Ex Parte Piber et al

Patent Trial and Appeal Board

Jun 21, 2016

13144646 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/144,646 08/16/2011
35811 7590 06/23/2016
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Monika Piber
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.
EHF-11-1235 7634
EXAMINER
FUREMAN, JARED
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONIKA PIBER and HERMANN GRUNBICHLER1
Appeal2015-000824
Application 13/144,646
Technology Center 2800
Before JEFFREY T. SMITH, JULIA HEANEY,
and DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16-21, 23-26, and 28-31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is EPCOS AG.
2 In our opinion below, we refer to the Final Action mailed March 13, 2013
("Final Act."), the Appeal Brief filed July 31, 2013 ("Br."), and the
Examiner's Answer mailed August 20, 2014 ("Ans.").
Appeal2015-000824
Application 13/144,646
The claims are directed to a varistor ceramic substantially free of
alkali metal compounds comprising zinc as a main component and a method
of producing same. Claims 16 and 24 are independent. Claim 16,
reproduced below, is illustrative of the claimed subject matter:
16. A varistor ceramic substantially free of alkali metal
compounds comprising:
Zn as a main component,
Pr in a proportion of 0.1 to 3 atom%, and
Bin a proportion of 0.001 to 5 atom%, all based on the
atom% of the ceramic.
Br. 11 (Claims App'x).
Cowman, et al.
("Cowman")
Matsuoka
Yoshida, et al.
("Y o.:;:h1r1~"\
\ ~~~iii~~ J
REFERENCES
US 2002/0024040 Al
US 2009/015367 Al
US 7,507,356 B2
REJECTIONS
The claims stand rejected as follows:
Feb.28,2002
Jan. 15,2009
Mar. 24, 2009
claims 16, 24, and 25 under 35 U.S.C. § 112, second paragraph as
indefinite;
claims 16-21, 23-26, and 28 under 35 U.S.C. § 102(b) over
Matsuoka;
claims 16-21, 23-26, and 28 under 35 U.S.C. § 103(a) over
Matsuoka;
claims 16-21, 23-26, and 28 under 35 U.S.C. § 103(a) over Yoshida
in view of Matsuoka;
2
Appeal2015-000824
Application 13/144,646
claims 29-31under35 U.S.C. § 103(a) over Matsuoka in view of
Cowman; and
claims 29-31 under 35 U.S.C. § 103(a) over Yoshida in view of
Matsuoka and Cowman.
OPINION
Appellants do not argue the rejections of claims under 35 U.S.C. §§
112, second paragraph and 102(b) in the Appeal Brief.
We summarily affirm these rejections which Appellants have not
argued in the Brief. Cf, e.g., In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.").
Rejection of claims 16--21, 23-26, and 28 under 35U.S.C.§103(a)
over Matsuoka3
3 When the claims are held to be indefinite, we normally do not assess the
propriety of rejections under 35 U.S.C. §§ 102 or 103. In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) ("Ifno reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious-the claim becomes indefinite."). However, in some instances, it is
possible to make a reasonable, conditional interpretation of claims adequate
for the purpose of resolving the patentability issues to avoid piecemeal
appellate review and in the interest of administrative and judicial economy.
See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte
Ionescu, 222 USPQ 537, 540 (BPAI 1984). In this case, we exercise our
discretion to address the obviousness rejections of record based on the
conditional interpretation given by the Examiner ("the ceramic varistor does
not comprise alkali metals or even further metals" (Final Act. 8)) in the
interest of administrative and judicial economy. See Ex parte Tanksley, 26
3
Appeal2015-000824
Application 13/144,646
Claims 16-21, 23-26, and 28 stand rejected as obvious over
Matsuoka. Final Act. 8; Ans. 2. Appellants' failure to separately argue
claims they have grouped together constitutes a waiver of any argument that
the Board must consider the patentability of any grouped claim separately.
In re Huai-Hung Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011). Accordingly,
claims 17-21, 23-26, and 28 stand or fall with claim 16. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
Matsuoka teaches a nonlinear resistor (varistor) ceramic composition
substantially free of alkali metal compounds (Matsuoka Fig. 7, Exs. 112,
127) comprising (1) zinc oxide (ZnO) as the major component (id. at i-f 8);
(2) praseodymium (Pr) in a range greater than 0.01 atomic% and less than
10 atomic % (id. at i-fi-1 16, 17); and (3) boron (B) in a range greater than or
equal to 0.0005 atomic% and less than or equal to 0.5 atomic% (id. at i-fi-1
19, 20). The ranges of Pr (0.1to3 atom%) and B (0.001 to 5 atom%) recited
in claim 16 encompass or overlap the ranges of these elements disclosed in
Matsuoka, creating a prima facie case of obviousness. In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) (primafacie case of obviousness may be
made when the only difference from the prior art is a difference in the range
