Ex Parte Morita et al

Patent Trial and Appeal Board

Dec 10, 2018

14190868 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/190,868 02/26/2014
134795 7590 12/12/2018
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Kinichi Morita
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.
880305-0171-USOO 1311
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
DCipdocket@michaelbest.com
sbj ames@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KINICHI MORITA, TOSHIKAZU KAWAGUCHI,
KATSUAKI SHIMAZU, and TADAO KIMIJIMA
Appeal2017-009967
Application 14/190,868
Technology Center 1700
Before JAMES C. HOUSEL, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 3-8, and 10-22, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed
February 26, 2014 ("Spec."); Final Office Action dated October 25, 2016
("Final Act."); Appeal Brief filed January 25, 2017 ("Appeal Br.");
Examiner's Answer dated May 18, 2017 ("Ans."); and Reply Brief filed
July 18, 2017 ("Reply Br.").
2 Appellant is Applicant, U shio Denki Kabushiki Kaisha (Bib Data Sheet 1 ),
which is also identified as the real party in interest (Appeal Br. 3).
Appeal2017-009967
Application 14/190,868
The Claimed Invention
Appellant's disclosure relates to methods for forming a titanium oxide
film on a surface of a molded product composed of a glass. Spec. 1;
Abstract. Claims 1 and 10 are illustrative of the claimed subject matter on
appeal and are reproduced below from the Claims Appendix to the Appeal
Brief:
1. A method for forming a titanium oxide film on a
surface of a molded product, the method comprising:
a step (a) of introducing a hydroxy group onto the
surface;
a step (b) of removing a reaction inhibitor from the
surface, the reaction inhibitor inhibits formation of the
titanium oxide film on the surface;
a step (c) of irradiating light onto the surface, the
light includes ultraviolet light having a wavelength of
200 nm or less in an atmosphere containing oxygen and
water; and
a step ( d) of immersing the surface into a mixed
liquid of an aqueous solution of titanium chloride and a
nitrite ion-containing aqueous solution,
wherein the step (a) and the step (b) are carried out
by the step ( c ), the step (c) is performed before the step
(d).
Appeal Br. 22 (key disputed claim language bolded and italicized).
10. A method for forming a titanium oxide film on a
surface of a product, the method comprising:
a step of irradiating ultraviolet light in an
atmosphere containing oxygen and water; and
a step of drenching the surface with a mixed liquid
that includes an aqueous solution of a titanium chloride,
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Application 14/190,868
wherein a light source irradiates the ultraviolet
light onto the surface during the step of irradiating the
ultraviolet light.
Appeal Br. 23 (key disputed claim language bolded and italicized).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Ko bori et al.,
("Kobori")
Toyoda
US 2007/0298190 Al Dec. 27, 2007
US 7,776,397 B2 Aug. 17, 2010
J. Vig, UV/ozone cleaning of surfaces, J. Vac. Sci. Technol. A 3 (3),
1027-1034 (May/June 1985) ("Vig").
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1, 3-5, 7, 8, and 10-22 are rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement ("Rejection 1 "). Final
Act. 3.
2. Claims 1, 3-8, and 10-22 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Kobori in view of Toyoda
and Vig ("Rejection 2"). Final Act. 4--5.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact-finding and reasoning set forth in the Answer
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Application 14/190,868
and Final Office Action, which we adopt as our own. We highlight and
address specific findings and arguments below.
Rejection 1
Claims 1. 3-5. 7. and 8
Appellant argues claims 1, 3-5, 7, and 8 as a group. Appeal Br. 8; see
also Reply Br. 4--5. We select claim 1 as representative and claims 3-5, 7,
and 8 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects claim 1 for failing to comply with the written
description requirement. Final Act. 3. In particular, the Examiner finds that
"[t]here is no support in the specification for any embodiment wherein the
substrate is anything other than a molded glass substrate ... as claimed in
Claim 1." Id. at 3. In other words, the Examiner finds that adequate written
descriptive support is not provided in the Specification for the "molded
product" recitation of claim 1 encompassing anything other than a molded
glass substrate. Id. at 3.
