Ex Parte Clinton et al

Patent Trial and Appeal Board

Sep 25, 2018

13115165 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/115, 165 05/25/2011
22928 7590 09/27/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Joel Edward Clinton
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.
SPl0-139 2911
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL EDWARD CLINTON, KENNETH JOSEPH DRURY,
YUNFENG GU, and MICHAEL EL WYN SAUNDERS
Appeal2017-009019
Application 13/115,165
Technology Center 1700
Before MARK NAGUMO, RAEL YNN P. GUEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3-17, 20, and 29 as follows:
1. claims 1, 3-7, and 10-13 under 35 U.S.C. §103 as unpatentable
over Jiang, 2
1 Appellants identify Coming Incorporated as the real party in interest. See
Appellants' Appeal Brief 2, filed February 22, 2017 ("App. Br.").
2 Jiang et al, US 2009/0110873 Al, published April 30, 2009.
Appeal2017-009019
Application 13/115,165
2. claims 1, 3-10, and 20 under 35 U.S.C. §103 as unpatentable over
Gu 3 in view of Jiang,
3. claim 14 under 35 U.S.C. §103 as unpatentable over Jiang in view
of Pintault4,
4. claim 15 under 35 U.S.C. §103 as unpatentable over Jiang in view
of Watanable5,
5. claim 16 under 35 U.S.C. §103 as unpatentable over Jiang in view
of Komori 6 as evidenced by T onkovich 7,
6. claim 17 under 35 U.S.C. §103 as unpatentable over Jiang in view
of Komori, and
7. claim 29 under 35 U.S.C. §103 as unpatentable over Jiang in view
of Peiffer. 8
We AFFIRM.
Appellants' invention is related to a cordierite monolith substrate
coated with a cordierite membrane, forming a membrane monolith with a
small median pore size (that is equal to or less than 1 µm) that is free of
cracks. Specification ("Spec.") ,r 25. The membrane monolith is used, for
example, to filter fluid particulates from exhaust streams such as power plant
stack gases and combustion engine exhausts. Spec. ,r 3.
3 Gu et al, US 2008/0299377 Al, published Dec. 4, 2008. On its face, Gu
recites that it is assigned to the real party in interest.
4 Pintault et al, US 2009/0241496 Al, published October 1, 2009.
5 Watanable et al, US 2006/0168927 Al, published August 3, 2006.
6 Komori et al, US 2006/0068159, published March 30, 2006.
7 Tonkovich et al, US 2006/0142401 Al, published June 29, 2006.
8 Peiffer et al, US 2010/0062186 Al, published March 11, 2010.
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Application 13/115,165
Independent claim 1 is exemplary of the subject matter on appeal and
is reproduced below:
1. A coated cordierite membrane monolith comprising:
a cordierite monolith substrate comprising
a first end,
a second end, and
a plurality of inner channels having surfaces extending
from the first end to the second end;
a cordierite membrane on the surfaces of the channels of
the cordierite monolith substrate forming a cordierite membrane
monolith;
wherein the cordierite membrane monolith comprises
at least a top layer; wherein the top layer of the cordierite
membrane monolith has a median pore size of between 0.3 to 1
µm; and,
a polymer layer disposed on the top layer of the
cordierite membrane on the cordierite monolith substrate to
form a coated cordierite membrane monolith.
App. Br. 22, Claim App'x.
Unless otherwise indicated, we adopt the Examiner's findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis.
II. DISCUSSION
Appellants do not separately argue any of the dependent claims on
appeal including the separately rejected dependent claims. Accordingly, all
of the claims under rejection will stand or fall with sole independent claim 1.
With respect to the rejection of claim 1 based on Jiang, the Examiner
finds that Jiang teaches a cordierite monolith comprising a support layer that
can be made of cordierite. Final Office Action 2-3, dated September 27,
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Application 13/115,165
2016 ("Final Act.") (citing Jiang ,r,r 35-39). Jiang teaches a broad range of
median pore sizes for the support layer, namely 5 nanometers to 25 µm.
Jiang ,r 44. The Examiner also finds that Jiang teaches one or more
intermediate layers (i.e., a membrane) which can also be made of cordierite.
