Global Advanced Metals, USA, Inc.

Patent Trials and Appeals Board

Dec 23, 2020

2020004017 (P.T.A.B. Dec. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/299,489 10/21/2016 Nick Yin 3077-059 9493
33432 7590 12/23/2020
KILYK & BOWERSOX, P.L.L.C.
400 HOLIDAY COURT
SUITE 102
WARRENTON, VA 20186
EXAMINER
SIDDIQUI, ADIL ABDUL WAJID
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
LKILYK@KBPATENTLAW.COM
docketing@kbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICK YIN, ASHISH RAI, CRAIG SUNGAIL,
KAZUNARI YANAGIYA, and SHUHEI YOSHIKAWA
Appeal 2020-004017
Application 15/299,489
Technology Center 1700
Before ADRIENE LEPIANE HANLON, DEBRA L. DENNETT, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6, 7, 9, 11, 12, 14–16, 18, and 19.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/299,489 filed Oct. 21, 2016 (“the ’489 App.”); the Final Office Action
dated Apr. 29, 2019 (“Final Act.”); the Appeal Brief filed Nov. 12, 2019
(“Appeal Br.”); the Examiner’s Answer dated Mar. 4, 2020 (“Ans.”); and the
Reply Brief filed Apr. 24, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Global Advanced
Metals, USA, Inc. Appeal Br. 3.
Appeal 2020-004017
Application 15/299,489

2
See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). A hearing
was held on December 8, 2020.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a tantalum powder, anode, and capacitor
including same, and manufacturing methods thereof. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A tantalum powder comprising tantalum and hydrogen
doped therein and nitrogen doped therein, wherein a value of
hydrogen (H) content (ppm) of the tantalum powder divided by
Brunauer-Emmett-Teller (BET) surface area (m2/g) of the
tantalum powder (H/BET) is greater than 100, wherein the
tantalum powder has (a) a hydrogen content of from 300 ppm to
1200 ppm, (b) a nitrogen content of from 500 ppm to 3,500
ppm, and (c) a BET range of from 3 m2/g to about 10 m2/g.
REFERENCE
The Examiner relies on Mizusaki et al., US 2009/0080145 A1,
published Mar. 26, 2009 (“Mizusaki”) as prior art.
REJECTION
Claims 1–4, 6, 7, 9, 11, 12, 14–16, 18, and 19 are rejected under 35
U.S.C. § 103 as being unpatentable over Mizusaki. Final Act. 3–9.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010)
Appeal 2020-004017
Application 15/299,489

3
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After considering
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejection for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Obviousness of Claim 1 over Mizusaki
Appellant argues claims 1, 4, 7, 9, 11, 12, 14–16, and 19 as a group.
See Appeal Br. 8–21. We select claim 1 as representative of the group.
Claims 4, 7, 9, 11, 12, 14–16, and 19 stand or fall with claim 1. 37 C.F.R.
§ 42.37(c)(1)(iv). We address the separately argued dependent claims after
claim 1.
The Examiner finds that Mizusaki teaches a tantalum powder
containing a hydrogen content of preferably 400-600 ppm, a nitrogen
content of preferably 3000 ppm to about 3500 ppm, and a BET of preferably
4–6 m2/g. Final Act. 3. Using these preferred values, the Examiner
calculates that the H/BET value is 66.7 to 150, and that this range overlaps
with the claimed range for H/BET of 100 or more. Id. The Examiner
acknowledges that Mizusaki discloses broader ranges of hydrogen content
and BET values, but urges that one of ordinary skill in the art would have
considered the preferred ranges in reaching obviousness. Ans. 3. The
Examiner finds that the H/BET value is an unknown property that is
inherently present in Mizusaki, and thus does not confer patentability. Id. at
4 (citing In re Best, 562 F.2d 1252, 1254 (CCPA 1977)). According to the
Examiner, there is a sound basis for believing that claimed tantalum powder
Appeal 2020-004017
Application 15/299,489

