Ex Parte Kim et al

Patent Trial and Appeal Board

Aug 8, 2018

13629641 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/629,641 09/28/2012
26384 7590 08/08/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
WoohongKim
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.
101140-US2 6144
EXAMINER
SNELTING, ERIN LYNN
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
08/08/2018 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 WOOHONG KIM, GUILLERMO R. VILLALOBOS,
COLIN C. BAKER, JESSE A. FRANTZ,
LESLIE BRANDON SHAW, BRYAN SADOWSKI,
JASBINDER S. SANGHERA,
and ISHW ARD. AGGARWAL
Appeal2017-011105
Application 13/629,641
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1--4 and 6--8 under 35 U.S.C. § 103(a) as
unpatentable over Villalobos (U.S. Patent 7,449,238 Bl, issued Nov. 11,
1 Appellants identify the real party in interest as "The Government of the
United States of America, as represented by the Secretary of the Navy" (Br.
2).
Appeal2017-011105
Application 13/629,641
2008) in view of Chen (Qiwei Chen et al., "A novel co-precipitation
synthesis of a new phosphor Lu203:Eu3+," Journal of the European Ceramic
Society 27 (2007) 191-197) and Hosokawa (U.S. Patent 7,597,866 B2,
issued Oct. 6, 2009). We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim on appeal, is illustrative of the
subject matter:
1. A method for making a rare earth doped polycrystalline
ceramic laser gain medium, comprising:
mixing a rare earth doped polycrystalline powder with a
sintering aid;
hot pressing the rare earth doped polycrystalline powder
and sintering aid mixture at 1500-1700 °C for 2-6 hours at a
pressure of 50 MPa;
2 µm.
hot isostatically pressing the hot pressed mixture;
wherein the doping concentration is greater than 2%; and
wherein the grain size of the final ceramic is greater than
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's § 103 rejection because we are unpersuaded of reversible error
in the Examiner's determination of obviousness essentially for the reasons
set out by the Examiner in the Answer.
We add the following primarily for emphasis.
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Application 13/629,641
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellants' main arguments are that 1) Villalobos does not teach
mixing a rare earth doped polycrystalline powder with a sintering aid
because it creates a slurry and 2) Villalobos does not teach a single hot
pressing step because Villalobos discloses a ramped heating cycle (Br. 3).
None of the claims, however, specify that dry mixing is required or
that there is a single hot pressing step; these arguments, therefore, are
unavailing. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (it is well
established that limitations not appearing in the claims cannot be relied upon
for patentability). As pointed out by the Examiner, the claim 1 uses the
open-ended term "comprising" and thus does not preclude any of the
additional steps of Villalobos (Ans. 4--5).
Appellants have not directed our attention to any persuasive reasoning
or credible evidence to establish that the Examiner's interpretation that the
claim encompasses the applied prior art combination is unreasonable. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it is
well established that "the PTO must give claims their broadest reasonable
construction consistent with the specification" and if the Specification does
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Application 13/629,641
not provide a definition for claim terms, the PTO applies a broad
interpretation).
Thus, on this record, Appellants have not shown error in the
Examiner's determination that one of ordinary skill in the art, using no more
than ordinary creativity, would have used a known polycrystalline powder
form as exemplified in Chen for Villalobos' method and would have
modified the method of Villalobos/Chen by adding a hot isostatic pressing
step as taught by Hosokawa method for its known benefits (Ans. 2--4). KSR,
550 U.S. at 417 (the predictable use of known prior art elements or steps
performing the same functions they have been known to perform is normally
obvious; the combination of familiar elements or steps is likely to be
obvious when it does no more than yield predictable results); Ball Aerosol &
Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the
PTO must take account of the "inferences and creative steps," as well as
routine steps, that an ordinary artisan would employ).
Consequently, after consideration of Appellants' arguments, we are
unpersuaded of error in the Examiner's determination of obviousness.
Accordingly, we affirm the Examiner's prior art rejection under 35 U.S.C.
§ 103(a) of all the claims on appeal for the reasons given above and
presented by the Examiner.
DECISION
The Examiner's § 103 rejection is affirmed.
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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)(l).
AFFIRMED
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