Ex Parte Day et al

Patent Trial and Appeal Board

Jul 15, 2014

11605642 (P.T.A.B. Jul. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN P. DAY, ROBERT J. LOCKER, DAVID L. TENNENT,
and CHRISTOPHER J. WARREN
____________

Appeal 2013-000510
Application 11/605,6421
Technology Center 1700
____________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 8-10, 21-23, 25, 31-33, and 35-43.2
We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse.

1 According to Appellants, the real party in interest is Corning Inc. App. Br.
2.
2 In the Office Action Summary included in the Final Action dated
December 21, 2011 (hereinafter “Final Act.”), the Examiner lists claims 1-3,
8-10, 21-24, 30-33 and 35-43 as being rejected. The inclusion of claims 24
and 30, and the omission of claim 25 in this listing, however, appear to be
inadvertent errors. See Final Act. at 2-6.
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BACKGROUND
Appellants’ claimed invention is said to be directed to methods for
producing ceramic articles using “[a]luminum titanate precursor batch
compositions comprising a recycled aluminum titanate component.”
Abstract. The ceramic articles produced by the claimed methods are capable
of being used in high temperature filtration applications such as diesel
exhaust after-treatment systems and diesel particulate filters. Spec. ¶ 3.
Claims 1 and 31 are illustrative (key limitations in dispute italicized)
and reproduced below from the Claims Appendix:
1. A method for producing a ceramic article
comprised of a sintered phase aluminum titanate composition,
comprising the steps of:
providing a plasticized aluminum titanate precursor batch
composition comprising:
an inorganic batch composition containing an alumina
source, a silica source, and a titania source; a recycled green
aluminum titanate precursor composition; and a sintering aid;
an organic binder; and
a liquid vehicle;
wherein the recycled green aluminum titanate precursor
composition comprises at least one pore former; and
wherein the recycled green aluminum titanate precursor
composition comprises particles having a median particle
diameter in the range of about 10µm to about 50µm;
forming an extruded green body from the plasticized
aluminum titanate precursor batch composition; and
firing the formed green body under conditions effective
to convert the aluminum titanate precursor composition into a
ceramic composition comprising a sintered phase aluminum
titanate.
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31. A method for producing a ceramic article comprised
of a sintered phase aluminum titanate composition, comprising
the steps of:
providing a plasticized aluminum titanate precursor batch
composition comprising:
an inorganic batch composition containing an alumina
source, a silica source, and a titania source; a recycled pre-
reacted aluminum titanate composition containing a strontium
carbonate source and a calcium carbonate source; and a
sintering aid;
an organic binder; and
a liquid vehicle;
wherein the recycled pre-reacted aluminum titanate
composition comprises particles having a median particle
diameter in the range of about 8µm to about 55µm;
forming an extruded green body from the plasticized
aluminum titanate precursor batch composition; and
firing the formed green body under conditions effective
to convert the aluminum titanate precursor composition into a
ceramic composition comprising a sintered phase aluminum
titanate.
Appellants seek review of the following rejections:
1. Claims 1-3, 8, 21-23, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Noguchi (US 5,346,870, issued Sept. 13, 1994)
in view of Nagai (US 5,846,276, issued Dec. 8, 1998) and JAMES
S. REED, PRINCIPLES OF CERAMIC PROCESSING, 583 (1995).3

3 The Examiner and Appellants cite to this reference, but a copy is not
included in the record.
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2. Claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Noguchi in view of Harris (US 5,773,377, issued June 30,
1998).4
3. Claims 31-33, 35, and 38-435 under 35 U.S.C. § 103(a) as being
unpatentable over Noguchi in view of Nagai and Ogunwumi
(US 6,620,751 B1, issued Sept. 16, 2003).
4. Claims 36 and 37 under 35 U.S.C. § 103(a) as being unpatentable
over Noguchi in view of Nagai, Harris, and Ogunwumi.