4
and that disclosed in Mizusaki are the same, thereby shifting the burden to
Appellant to show that they are not. Id. (citing In re Spada, 911 F.2d 705,
709 (Fed. Cir. 1990)).
Appellant argues that Mizusaki fails to teach H/BET values, and only
discloses separate statements of hydrogen amount and BET surface areas.
Appeal Br. 9. According to Appellant, a very broad range of H/BET values
can be calculated by using the ranges for hydrogen content and BET surface
areas disclosed in Mizusaki, and many such combinations result in H/BET
values outside of the claimed range. Id. Appellant argues that the Examiner
merely picks and chooses arbitrary numbers that support obviousness, and
fails to consider Mizusaki in its entirety. Id. at 10–11. Appellant further
argues that, even using these more limited ranges, the Examiner’s
calculations produce H/BET values well outside the claimed H/BET value of
greater than 100. Id. at 10; see also Reply Br. 3. It is relevant, Appellant
argues, that Mizusaki’s working examples do not provide hydrogen content
or BET values. Appeal Br. 11.
Appellant contends that Mizusaki fails to suggest any link between the
H/BET value and a resulting property in an anode made of the tantalum
powder. Reply Br. 4, 6, 8. Appellant asserts that, in contrast, the ’489
Application shows surprising and unexpected results of reduction in leakage
current in anodes made from tantalum powder as claimed. Appeal Br. 12–
13; Reply Br. 8–11. Appellant thus urges that the claimed H/BET values are
critical to reducing current leakage in such anodes. Appeal Br. 12; Reply
Br. 8.
Appellant’s arguments are not persuasive of reversible error by the
Examiner in rejecting claim 1 as obvious over Mizusaki.
Appeal 2020-004017
Application 15/299,489

5
Our reviewing court recognizes that “[a] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974)). The resulting presumption
of obviousness “will be rebutted if it can be shown: (1) That the prior art
taught away from the claimed invention, In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997); or (2) that there are new and unexpected results relative to
the prior art, In re Woodruff, 919 F.2d [at] 1578 . . . .” Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1321 (Fed. Cir. 2004).
Mizusaki discloses both broader and “preferred” ranges for hydrogen
content, nitrogen content, and BET surface area. See Mizusaki ¶¶ 81, 107–
108. Appellant ignores the rejection (based on narrower ranges) in arguing
that Mizusaki discloses broader values than those employed by the
Examiner. One of ordinary skill in the art reasonably would have been
motivated to look to the preferred ranges, as a range described as “preferred”
is likely to provide the greatest expectation of success in employing the
disclosed tantalum powder to manufacture an anode. As the Examiner
explains, use of Mizusaki’s preferred amounts for hydrogen content and
BET surface area produce H/BET values ranging from 66.7 to 150. See
Final Act. 3. Thus, Mizusaki’s disclosure produces H/BET values that
overlap the claimed values. Appellant’s argument that some of the
calculated values for H/BET lie outside of the claimed range does not negate
obviousness here. See Appeal Br. 9, 10, 14; Reply Br. 3, 4. We are aware
of no case law on overlapping ranges that requires prior art to disclose only
Appeal 2020-004017
Application 15/299,489