or value of a particular variable); see also In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990); In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005).
Appellants argue that Matsuoka discloses a broad genus but not the
claimed species or subgenus and, under In re Baird, Matsuoka is inadequate
to support obviousness. Br. 3-4. The facts of In re Baird do not apply in
USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion to reach art
rejections despite indefiniteness where nature of case permitted).
4
Appeal2015-000824
Application 13/144,646
this case. The generic diphenol formula disclosed in a reference in Jn re
Baird was estimated to encompass more than 100 million different
diphenols, only one of which was the specific molecule claimed. In re
Baird, 16 F.3d 380, 382 (Fed. Cir. 11994). Here, Matsuoka is prior art for
all that it teaches (Beckman Instruments Inc. v. LKB Produkter AB, 892 F.2d
1547, 1551 (Fed. Cir. 1989)), including the ceramic composition described
above, that is encompassed by claim 16. Accordingly, Appellants'
argument is not persuasive of reversible error.
Appellants argue that Matsuoka fails to provide any particular
guidance with respect to a varistor comprising the claimed limitations. Br.
4. Appellants further argue that the vast majority of the Matsuoka examples
comprise an alkali metal compound and only two of the examples in
Matsuoka are "substantially free of alkali metal compounds." Id. at 5.
Having found above that Matsuoka describes to a person of ordinary skill in
the art a nonlinear resistor (varistor) ceramic composition that is
substantially free of alkali metal compounds, we also are not persuaded by
these arguments.
Rejection of claims 16-21, 23-26, and 28 under 35 U.S.C. § 103(a)
over Yoshida in view of Matsuoka
Regarding claim 16, the Examiner finds that Yoshida discloses a
varistor ceramic substantially free of alkali metal comprising zinc as a main
component (in the form of ZnO) and Pr in the claimed proportion, and that
Matsuoka teaches the proportion of boron claimed. Final. Act. 16-17.
Appellants contend that "no technical teaching [can] be gleaned from
the simple non-naming of alkali metal compounds in Claims 1 and 6 and
5
Appeal2015-000824
Application 13/144,646
Tables 1 and 2 of Yoshida." Br. 8. We disagree. Yoshida discloses
examples wherein the presence of an element is analyzed as an amount less
than 0.0000 atom% (see Yoshida comparative examples 1 and 13, examples
73-81 ), yet numerous examples do not include any amount of an alkali
metal. Yoshida also discloses that the non-linear resistance ceramic
composition preferably (not necessarily) comprises 0.001 to 1 atom% of
potassium, an alkali metal. Id. at 2:36-39. Yoshida further discloses that
potassium and other elements may be added to the basic structure of the
nonlinear resistance element layer. Id. at 4:33--40. Thus, Yoshida discloses
a nonlinear resistance ceramic composition wherein the composition does
not comprise alkali metals, meeting the claim element.
The Examiner further finds that one of ordinary skill in the art at the
time of the invention would have been motivated to combine the disclosure
of Yoshida with the teachings of Matsuoka, as the remaining claim elements
perform the same function (protect one's components from surge event) as
before, and this substitution involves only routine skill in the art. Final Act.
18. The Examiner's explanation of the reasons a person of ordinary skill in
the art would have had to combine the prior art teachings is sufficient when
an allowance is made for "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).
We do not find the Appellants' arguments persuasive to show
reversible error by the Examiner. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (explaining that even if the examiner had failed to make a prima facie
case, the Board would not have erred in framing the issue as one of
reversible error because it has long been the Board's practice to require an
6
Appeal2015-000824
Application 13/144,646
appellant to identify the alleged error in the examiner's rejections).
Therefore, we affirm the rejection of claims 16-21, 23-26, and 28 as obvious
over Yoshida in view of Matsuoka.
Rejection of claims 29-31 under 35 U.S.C. § 103(a) over (1)
Matsuoka in view of Cowman, or (2) Yoshida in view of Matsuoka and
Cowman
Appellants do not separately argue the patentability of claims 29-31
over Matsuoka in view of Cowman or over Yoshida in view of Matsuoka
and Cowman. Rather, Appellants merely state that "Cowman fails to cure
the deficiencies set forth [in the Appeal Brief] with respect to the
combination of Matsuoka with Yoshida." Br. 10.
For the reasons provided above with respect to claim 16, we affirm
the rejections.
DECISION
For the above reasons, the Examiner's rejection of claims 16-21, 23-
26, and 28-31 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)(l )(iv) (2009).
AFFIRMED
7