Ex Parte Oettinger et al

Patent Trial and Appeal Board

Nov 7, 2018

13377245 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/377,245 12/09/2011
24131 7590 11/09/2018
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Oswin Oettinger
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.
DEN-24003 4623
EXAMINER
KEELING, ALEXANDER W
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OS WIN GETTINGER and FRANK HIL TMANN
Appeal2017-010108
Application 13/3 77,245 1
Technology Center 1700
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner's rejections of claims 14--16, 18-20, and 26-28. Br. 1.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellants identify SGL Carbon SE as the real party in interest. Br. 1.
Appeal2017-010108
Application 13/3 77,245
BACKGROUND
The subject matter on appeal is directed to a cathode structure in an
electrolytic cell. Spec. 1:3-5.
Claim 14 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief, with emphasis added
to the relevant limitation at issue in this appeal:
14. A cathode bottom for an electrolytic cell for producing
aluminum, the cathode bottom comprising:
at least one cathode block;
at least one further cathode block disposed at a
predetermined distance from said at least one cathode block
forming at least one gap therebetween, said at least one further
cathode block having a side wall; and
a material configured to be disposed on at least one of said
cathode blocks, said material filling said at least one gap and
contacting said side wall, said material including a pre-
compressed plate based on expanded graphite.
Br. 13.
STATEMENT OF THE CASE
The Examiner rejects claims 14--16, 19, 20, and 26-28 under
35 U.S.C. § 103(a) as unpatentable over Bertaud,2 in view of Bowman. 3
Final Act. 2-8. The Examiner rejects claim 18 as unpatentable over these
references and additional prior art. Id. at 9.
Bertaud discloses electrolysis cells including multiple cathode blocks
that are sealed into contact with each other via "a carbonaceous paste or
coating which is based on pitch and coke or anthracite." Bertaud 1:8-22.
2 US 4,488,955, issued Dec. 18, 1984.
3 US 2005/0175062Al, published Aug. 11, 2005.
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Application 13/3 77,245
Relevant to this appeal, the Examiner finds, and Appellants do not
dispute, that Bertaud discloses the claimed cathode structure, except for the
limitation requiring the sealing "material [to] include[] a pre-compressed
plate based on expanded graphite." Final Act. 3--4; Spec. 4: 12-14. The
Examiner relies on Bowman to address this difference. Id. at 4.
Bowman discloses various sealing materials, including sheets of pre-
compressed expanded graphite - also known as "flexible graphite" - for
joining electrodes. Bowman ,r,r 2, 34. Bowman teaches that flexible
graphite has advantageous properties including having "an appreciable
degree of anisotropy," being "coherent, with good handling strength, and are
suitably compressed." Id. at ,r,r 48, 50.
Based on this disclosure, the Examiner determines that it would have
been obvious for the skilled artisan to modify Bertaud's cathode structure by
substituting the carbonaceous paste filling in favor of Bowman's pre-
compressed expanded graphite. Final Act. 4--5. The Examiner reasons that
doing so would yield a cathode structure with the advantages associated with
having the flexible graphite as a sealing material- e.g., good strength. Id.
The Examiner further notes that "[t]he strength and stability of [Bowman's]
graphite sheet ... is important for Bertaud because Bertaud teaches that
unstable carbonaceous pastes can cause 'fissures such as in the paste may be
formed"' by differential expansion, leading to cryolite seepage. Ans. 10
(citing Bertaud 1:24--27).
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Application 13/3 77,245
OPINION
Appellants argue the rejection of claims 14--16, 19, 20, and 26-28 as a
group. 4 We, therefore, select claim 14 as representative and decide the
propriety of this rejection on the basis of this claim alone. Claims 15, 16,
19, 20, and 26-28 stand or fall with claim 14. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants also do not substantively argue the rejection of claim 18, so this
claim likewise stands or falls with claim 14.
We have considered Appellants' arguments and are unpersuaded that
Appellants have identified reversible error in the Examiner's rejection. In re
Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011). Therefore, we sustain the
obviousness rejections before us based on the findings of fact, conclusions
of law, and rebuttals to arguments well-stated by the Examiner in the Final
Action and in the Answer. We add the following.
Appellants' arguments primarily focus on the objective of the
invention vis-a-vis the objectives of the cited art. Br. 6-9. According to
Appellants, because these objectives differ, the Examiner engaged in
impermissible hindsight in rejecting the claims as obvious. Id. Such
arguments, however, do not reveal error in the Examiner's obviousness
determination.
4 We do not consider Appellants' recitation of claim limitations and general
statements that the prior art does not disclose such limitations to be separate
arguments for patentability. Br. 10-11. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably interpreted Rule 41.37
to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.").
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Application 13/3 77,245
As our reviewing court makes clear, "[i]n considering motivation in
the obviousness analysis, the problem examined is not the specific problem
solved by the invention but the general problem that confronted the inventor
before the invention was made." In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). See also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need
not see the identical problem addressed in the prior art reference to be
motivated to apply its teachings."); In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992) ("[T]he law does not require that the references be combined for
the reasons contemplated by the inventor.").
Thus, in assessing the patentability of claims under Section 103, the
Examiner is not constrained to consider only an invention's purported
"objective" as set forth in the application. Rather, "[i]n determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls .... [ A ]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419--420
(2007).
Here, not only does the Examiner establish that the various elements
recited in the claims were known in the prior art (Final Act. 3--4; Ans. 3--4),
the Examiner also provides a suitable rationale for modifying Bertaud's
cathode structure with Bowman's pre-compressed expanded graphite sealant
(Final Act. 4; Ans. 4). Notably, the Examiner provides additional rationale
in the Answer (Ans. 10) which goes uncontested by Appellant, i.e., no Reply
Brief was filed.
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Application 13/3 77,245
Thus, for these reasons, and those provided by the Examiner, we are
of the opinion that Appellants have failed to identify reversible error in the
Examiner's rejections of claims 14--16, 18-20, and 26-28. It follows that
we sustain the Examiner's rejections of these claims.
DECISION
The Examiner's final decision to reject claims 14--16, 18-20, and 26-
2 8 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).
AFFIRMED
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