FINDINGS OF FACT AND ANALYSIS
Independent claims 1, 21, 31, and 38 all require that the aluminum
titanate precursor composition comprises particles having a median particle
size within a specified range. In claims 1 and 21, that range is “about 10µm
to about 50µm,” and in claims 31 and 38 that range is “about 8µm to about
55µm.” See App. Br. 25-28 (Claims Appendix).
The Examiner acknowledges that Noguchi does not disclose an
aluminum titanate precursor having an average particle size of 10-50µm or
8-55µm. Final Act. at 4. The Examiner finds, however, that “Noguchi
teaches that the preferred average particle size is less than 5µm to ensure
reactivity between the raw materials to ensure rare earth titanate is

4 Although the Examiner does not list Nagai in the grounds of rejection, this
appears to be an inadvertent oversight as claims 9 and 10 are dependent on
claim 1, and the Examiner relies on the combination of Noguchi and Nagai
as the basis for rejecting claim 1. See Final Act. at 2-5.
5 The Examiner included claim 44 in the listing of rejected claims (Final
Act. 5), but Appellants cancelled claim 44 in the Amendment filed on
October 8, 2010.
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precipitated.” Id. The Examiner further finds that Nagai teaches a method
of making an aluminum titanate product using aluminum titanate powder as
an ingredient, and “discloses that the aluminum titanate powder have an
average particle size of 10µm.” Id. (citing Nagai, col. 5, ll. 61-63).
According to the Examiner,
[i]t would have been obvious to one of ordinary skill in the art,
at the time of invention by [Appellants], to have modified the
method of Noguchi as discussed above by using recycled
aluminum titanate powder having an average particle diameter
of 10µm as taught by Nagai . . . because Nagai teaches that
such a particle size is effective for forming an aluminum
titanate ceramic body.
Id. The Examiner further concludes that “Noguchi only teaches using a
particle size of under 5µm to ensure rare earth titanate is formed, when this
was not desired, there would be no reason to be bound by the preferred
teaching of Noguchi to use a particle size of less than 5µm.” Id.
Appellants argue that “the skilled artisan would have no motivation to
modify Noguchi by introducing raw materials having larger particle sizes as
taught by Nagai, at least because Noguchi teaches away from the use of
starting materials having a particle diameter larger than 5µm.” App. Br. 17-
18; see also id. at 21-22. Appellants contend that “a skilled artisan, when
reading the disclosure of Noguchi as a whole, would realize that the use of
fine powder starting materials [having a particle diameter equal to or less
than 5µm] is essential to achieve the aluminum titanate ceramic intended by
Noguchi.” Id. at 17. Appellants therefore argue that “[t]o characterize
Noguchi’s disclosure that the fine powder starting materials necessarily have
an average particle diameter of 5µm or less as merely a ‘preferred
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embodiment’ requires a complete and improper disregard of the entire
purpose of the invention of Noguchi.” Id.
Appellants also contest the Examiner’s finding that when forming a
rare earth titanate “was not desired, there would be no reason to be bound by
the preferred teaching of Noguchi to use particle size of less than 5µm.” Id.
at 18. Appellants argue that “the entire aim of Noguchi is to produce a rare
earth aluminum titanate ceramic having excellent casting properties and high
heat cycle durability” and point to Noguchi’s teaching that “[w]hen the
average particle diameters of the raw materials are larger than 5µm, the
reactivity between the raw materials is low and no rare earth titanate is
precipitated, giving an aluminum titanate ceramic of inferior heat cycle
durability.” Id. (citing Noguchi, col. 4, ll. 22-26). In view of this,
Appellants argue that “if a skilled artisan modified Noguchi to use larger
particle sizes, the entire purpose of Noguchi would be frustrated, and thus,
this modification is improper.” Id.; see also id. at 21-22.
In response, the Examiner maintains that the 5µm particle size
disclosed in Noguchi is only a preferred embodiment, and concludes that
“such a teaching of a preferred embodiment does not constitute teaching
away from using larger particle sizes, as Noguchi does not discourage or
teach against using larger particles.” Ans. 5.
“A prima facie case of obviousness can be rebutted if the applicant . . .
can show ‘that the art in any material respect taught away’ from the claimed
invention.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (citing In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)). Furthermore,
[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
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would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts . . . .

