Ex Parte Shikida et alDownload PDFPatent Trial and Appeal BoardDec 15, 201411660231 (P.T.A.B. Dec. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAKASHI SHIKIDA, SHINJI OGAMA, KAZUHISA HIDAKA and YOSHIAKI IKEDA ____________ Appeal 2013-003699 Application 11/660,231 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, WHITNEY N. WILSON, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 5–7, 9 and 12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is Sakai Chemical Industry Co., Ltd. App. Br. 2. Appeal 2013-003699 Application 11/660,231 2 STATEMENT OF THE CASE The claimed subject matter relates to a process for production of powder of a perovskite compound comprising a first step for obtaining an aggregate of a perovskite compound and a second step for heating and disintegrating the aggregate. App. Br. 12 (claim 1). Such perovskite powders can be molded and sintered to produce ceramics that are useful as capacitors, transmission filters, piezoelectric elements, and thermistors for telecommunication devices and computers. Spec. 1:21–28. Claim 1 is representative of the subject matter on appeal and is set forth below (with bold added for emphasis): 1. A process for production of powder of a perovskite compound, which comprises: a first step by a hydrothermal process, an alkoxide process, or a sol-gel process for obtaining an aggregate of perovskite compound, which comprises at least one A group element selected from the group consisting of Mg, Ca, Sr, Ba and Pb and at least one B group element selected from the group consisting of Ti, Zr, Hf and Sn, and which is represented by a formula ABO3, wherein A is at least one A group element and B is at least one B group element; and a second step for heating the aggregate of perovskite compound, which is obtained in the first step, in an aqueous solution containing at least one base-selected [sic, base selected] from the group consisting of an alkali metal hydroxide, an alkaline earth metal hydroxide, and an organic amine, at a temperature in a range from 180°C to 500°C in absence of grinding media, thereby disintegrating the aggregate, Appeal 2013-003699 Application 11/660,231 3 wherein in the second step, the base in the aqueous solution has been added after the aggregate of perovskite compound is formed. App. Br. 12 (Claims App’x). The prior art relied upon by the Examiner in rejecting the claims on appeal is: Abe et al. US 4,643,984 Feb. 17, 1987 Osaka et al. US 4,927,560 May 22, 1990 Dawson et al. US 5,113,433 May 12, 1992 Choudhary et al. US 6,197,719 Mar. 6, 2001 THE REJECTIONS 1. Claims 1, 2, 5, 7, 9 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Abe in view of Choudhary and Dawson. Ans. 3. 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Abe in view of Choudhary and Dawson, as applied to claim 1, and further in view of Osaka. Ans. 6. ANALYSIS The Examiner finds that Abe discloses the first step of claim 1, but does not disclose the second step of heat treating the perovskite aggregate. Ans. 3–4, 11 (citing Abe, 1:42–55, 3:3–30). With respect to the second step of claim 1, the Examiner finds that Choudhary teaches a process for heat treating a perovskite-type oxide and that it would have been obvious to modify Abe’s process to include Choudhary’s heat treatment step in order to Appeal 2013-003699 Application 11/660,231 4 increase the surface area, as taught by Choudhary. Ans. 4 (citing Choudhary, Abstract, 1:31–35, 3:43–4:45). In addition, the Examiner finds that Choudhary teaches heat treating in the presence of a base, but does not teach the particular bases recited in the second step of claim 1, i.e., an alkali metal hydroxide, an alkaline earth metal hydroxide, or an organic amine. Ans. 11 (citing Choudhary 3:60–65, Ex. 1). The Examiner applies Dawson to remedy this deficiency, finding that Dawson teaches bases including hydroxides of ammonium, sodium, potassium, barium and strontium for crystallizing perovskite compound. Id. at 4–5, 11(citing Dawson, 7:65–8:23, 10:33–11:34, 11:65–12:30, 14:8–14). The Examiner finds that Dawson teaches using such bases to adjust pH in order to control the particle size and concludes that it would have been obvious to use these bases in the heat treatment step. Ans. 11–12. Appellants challenge the Examiner’s conclusion that it would have been obvious to combine the teachings of Abe, Choudhary and Dawson. App. Br. 6–9. Among other things, Appellants argue that Dawson teaches controlling the pH in a process of forming perovskite compound, but does not teach treating already formed perovskite compound with alkali metal hydroxide, alkali earth metal hydroxide or an organic amine, as in the second step of claim 1. App. Br. 8–9; Reply Br. 7. Appellants therefore contend that there would have been no reason to combine Dawson’s pH adjusting step with the heat treatment step of Choudhary. Reply Br. 7. After reviewing Appellants’ arguments, the Examiner’s Answer, and the cited references, we are persuaded that Examiner’s rationale for modifying and combining the prior art teachings is not sufficient to make out a prima facie case of obviousness under the present record. Under 35 U.S.C. Appeal 2013-003699 Application 11/660,231 5 § 103(a), the Examiner carries the initial burden of establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d 1468, 147172 (Fed. Cir. 1984). As part of meeting this initial burden, the Examiner must determine whether the differences between the subject matter of the claims and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). To support the legal conclusion of obviousness, “there must be some articulated reasoning with some rational underpinning” for combining elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner articulates the following findings and conclusions regarding teachings of Choudhary and Dawson and how and why they would have