Ex Parte Kasahara et al

Patent Trial and Appeal Board

Aug 22, 2013

10537376 (P.T.A.B. Aug. 22, 2013)

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.
10/537,376 06/03/2005 Hidemitsu Kasahara 050369 3565
23850 7590 08/22/2013
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
08/22/2013 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 HIDEMITSU KASAHARA,
MITSUNOBU AOYAMA, and HIDETAKE YOSHINO
____________

Appeal 2012-007253
Application 10/537,376
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007253
Application 10/537,376

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-4 and 11-13 under 35 U.S.C. § 103(a) as unpatentable
over Takiyama (US 6,663,948 B1, issued Dec. 16, 2003). 2 We have jurisdiction
under 35 U.S.C. § 6(b).
The invention relates to a calcium phosphate base particulate compound
which is said to be excellent in particulate dispersibility and thermal stability.
(Spec.3 1, 1st para.) The compound is useful for a variety of applications such as
pigments for coating materials, toothpastes for dentistry, catalysts, etc. (Id. at 2nd
para.)
Appellants’ arguments in support of patentability as to all appealed claims
are based on limitations found in claim 1, the sole independent claim on appeal.
(See generally, App. Br. 12-23.) For reference, claim 1 is reproduced below from
the Claims Appendix to the Appeal Brief:
1. A calcium phosphate base particulate compound satisfying
the following expressions (a) to (d):
(a) 20 ≤ Sw ≤ 300 (m2/g);
(b) 1 ≤ Tg ≤ 100 (mg/g);
(c) 0.005 ≤ Dx50 ≤ 0.5 (µm); and
(d) 1.5 ≤ Dx50/σx ≤ 20
wherein,
Sw: BET specific surface area (m2/g) measured by nitrogen
adsorption method,

1 Final Office Action mailed May 11, 2011.
2 Appeal Brief filed Oct. 5, 2011 (“Br.”).
3 Specification filed Jun. 3, 2005.
Appeal 2012-007253
Application 10/537,376

3
Tg: heat loss (mg/g) per 1 g of calcium phosphate base
particulate compound from 250 to 500°C,
Dx50: cumulative 50% average diameter (µm) counted from
larger particle side based on the observation by transmission electron
microscope (TEM),
σx: standard deviation {In(Dx16/Dx50)}; and
Dx16: cumulative 84% average diameter (µm) counted from
larger particle side based on the observation by transmission electron
microscope (TEM),
wherein the calcium phosphate base particulate compound is
obtained by:
(A) synthesizing calcium phosphate compound by reaction of a
calcium compound and a water-soluble phosphoric acid compound in
a pH range of 5 to 12,
(B) aging the obtained calcium phosphate compound for 0.1 to
24 hours, and
(C) heating the obtained calcium phosphate compound at 100 to
180°C.
We have fully considered the arguments in Appellants’ Appeal and Reply
Briefs, but are not convinced of reversible error in the Examiner’s conclusion of
obviousness for the reasons expressed in the Answer. We concur in the
Examiner’s assessment of the declarations and experimental results presented
therein (see App. Br., Evidence Appendix) as unpersuasive for the reasons stated in
the Answer. (See Ans.4 7-8.) Accordingly, we sustain the Examiner’s rejection
based on the findings of fact, conclusions of law, and rebuttals to arguments
expressed in the Answer. The following comments are added for emphasis.

4 Answer mailed Dec. 15, 2011.
Appeal 2012-007253
Application 10/537,376

4
Claim 1 is drafted in product-by-process format. (App. Br. 14.) The
Examiner finds Takiyama’s “calcium phosphate . . . is made by a process similar to
the process for making calcium phosphate disclose[d] in the instant invention” and,
therefore, “it is reasonably expected that [Takiyama’s] calcium phosphate . . . is
substantially similar to that of the instant claims.” (Ans. 5.) Appellants argue
“[t]here are two main differences between the process of Takiyama and that in
claim 1,” “such that the product of Takiyama cannot be chemically/structurally the
same as that of claim 1 and cannot meet the numerical limitations of claim 1.”
(App. Br. 16 (emphasis omitted).) Appellants argue, more specifically, that
(1) unlike the claimed invention, Takiyama requires the use of support particles
(id.), and (2) Takiyama discloses aging at a temperature of 20-97 ºC which is
outside the claimed critical range of 100 to 180 ºC (id. at 19).
With respect to the use of support particles, we agree with the Examiner’s
determination that the claims do not preclude the use of support particles to form
the calcium phosphate base particulate compound. (Ans. 6-7). Appealed claim 1
uses the transitional phrase “obtained by.” Non-conventional transitional phrases
(i.e., other than “comprising,” “consisting essentially of,” and “consisting”) are
interpreted in light of the specification to determine whether open or closed claim
language is intended.5 We have reviewed the Specification, but do not find any
basis for narrowly interpreting the phrase “obtained by” in claim 1 as a closed

5 See, e.g., AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed.
Cir. 2001) (interpreting “composed of” in same manner as “consisting essentially
of” based on specification and other evidence); Crystal Semiconductor Corp. v.
TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (noting
that the term “having” in transitional phrase “does not create a presumption that the
body of the claim is open”); Lampi Corp. v. Am. Power Prods. Inc., 228 F.3d 1365,
1376 (Fed. Cir. 2000) (interpreting “having” as open terminology, allowing the
inclusion of other components in addition to those recited).
Appeal 2012-007253
Application 10/537,376

5
transitional phrase. To the contrary, the Specification states that the “production
method of the calcium phosphate base particulate compound of the present
invention is not particularly limited.” (Spec. 13, last para.)
Appellants’ argument regarding the difference in Takiyama’s and the
claimed aging temperature ranges is equally unavailing. Appellants’ assertion of
criticality in the recited temperature range of 100 to 180 ºC is contradicted by their
own Specification which states that the heating treatment temperature is
“preferably 95 to 180°C” (id. at 18, last para.).
In sum, for the reasons expressed in the Answer and above, we affirm the
Examiner’s decision to reject claims 1-4 and 11-13.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
bar