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
As Appellants point out, Noguchi describes aluminum titanate
ceramics containing, inter alia, a rare earth titanate, which have “superior
casting propert[ies] and high heat cycle durability.” Noguchi, col. 2, ll. 11-
15. Noguchi attributes the improved casting properties and high heat cycle
durability to the presence of the rare earth titanate which “takes the form of a
dendrite structure and exists at the boundaries between aluminum titanate
crystals and mullite crystals and binds them strongly.” Id. at col. 2, ll. 46-
49. Noguchi also discloses a relationship between the improved properties
and the particle size of the starting materials:
In the present invention, the use of fine powder starting
materials of 5 µm or less in average particle diameter enables
the production of intended aluminum titanate ceramic because
the use gives rise to (1) active reaction between TiO2 and rare
earth compound and (2) consequent formation of rare earth
titanate of dendrite structure at grain boundaries.
Id. at col. 2, ll. 60-66. Additionally, Noguchi teaches that
[w]hen the average particle diameters of the raw materials are
larger than 5 µm, the reactivity between the raw materials is
low and no rare earth titanate is precipitated, giving an
aluminum titanate ceramic of inferior heat cycle durability.
Id. at col. 4, ll. 22-26 (emphasis added).
In view of this, we find that one of ordinary skill in the art, after
reviewing Noguchi, would be discouraged from using starting materials
having particle sizes in the claimed ranges of about 10-50 µm or about 8-55
µm. Although Noguchi does state that “[t]he raw materials . . . preferably
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have an average particle diameter of about 5µm or less” (id. at col. 4, ll. 19-
22 (emphasis added)), Noguchi must be considered in its entirety. See W.L.
Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir.
1983)(finding error in “considering the references in less than their
entireties”), cert. denied, 469 U.S. 851 (1984); see also In re Hedges, 783
F.2d 1038, 1041 (Fed. Cir. 1986). Overall, Noguchi teaches that the 5µm
particle size “enables the production of intended aluminum titanate,” and
warns that the use of larger starting materials will lead to inferior products.
Moreover, other than the “preferred” language, the Examiner has not offered
any additional evidence in Noguchi suggesting that larger particle sizes
could be used. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); cf In re
Gurley, 27 F.3d at 553. As a result, we agree with Appellants that “the
skilled artisan would have no motivation to modify Noguchi by introducing
raw materials having larger particle sizes as taught by Nagai.” App. Br. 22.
Nor are we persuaded by the Examiner’s conclusion that “Noguchi
only teaches using a particle size of under 5µm to ensure rare earth titanate
is formed, when this was not desired, there would be no reason to be bound
by the preferred teaching of Noguchi to use a particle size of less than 5µm.”
Final Act. at 4. We agree with Appellants that the central aim of Noguchi is
the preparation of a rare earth aluminum titanate ceramic. As the
Examiner’s proposed modification would eliminate the rare earth feature, it
would render the Noguchi reference inoperable for its intended purpose. An
Examiner’s proposed modification of a prior art reference, however, cannot
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render that reference inoperable for its intended purpose. In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984).6
For all of the foregoing reasons, we conclude that Appellants have
demonstrated that the Examiner erred in rejecting claims 1-3, 8-10, 21-23,
25, 31-33, and 35-43 under 35 U.S.C. § 103(a).

CONCLUSION
We reverse the rejection under 35 U.S.C. § 103(a) of claims 1-3, 8-10,
21-23, 25, 31-33, and 35-43.

REVERSED

cdc

6 The Examiner offers no obviousness analysis in view of a finding that
Nagai is the closest prior art. Therefore, that issue is not before us in this
appeal.