Ex Parte Munoz et al

Patent Trial and Appeal Board

Jun 1, 2018

13869406 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/869,406 04/24/2013
83571 7590 06/05/2018
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Deric Marc Munoz
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.
ORM-393US 1451
EXAMINER
MELENDEZ, ARMAND
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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):
usptodock@whe-law.com
mhines@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DERIC MARC MUNOZ, PHILIP BLAIR CORRIN,
BILLY CHIMAN YIM, and SIU-KAU TAM
Appeal2017-008126
Application 13/869,406
Technology Center 1700
Before JEFFREY B. ROBERTSON, JENNIFER R. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 6-11 and 13-24. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the applicant, Ormco Corporation, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed November 11,
2016 ("App. Br."), 3.
Appeal2017-008126
Application 13/869,406
STATEMENT OF THE CASE
Appellant claims a method of manufacturing an orthodontic
appliance. App. Br. 3. Claim 6, the only independent claim on appeal,
illustrates the subject matter on appeal and is reproduced below:
6. A method of manufacturing an orthodontic
appliance, comprising:
exposing a plurality of green bodies including sinterable
particles and a binder to a supercritical fluid in a pressure vessel
to remove at least some of the binder from the green bodies;
collecting the removed binder from the supercritical fluid
in a collection vessel separate from the pressure vessel as the
supercritical fluid transitions to a nonsupercritical fluid,
flowing the removed binder from the pressure vessel to
the collection vessel via a tube that couples the pressure vessel
to the collection vessel, and
heating the removed binder as the binder flows through
the tube.
App. Br. 16 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered June 16, 2016 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered March 2, 2017 ("Ans."):
I. Claims 6-8, 11, 13, 15, and 20-24 under 35 U.S.C. § 103(a) as
unpatentable over Nakajima et al. (US 4,731,208, issued March 15, 1988)
("Nakajima") in view of Durst et al. (US 5,271,903, issued December 21,
1993) ("Durst");
II. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Nakajima in view of Durst and Brandon D. Abeln, Effects of a Combined
Supercritical Extraction/Thermal Cycle on Binder Removal Cycle Time,
Yield, Residual Carbon, and Defect Formation in Multilayer Ceramic
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Application 13/869,406
Capacitors (December 2010) (on file with the University of Missouri-
Columbia) ("Abeln");
III. Claims 14 and 16 under 35 U.S.C. § 103(a) as unpatentable
over Nakajima in view of Durst and Abels et al. (US 2009/0169841 Al,
published July 2, 2009) ("Abels");
IV. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Nakajima in view of Durst and Roberto Martina, Recycling Effects on
Ceramic Brackets: A Dimensional, Weight and Shear Bond Strength
Analysis, 19 European Journal of Orthodontic, 629-636 (1997) ("Martina");
and
V. Claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable
over Nakajima in view of Durst and Thierry Chartier, Extraction of Binders
from Green Ceramic Bodies by Supercritical Fluid: Influence of the
Porosity, 22 Journal of the European Ceramic Society, 1403-1409 (2002)
("Chartier").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejections of
claims 6-11 and 13-24 under 35 U.S.C. § 103(a) for the reasons set forth in
the Appeal Brief and below.
We need consider only claim 6, the sole independent claim on appeal,
which requires the claimed method to comprise heating removed binder as it
flows through a tube that couples a pressure vessel to a collection vessel.
The Examiner finds that Nakajima discloses a method of
manufacturing a ceramic device that comprises exposing a plurality of green
bodies that include sinterable particles and a binder to a supercritical fluid in
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Application 13/869,406
a binder extraction vessel (pressure vessel) to remove at least some of the
binder from the green bodies. Final Act. 3 (citing Nakajima col. 2, 11. 55---68;
col. 4, 11. 13-22; Fig. 1). The Examiner finds that Nakajima discloses
flowing the binder and supercritical fluid from the binder extraction vessel
(pressure vessel) to a pressure reducing apparatus, and flowing the removed
binder and fluid from the pressure reducing apparatus to a separator
(collection vessel) via a tube. Final Act. 3--4 (citing Nakajima col. 4, 11. 23-
31; Fig. 1 ).
The Examiner finds that Nakajima discloses that "separation of the
binder from the supercritical fluid can be achieved by either 'reducing the
pressure at the constant temperature, or elevating the temperature at the
constant pressure.'" Ans. 2 (citing Nakajima col. 3, 1. 37--40). The
Examiner determines that one of ordinary skill in the art would have
concluded from this disclosure that, due to the pressure reduction that occurs
in Nakajima's pressure reducing apparatus and lack of any disclosure in
Nakajima of reducing pressure in the separator, the supercritical fluid would
be converted in part to a non-supercritical fluid in the pressure reducing
apparatus, and the binder would therefore "necessarily" separate at least
partially from the non-supercritical fluid before the fluid enters the separator.
