Ex Parte Tomita et al

Patent Trials and Appeals Board

Nov 1, 2016

12730494 - (R) (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121730,494 03/24/2010
25191 7590 11/02/2016
BURR & BROWN, PLLC
POBOX7068
SYRACUSE, NY 13261-7068
FIRST NAMED INVENTOR
Takahiro Tomita
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.
791_474 9276
EXAMINER
FITZSIMMONS, ALLISON GIONTA
ART UNIT PAPER NUMBER
1778
MAILDATE DELIVERY MODE
11/02/2016 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 T AKAHIRO TOMITA, ASUMI JINDO,
KEN JI MORIMOTO, KEN KUW AM OTO, and
KATSUHIRO INOUE
Appeal2014-005493
Application 12/730,494
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVEL YN M. ROSS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of August 9, 2016. In
that Decision, we affirmed the Examiner's decision to reject claims 1, 3-10,
and 14 under§ 103(a) as obvious over Castillon in view of Katsuyoshi, as
evidenced by Ketcham and Cutler.
In our Decision, we addressed two central issues, which we framed as
follows:
Appeal2014-005493
Application 12/730,494
1. Did the Examiner reversibly err in finding a suggestion
within the prior art for incorporating copper oxide into the
ceramic material of Castillon? And if not:
2. Did Appellants meet their burden of showing
unexpected results commensurate in scope with the breath of
claim 1 such that when all the evidence is weighed as a whole a
preponderance supports a conclusion of non-obviousness?
Decision 2-3.
Appellants do not find fault with our framing of the issues. Request
1--4. Instead, Appellants contend that, in addressing the first issue on
appeal, we misapprehended Appellants' explanation of the disclosure of
Castillon found on page 7 of their Appeal Brief. Request 1. According to
the Appeal Brief at page 7:
It is readily apparent to one skilled in the art that, in
Castillon, while the titania particles may undergo some
sintering, the alumina particles do not. Attached hereto in the
Evidence Appendix are excerpts from three very well-
recognized textbooks in the field of ceramic engineering, and
each of those excerpts shows that sintering occurs between
particles that directly contact one another, wherein the original
shape of the particles changes (i.e., grain growth occurs) and
the porosity of the body decreases as sintering progresses
(please see the check-mark portions of the attached excerpts).
This is the type of sintering that occurs between the alumina
particles described in the prior art section of Castillon at Col. 2,
lines 17-22. This is not the type of sintering that is happening
in the inventive section of Castillon, because the alumina
particles do not even contact one another - again, each of the
particles is fully enveloped by the titania bonding phase (see
Castillon, Col. 3, lines 32-38). And, while the titania particles
directly contact one another and may undergo some sintering,
that sintering is insufficient in the absence of the copper oxide
additive recited in the pending claims. Again, the copper oxide
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Application 12/730,494
additive quadruples the flexural strength by improving the
sinterability of the titania bonding phase.
Appeal Br. 7. We agree that Appellants were characterizing Castillon as
describing prior art as teaching sintering that occurs between alumina
particles, and that they were characterizing Castillon's inventive
embodiment as void of sintering of alumina particles. Request 1. This,
however, does not point to a reversible error in our Decision.
The issue, as we framed it in the Decision, is: "Did the Examiner
reversibly err in finding a suggestion within the prior art for incorporating
copper oxide into the ceramic material of Castillon?
Appellants had argued that the teachings of the references are not
combinable because Castillon does not sinter the alumina particles of
Castillon's inventive embodiment. Appeal Br. 7-8. Similarly to the Brief,
Appellants argue in the Request that Castillon uses titania as a bonding agent
between the alumina particles as an alternative to bonding alumina particles
directly to each other. Request 2. Appellants acknowledge that Ketcham
and Cutler teach using titania and copper oxide as sintering aids. Id.
Appellants also contend that a bonding agent for alumina is different from a
sintering aid for alumina. Id.
Appellants' argument against the combination of the reference
teachings is not persuasive because Castillon does not use the term "bonding
agent," nor have Appellants presented persuasive evidence showing that
those of ordinary skill in the art would have recognized Castillon's titania as
something other than a sintering aid. We note that Castillon teaches forming
the raw or green monolith by forming a paste of titania and alumina
powders, water, and other additives, in a way that permits coating each
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Application 12/730,494
alumina grain with a film of titania grains. Castillon, col. 3, 11. 12-50.
Essentially, Castillon places grains of titania in and around grains of