Final Act. 2-3 ( citing Jiang ,r 54). Jiang teaches that when the support layer
has a pore size greater than 300 nanometers, a membrane structure should
include two intermediate layers, a first intermediate layer having a median
pore size smaller than the support layer and as second intermediate layer
having a median pore size that is smaller than first intermediate layer. Jiang
,r 56. In other words, Jiang also teaches a very broad pore size range for the
intermediate layer that encompasses the range recited in the claims (0.3-
1 µm). The Examiner further finds that Jiang teaches providing a polymeric
layer over the at least one intermediate layer. Final Act. 3 ( citing Jiang
,r 48). Thus, the Examiner contends that the cordierite monolith structure
recited in the claims would have been obvious over the teachings of Jiang.
With respect to the rejection based on Gu in view of Jiang, the
Examiner finds that Gu also teaches support substrates that may comprise
cordierite coated with a porous inorganic coating also using cordierite. Final
Act. 3 (citing Gu ,r,r 35, 37, 63). The Examiner also finds that Gu teaches a
median pore size of 0.01 to 2 µm for the inorganic coating, which
encompasses the range recited in the clams (0.3-1 µm). Id. (citing Gu ,r 71).
The Examiner finds that Gu does not teach using a polymer layer in a
membrane, but relies on the teaching in Jiang of such a polymer layer being
used to improve CO2 separation. Id. at 3--4. The Examiner determines that
it would have been obvious to one of ordinary skill in the art to coat the
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Application 13/115,165
porous coating (membrane) of Gu with a polymer coating for improved CO2
separation. Id. at 4.
Appellants contend that the Examiner erred by relying on disparate
teachings of membrane materials from membrane pore size in determining
that a cordierite membrane with a pore size within the claimed range would
have been obvious, without an express teaching of a cordierite membrane
having the recited pore size. App. Br. 9--10. Appellants further contend
that, from the teachings of the prior art, the skilled artisan could not have
made a cordierite membrane having the recited pore size without hindsight
gleaned from the present invention. Id.
Appellants point to their Specification as describing a process for
achieving a very small particle size, of less than 5 µm, for cordierite using a
new process combining attrition milling and jet milling. Id. at 10-12; see
also Gu Deel. ,r 10. Appellants also note that Jiang describes no processes
for forming a small median pore size membrane from cordierite and that Gu
only describes ball milling. App. Br. 9, 10-12.
The Specification states that "a final membrane having the desired
pore size" was not made from a cordierite powder having a particle size of
11.6 µm, but indicates that a membrane having a pore size of 1 µm was
made with a cordierite powder having a particle size of 4 µm, and thus the
Specification indicates a desire to use cordierite powder with a particle size
of 4 µm or less. Spec. ,r 48. Accordingly, the Specification is primarily
directed to a process for preparing a cordierite powder having a very small
particle size and "a relatively narrow particle size distribution" to produce
more predictable membranes. Id.
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Application 13/115,165
The Examiner responds that both Jiang and Gu teach the importance
of controlling pore sizes, and that Gu, in particular, teaches controlling
median pore size not only through particle size but also with the type and
size of pore-forming material and sintering conditions. Examiner's Answer
4, dated April 5, 2017 ("Ans.") (citing Gu ,r 72).
The Examiner further points to additional prior art as evidence that
one of ordinary skill in the art would have been capable of making a
cordierite layer with the claimed pore size. This additional art includes
Nakamura,9 which teaches a cordierite porous material having an average
pore diameter of 0.1 µm (0048), Kita, 10 which teaches a cordierite
honeycomb structure with a diameter of the pores preferably 0.1 to 100 nm
(0028), Hamaguchi, 11 which teaches cordierite honeycomb structural body
wherein not less than 80% pores have a diameter of0.5 to 5 µm (claim 3),
Harada, 12 which teaches a cordierite honeycomb structural body wherein the
total volume of pores having a diameter of 0.5 to 5 µmis not less than 40%
(abstract), and Sekhar, 13 which teaches a porous membrane wherein the pore
size can range from 0.1 µm to 500 µm (column 1, lines 9--17). Final Act. 10;
Ans. 6.
