Ex Parte 6358874 et al

Board of Patent Appeals and Interferences

Oct 30, 2009

90007804 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KYOCERA CORPORATION,
Patent Owner and Appellant
____________________

Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B11
Technology Center 3900
____________________

Decided: October 30, 2009
____________________

Before TERRY J. OWENS, CAROL A. SPIEGEL, and
ROMULO H. DELMENDO, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL

1 U.S. Patent 6,358,874 B1 ("the 874 patent"), Zirconium Ceramic Material,
Optical Fiber Connector Member Using the Same, and Method of Producing
the Same, issued 19 March 2002 to Kobayashi et al., based on U.S.
application 09/201,260, filed 30 November 1998, which claims priority to JP
application 09-328973, filed 28 November 1997. The real party in interest is
Kyocera Corporation of Kyoto, Japan (Appeal Brief filed 27 October 2008
("App. Br.") at 2).
Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

2
Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from an
Examiner's final rejection of all of the pending claims, claims 15-19. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM.
I. Statement of the Case
The subject matter on appeal is directed to a zirconia (i.e., ZrO2) based
ceramics material which is stabilized by yttria (i.e., Y2O3), sintered with an
aluminum oxide sintering agent (i.e., Al2O3), and has a limited amount of
impurities, which is useful for optical fiber connector members, particularly
ferrules and sleeves (874 patent 1:8-11; 3:12-15, 24-25; 4:53-55).
Specifically, silicon and titanium dioxides (SiO2 and TiO2) impurities in the
ceramics form a glass phase in the boundary layers between the zirconia
crystal grains of the ceramics during sintering, thereby dissolving part of the
ZrO2 component into the glass phase during segregation and degrading the
ceramics (id. 4:44-48). Therefore, the SiO2 and TiO2 in the sintered material
used to form the claimed ferrules and optical connector members are present
in an amount of 0.1 %2 or less to avoid such degradation (id. 4:49-52).
Notably, the claimed subject matter recites a non-zero amount of SiO2 less
than 0.09% (App. Br. 11, claim 15). Other impurities, such as calcium,
sodium, and iron oxides (CaO, Na2O, and Fe2O3), which may also form the
glass phase in the grain boundary, are similarly limited to levels lower than
0.1% (874 patent 4:56-60).
Claim 15, the only independent claim on appeal, is illustrative and
reads as follows (App. Br. 11, underlining omitted, italics added):

2 All references to percent (%) in this opinion are to weight percent, unless
indicated otherwise.
Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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15. A ferrule made of a zirconia based ceramics
containing containing ZrO2 as a main component,
SiO2, TiO2, 2-4 mol % of Y2O3, 0.05-1.0 wt % of
Al2O3, and 0.1 wt % or less each of CaO, Na2O,
and Fe2O3;
the ferrule comprising an end contact
surface which is formed in a spherical convex
shape having a diameter of 10-25 mm,
wherein the content of each of the SiO2 and
the TiO2 is a nonzero amount and is 0.09 wt % or
less.
The Examiner has rejected claims 15-19 as unpatentable under 35
U.S.C. § 103(a) over Kubota3 in view of the Shintaku abstract4 (Ans.5 3).
The Examiner found that Kubota discloses a ferrule made of zirconia based
ceramics containing (i) ZrO2 as the main component, (ii) 2.5 to 3.5 mol %
Y2O3, (iii) and/or (iv) 0.1 to 3.0% Al2O3 and/or SiO2 (silica), and (v)
impurities such as titanium and iron, but other than ZrO2, Y2O3, Al2O3, and
SiO2, of 0.1% or less (Ans. 3-5). The Examiner also found that Kubota
failed to disclose the geometric details of the ferrule (Ans. 6). The Examiner
found that the Shintaku abstract discloses that ceramic ferrules having a
spherical convex shape with a radius of curvature of 10-25 mm withstands
high temperature and humidity and provides improved connection stability

3 Japanese patent application 06-337327, Fiber Connector Parts Made of
Zirconia, by Kubota Yoshitaka et al. published 6 December 1994. We cite
to the full English translation ("Kubota") provided with Appellant's Request
for Ex Parte Reexamination filed 14 November 2005.
4 Japanese patent application 01-262507, Optical Fiber Connector, by
Toshihiro Shintaku, published 19 October 1989. Since only an English
abstract has been made of record, we cite to the abstract ("the Shintaku
abstract").
5 Examiner's Answer mailed 21 November 2008.
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U.S. Patent 6,358,874 B1