Appellant argues that the Examiner's rejection should be reversed
because the term "molded product" is found only in the preamble of the
claim (Appeal Br. 8) and the "preamble neither requires specific structure
nor suggests a particular function" (id. at 9) ( citation omitted). Appellant
argues that because a word search of the Specification reveals that there are
over ninety (90) instances of the term "molded product,"
the skilled artisan would have reasonably concluded that no
undue experimentation would have been required to practice the
claimed invention especially upon review of the drawing
figures and the written description within the specification for
the claims ... [and] support for each and every claimed feature
can be found in the written description within the originally
filed specification.
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Application 14/190,868
Id. at 9; see also Reply Br. 5-6. Appellant also argues that the Examiner's
rejection "appears to be nothing more than an overt attempt to narrow the
scope of the claims in the absence of any prior art." Appeal Br. 9 (emphasis
omitted); Reply Br. 7.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. The test for an adequate written description
"requires an objective inquiry into the four comers of the specification from
the perspective of a person of ordinary skill in the art ... [ and] [b ]ased on
that inquiry, the specification must describe an invention understandable to
that skilled artisan and show that the inventor actually invented the invention
claimed." Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane). Moreover, the "prior application itself
must describe an invention, and do so in sufficient detail that one skilled in
the art can clearly conclude that the inventor invented the claimed invention
as of the filing date sought." Lockwood v. American Airlines Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997). The applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
On the record before us, we agree with the Examiner's determination
that the Specification as filed does not provide written description support
for the "molded product" recitation of claim 1 encompassing anything other
than a molded glass substrate. As the Examiner finds (Ans. 3--4), although
the term "molded product" does appear over ninety times in the
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Application 14/190,868
Specification, the term is always used in the context of or in close
association with glass or being composed of glass. See, e.g., Spec. 1
( describing "a molded product composed of a glass"), 11 ( disclosing that the
"base material ... is a molded product composed particularly of glass" and
"a titanium oxide film can be formed on the molded product composed of
glass"), 14 ( describing "a surface of a molded product composed of glass"),
19 (same). As the Examiner further finds (Ans. 5), claims 1-3 of the
original Specification as filed (Spec. 45--46), all recite "A method for
forming a titanium oxide film on a surface of a molded product composed of
a glass."3
Appellant's arguments do not reveal reversible error in the
Examiner's analysis and findings in this regard. Appellant's argument that
the "preamble neither requires specific structure nor suggests a particular
function" (Appeal Br. 9) is misplaced because the fact that the preamble of
claim may not recite a specific structure or function does not necessarily
mean that adequate written descriptive support need not be provided in the
as-filed specification for the full scope of the claim.
We do not find Appellant's argument regarding the Examiner's
rejection being "nothing more than an overt attempt to narrow the scope of
the claims in the absence of any prior art" (Appeal Br. 9) persuasive because
it is conclusory and not supported by any evidence in the record. As the
Examiner correctly points out (Ans. 5), Appellant's argument in this regard
is belied by the fact that a rejection based on prior art (see Rejection 2 (Final
3 We note that the Specification is also titled "METHOD FOR FORMING
TITANIUM OXIDE FILM ON SURFACE OF MOLDED PRODUCT
COMPOSED OF GLASS" (Spec. 1 ).
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Application 14/190,868
Act. 4--5)) was of record at the time the Examiner's rejection for lack of
written was made.
Moreover, none of the portions of the Specification that Appellant
cites provide sufficient written descriptive support for the claimed molded
product being something other than a molded glass substrate. See Reply
Br. 6 ( citing Spec. 1, 1. 6, 11, 1. 17, Abstract). Rather, when read in context,
those portions cited actually support the Examiner's position. See Spec. 1, 1.
6 ( disclosing "a surface of a molded product composed of a glass"), 11, 1. 17
( disclosing a "surface of a base material W which is a molded product
composed of a glass"), Abstract ( describing that "a surface of a molded
product composed of a glass is irradiated with ultraviolet light in an air
atmosphere in step O"). Appellant also specifically discusses and refers to
the "molded product" according to the invention on page 32 of the
Specification as "the molded product composed of a glass." In addition,
Appellant discusses that the method involves cleaving a siloxane bond on
the glass to expose the oxygen bound to silicon on the glass surface to bind
hydrogen to form a hydroxyl group (Spec. 11 ), which is then exposed to a
TiCl/NaN solution to convert the hydroxyl group to a TiO bond to bind the
titanium oxide film to the glass (id. at 12). This description appears limited
to glass products, further supporting the Examiner's position.