been combined by one of ordinary skill in the art: Dawson teaches bases including all or any of hydroxides of ammonium, sodium, potassium, barium, strontium etc. for crystallizing pervoskite compound wherein such bases affect the pH value which can control particle size [citing Dawson, 7:65–8:23, 10:33–11:34, 11:65–12:1]. Chaudhary already teaches heat treating the formed perovskite in the presence of base with a certain pH value [citing Choudhary, 3:60–65, Ex. 1] and such heat treatment leads to decreased grain/crystal size as discussed above. Dawson discloses such bases can be used in perovskite producing process for manipulating the pH value thus controlling the particle size. Therefore, it would have been obvious for one of ordinary skill in the art to adopt such base as shown by Dawson for obtaining a desired pH value for heat treatment thus help controlling the particle size. Ans. 11–12. Appeal 2013-003699 Application 11/660,231 6 Based upon our review of the references and the opposing arguments presented by Appellants and the Examiner, we are persuaded that the Examiner’s articulated reasoning is not supported by the teachings of Choudhary and Dawson and that a preponderance of the evidence supports Appellants’ position that there would have been no reason for one of ordinary skill in the art to combine their teachings in the manner proposed by the Examiner. More specifically, a preponderance of the evidence demonstrates that Dawson teaches using certain bases to adjust pH and control particle size in a process for forming a perovskite compound, but there is a lack of evidence supporting that this teaching would have been adopted to modify a perovskite treatment process such as that taught by Choudhary in which a perovskite-type oxide is hydrothermally treated to increase its surface area and catalytic activity. The following teachings of Choudhary and Dawson support this conclusion. Choudhary teaches a process for activation of a perovskite-type oxide by increasing its surface area and/or catalytic activity, where the process includes the steps of: (i) hydrothermally treating perovskite-type oxide in water with or without ammonium hydroxide or alkyl ammonium hydroxide, and (ii) calcining. Choudhary, Abstract, 3:9–14, 3:59–63. Dawson teaches a process for making perovskite powder in which the average particle size is controlled by adjusting the pH at which the powder is made. Dawson, Abstract, 7:63–64, 8:42–43. The process includes the steps of precipitating hydroxides of B group elements, forming a slurry of these hydroxides, and then adding oxides or hydroxides of A group elements. Id., Abstract, 7:65– 8:23, 10:32–11:37 (steps (2) and (4)); see also 1:20–30. According to Dawson, the pH is adjusted during both the precipitation and addition steps Appeal 2013-003699 Application 11/660,231 7 in order to control the particle size. Id. at 8:9–14, 10:63–11:2, 11:54–57, 11:65–12:2. In the precipitation step, a hydroxide of sodium, ammonium or potassium used to control pH, id. at 8:36–41, 10:63–11:2, and in the addition step, pH is controlled by the perovskite components, id. at 11:11–20. Choudhary does not discuss the role of ammonium hydroxide or alkyl ammonium hydroxide in the hydrothermal treatment step, does not discuss controlling pH during that step, and does not suggest that other hydroxides can be used. Dawson teaches the use of hydroxide bases to control pH in the process of forming a perovskite powder, but does not discuss any post-formation steps for treating the perovskite powder to increase surface area, catalytic activity or for any other purpose. The Examiner finds that Choudhary teaches heat treating perovskite in the presence of base with a certain pH value, citing Choudhary, 3:60–65, Ex. 1, but this finding is not supported by the disclosure of Choudhary. Choudhary’s only discussion of pH is in the context of Example 1, which describes the preparation of a perovskite compound, not the heat treatment step that (according to the Examiner’s rejection) corresponds to the second step of claim 1. Choudhary, 5:32–53. Although Dawson teaches the use of alkali metal hydroxides and alkali earth metal hydroxides to control pH and particle size in the process of forming a perovskite powder, the Examiner has not directed us to sufficient evidence or technical reasoning to support the conclusion that one of ordinary skill in the art would have substituted such hydroxides for ammonium hydroxide or alkyl ammonium hydroxide in the hydrothermal treatment step of Choudhary. We are not persuaded that the reason or motivation posited by the Examiner—obtaining a desired pH value for heat treatment thus helping to control particle size and Appeal 2013-003699 Application 11/660,231 8 agglomeration, Ans. 5, 11–12—is supported by the evidence because the Examiner has not provided technical reasoning or identified evidentiary support in Choudhary, Dawson or elsewhere that pH should be controlled during a post-formation heat treatment step or that pH is important for controlling particle size or agglomeration during such a step. We therefore determine that a preponderance of the evidence does not support the Examiner’s conclusion of obviousness, and we do not sustain the first ground of rejection with respect to claims 1, 2, 5, 7, 9 and 12. The shortcomings discussed above are not remedied by the Examiner’s findings relating to the additional reference (Osaka) cited in support of the second ground of rejection. Accordingly, we do not sustain the rejection of claim 6. CONCLUSION OF LAW AND DECISION Because the Examiner’s articulated reasoning for combining the teachings of Abe, Choudhary and Dawson is not supported by a preponderance of the evidence, we reverse the Examiner’s decision rejecting claims 1, 2, 5–7, 9 and 12. REVERSED lp Copy with citationCopy as parenthetical citation