14574564 - (D) (P.T.A.B. Apr. 18, 2019)

Ex Parte Tomita et al

Patent Trials and Appeals BoardApr 18, 2019

14574564 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/574,564 12/18/2014 93263 7590 04/22/2019 Tomoko Nakajima Cermak Nakajima & McGowan LLP 127 S. Peyton St., Suite 200 Alexandria, VA 22314 FIRST NAMED INVENTOR Takahiro Tomita 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. 1027-0076 2842 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 04/22/2019 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): TNakajima@cnmiplaw.com ip@cnmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAHIRO TOMITA, SHIGEHARU HASHIMOTO, and T AKU NISHIGAKI Appeal2018-007224 Application 14/574,564 Technology Center 1700 Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-5 and 8-11. (Appeal Br. 5.) We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed December 18, 2014 ("Spec."); Final Office Action dated June 6, 2017 ("Final Act."); Appeal Brief filed January 16, 2018 ("Appeal Br."); Examiner's Answer dated May 14, 2018 ("Ans."); and Reply Brief filed July 9, 2018 ("Reply Br."). 2 Appellant is the NGK Insulators, Ltd., which is identified as the real party in interest. (Appeal Br. 2.) Appeal2018-007224 Application 14/574,564 THE INVENTION Appellant states that the invention relates to a porous plate-shaped filler included in a heat-insulating film. (Spec. ,r 1.) Claim 1, the only independent claim on appeal, is representative and reproduced below from the Claims Appendix to the Appeal Brief (with emphasis added to highlight disputed claim terms): 1. A porous plate-shaped heat-insulating filler being a plate with an aspect ratio of 3 or more, wherein the porous plate-shaped filler has a minimum length of 0.1 to 50 Âµm, a specific surface area of 2-10 m2 lg, and a porosity of 20 to 99%, and comprises either zirconium oxide and a metal oxide selected from the group consisting of Y, Al, Si, Ti, Nb, Sr, and La, or a composite oxide of two or more of Zr, Y, Al, Si, Ti, Nb, Sr, and La. (Appeal Br. 8 (Claims Appendix).) REJECTION The Examiner rejected claims 1-5 and 8-11 under 35 U.S.C. Â§ 112(a) or 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Appellant relies on the following evidence (Appeal Br. 11 (Evidence Appendix)): Declaration of Takahiro Tomita Submitted January 19, 2017 ("Tomita Declaration"); 3 3 The Tomita Declaration does not appear to be dated. Nevertheless, the Examiner indicated that the Declaration was considered in the Final Action. (Final Act. 2.) 2 Appeal2018-007224 Application 14/574,564 Certified Translation of Powder Engineering Handbook. 4 Appellant's arguments are directed to claim 1. (Appeal Br. 5-6.) Accordingly, we select claim 1 as representative for disposition of this Appeal. 37 C.F.R. Â§ 4I.37(c)(l)(iv). ISSUE The Examiner found that there is no description in the Specification of specific surface area as recited in claim 1, such that the claims lack written description support. (Final Act. 2; Ans. 5.) Appellant argues that the Declaration of Takahiro Tomita explains that the surface area limitation "could readily be derived from the [S]pecification by one of ordinary skill in the art." (Appeal Br. 5; see Tomita Declaration ,r,r 4---6.) Accordingly, the issue on appeal is: Has Appellant identified reversible error in the Examiner's finding that the recitation that the porous plate-shaped filler has "a specific surface area of 2-10 m2 / g" in claim 1 lacks written description support? 4 Although the Powder Engineering Handbook excerpt was originally submitted as Appendix A to the Tomita Declaration, it was submitted in Japanese without a translation. Appellant submitted a certified English Translation on August 9, 2017, which the Examiner discussed in the Answer. (Ans. 4.) Thus, we consider the English translation of the Powder Engineering Handbook to be of record. (See Advisory Action entered August 24, 2017 (Continuation of 12).) 3 Appeal2018-007224 Application 14/574,564 DISCUSSION To satisfy the written description requirement, a patent applicant must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991) (emphasis omitted). In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 ... (Fed. Cir. 1996). Nonetheless, the disclosure must ... convey with reasonable clarity to those skilled in the art that ... [the inventor] was in possession of the invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 ... (Fed. Cir. 1991). Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 ... (Fed. Cir. 1994). That inquiry is a factual one and must be assessed on a case-by-case basis. See Vas- Cath, 935 F.2d at 1561 .... Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323-24 (Fed. Cir. 2000). The court in Purdue also stated, one cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure. Purdue, 230 F.3d at 1326-27 (citing In re Ruschig, 379 F.2d 990, 994--95 (CCP A 1967). The court further stated that "there is nothing in the written description of [the examples] that would suggest to one skilled in the art that the Cmaxf C24 ratio is an important defining quality of the formulation, nor 4 Appeal2018-007224 Application 14/574,564 does the disclosure even motivate one to calculate the ratio." Purdue, 230 F.3d at 1327. We are not persuaded by Appellant's arguments that the Tomita Declaration and accompanying evidence demonstrates that Appellant was in possession of the specific surface area recited in claim 1. As acknowledged by Appellant, the Specification does not explicitly describe the specific surface area limitation recited in claim 1. (Appeal Br. 5.) The Examiner stated that the formula used in the Tomita Declaration to calculate specific density is applied to spherical shaped or cubic shaped particles, whereas the instant application is directed to plate shaped particles, which Appellant's Specification indicates are different from spherical and cubic shaped particles. (Ans. 4--5.) The Examiner also stated that neither the instant disclosure nor the Tomita Declaration discuss how the calculation takes into account the vast differences in porosity recited in claim 1. ( Ans. 4.) Thus, the Examiner found that the Specification fails to provide support for the claim range of specific surface areas. (Ans. 4.) We are not persuaded by Appellant's response that the formula applied in the Tomita Declaration may be applied to plate-shaped particles because the claimed plates are formed from aggregates of small particles, "mainly almost spherical shape, which are connected three-dimensionally." (Reply Br. 2-3. 5) As even the portion of the Specification quoted by 5 Appellant points to figures in a "copending application 15/159,995" as depicting a "similar structure" to the plate-form particles of the present claims. (Reply Br. 2-3.) Even if we were to consider these figures to be timely filed (see Reply Br. 3 n.1 ), they do not inform the disclosure of the present Specification for the purposes of assessing written description support. 5 Appeal2018-007224 Application 14/574,564 Appellant states, the plate-shaped particles are not limited to collections of spherical shaped particles, but may be formed from one crystal grain. (Reply Br. 3; Spec. ,r 42. 6) Thus, Appellant's argument, which is not commensurate in scope with claim 1 or the Specification, and is not supported by objective evidence, is not persuasive. In this regard, the Examiner has cited evidence in the form of the Zielinski White Paper, 7 that when porosity or unsmooth surfaces are introduced into the materials, the surface area is larger. (Ans. 4 ( citing Zielinski White Paper 2).) We observe that range of specific surface areas calculated (Tomita Declaration, Exhibit C), are for specific materials that have similar porosities (ranging from 60-65%) such that it is not clear that Appellant was in possession of the claimed surface area range for the full range of materials recited in claim 1. Appellant's evidence and argument illustrate the issues with respect to the specific surface area limitation in claim 1. That is, as the Examiner found, the Specification does not provide any discussion to inform one of ordinary skill in the art that Appellant was in possession of the particular specific area range recited in the claim, or that specific surface area of the porous plate-shaped filler is important to the porous plate-shaped filler disclosed in the Specification. In the instant case, the Specification discusses characteristics of the porous plate-shaped filler with particular emphasis as to aspect ratio over 6 Corresponding to paragraph 28 of the published application cited by Appellant. 7 Dr. John M. Zielinski & Dr. Loma Kettle, Physical Characterization: Surface Area and Porosity, INTERTEK CHEM. & PHARMS. 1---6 (2013) ("Zielinski White Paper"). 6 Appeal2018-007224 Application 14/574,564 spherical fillers and the ability of the porous plate-shaped filler to be stacked to eliminate voids, which negatively impact the thermal conductivity of the heat-insulated film. (Spec. ,r,r 30, 34, 36, 39, 42, 136, 137.) Nowhere does the Specification discuss or even mention the specific surface area of the porous plate-shaped filler as being important to achieving the desired results discussed in the Specification. Thus, even assuming the formula applied by Appellant (see Reply Br. 2; Tomita Declaration ,r 6) could be used to derive specific surface areas of the plate-shaped filler recited in claim 1, this would not be sufficient to satisfy the written description requirement, because the Specification provides no indication that the specific surface area of the plate-shaped filler is an important defining quality of the invention. Purdue, 230 F.3d at 1327; cf also ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (to comply with the written description requirement, the specification "must do more than merely disclose that which would render the claimed invention obvious"). Accordingly, we agree with the Examiner that the Specification does not provide sufficient support to inform one of ordinary skill in the art that Appellant was in possession of the specific surface area range for the plate- shaped filler recited in claim 1. DECISION We affirm the Examiner's decision rejecting claims 1-5 and 8-11. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). 7 Appeal2018-007224 Application 14/574,564 AFFIRMED 8