Ex Parte Saito et al

Patent Trial and Appeal Board

Mar 27, 2013

10532586 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENJI SAITO and TAMAO HIGUCHI
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Appeal 2010-004934
Application 10/532,586
Technology Center 3700
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Before JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004934
Application 10/532,586

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 4-11, and 17-19. Claims 2, 3, 12, 13, 15,
and 16 are cancelled. Claim 14 is withdrawn. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1, 11, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A surface-treating process comprising:
mechanically polishing an inner surface of a
vacuum member in the presence of a liquid
medium, or a liquid medium and an oxidizing
material,
wherein the liquid medium includes no
hydrogen atom, wherein the vacuum member is
made of one kind or two or more kinds selected
from the group consisting of niobium, titanium,
stainless steel, copper, aluminum and iron, and
wherein the liquid medium including no
hydrogen atom is a liquid at an ordinary
temperature and an ordinary pressure and a
saturated hydrocarbon in a molecule of which a
hydrogen atom or hydrogen atoms are all
substituted with a fluorine atom or fluorine atoms.

Claim 11 is directed to “[a] forming process for a vacuum member” and
claim 17 is directed to “[a] surface-treating process”, and both claims call for
the identical liquid medium as recited in claim 1.

Appeal 2010-004934
Application 10/532,586

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REJECTIONS
Claims 1, 4-11, and 17-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higuchi (JP 2000-71164 A, publ. Mar. 7, 2000), Noguchi
(JP 11-350200 A, publ. Dec. 21, 1999), Yoneda (JP 11-329896 A, publ.
Nov. 30, 1999), and Miller (US 2,951,096, iss. Aug. 30, 1960).1
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Higuchi, Noguchi, Yoneda, Miller, and Tsuchiya (US 2002/0093002 A1, iss.
Jul. 18, 2002).

OPINION
The Examiner finds that Higuchi and Noguchi each disclose a surface
treating process for the inner surface of a vacuum member with a liquid
medium but the liquid mediums of both Higuchi and Noguchi include
hydrogen atoms. Ans. 3. The Examiner finds that “Yoneda teaches of
providing a solution intermingled with a polishing medium (Paragraph 8),
said non-aqueous solution being formed from various types of fluorocarbons
(Paragraph 12).”2 Ans. 4. The Examiner further finds that “Miller teaches
that perfluorocarbons can be formed from saturated or unsaturated
hydrocarbons (Column 1, Line 32) at various temperatures (Column 3, Lines
47-49) and pressures. (Column 4, Lines 1-5), since perfluorocarbons are
examples of fluorocarbons which have had all their hydrogen atoms replaced
by fluorine atoms the examiner believes the limitations of the claims have
been met.” Id. The Examiner concludes:

1 The Examiner’s application of Higuchi and Noguchi are understood as
alternative primary references. See also Reply Br. 5.
2 Citations to Yoneda’s paragraph numbers are directed to the machine
translation of the Yoneda publication dated November 6, 2007.
Appeal 2010-004934
Application 10/532,586

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It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the liquid medium
used in the known process, of Higuchi . . . and Noguchi . . .
with a liquid medium formed as a saturated hydrocarbon under
ordinary pressure and ordinary temperature wherein the
hydrogen atoms are replaced with fluorine atoms, as taught by
Yoneda and Miller, in order to provide non-aqueous liquid that
is non-flammable and explosion proof thereby more effectively
and safely carrying out a polishing process.
Ans. 4 (emphasis added); see Ans. 7.
The Appellants persuasively contend that “neither Higuchi nor
Noguchi discloses or suggests problems directed to flammability, explosion
protection, efficiency or safety.” Reply Br. 5. Indeed, neither Higuchi nor
Noguchi describe or disclose these problems with their polishing methods.
Additionally, the Appellants assert that Yoneda is directed “to
prevent[ing] a ceramic electronic part from deteriorating in characteristics
due to partial elution of ceramic into water at the time when a burned
ceramic chip which contains alkaline earth metals such as Ba, Sr, Ca and the
like is polished in water.” App. Br. 11; see Yoneda, Abstract, Yoneda
Translation para. [0006]. The Appellants contend that “Yoneda’s disclosure
would not have motivated one of ordinary skill in the art to use a fluorine-
based inert liquid to suppress occlusion of hydrogen as a solid solution into
an inner surface of the vacuum member, as this is quite irrelevant to
explosion-proof equipment.” App. Br. 12. As for Miller, the Examiner
explains that “Miller was used as a general teaching that it is known in the
art to form a saturated or unsaturated fluorocarbon compound.” Ans. 9.
This general teaching does not justify combining Miller with the primary
references (Higuchi and Noguchi). See App. Br. 12.
Appeal 2010-004934
Application 10/532,586

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Thus, the rejection of claims 1, 4-11, and 17-19 as unpatentable over
Higuchi, Noguchi, Yoneda, and Miller is not sustained.
The remaining rejection based on Higuchi, Noguchi, Yoneda, and
Miller in combination with Tsuchiya, which is an alternative rejection of
claim 19, relies on the same reasoning as discussed above. See Ans. 5-6. As
such, we cannot sustain the rejection under 35 U.S.C. § 103(a) of claims 19
as unpatentable over Higuchi, Noguchi, Yoneda, Miller, and Tsuchiya.

DECISION
We REVERSE the rejections of claims 1, 4-11, and 17-19.

REVERSED

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