Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ERIE M. HARVEY
Appeal No. 649-87
April 25, 1986
HEARD: March 11, 1986
Application for Patent filed December 15, 1981, Serial No. 330,982; which is a continuation of Serial No. 159,468, filed June 16, 1980; which is a continuation of Serial No. 744,492, filed November 24, 1976, abandoned; which is a continuation of Serial No. 196,831, filed November 6, 1971; which is a continuation of Serial No. 067,282, filed August 26, 1970, abandoned; which is a continuation of Serial No. 837,965, filed March 19, 1969, abandoned; which is a continuation of Serial No. 635,828, filed May 3, 1967, abandoned. Refractory Structure and Method.
Arthur H. Seidel et al. for appellant
Before Stahl, Besha and Parsons
This appeal involves claims 11, 13, 14 and 16-22. Claims 11, 13, 14 and 16-21 were finally rejected November 16, 1984 (Paper No. 11). Claim 22, submitted by an amendment under 37 CFR 1.116, dated January 25, 1985, was entered for purposes of this appeal, subject to the same 35 USC 112, first paragraph rejection as claim 20 and the same 35 USC 103 art rejection as claim 17. Claims 1-10, 12 and 15 have been cancelled. No claim has been allowed.
The appellant's disclosure is directed to a method of forming a high temperature refractory wall using massive preformed unburned, moisture-containing plastic refractory blocks to build the wall. The blocks may be preformed to the dimensions dictated by the size of the wall being constructed. After the blocks are formed into a wall structure, they are heated in situ without being rammed, hammered or compressed. Thus, the individual integrity of each of the blocks is at all times maintained. The refractory wall is completed by heating the blocks to a temperature sufficient to expand them in situ without altering their individual integrity.
Independent claim 11 is representative of the appealed claims and reads as follows:
11. In a method of forming a high temperature refractory wall for furnaces, soaking pits and the like including the steps of applying preformed, unburned, moisture-containing, plastic refractory shapes directly against each other in the absence of mortar in an adjacent relationship and heating the shapes to form the wall, the improvement comprising using massive plastic refractory blocks as the shapes, maintaining the individual integrity and shape of each of the blocks without at any time ramming, hammering or compressing the blocks during the positioning thereof and the formation of the wall, and maintaining the individual integrity and shape of each of the blocks during the heating thereof and during and after the formation of the wall.
The references of record relied upon by the examiner are:
Dunning 185,221 December 12, 1876
Harvey et al. (Harvey) 1,973,434 September 11, 1934
Doyle et al. (Doyle) 1,978,077 October 23, 1934
Anderson 1,983,590 December 11, 1934
THE GROUNDS OF REJECTION
*2 Claims 20 and 22 stand rejected under 35 USC 112, first paragraph. The examiner states:
The disclosure fails to establish a basis for the ratio of block sides recited in claims 20 and 22. It is the examiner's opinion that the disclosure of a particular set of dimensions for a block, even coupled with a suggestion for varying those dimensions is not an adequate disclosure to support a claim to a block having sides in a particular ratio.
Claim 21 stands rejected under 35 USC 112, second paragraph. The examiner considers the phrase 'the shortest side' to lack a proper antecedent. The examiner does not consider it to necessarily follow from the recitation 'rectangular solid' that such a block would have a 'shortest side'.
Claims 11, 13, 14, 16, 17 and 20-22 stand rejected under 35 USC 103 as unpatentable over Anderson in view of Dunning. The examiner considers Anderson to disclose all the recited process steps with the exception of the limitation that the blocks are installed 'without at any time ramming, hammering or compressing'. However, the examiner feels the elimination of the tamping step and its function from the Anderson process would have been obvious from the statement in Dunning to the effect that:
I am not aware that a soft plastic mixture put in, as described, without being tampered in layers has ever been used.
Claim 18 stands rejected under 35 USC 103 as being unpatentable over Anderson and Dunning as applied to claims 11, 13, 14, 16, 17, 20, 21 and 22 above, and further in view of Kohler or Doyle. The examiner states Kohler and Doyle show anchoring means 18 and 14, respectively, secured to reinforcing walls 10. It is the examiner's position that to provide the Anderson wall method with the step of placing anchoring means as taught by either of Kohler or Doyle would constitute an obvious choice of design for a person having ordinary skill in the art.
Claim 19 stands rejected under 35 USC 103 as being unpatentable over Anderson and Dunning as applied to claims 11, 13, 14, 16, 17, 20, 21, and 22 above, and further in view of Harvey. The examiner is of the opinion that to provide the method of Anderson with blocks comprising the recited materials would be obvious to the artisan having ordinary skill.
Considering first the rejections grounded in 35 USC 112, first paragraph and second paragraph; we will not sustain either of these rejections.