Claims 10-22
Appellant argues claims 10-22 as a group. Appeal Br. 10; see also
Reply Br. 5. We select claim 10 as representative and claims 11-22 stand or
fall with claim 10. 37 C.F.R. § 4I.37(c)(l)(iv).
For the same reasons discussed above for claim 1, the Examiner finds
that adequate written descriptive support is not provided in the Specification
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Application 14/190,868
for the "product" recitation of claim 10 encompassing anything other than a
molded glass substrate. Final Act. 3.
Although Appellant argues for reversal of the Examiner's rejection of
claim 10 for lack of written description under a separate heading, Appellant
repeats and relies on principally the same arguments previously presented in
response to the Examiner's rejection of claim 1 for lack of written
description. Compare Appeal Br. 10-11 (claim 10) with, Appeal Br. 8-9
( claim 1 ). We do not find these arguments persuasive of reversible error for
the same reasons previously discussed above in affirming the Examiner's
rejection of claim 1 for lack of written description.
Appellant's assertion that "the skilled artisan would have reasonably
concluded that no undue experimentation would have been required to
practice the claimed invention" (Appeal Br. 11) is not persuasive because it
is conclusory and appears to be addressed to whether the claim invention is
enabled, rather than the Examiner's rejection for lack of written description.
Accordingly, we affirm the Examiner's rejection of claims 1, 3-5, 7,
8, and 10-22 for failing to comply with the written description requirement.
Rejection 2
Claims 1 and 3-8
Appellant argues claims 1 and 3-8 as a group. Appeal Br. 11; see
also Reply Br. 9-10. We select claim 1 as representative and claims 3-8
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Kobori, Toyoda,
and Vig suggests a method of producing metal oxide film satisfying all of
the steps of claim 1 and thus, concludes that the combination would have
rendered the claimed method obvious. Final Act. 4--8 ( citing Kobori,
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Application 14/190,868
Abstract, ,r,r 10, 18, 21, 37, 38, 42, 45, 46, 50, 60-64; Toyoda, Abstract, col.
11, 11. 46-51, 51-55, 61---64; Vig 1027-1028, 1030, Fig. 1).
The Examiner finds that the combination of Kobori and Toyoda
teaches or suggests the majority of the steps of claim 1, but that neither
Kobori nor Toyoda expressly discloses irradiating "in an atmosphere
containing oxygen and water," as recited in step ( c) of the claim. Id. at 7.
The Examiner, however, relies on Vig for teaching or suggesting this
missing limitation. In particular, the Examiner finds that Vig teaches a
method for using UV radiation to generate ozone and then radical oxygen
from air in order to remove contaminants from substrates, that the UV
source is a low-pressure mercury lamp, and that the UV radiation is directed
onto the substrate. Id. at 7 (citing Vig 1027-1028, Fig. 1). The Examiner
further finds that Vig teaches that the use of "moist air" ( e.g., air bubbled
through water) was known in the art at the time of the invention to be used
as a process environment and advantageously shown to produce a cleaning
rate enhancement. Id. at 8 ( citing Vig 1030).
Based on the above findings, the Examiner concludes that
it would have been obvious to a person having ordinary skill in
the art at the time the invention was made to have modified the
invention ofKobori '190 I Toyoda '397 to include the UV
treatment apparatus of Vig, as Toyoda '397 wants to use UV
radiation to generate ozone and clean a substrate and Vig
teaches a UV treatment apparatus which is suitable for the
purpose.
Final Act. 7-8.
Appellant principally argues that the Examiner's rejection should be
reversed because each of the cited references, respectively,
fails to disclose, teach, or suggest the step ( c) of irradiating light
onto the surface being performed before a step ( d) of immersing
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Application 14/190,868
the surface into a mixed liquid of an aqueous solution of
titanium chloride and a nitrite ion-containing aqueous solution,
with the light in step ( c) including ultraviolet light having a
wavelength of 200 nm or less in an atmosphere containing
oxygen and water.
Appeal Br. 14--16; see also Reply Br. 12-14, 16 (same). In other words,
Appellant contends that none of the references teaches or suggests that "the
step ( c) is performed before the step ( d)" or "irradiating light onto the
surface ... in an atmosphere containing oxygen and water," as recited in the
claims.