alumina. Because the titania has a melting point lower than alumina, the
titania will completely melt during sintering heat treatment. Id. The
sintering aids of Ketcham function in a similar manner. Ketcham teaches
that the mechanism by which titania and copper oxide act as a sintering aid
is based on evidence that titania and copper oxide form a eutectic liquid.
Ketcham, col. 10, 1. 66-col. 11, 1. 5. In other words, titania and copper oxide
form a melt at a lower temperature.
Appellants contend that "[ o ]nee the Board understands and accepts
the fact that Castillon abandoned the notion of sintering the alumina
particles, it is a foregone conclusion that Ketcham and Cutler are not
combinable with Castillon, because the sintering aids disclosed in Ketcham
and Cutler are specifically directed at sintering alumina particles." Request
2. We do not find this line of reasoning persuasive. There is no persuasive
evidence that Castillon "abandoned the notion of sintering the alumina." Id.
Castillon seeks to form a sintered, i.e., densified, monolithic support for a
membrane, and the titania can be present in as little as 1 wt%. Castillon, col.
2, 11. 51---61. Given the low amount of titania that may be present, it would
be necessary to sinter the alumina to make a viable monolithic support.
Thus, Appellants have not persuaded us that we reversibly erred in
determining that "the evidence supports the Examiner's finding that those of
ordinary skill in the art would have recognized that adding copper oxide
would further lower the sintering temperature [of Castillon's green body
containing alumina grains coated with a film of titania grains] given the
teachings of Ketcham and Cutler." Decision 4.
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Application 12/730,494
In essence, we disagree with Appellants' reading of Castillon as
suggesting sintering only the titania, and not the alumina within the green
body. Castillon forms a monolithic ceramic support. See Castillon, col. 2,
11. 33--40 (referring to "a constituent ceramic material which can be shaped
into a monolithic support and which can be sintered"). Whether the article is
made of only alumina particles 1 or alumina particles coated with a film of
titania particles, the shaped article is sintered, and must have the strength
necessary to serve as a membrane support. Appellants have not established
that direct contact between the alumina grains fails to occur in the method of
Castillon' s invention. 2
A preponderance of the evidence supports a finding that sintering is
occurring between all the ceramic particles of Castillon such that the entire
body is densified and will hold together with the necessary strength to form
the support. Ketcham and Cutler further support a finding that those of
ordinary skill in the art would understand "sintering" to be referring to the
overall densification of a particulate body whether or not the body contains
additives such as titania and copper oxide. Ketcham, col. 1, 11. 5-35.
Appellants' own evidence defines sintering as "[ t ]he densification of a
particulate ceramic compact." Richerson, Modern Ceramic Engineering,
Properties, Processing, and Use in Design § 7 .1 i-f 1 at p. 217 (1982). Other
evidence cited by Appellants indicates that "[ s ]intered ceramic products
1 Castillon does not refer to alumina in the discussion of the prior art, but for
discussion purposes it is sufficient to refer to the prior art monolithic
ceramic support material as alumina.
2 In Castillon's process, the titania grains in the film covering the alumina
grains completely melt. Castillon, col. 3, 11. 34--39. It is not established that
the melted titania grains would prevent contact between the alumina grains.
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Application 12/730,494
represent a wide range of material systems that may vary widely in the
number of components, particle characteristics, complexity of chemical
reactions, and densification mechanisms during sintering." Reed, Principles
of Ceramics Processing, 2d. § 29.3 i-f 1 at p. 594 (1995). Castillon's
invention involves such densification of a ceramic product as do Ketcham
and Cutler.
Appellants also respond to our discussion of the second issue on
appeal, i.e., "[d]id Appellants meet their burden of showing unexpected
results commensurate in scope with the breath of claim 1 such that when all
the evidence is weighed as a whole a preponderance supports a conclusion
of non-obviousness?" Request 2--4. Appellants, however, do not "state with
particularity the points believed to have been misapprehended or
overlooked" by us in rendering the Decision over and above those addressed
above. 37 C.F.R. § 41.52 (2013). We addressed Appellants' arguments
sufficiently in our Decision.
CONCLUSION
The subject Request has been granted to the extent that the Decision
has been reconsidered, but denied with respect to making any changes
therein. We affirm the decision of the Examiner to reject the claims.
DENIED
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