Appellants attack these references, collectively and specifically, as
being directed to the cordierite support structure (i.e. the cordierite monolith
substrate as recited in the claims), and not to a cordierite membrane, arguing
9 Nakamura et al, US 2008/0226544 Al, published September 18, 2008.
1° Kita et al, US 2006/0178265 Al, published August 10, 2006.
11 Hamaguchi et al, US 4,849,275, issued July 18, 1989.
12 Harada et al, US 4,869,944, issued September 26, 1989.
13 Sekhar et al, US 5,655,212, issued August 5, 1997.
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Application 13/115,165
that the ordinary artisan would have understood the difference between a
cordierite support structure and a cordierite membrane, for example by how
the two different structures are described in the Specification as being made
differently. App. Br. 15-18; Reply Br. 7-8.
We do not find Appellants' arguments persuasive of error in the
Examiner's determination of obviousness.
Initially, we note that the claim is directed to a product. Appellants
are arguing specific process steps for making the product which do not
appear in the language of the claims. See Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); In re Self, 671 F.2d
1344, 1348 (CCPA 1982) ("Many of appellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims.").
Moreover, even if the process steps were specifically recited in the
claims ( which is not the case here), it is the patentability of the product
defined by the claim, rather than the process for making it that we must
gauge in light of the prior art, SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1317 (Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985)); In re Wertheim, 541 F.2d 257,271 (CCPA 1976).
The claim does not provide any structural features of a cordierite membrane
to distinguish it from the prior art structures, such as any particular
membrane thickness. Nor does the Specification define membrane by any
particular thickness, as all recited membrane thicknesses are described as
merely exemplary. See Spec. ,r 60.
Finally, Appellants have not shown by a preponderance of the
evidence that one of ordinary skill in the art at the time of the invention was
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not enabled to make the cordierite membrane recited in the claims as
suggested by the prior art. Dr. Yunfeng Gu, who is a named inventor of the
Gu patent, testifies that "it is my opinion that one of ordinary skill in the art
would recognize that if an intermediate layer or coating with a small median
pore size was desired, one would use a material that could easily be milled
into fine particulate, such as, for example, zirconia or alumina" because "[i]t
is difficult to process cordierite into small particulate." Gu Deel. ,r,r 7-8
( emphasis added). This testimony is not persuasive because it does not
establish by a preponderance of the evidence that the difficulties of making
sufficiently fine cordierite particulates to make the small median pore size
were such that undue experimentation would have been required. Merely
providing an easier or more convenient process to achieve the claimed
invention, as described in the Specification, is insufficient to show that the
membranes suggested by the prior art are not within the level of ordinary
skill in the art.
The Gu patent teaches pore formation using materials which have a
particle size between 0.02 and 10 µm. Gu ,r 63. The Specification indicates
that a 1 µm pore size membrane can be made with a 4 µm particle size
cordierite, but that the "desired" pore sized membrane cannot be made with
an 11.6 µm particle size. The Specification is not sufficient to establish that
an upper limit particle size of 4 µm is critical to arriving at a pore size as
recited in the claims. In particular, the Specification provides no evidence to
establish that similar results could not be achieved with other particle sizes,
for example a particle size of slightly larger than 4 µm, such as 5 µm, which
is within the range taught by Gu. Further, such a teaching would conflict
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with Gu's expressly teaching that particle size is not the only property of the
material that determines the resulting membrane pore size. See Gu ,r 72.
Moreover, while Appellants attempt, unsuccessfully, to distinguish the
prior art referenced by the Examiner as teaching pore sizes only for
cordierite support structures and not cordierite membranes, Appellants fail to
contradict the Examiner's express finding that at least one reference, Sekhar,
is directed to a cordierite membrane in particular having a pore size of 0.1 to
500 µmusing a different method of manufacture. Ans. 6 ( citing, e.g.,
Sekhar, col. 1, 11. 9--17). No arguments or testimony of Dr. Gu expressly are
directed to distinguishing the teachings of Sekhar. Thus, considering the
entire record, the Examiner presented sufficient evidence that the claimed
structure can be achieved as suggested by the prior art, and the Appellants
have not met their burden to show that the described structure is not enabled
in the prior art.
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejections maintained by the Examiner. The Examiner's decision
to reject the claims on appeal is thus affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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