6
ranges within the claimed range—and Appellant does not direct us to any
such law.
Appellant maintains that it discovered a H/BET greater than 100 leads
to a reduction in leakage current in an anode made of tantalum powder as
claimed. Appeal Br. 14. This may be accurate, and the Examiner does not
dispute it. However, “it is not required . . . that the prior art disclose or
suggest the properties newly-discovered by an applicant in order for there to
be a prima facie case of obviousness.” In re Dillon, 919 F.2d 688, 697 (Fed.
Cir. 1990) (en banc). “From the standpoint of patent law, a compound and
all of its properties are inseparable; they are one and the same thing.” In re
Papesch, 315 F.2d 381, 391 (CCPA 1963). The Examiner’s calculations
using Mizusaki’s preferred values show that H/BET values overlap the
claimed range of “greater than 100” (with no upper limit). See Final Act. 3.
“[M]ere recitation of a newly discovered function or property, inherently
possessed by things in the prior art, does not distinguish a claim drawn to
those things from the prior art.” In re Oelrich, 666 F.2d 578, 581 (C.C.P.A.
1981). Where a missing claim limitation is the natural result of the
combination of prior art elements, inherency may supply it in an obvious
analysis. PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1187, 1195-96
(Fed. Cir. 2014). The limitation at issue—the H/BET value—is merely the
division of one number by another, both of which are taught in Mizusaki.
See Mizusaki ¶¶81, 109. Accordingly, Appellant has not shown error in the
Examiner’s prima facie case of obviousness.
Therefore, we look to Appellant’s contentions regarding unexpected
results. Appellant bears the burden of proving unexpected results. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
Appeal 2020-004017
Application 15/299,489

7
unexpected results rests on he who asserts them”). To be probative evidence
of nonobviousness, the applicant must at least establish that (1) there
actually is a difference between the results obtained through the claimed
invention and those of the prior art, and (2) the difference actually obtained
would not have been expected by one skilled in the art at the time of
invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citing In re
Klosak, 455 F.2d 1077 (CCPA 1972) and In re D’Ancicco, 439 F.2d 1244
(CCPA 1971). In addition, unexpected results must also be “commensurate
in scope with the degree of protection sought by the claims on appeal.” In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); see also In re Graselli, 713
F.2d 731, 743 (Fed. Cir. 1983) (“It is well settled ‘that objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.’” (quoting In re Tiffin, 448 F.2d 791 (CCPA
1971))).
In the Appeal Brief Appellant argues that the leakage current data for
a H/BET of 130 compared with that for a H/BET value of 80 shows a 22%
reduction in leakage current. Appeal Br. 12. In the Reply Brief Appellant
argues that the ’489 Application shows tantalum powders having a H/BET
below 100 (specifically, values of 82, 80, 78, 92, 68, 69, and 66) and above
100 (specifically, values of 242, 165, 148, 140, 147, 239, 130, 135, 103, 124,
119, 128, 119, and 120). Reply Br. 9. Appellant contends that there are
sufficient examples inside and outside the claimed H/BET value to provide
support for the entire claimed range. Id.
However, the ’489 Application provides no data at all related to
leakage current for more than half of the samples. See Spec. 49–58. Most
of the leakage current data disclosed compares only two samples (H/BET
Appeal 2020-004017
Application 15/299,489

8
values of 130 versus 80, 135 versus 78, or 103 versus 130) under the same
conditions, meaning the data cannot be compared across examples. See id.
51, 54, 56. Two of the samples with leakage current data (test 1-1 and test
1-4 in Table 10) do not contain sufficient hydrogen content to meet claim 1’s
requirement. See id. 58. Thus, the data is limited to comparing single
values well below H/BET values of 100 with single values well above
H/BET values of 100 (except for one sample with a H/BET value of 103).
These data are not commensurate in scope with claim 1’s limitation of all
H/BET values greater than 100. See Appeal Br. 23 (Claims App.).
Moreover, Appellant provides nothing other than attorney argument to
support that the leakage current results are unexpected. It is well settled that
arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
On balance, a preponderance of the evidence supports the Examiner’s
conclusion of obviousness. Therefore, we sustain the Examiner’s rejection
of claim 1 as obvious over Mizusaki. For the same reasons as claim 1, we
sustain the rejection of claims 4, 7, 9, 11, 12, 14–16, and 19. 37 C.F.R.
§ 42.37(c)(1)(iv).
Obviousness of Claim 2 over Mizusaki
Claim 2 depends from claim 1 and recites “wherein said tantalum
powder, when formed into an anode has a capacitance (CV) of at least
150,000 µF-V/g and a leakage current of 6 nA/µFV or less.” Appeal Br. 23
(Claims App.).
The Examiner finds that Mizusaki discloses values of capacitance and
leakage current that overlap the claimed ranges. Final Act. 3–4.
Appeal 2020-004017
Application 15/299,489