Compliance with the written description requirement of Section 112 only requires that appellant's application contain sufficient disclosure, expressly or inherently, to make it clear to persons skilled in the art that appellant possessed the subject matter claimed. In re Mott 539 F.2d 1291, 190 USPQ 536, 541 (CCPA 1976). The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession of the claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. In re Kaslow 707 F.2d 1366, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
*3 The disclosure in the specification states that:
In one particular . . . application the . . . block dimensions at 5 7/8 inches high, 8 7/8 inches wide, and 17 inches long . . .
It will be obvious that the actual dimensions of the plastic blocks may vary depending upon the specific application and temperature requirements . . ..
While not the precise claim language, it is, in our opinion adequate support for the claimed ratio of 'approximately 3:1.5:1'.
We also agree with the appellant that the meaning of the recitation of a 'shortest side' when referencing a 'rectangular solid', would have been clear to the ordinarily skilled artisan especially when considered in light of the specification. It also is, as the examiner has acknowledged, implicit in the recited ratio.
Turning to the Section 103 rejections we, like the examiner, find the distinguishments or difference between the prior art and the claimed method to reside in the limitations relating to the 'massive' block size, the formation of the wall by positioning the blocks without 'ramming, hammering or compressing', and 'maintaining the individual integrity and shape' of each block during building and heating and after formation of the wall.
We interpret the limitation 'massive' to be a positive limitation and an indication that the block is of significant size in accordance with the large general size limitations set forth in the specification.
We also find the scope and content of the prior art at the time of appellant's invention to be represented by the disclosure to Anderson and Dunning. Anderson's disclosure, as well as the Arthur declaration dated February 13, 1984, would appear to indicate that the skill of the art was to use 'smaller' blocks, ramming was a necessity and the finished wall took on a monolithic homogeneous nature.
Accordingly the depositive issue is whether the combined teaching of Anderson and Dunning would have made obvious to one of ordinary skill in the art at the time the invention was made, the building of a refractory wall of plastic blocks according to the method here claimed.
The Dunning disclosure of forming a refractory wall by laying a mortar like fire-proof mixture, rolled up in balls by hand, one on the other all around the interior and soft pressing them by hand into a compact wall or lining and the Dunning statement that:
I am not aware that a soft plastic mixture put in, as described, without being tampered in layers has ever been used.
which the examiner interprets to be a teaching of deleting the tamper step in the Anderson method, would not have, considering the invention as a whole in light of all the evidence of record, in our opinion, suggested to one of ordinary skill in the art at the time the invention was made of the method as recited in the appealed claims.
The Dunning suggestion is that 'tamping' of the hand formed balls is not necessary. However, such disclosure does not suggest the stacking of 'massive' blocks and maintaining the individual integrity and shape of each block during positioning and after formation of the wall. The teaching of Dunning is that the individual hand rolled balls are stacked and then 'pressed' and compacted by hand into a continuous homogeneous mass. The individual integrity and shape of each of the hand rolled balls is lost by the pressing of them into the compact wall forming a continuous homogeneous mass.
*4 The examiner has stated (page 2 of the examiner's answer) that the issues involved in this appeal are the same as the issues in Appeal No. 359- 05 taken in application Serial No. 744,492, filed November 24, 1976. The issues in the prior appeal, in which a decision affirming the examiner's rejection was rendered April 22, 1980, were not the same as the issues in the instant appeal. The instant record is totally different in that it contains numerous declarations and affidavits directed to comparisons of the subject wall built according to the claimed method with the prior art, the commercial success of appellant's invention, and evidence it is as good as the prior art walls at 1/2 the cost and built in 1/3 of the time. This evidence has been submitted to rebut the prima facie case the examiner and Board found to have been established in the prior application in response to the observation, in prior Board's decision, that evidence of nonobviousness supporting the appellant's arguments was lacking in the prior record.
Assuming that the Dunning reference renders prima facie obvious the building of a refractory wall using Anderson blocks without tamping, as the Board held in the prior appeal, the claimed method entails more than just building a wall with untamped Anderson blocks.
The declarations and affidavit submitted in this application effectively rebut the prima facie case and establish that the appellant's claimed method was entirely contrary to the accepted method of forming refractory walls, the teaching of Dunning notwithstanding.
The declarations present convincing evidence that:
(1) Prior to appellant's invention, plastic blocks used to build refractory walls were rammed into position and a bonding relationship (Arthur Dec., Para. 9; Cabott Dec., Para. 2; Dickson Dec., Para. 6; Hall Dec., Para 6; Harvey Dec., Para. 6 and 7; Oliver Dec., Para. 8; Shingler Dec., Para. 3).
(2) Walls constructed by the method of appellant's invention are more economical than walls constructed using the prior art methods employing plastic slices in that work can be done quicker and the man-hours required are reduced. (Cabott Dec., Para. 4; Dickson Dec., Para. 7; Hall Dec., Para. 10; Shingler Dec., Para. 4; Yuhasse Aff., Para. 5) (Oliver Dec., Para. 10; Arthur Dec., Para. 13-15).
