Ex Parte DeRosa et al

Patent Trial and Appeal Board

Mar 6, 2019

14886664 (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/886,664 10/19/2015
22928 7590 03/08/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Michael Edward DeRosa
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.
SP07-289A 1061
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL EDWARD DeROSA
and LUNG-MING WU
Appeal2018-001694
Application 14/886,664
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-8 and 10-13 of Application
14/886,664 under 35 U.S.C. § 103(a) as obvious. Final Act. 3-7 (October
18, 2016). The Examiner also rejected claim 11 under 35 U.S.C. § 112, ,r 2
as indefinite. Id. at 2. Appellant1 seeks reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Coming Inc. is identified as the applicant and real party in interest. Appeal
Br. 2.
Appeal2018-001694
Application 14/886,664
BACKGROUND
The '664 Application describes a ceramic precursor batch
composition having a higher stiffening onset temperature. Appeal Br. 3.
Such ceramic precursor batch compositions may be extruded at higher rates
without significant increases in extrusion pressure. Id.
Claim 1 is representative of the '664 Application's claims and is
reproduced below from the Claims Appendix:
1. A ceramic precursor batch composition, comprising:
inorganic ceramic-forming ingredients;
a combined hydrophobically modified cellulose ether
binder having a molecular weight less than or equal to about
300,000 g/mole and comprising at least one high molecular
weight hydrophobically modified cellulose ether binder having
a molecular weight of greater than about 300,000 g/mole and at
least one low molecular weight hydrophobically modified
cellulose ether binder having a molecular weight of less than
about 300,000 g/mole;
an aqueous solvent; and
wherein MC/Wis less than about 0.32, MC is a weight%
of the combined hydrophobically modified cellulose ether
binder based on a 100% of the inorganic ceramic-forming
ingredients, and W is a weight % of water based on the 100%
of the inorganic ceramic-forming ingredients.
Appeal Br. 11.
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Appeal2018-001694
Application 14/886,664
REJECTIONS
On appeal, the Examiner maintains2 the following rejection:
1. Claims 1-8, 10, 12, and 13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination ofYavuz3 and
Wu. 4 Answer 2.
DISCUSSION
Appellant only present substantive argument for reversal of the
rejection of claim 1. Appeal Br. 5-9. Claims 2-8, 10, 12, and 13 are alleged
to be patentable on the basis of their dependency from claim 1. Id. at 10.
Accordingly, we select claim 1 as representative, and the remaining claims
will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner found that Y avuz describes or
suggests each limitation of the claim except for the particular
methylcellulose binder. Ans. 3--4. In particular, the Examiner found that
"Y avuz does not expressly teach that the methyl cellulose binder may be a
combined binder having a molecular weight of less than about 300,000
g/mole, comprised of a high molecular weight binder having [a] molecular
weight of greater than 300,000 g/mole and a low molecular weight binder
having a molecular weight of less than 300,000 g/mole." Id. at 3.
The Examiner also found that Wu teaches a method of preparing an
extrudable ceramic composition that includes a methyl cellulose binder. Id.
2 Appellant cancelled claim 11. Response to Office Action (January 18,
2017).
3 US 5,340,516, issued August 23, 1994.
4 US 5,568,652, issued October 22, 1996.
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Appeal2018-001694
Application 14/886,664
at 4. The Examiner further found that Wu describes a methyl cellulose
binder comprising a mixture of a high molecular weight binder and a low
molecular weight binder. Id. (citing Wu 5:58---60; 10: 13-18 (Example 4)).
In particular, Wu's Example 4 describes a binder comprising a mixture of a
high molecular weight binder and a low molecular weight binder which
"showed a better rapid setting result" than other binders. Wu 10: 16-17. The
Examiner concluded that it would have been obvious to a person of ordinary
skill in the art to use Wu's binder from Example 4 in Y avuz' s composition
because ( 1) it is a known equivalent of the methylcellulose binders used in
Yavuz and (2) use of Wu's binder would provide a better rapid setting result
than other binders. Final Act. 5.
Appellant argues that the rejection is based upon impermissible
hindsight because the Examiner has not provided sufficient reasoning with a
rational underpinning to support the legal conclusion of obviousness.
Appeal Br. 5-9.
We are not persuaded that Appellant has identified reversible error for
the reasons stated on pages 6-10 of the Examiner's Answer, which we
adopt. We add the following, primarily for emphasis.
Appellant's most significant argument on appeal is that the Examiner
failed to provide an adequate explanation for why a person of ordinary skill
in the art would have used Wu's mixture of lower and higher molecular
weight methylcellulose binding agents in Y avuz' s extrudable ceramic-
forming ingredient composition. Appeal Br. 5-7.
This argument is not persuasive. As noted above, the Examiner
expressly found that a person of ordinary skill in the art would have used
Wu's mixture of higher and lower molecular weight methylcellulose binding
agents because they were known equivalent to the binders used in Y avuz.
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Appeal2018-001694
Application 14/886,664
Final Act. 5. This is a sufficient reason for a person of ordinary skill in the
art to make the substitution. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."). In the alternative, the Examiner also found that a person of
ordinary skill in the art would have used Wu's binding composition because
it provided a better rapid setting result than other binding compositions.
Final Act. 5. Appellant argues that this is not the reason that the inventors of
the '664 Application arrived at the claimed binding material composition.
While interesting, this fact is irrelevant. "[T]he law does not require that the
references be combined for the reasons contemplated by the inventors." In
re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).
Appellant further argues that the rejection should be reversed because
the Examiner improperly relied on inherency in the context of an
obviousness determination. Reply Br. 2-3 (citing Honeywell Int'! Inc. v.
Mexichem Amanco Holding S.A., 865 F.3d 1348, 1354--55 (Fed. Cir. 2017)).
This argument is not persuasive because Appellant has not identified
in the record any evidence that the properties of extrudable ceramic-forming
ingredient compositions are unpredictable. The unpredictability of the art is
the key to the Federal Circuit's holding in Honeywell. See 865 F.3d at 1355
("What is important regarding properties that may be inherent, but unknown,
is whether they are unexpected. All properties of a composition are inherent
in that composition, but unexpected properties may cause what appear may
appear to be an obvious composition to be nonobvious."). In this case,
Appellant has not identified any evidence in the record demonstrating that
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Appeal2018-001694
Application 14/886,664
the properties of the claimed composition are unexpected. The arguments of
Appellant's attorney are not a substitute for actual evidence.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-8,
10, 12, and 13 of the '664 Application.
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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