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(Ans. 6). The Examiner concluded that it would have been obvious to make
Kubota's ferrules with a 10-25 mm radius of curvature to provide improved
connection stability and reliability as disclosed by the Shintaku abstract
(Ans. 7).
Appellant argues that without the disclosure of the 874 patent, one of
ordinary skill in the art would not have recognized the amount of SiO2 as a
result effective variable and, therefore, would have had no reason to modify
Kubota to control the impurity amounts of SiO2 to less than 0.1% (App. Br.
7). Appellant further argues that Kubota teaches a range of 0.1 to 3.0%, not
the claimed range of 0.09% or less, for SiO2, (App. Br. 8). According to
Appellant, the Shintaku abstract does not remedy the deficiencies of Kubota
(App. Br. 9). Appellant also argues that the data in Table 1 of the 874 patent
shows that no degradation was observed on the ferrule samples that include
0.09% or less, but not zero, amounts of SiO2 and TiO2 (App. Br. 5).
At issue, is whether Appellant has shown that the Examiner erred in
finding that Kubota teaches or suggests ferrules made of zirconia based
ceramics containing the claimed amounts of SiO2; and, if not, whether
Appellant's rebuttal evidence overcomes the Examiner's prima facie
conclusion of obviousness.
Since Appellant has not argued any dependent claim as separately
patentable, we decide this appeal on the basis of claim 15. 37 C.F.R.
§ 41.37(c)(1)(vii).
II. Findings of Fact ("FF").
The following findings of fact are based on a preponderance of the
evidence of record.
Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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A. Kubota
[1] Kubota discloses strong and tough fiber connector parts, such as
ferrules and sleeves, made of a zirconia based ceramics materials
containing (i) Y2O2/ZrO2 in a molar ratio of 2.5/97.5 to 3.5/96.5, (ii)
0.1 to 0.3% [sic, 3.0%] Al2O3 and/or SiO2 as other components, and
(iii) less than or equal to 0.1% impurities, such as iron and titanium
(Kubota 1:6-14, 19-21; 5:3-13; 7:16-19; 10:3-6).
[2] According to Kubota, when the content of Al2O3 and/or SiO2 is 0.1%
or less or 3.0% or more, there is a decrease in strength after the
sintered body is kept in the atmosphere at a temperature of 200 to
300oC and in an atmosphere of 100oC for 1,500 hours, thereby
decreasing the reliability of the sintered body for subsequent use in
the atmosphere at a temperature of 100o C or less (Kubota 6:20-27;
7:5-8; 8:26 – 9:5).
[3] To wit, Kubota discloses that when the content of SiO2O is 0.1% or
less or 3.0% or less, there is a decrease in strength after the sintered
body is kept in the atmosphere at a temperature of 200 to 300oC and in
an atmosphere of 100oC for 1,500 hours, thereby decreasing the
reliability of the sintered body for subsequent use in the atmosphere at
a temperature of 100o C or less (id.).
[4] Example 7 of Kubota Table 1 exemplifies a sintered body having
1.0% Al2O3 and 1.0% SiO2 (Kubota 12:6-24).

Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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B. The 874 patent
[5] Table 1 of the 874 patent shows the experimental results, including
number of degraded samples, in batches of twenty ferrules having
various chemical compositions (874 patent 6:16-58).
[6] An abbreviated data set from Table 1 is shown below (emphasis
added):
Sample
No.
%
TiO2
%
SiO2
%
Al2O3
Number of degraded
samples
2 0.01 0.01 0.06 0/20
3 0.01 0.01 0.95 0/20
6 0.01 0.09 0.06 0/20
7 0.01 0.09 0.95 0/20
10 0.01 0.11 0.06 2/20
11 0.01 0.11 0.95 2/20
14 0.09 0.01 0.06 0/20
15 0.09 0.01 0.95 0/20
18 0.09 0.09 0.06 0/20
19 0.09 0.09 0.95 0/20
22 0.09 0.11 0.06 3/20
23 0.09 0.11 0.95 3/20

[7] According to the data in Table 1, no degradation was observed on the
end faces of the ferrule samples including 0.1% or less of each of SiO2
and TiO2 and 0.05-1.0% Al2O3 (874 patent Table 1, sample nos. 2, 3,
6, 7, 14, 15, 18, and 19; 6:67-70).
[8] On the other hand, ferrule samples including 0.1% or less of TiO2 but
0.11% SiO2 and 0.05-1.0% Al2O3 showed 10 to 15% degradation (874
patent Table 1, sample nos. 10, 11, 22, and 23; 6:70-73).

Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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III. Discussion
A. Legal principles
The ultimate determination of obviousness under 35 U.S.C. § 103 is a
legal conclusion based on underlying findings of fact. In re Kotzab, 217
F.3d 1365, 1369 (Fed. Cir. 2000). A prima facie case of obviousness arises
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). Where
the “claimed ranges are completely encompassed by the prior art, the
conclusion [that the claims are prima facie obvious] is even more compelling
than in cases of mere overlap.” Peterson, 315 F.3d at 1330. However, even
without complete overlap of the claimed range and the prior art range, a
minor difference shows a prima facie case of obviousness. Haynes Int'l, Inc.
v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993).
Whether an invention has produced unexpected results and whether a
reference teaches away from a claimed invention are questions of fact. In re
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (unexpected results); Para-
Ordnance Mfg, Inc.. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed.
Cir. 1995) (teaching away).
It is well settled that a prima facie case of obviousness may be
rebutted “where the results of optimizing a variable, which was known to be
result effective, [are] unexpectedly good.” In re Antonie, 559 F.2d 618, 620
(CCPA 1977). It is also well settled that proof of unexpected properties may
be in the form of direct or indirect comparative testing of the claimed
compounds (here, alloys) and the closest prior art. In re Payne, 606 F.2d
303, 316 (CCPA 1979).
Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006)).
B. Analysis
The Examiner's obviousness rejection is based on the reasoning that
"[w]hile Kubota does not specifically require 'non-zero' amounts of SiO2 and
TiO2 in the ceramic composition less than 0.09 wt%, Kubota specifically
requires less than 0.1 wt% which differs an insignificant amount with
respect to the feature of ceramic deterioration indicated in the '874 patent"
(Ans. 5) and on Kubota's teaching that the combined content of Al2O3 and
SiO2 can be 0.1 to 3.0%, citing Kubota Example 7 (Ans. 10 and 14; FF 1).
For example, in Kubota Example 7, the content of Al2O3 and SiO2 is each
1.0% (FF 4). Furthermore, according to the Examiner, Appellant's evidence
of unexpected results is insufficient because it does not compare the claimed
ferrule to one made with 0.1% SiO2 as taught by Kubota (Ans. 13).
Here, the claimed invention recites a ferrule made from a zirconia
based ceramic containing 0.05-1.0% Al2O3 and a nonzero amount of SiO2
less than 0.09% (App. Br. 11, claim 15). According to Kubota, unless the
content of Al2O3 and/or SiO2 is 0.1% or less or 3.0% or more, the strength of
the sintered body (zirconia based ceramic) decreases (FF 2), i.e., the Al2O3
and/or SiO2 content is a result effective variable. Thus, given an Al2O3
content of 0.5% or 1.0%, Kubota would permit a non-zero amount of SiO2
Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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up to 2.5% or 2.0%, respectively, to reach a combined Al2O3 and SiO2
content of 3.0%. Either way, Kubota teaches a result-effective concentration
of SiO2 which overlaps the SiO2 content in the recited zirconia based
ceramic. More to the point, Kubota teaches that the SiO2 content may be
0.1%. Therefore, we agree with the Examiner that the claimed invention is
prima facie obvious over the disclosure of Kubota. In re Peterson, 315 F.3d
at 1329-30. Appellant's proffered evidence of unexpected results does not
persuade us otherwise.
According to the data in Table 1 of the 804 patent, samples having a
SiO2 content of 0.01% or 0.09% showed no degradation, while samples
having a SiO2 content of 0.11% showed degradation in 2/20 or 3/20 samples.
However, as noted by the Examiner (Ans. 6), a SiO2 content of 0.11% is not
the closest prior art. The closest prior art is Kubota's disclosed SiO2 content
of 0.10% (FF 3). Since Appellant has not shown unexpected results vis-à-
vis the closest prior art, the showing is insufficient to rebut the Examiner's
prima facie case of obviousness. We note in passing that 874 patent itself
discloses that a SiO2 content in an amount of 0.1% or less avoids
degradation (874 patent 3:49-52).
C. Conclusion
Appellant has failed to show that the Examiner erred in finding that
Kubota teaches or suggests ferrules made of zirconia based ceramics
containing the claimed amounts of SiO2; and Appellant's rebuttal evidence
fails to overcome the Examiner's prima facie conclusion of obviousness.
Accordingly, we sustain the rejection of claims 15-19 under 35 U.S.C.
§ 103.
Appeal 2009-009,405
Reexamination Control No. 90/007,804
U.S. Patent 6,358,874 B1

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IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 15-19 as
unpatentable under 35 U.S.C. § 103(a) over Kubota in view of the Shintaku
abstract is AFFIRMED and,
FURTHER ORDERED that 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)(iv).
AFFIRMED

KMF

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