9
Appellant argues that the range of leakage currents disclosed in
Mizusaki is very broad relative to the claimed range, and Example 1 shows
criticality for the claimed range. Appeal Br. 15–16.
Mizusaki discloses leakage current of the powder when formed into
an anode can be “from about 3.0 to about 10 nA/µFV.” Mizusaki ¶ 124.
This range overlaps the claimed range of less than 6 nA/µFV, thus
Appellant’s argument is unpersuasive.
In addition, although Example 1 shows a 22% reduction in current
leakage between one sample and one comparative sample at a specific
sintering temperature, a smaller difference is obtained when the two are
sintered at a different temperature. See Table 4, comparing LC results at
1190 and 1240 sinter temperatures. Moreover, data from another table in the
’489 Application shows only an 8% difference in leakage current
(calculating nA/µFV, as claimed, at 1150 sinter temperature) between
H/BET values of 78 and 135. And the sample with H/BET value of 78,
which falls outside the scope of claim 1, has a leakage current that satisfies
claim 2’s requirement. See Table 6. Therefore, the data in the Specification
does not support criticality of a leakage current of 6 nA/µFV or less.
We sustain the rejection of claim 2 as obvious over Mizusaki.
Obviousness of Claim 3 over Mizusaki
Claim 3 depends from claim 1 and recites “wherein the H/BET value
is from 105 to 135.” Appeal Br. 23 (Claims App.).
As with claim 1, the Examiner finds that the preferred hydrogen
content and BET in Mizusaki result in a range of H/BET values of 66.7 to
150. Final Act. 4.
Appeal 2020-004017
Application 15/299,489

10
Appellant argues that the Examiner arbitrarily picked two values to
derive a H/BET value satisfying claim 3. Appeal Br. 17. We do not agree.
The Examiner explained in relation to claim 1 that the H/BET values
are based on Mizusaki’s preferred hydrogen content and BET surface area
values. Final Act. 3, 4. The H/BET ranges thus disclosed by Mizusaki
overlap the claimed range of 105 to 135. For the reasons discussed supra in
relation to claim 1, such overlapping range renders claim 3 prima facie
obvious. Appellant proffers no additional argument or evidence to support
that the H/BET range recited in claim 3 demonstrates unexpected results.
We sustain the rejection of claim 3 as obvious over Mizusaki.
Obviousness of Claim 6 over Mizusaki
Claim 6 depends from claim 1 and recites “wherein the H/BET value
is from 125 to 250.” Appeal Br. 23 (Claims App.). The Examiner finds that
the preferred hydrogen content and BET result in a range of H/BET values
of 66.7 to 150. Final Act. 4.
Appellant argues that the Examiner arbitrarily picked the values to
find H/BET that overlaps the claimed H/BET. Appeal Br. 19. For the
reasons discussed supra that argument is not persuasive of reversible error.
In addition, Appellant argues that the ’489 Application “show[s] H/BET
values ranging from 130 to 240 and showed that a H/BET value of 130
produced significantly lower leakage compared to a H/BET of 80.” Id.
Appellant characterizes that comparison of two values as “superior and
unexpected results.” Id.
For the same reasons discussed supra in relation to claim 1, Appellant
fails to demonstrate that the results are unexpected or that any unexpected
results are commensurate in scope with the claim protection sought. See In
Appeal 2020-004017
Application 15/299,489

