teaches that "the
inner concentration of TiB2 needs just to be lower than the outer concentration of
7 See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) ("the question under
35 U.S.C. 103 is not merely what the references expressly teach, but what they
would have suggested to one of ordinary skill in the art at the time the invention
was made[;] all disclosures of the prior art ... must be considered").
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TiB2, and therefore may be greater than zero, as one of ordinary skill in the art
would have recognized that 0% was not necessary to achieve the benefits of
Reeve." Ans. 4 (emphasis added).
The Appellants do not direct us to any error in the Examiner's findings.
Rather, the Appellants argue that "if the TiB2 concentration was at a level slightly
above 0%, e.g., 1 %, there would be no formation of a 'continuous interconnected
skeleton' at such a low TiB2 concentration." Reply Br. 3 (emphasis added). 8
The Appellants' argument is not persuasive of reversible error because
Reeve does not describe the lower limit of TiB2 in the tile, let alone a lower limit of
"slightly above 0%."
The Examiner also concludes:
[CJ laims 1 and 13 merely state "a thickness" of the liner plate and not
an entire thickness of the liner plate and as such even if the
concentration were to go to zero at an outside surface, a certain
thickness within the plate would still comprise a continuous
interconnected skeleton of TiB2.
Ans. 5.
In response, the Appellants contend:
By reciting the phrase "throughout a thickness" of the liner plate,
those skilled in the art would clearly understand that the continuous
interconnected skeleton must be present over the entire thickness of
the liner plate. Furthermore, to the extent that the Examiner has
disregarded the word "throughout" and has focused on the phrase "~
thickness," Appellant notes that "a" is used in Claims 1 and 13 to
provide proper antecedent basis for the term "thickness." If "a" was
replaced with "the," the claims could be considered objectionable due
to a lack of antecedent basis for the term "thickness."
Reply Br. 3--4.
8 Reply Brief dated August 4, 2014.
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The Appellants' argument is not persuasive of reversible error. The phrase
"a thickness" in claims 1 and 13 is broad enough to encompass a portion of the
entire thickness of the plate, especially where the thickness of the plate is not
defined in claims 1 and 13.
In the Reply Brief, the Appellants present two arguments for the first time
on appeal. The Appellants argue that the liner plates relied on by the Examiner in
Alder do not cover the bottom floor or the side walls of Alder's aluminum
production cell and thus cannot be said to correspond to the liner plate recited in
the claims on appeal. Reply Br. 1-2. The Appellants also argue that one of
ordinary skill in the art would not have been motivated to replace the plates of
Alder with the graded plates of Reeve "because such a replacement would expose
the low-TiB2 region of Reeve's plates to molten aluminum and/or molten
electrolyte." Reply Br. 2.
According to 37 C.F.R. § 41.41(b)(2) (2014)9:
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner's answer ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.
In this case, the Appellants' arguments were not raised in the Appeal Brief
and are not responsive to arguments raised in the Examiner's Answer. Moreover,
the Appellants have failed to show good cause why the arguments could not have
been raised in the Appeal Brief. For these reasons, the Appellants' new arguments
will not be considered on appeal.
In sum, the§ 103(a) rejection of claims 1 and 13 is sustained for the reasons
set forth above and for reasons set forth in the Examiner's Answer. The
9 Applicable to all appeals in which a notice of appeal is filed on or after January
23, 2012.
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Application 12/618,403
Appellants do not present arguments in support of the separate patentability of any
of claims 3, 4, 6-8, 15, 16, and 18-20. Therefore, the§ 103(a) rejection of claims
3, 4, 6-8, 15, 16, and 18-20 is sustained for the reasons we sustained the§ 103(a)
rejection of claims 1 and 13.
C. DECISION
The decision of the Examiner is affirmed.
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).
AFFIRMED
8