Final Act. 4; Ans. 2. The Examiner finds that Nakajima discloses collecting
the removed binder from the fluid in the separator (collection vessel) as the
remaining supercritical fluid transitions to a non-supercritical fluid. Final
Act. 3 (citing Nakajima col. 4, 11. 23-31; Fig. 1 ).
The Examiner finds that although "Nakajima generally teaches heat
influences the solubility of the solute within the solvent fluid," Nakajima
does not explicitly disclose heating the removed binder as it flows through
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Application 13/869,406
the tube from the pressure reducing apparatus to the separator (collection
vessel), and the Examiner relies on Durst to address this feature. Final
Act. 3 (citing Nakajima col. 3, 11. 21-34). The Examiner finds that Durst
discloses applying heat to tubing in a supercritical fluid extraction restrictor
and collection system to prevent deposition of solute in the tubing that can
clog the tubing. Final Act. 3 (citing Durst col. 3, 1. 59---col. 4, 1. 18; col. 9, 11.
8-1 7). The Examiner concludes that "It would have been obvious to one of
ordinary skill in the art at the time of the claimed invention to have included
in the method of Nakajima heating the tubing" from the pressure reducing
apparatus to the separator (collection vessel) as taught by Durst to prevent
clogging "from the partial separation that necessarily occurred within
Nakajima." Final Act. 3; Ans. 2.
However, Nakajima explains that the ability of a supercritical fluid to
function as a solvent for a substance being extracted (binder) results from an
increase in the density of the fluid when it is in the supercritical state (due to
exposure to a temperature above the critical temperature and a pressure
above the critical pressure). Col. 3, 11. 13-21; col. 4, 11. 35-38, 43--49.
Nakajima further explains that when the pressure is extremely high, the
solubility of the substance being extracted (binder) in the supercritical fluid
increases with an increase in the temperature, but "when the pressure is not
so high, the solubility will decrease with the increase of the temperature. In
this case, the density of the supercritical fluid is significantly decreasing."
Col. 3, 11. 22-34 (emphasis added).
One of ordinary skill in the art would have understood from these
disclosures that reducing the pressure of a fluid in the supercritical state does
not necessarily result in transition of the fluid into a non-supercritical state.
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Rather, Nakajima's disclosures would have implicitly indicated to one of
ordinary skill in the art that the pressure of a fluid in the supercritical state
can be reduced while maintaining the fluid in the supercritical state.
Therefore, one of ordinary skill in the art would have understood that the
pressure of the supercritical fluid that exits Nakajima's binder extraction
vessel (pressure vessel) could be reduced in the pressure reducing apparatus
while still maintaining the fluid in the supercritical state, so that the fluid
would be in the supercritical state when it enters the separator.
Nakajima further discloses that "[t]he supercritical fluid in which
binder materials are dissolved is transferred through a pressure reducing
apparatus to a separator having a temperature control means where the
density of the fluid will be reduced so as to loose [sic] a dissolving power
and to isolate the binder materials from the fluid in a separator." Col. 4,
11. 23-28 (reference numerals omitted) (emphasis added). Nakajima thus
explicitly describes reducing the density of the supercritical fluid in the
separator (by heating the fluid), causing the fluid to no longer solubilize the
binder (lose its dissolving power), resulting in isolation (separation) of the
binder from the fluid in the separator.
Nakajima thus implicitly discloses that the pressure of the
supercritical fluid can be reduced in the pressure reducing apparatus while
still maintaining the fluid in the supercritical state, and explicitly discloses
separating the binder from the fluid in the separator by reducing the density
of the fluid in the separator. In view of these disclosures, the Examiner does
not provide a sufficient factual basis to establish that the supercritical fluid
would be converted in part to a non-supercritical fluid in the pressure
reducing apparatus, and the binder would separate at least partially from the
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Application 13/869,406
non-supercritical fluid before the fluid enters the separator. In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.")
It follows that the Examiner does not provide sufficient technical
reasoning grounded in objective evidence to establish that one of ordinary
skill in the art would have been led to heat the tubing running from
Nakajima's pressure reducing apparatus to Nakajima's separator (collection
vessel) as taught by Durst. Therefore, the Examiner fails to establish a
prima facie case of obviousness of the subject matter recited in claim 6
within the meaning of 35 U.S.C. § 103(a).
The other prior art cited in Rejections II-V does not cure the
deficiencies noted above with respect to Nakajima.
We accordingly do not sustain the Examiner's rejections of claims 6-
11 and 13-24 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 6-11 and 13-24 under
35 U.S.C. § 103(a).
REVERSED
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