11
re Harris, 409 F.3d at 1344 (Unexpected results must also be
“commensurate in scope with the degree of protection sought by the claims
on appeal.”).
We sustain the rejection of claim 6 as obvious over Mizusaki.
Obviousness of Claim 18 over Mizusaki
Claim 18 depends from claim 15, which depends from claim 1.
Appeal Br. 23–24 (Claims App.). Claim 15 recites “[a]n anode for a
capacitor comprising the tantalum powder according to claim 1.” Id. at 24.
Claim 18 recites “[t]he anode of claim 15, wherein the hydrogen content of
the anode is below 1 ppm.” Id.
The Examiner finds that Mizusaki teaches an anode obtained by a
process that is substantially the same as that described in the ’489
Application. Ans. 18. The Examiner finds that Mizusaki teaches sintering
tantalum pellets at a temperature such that the shrinkage ratio of the
tantalum powder remains in a range of 5–10%, the pellets have a press
density of 4.5 g/cm3, and sintering occurs at preferably 1100–1250 °C. Id.
According to the Examiner, these ranges overlap those of the same
parameters disclosed in the ’489 Application for manufacturing an anode.
Id. The Examiner finds that Mizusaki establishes a relationship between
sintering temperature and resulting CV value and shrinkage ratio. Id.
Appellant argues that Mizusaki does not teach the process used in the
invention because “Mizusaki is entirely silent as to hydrogen doping of a
tantalum powder,” and “entirely silent as to the hydrogen content of the
anode made from a tantalum powder.” Appeal Br. 21. Appellant contends
that Mizusaki’s disclosure of anodes is limited to sintering conditions used
Appeal 2020-004017
Application 15/299,489

12
to make the anodes, and fails to discuss controlling hydrogen content in the
anode. Id.
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977). The
Examiner finds that Mizusaki teaches a tantalum powder comprising
hydrogen, nitrogen, BET surface area, and H/BET value ranges that overlap
those recited in claim 1, as well as the process parameters recited in the ’489
Application. Final Act. 3–4, 8–9; Ans. 3–9, 17–19. Appellant asserts that
Mizusaki does not teach hydrogen doping of a tantalum powder. Appeal Br.
21. Although Mizusaki does not disclose hydrogen doping, the reference
discloses tantalum powders whose compositions overlap those claimed.
Compare Mizusaki ¶¶ 81, 108, 109 with Appeal Br. 23 (Claims App.).
Mizusaki likewise teaches process parameters that overlap those
disclosed in the ’489 Application. Compare Mizusaki ¶ 130 with Spec. ¶ 87.
The ’489 Application states that the sintered body may (not must) be
deoxidized with magnesium and acid leached prior to being anodized, and
describes the hydrogen content of the tantalum in the anode as permissibly
being “below 500 ppm,” up to 500 ppm, “or other values.” Spec. ¶ 88.
Based on Mizusaki’s disclosure, one of ordinary skill in the art would have
had a reasonable expectation of success in achieving the anode of claim 18.
See In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does
not require absolute predictability of success . . . all that is required is a
reasonable expectation of success.” (citing In re O’Farrell, 853 F.2d 894,
Appeal 2020-004017
Application 15/299,489

13
903–04 (Fed. Cir. 1988)); see also Hospira, Inc. v. Fresenius Kabi USA,
LLC, 946 F.3d 1322, 1332 (Fed. Cir. 2020) (“If a property of a composition
is in fact inherent, there is no question of a reasonable expectation of success
in achieving it.”).
The Examiner having established a prima facie case of obviousness of
claim 18, the burden of production of evidence to refute it shifted to
Appellant. See In re Best, 562 F.2d at 1255 (“Whether the rejection is based
on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35
U.S.C. 103, jointly or alternatively, the burden of proof is the same.”).
Appellant has not met its burden. More specifically, Appellant has not
shown that Mizusaki’s anode does not necessarily possess the characteristics
of the claimed anode. Id. In that regard, Appellant identifies nothing in the
’489 Application that is required in order to achieve an anode wherein the
hydrogen content is below 1 ppm.
We sustain the rejection of claim 18 as obvious over Mizusaki.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 6, 7, 9, 11, 12, 14–16,
18, and 19 is sustained.
More specifically,
Appeal 2020-004017
Application 15/299,489

14
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7, 9,
11, 12, 14–
16, 18, 19
103 Mizusaki 1–4, 6, 7, 9,
11, 12, 14–
16, 18, 19

TIME PERIOD FOR RESPONSE
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