Ex Parte Saito et alDownload PDFPatent Trial and Appeal BoardMar 27, 201310532586 (P.T.A.B. Mar. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENJI SAITO and TAMAO HIGUCHI ____________ Appeal 2010-004934 Application 10/532,586 Technology Center 3700 ____________ Before JOHN C. KERINS, PHILLIP J. KAUFFMAN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004934 Application 10/532,586 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 4-11, and 17-19. Claims 2, 3, 12, 13, 15, and 16 are cancelled. Claim 14 is withdrawn. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 1, 11, and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A surface-treating process comprising: mechanically polishing an inner surface of a vacuum member in the presence of a liquid medium, or a liquid medium and an oxidizing material, wherein the liquid medium includes no hydrogen atom, wherein the vacuum member is made of one kind or two or more kinds selected from the group consisting of niobium, titanium, stainless steel, copper, aluminum and iron, and wherein the liquid medium including no hydrogen atom is a liquid at an ordinary temperature and an ordinary pressure and a saturated hydrocarbon in a molecule of which a hydrogen atom or hydrogen atoms are all substituted with a fluorine atom or fluorine atoms. Claim 11 is directed to “[a] forming process for a vacuum member” and claim 17 is directed to “[a] surface-treating process”, and both claims call for the identical liquid medium as recited in claim 1. Appeal 2010-004934 Application 10/532,586 3 REJECTIONS Claims 1, 4-11, and 17-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Higuchi (JP 2000-71164 A, publ. Mar. 7, 2000), Noguchi (JP 11-350200 A, publ. Dec. 21, 1999), Yoneda (JP 11-329896 A, publ. Nov. 30, 1999), and Miller (US 2,951,096, iss. Aug. 30, 1960).1 Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Higuchi, Noguchi, Yoneda, Miller, and Tsuchiya (US 2002/0093002 A1, iss. Jul. 18, 2002). OPINION The Examiner finds that Higuchi and Noguchi each disclose a surface treating process for the inner surface of a vacuum member with a liquid medium but the liquid mediums of both Higuchi and Noguchi include hydrogen atoms. Ans. 3. The Examiner finds that “Yoneda teaches of providing a solution intermingled with a polishing medium (Paragraph 8), said non-aqueous solution being formed from various types of fluorocarbons (Paragraph 12).”2 Ans. 4. The Examiner further finds that “Miller teaches that perfluorocarbons can be formed from saturated or unsaturated hydrocarbons (Column 1, Line 32) at various temperatures (Column 3, Lines 47-49) and pressures. (Column 4, Lines 1-5), since perfluorocarbons are examples of fluorocarbons which have had all their hydrogen atoms replaced by fluorine atoms the examiner believes the limitations of the claims have been met.” Id. The Examiner concludes: 1 The Examiner’s application of Higuchi and Noguchi are understood as alternative primary references. See also Reply Br. 5. 2 Citations to Yoneda’s paragraph numbers are directed to the machine translation of the Yoneda publication dated November 6, 2007. Appeal 2010-004934 Application 10/532,586 4 It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the liquid medium used in the known process, of Higuchi . . . and Noguchi . . . with a liquid medium formed as a saturated hydrocarbon under ordinary pressure and ordinary temperature wherein the hydrogen atoms are replaced with fluorine atoms, as taught by Yoneda and Miller, in order to provide non-aqueous liquid that is non-flammable and explosion proof thereby more effectively and safely carrying out a polishing process. Ans. 4 (emphasis added); see Ans. 7. The Appellants persuasively contend that “neither Higuchi nor Noguchi discloses or suggests problems directed to flammability, explosion protection, efficiency or safety.” Reply Br. 5. Indeed, neither Higuchi nor Noguchi describe or disclose these problems with their polishing methods. Additionally, the Appellants assert that Yoneda is directed “to prevent[ing] a ceramic electronic part from deteriorating in characteristics due to partial elution of ceramic into water at the time when a burned ceramic chip which contains alkaline earth metals such as Ba, Sr, Ca and the like is polished in water.” App. Br. 11; see Yoneda, Abstract, Yoneda Translation para. [0006]. The Appellants contend that “Yoneda’s disclosure would not have motivated one of ordinary skill in the art to use a fluorine- based inert liquid to suppress occlusion of hydrogen as a solid solution into an inner surface of the vacuum member, as this is quite irrelevant to explosion-proof equipment.” App. Br. 12. As for Miller, the Examiner explains that “Miller was used as a general teaching that it is known in the art to form a saturated or unsaturated fluorocarbon compound.” Ans. 9. This general teaching does not justify combining Miller with the primary references (Higuchi and Noguchi). See App. Br. 12. Appeal 2010-004934 Application 10/532,586 5 Thus, the rejection of claims 1, 4-11, and 17-19 as unpatentable over Higuchi, Noguchi, Yoneda, and Miller is not sustained. The remaining rejection based on Higuchi, Noguchi, Yoneda, and Miller in combination with Tsuchiya, which is an alternative rejection of claim 19, relies on the same reasoning as discussed above. See Ans. 5-6. As such, we cannot sustain the rejection under 35 U.S.C. § 103(a) of claims 19 as unpatentable over Higuchi, Noguchi, Yoneda, Miller, and Tsuchiya. DECISION We REVERSE the rejections of claims 1, 4-11, and 17-19. REVERSED Klh Copy with citationCopy as parenthetical citation