Ex Parte Shikida et al

Patent Trial and Appeal Board

Dec 15, 2014

11660231 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKASHI SHIKIDA, SHINJI OGAMA, KAZUHISA HIDAKA
and YOSHIAKI IKEDA
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Appeal 2013-003699
Application 11/660,231
Technology Center 1700
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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.
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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,
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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
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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.
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§ 103(a), the Examiner carries the initial burden of establishing a prima facie
case of obviousness. In re Piasecki, 745 F.2d 1468, 147172 (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.
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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
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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
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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

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