(3) The individual integrity of each block used in the formation of a wall in accordance with appellant claimed method was maintained while the prior art methods alters or destroys the individual integrity of the slices used before appellant's invention. (Arthur Dec., Para. 16 & 17 and photographs 8-14 and 22- 28; Dickson Dec., Para. 6 & 8; Hall Dec., Para. 6 & 10; Harvey Dec., Para. 7; Oliver Dec., Para. -10.
(4) The walls made with massive plastic blocks in accordance with appellant's method are more durable than walls made with prefire refractory bricks and are at least as durable and strong as walls made with rammable plastic slices. (Arthur Dec., Para. 11; Cabott Dec., Para. 4; Dickson Dec., Para. 8; Hall Dec., Para 10; Harvey Dec., Para. 7; Shingler Dec., Para. 5; Yuhasse Aff., Par. 5). This fact has been confirmed by experimental testing (Arthur Dec., Para. 16). This has also been confirmed by testing the Anderson type block wall constructed without ramming in accordance with Dunning in response to the examiner's criticism, even though such an article or method does not exist in the prior art. Comparisons should be made with the closest 'prior art' In re Burckel 592 F.2d 1175, 201 USPQQ 67 (CCPA 1979). (Arthur declaration and exhibits dated September 6, 1985.)
*5 (5) The results of appellant's invention was unexpected and initially met with skepticism by experts in the field. (Arthur Dec., Para. 10; Hall Dec. Para. 8; Harvey Dec., Para. 6);
(6) Appellant's method satisfied a long-felt need and was not at the time the invention was made obvious to those skilled in the art. (Dickson Dec., Para. 9; Harvey Dec., Para. 7 and 8 and Oliver Dec., Para. 11.
(7) Appellant's invention has enjoyed extraordinary commercial success. (Arthur Dec., Para. 18; Hall Dec., Para. 11; Shelly Dec., Para. 4-7.)
The examiner has criticized the declarations as treating specific embodiments of the invention which the examiner states 'appear to be different from the invention as here claimed' and has concluded this documentation to be of minimal value. The declarations identification of the blocks is:
Arthur Dec. Para. 10,
extruding large de-aired plastic blocks and using them without ramming. . . .
experimental wall was constructed . . . using 6" x 9" x 18" plastic blocks . . .
Dickson Dec. Para. 7
Plastic block . . . primarily rectangular in all cross-sections . . . so that individual blocks may be removed . . . to repair the wall at a later date.
Hall Dec. Para. 7,
Large extruded de-aired plastic blocks . . ..
and further Para. 8,
'these' PACO blocks are those described in the subject application and claims which I have read . . ..
Hall Dec. Para. 9,
The massive de-aired, plastic blocks . . . are much stronger and denser than the soft, pliable shapes . . . used as rammed plastic.
Harvey Dec. Para. 7, the subparagraph entitled:
Dunning U.S. Patent 185,221
In my invention blocks are used . . . preferably massive blocks which do not . . . lend themselves tamping.
Harvey Dec. Para. 7, the subparagraph entitled:
The use of unfired block allows for better conformation of the block to one another . . ..
Oliver Dec. Para. 9:
usually, they are massive blocks having rectangular side faces.
The identification of the blocks is not so nebulous so as to constitute a failure to adequately identify the subject matter referenced to in the declaration as the blocks identified in the application and used in appellant's claimed method. The declarations do, in our opinion, establish the requisite nexus between the claims invention and the systems reported on by the declarations and are therefore, along with the evidence of commercial success and the comparative tests with the Anderson block wall, both tamped and untamped, [FN1] of substantial significance and strong factors favoring nonobviousness. See Simmons Fastener Corp. v. Illinois Tool Works 739 F.2d at 1575-1576, 222 USPQ 744, 747 (Fed. Cir. 1984); Stratoflex Inc. v. Aeroquip Corp. 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983).
*6 After evaluation of the entire body of evidence of record including the prior art and the many declarations, affidavits and associated exhibits in accordance with evidentiary procedure set forth in In re Rinehart 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (see also In re Carleton 599 F.2d 1021, 202 USPQ 165 (CCPA 1979); In re Piasecki 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984); Cable Electric Products Inc. v. Genmark, Inc. 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985)), we find the evidence, considered as a whole, to be weighted in favor of nonobviousness, and conclude therefore, the claimed subject matter would not have been obvious to one of ordinary skill in the art at the time the invention was made.
The decision of the examiner rejecting claims 11, 13, 14 and 16-22 under 35 USC 103 is reversed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Robert F. Stahl
Richard G. Besha
Marion Parsons, Jr