Ex Parte Inoue et al

Patent Trial and Appeal Board

Jun 27, 2013

11826440 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/826,440 07/16/2007 Dai Inoue SH-0086PCTUS 2395
21254 7590 06/27/2013
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
06/27/2013 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 DAI INOUE and MAKOTO YOSHIDA
____________

Appeal 2012-004235
Application 11/826,440
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004235
Application 11/826,440

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Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 2, and 13-15 as unpatentable
over Kazutama (JP 07-025638 A published Jan. 27, 1995; as computer
translated) in view of Shimada (US 2002/0020193 A1 published Feb. 21,
2002). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appellants claim a method for manufacturing quartz glass which
comprises forming a soot deposition member 5, which includes an effective
portion and ineffective portions 51, 52 formed at both ends of the effective
portion, by depositing soot onto a starting member 2 wherein an ineffective
portion 51 is formed by setting a peripheral speed of the surface of the
starting member to 2.0m/minute or below during a time from deposition start
until the outer diameter of the soot deposition member is stabilized (sole
independent claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
1. A manufacturing method of quartz glass, said method
comprising:
forming a soot deposition member that includes an
effective portion having a substantially constant outer diameter
and being to become a material of a glass product and
ineffective portions formed at both ends of the effective portion
and having an outer diameter changing in a tapering form, by
depositing soot to a starting member being raised while
rotating, the soot being generated by flame hydrolysis of a raw
material gas,
wherein said forming the soot deposition member
comprises:
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Application 11/826,440

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an ineffective portion forming of an ineffective
portion by setting a peripheral speed of a surface of the starting
member to 2.0m/minute or below, during a time from
deposition start of the soot onto the starting member and until
the outer diameter of the soot deposition member is stabilized;
and
an effective portion forming of the effective
portion by rotating the starting member and the soot deposition
member at a rotation speed appropriate for forming the
effective portion, after the stabilization of the outer diameter of
the soot deposition member, and
wherein the rotation speed appropriate for forming the
effective portion is greater than a rotation rate to obtain the
peripheral speed of 2.0m/minute.
Appellants do not present separate arguments specifically directed to
the dependent claims. Therefore, the dependent claims will stand or fall
with sole independent claim 1.
We will sustain the above rejection for the reasons expressed in the
Answer and below.
The Examiner finds that Kazutama discloses a method for
manufacturing quartz glass which comprises forming a soot deposition
member having an effective portion and ineffective portions at the top and
bottom ends of the effective portion (Ans. 4-5). The Examiner additionally
finds that "Kazutama further teaches slowing down the rotation speed . . .
when forming a bottom ineffective portion . . . so that better adhesion of the
soot is promoted and prevents cracking or loosening of the deposited soot
(abstract, [0002]-[0006])" (id.). Appellants concede the accuracy of the
Examiner's additional finding by reiterating this aspect Kazutama's teaching
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Application 11/826,440

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(App. Br. 11).1 The Examiner concludes that it would have been obvious to
likewise slow down rotation speed when forming a top ineffective portion at
the start of Kazutama's deposition "so as to ensure better adhesion of the
soot body [i.e., the soot deposition member] onto the starting member at
both ends of the soot body" (Ans. 5).
Appellants contest this obviousness conclusion by arguing that the
inertial force problem discussed by Kazutama which may develop when
forming the bottom ineffective portion of a soot body "is not so serious . . .
at the beginning of soot deposition" (App. Br. 11; underlining removed).
This argument is not persuasive. For the reasons detailed by the
Examiner, it would have been desirable and obvious to slow down rotation
speed in order to promote better adhesion at the top as well as bottom
ineffective portions (Ans. para. bridging 9-10).
The Examiner also finds that Kazutama discloses "a reduced
rotational speed of about 10-30rpm, when forming the ineffective portion
([0013])" (id. at 5) but "does not indicate a diameter of the starting member,
from which the peripheral speed can be calculated" (id.). In this latter
regard, the Examiner finds that Shimada teaches a starting member diameter
of 25mm and concludes that "[i]t would have been obvious . . . to have
expected a similar diameter of the starting member of Kazutama, as

1 In their Reply Brief, Appellants contradict this concession by presenting a
new argument that "Kazutama does not teach or suggest any technical
concept for improving the adhesion of the soot to the starting member"
(Reply Br. 7). We will not consider this new argument in the Reply Brief
because Appellants have not shown good cause explaining why the
argument could not have been presented in the Appeal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
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Application 11/826,440

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suggested by Shimada, as such diameters are common and known in the art
. . . [thereby] resulting in a peripheral speed of less than 1.5m/min during the
formation of the ineffective portion" (id. at 5-6).
Appellants argue that their Specification examples show a slower
rotation of 1.3 m/minute prevents soot deposition members from dropping
off the starting members whereby these examples "demonstrate the
criticality and the unexpected result of the claimed range of '2.0 m/minute or
below'" (App. Br. 8). Appellants acknowledge that "the range of 10-30 rpm
disclosed in paragraph [0013] of Kazutama includes peripheral speeds
greater than 2.5 m/minute and peripheral speeds less than 1.3 m/minute
(according to the Examiner's assumption of a 25 mm diameter)" (id.).
Nevertheless, Appellants argue that, "since Kazutama does not indicate or
suggest a preference for any particular value within the range of 10-30 rpm,
a person having ordinary skill in the art would not have been inclined to
choose a value that satisfies the claimed limitation of '2.0 m/minute or
below'" (id.).
Appellants' argument lacks convincing merit for a number of reasons.
First, Appellants have not explained why their Specification examples are
considered to demonstrate an unexpected result and are considered to be
commensurate in scope with claim 1. In fact, based on the record before us,
it appears that the above mentioned result would have been expected in light
of the Examiner's and Appellants' shared determination that Kazutama
teaches promoting better adhesion by slowing the rotation speed (see App.
Br 11 and Ans. 4-5). Second, contrary to Appellants' belief, an artisan
would have chosen, for example, a value of 10 rpm from Kazutama's 10-
30 rpm range because Kazutama teaches that the values in this range yield
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Application 11/826,440

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desirable results (e.g., better adhesion) when forming an ineffective portion
of the soot deposition member.

For the reasons given above and in the Answer, we sustain the § 103
rejection of claims 1, 2, and 13-15 as unpatentable over Kazutama in view of
Shimada.

The decision of the Examiner is 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)(1).

AFFIRMED

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