Appellant also contends that the Examiner's rejection lacks
"articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness" as required by KSR because the rejection fails to
show "prior knowledge in the art" of claims steps ( c) and ( d) being
performed in the manner claimed. Appeal Br. 17; Reply Br. 15-16.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination (Final Act. 4--8; Ans. 6-8) that the
combination of Kobori, Toyoda, and Vig suggests a method satisfying all of
the steps of claim 1, and the Examiner's conclusion that the combination
would have rendered the claimed method obvious. Kobori, Abstract, ,r,r 10,
18, 21, 37, 38, 42, 45, 46, 50, 60-64; Toyoda, Abstract, col. 11, 11. 46-51,
51-55, 61---64; Vig 1027-1028, 1030, Fig. 1.
Appellant's principal argument that none of the references teaches or
suggests "step ( c) ... being performed before a step ( d)" and "in an
atmosphere containing oxygen and water" (Appeal Br. 14--16; Reply
Br. 12-14, 16) is not persuasive because, as the Examiner correctly points
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Application 14/190,868
out (Ans. 7), it is premised on what Appellant contends each reference
teaches individually and not on the combined teachings of the references as
a whole and what the combined teachings would have suggested to one of
ordinary skill in the art. One cannot show non-obviousness by attacking
references individually where the rejection is based on a combination of
references. In re Keller, 642 F.2d 413,425 (CCPA 1981).
As the Examiner explains at pages 7-8 of the Answer and contrary to
what Appellant argues, the Examiner relies on Toyoda for disclosing the
claimed order of steps (see Toyoda, col. 11, 11. 61---64) and relies on Vig for
disclosing or suggesting the claimed atmosphere containing oxygen and
water (see Vig 1027-1028, 1030 (disclosing that the use of "moist air" as a
known and advantageous processing environment)).
We do not find Appellant's contention regarding the requirements
under KSR and that the Examiner's rejection fails to show "prior knowledge
in the art" (Appeal Br. 17; Reply Br. 15-16) persuasive of reversible error
based on the fact-finding and reasoning provided by the Examiner at
pages 7-8 of the Answer and Final Office Action.
In particular, on the record before us, we find that the Examiner does
provide a reasonable basis and identifies a preponderance of the evidence in
the record to evince why one of ordinary skill would have combined the
teachings of the cited references to arrive at Appellant's claimed invention.
Final Act. 7-8. See also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420
(2007) ( explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed).
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
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reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. Appellant's assertion that the Examiner's rejection fails to
show prior knowledge in the art is conclusory and, without more,
insufficient to establish reversible error. Attorney argument is not evidence.
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Claims 10-22
Appellant argues claims 10-22 as a group. Appeal Br. 18; see also
Reply Br. 17. We select claim 10 as representative and claims 11-22 stand
or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Kobori, Toyoda,
and Vig suggests a method satisfying all of the steps of claim 10 and thus,
concludes that the combination would have rendered claim 10 obvious.
Final Act. 9-11 (citing Kobori, Abstract, ,r,r 10, 18, 21, 37, 38, 42, 45, 46,
50, 60-64; Toyoda, Abstract, col. 11, 11. 46-51, 51-55, 61---64; Vig 1027-
1028, 1030, Fig. 1 ).
In response to the Examiner's rejection of claim 10, Appellant repeats
and relies on principally the same arguments previously presented in
response to the Examiner's rejection of claim 1. Compare Appeal Br. 18-21
and Reply Br. 17-19 with, Appeal Br. 11-17 and Reply Br. 10-16. We do
not find these arguments persuasive of reversible error for the same reasons
previously discussed above in affirming the Examiner's rejection of claim 1
as obvious over the combination of Kobori, Toyoda, and Vig.
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 8-9 of the Answer and pages 9-11 of the Final Office
Action, we concur with the Examiner's determination that the combination
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of Kobori, Toyoda, and Vig suggests a method satisfying all of the steps of
claim 10, and the Examiner's conclusion that the combination would have
rendered claim 10 obvious. Kobori, Abstract, ,r,r 10, 18, 21, 37, 38, 42, 45,
46, 50, 60-64; Toyoda, Abstract, col. 11, 11. 46-51, 51-55, 61---64; Vig
1027-1028, 1030, Fig. 1.
Accordingly, we affirm the Examiner's rejection of claims 1, 3-8, and
10-22 under 35 U.S.C. § 103(a) as obvious over the combination ofKobori,
Toyoda, and Vig.
DECISION/ORDER
The Examiner's rejections of claims 1, 3-8, and 10-22 are affirmed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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