Ex Parte Yao et al

Board of Patent Appeals and Interferences

Jan 4, 2012

11404195 (B.P.A.I. Jan. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/404,195 04/13/2006 Kui Yao AGSGP014 1511
25920 7590 01/04/2012
MARTINE PENILLA GROUP, LLP
710 LAKEWAY DRIVE
SUITE 200
SUNNYVALE, CA 94085
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
01/04/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte KUI YAO and BEE KEEN GAN
_________________

Appeal 2011-006012
Application 11/404,195
Technology Center 1700
_________________

Before FRED E. MCKELVEY, JEFFREY T. SMITH, and DEBORAH KATZ,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Agency of Science, Technology and Research (ASTR), the real party in 1
interest (Br., p. 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2
12 March 2010. 3
The application was filed on 13 April 2006. 4
The application has been published as U.S. Patent Application Publication 5
2007/0241304 A1. References to the Specification in this opinion are to the 6
published application. 7
We have jurisdiction under 35 U.S.C. § 134(a). 8
Findings of fact 9
Claims on appeal 10
Claims 1-2, 4, 6-9, and 11-14 are on appeal. 11
In its Appeal Brief, ASTR restricts its argument to Claim 1 vis-à-vis 12
patentability over the prior art. Accordingly, we likewise will restrict our analysis 13
of the obviousness rejection to Claim 1. 37 C.F.R. § 41.37(c)(1)(vii). 14
Claim 1, which we reproduce from the Claims Appendix (p. 10) of the 15
Appeal Brief, reads as follows [some indentation and bracketed matter added; 16
principal limitation in issue italicized]: 17
A ferroelectric ceramic material with a perovskite phase 18
comprising a composition represented by the formula 19
w Pb(Ni1/3Nb2/3)O3 - x Pb(Zn1/3Nb2/3)O3 - y Pb(Mg1/3Nb2/3)O3 - 20
z PbZrO3 – (1 – w – x – y – z) PbTiO3 21
22
in which 23
24
[1] 0 < w < 1 25

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[2] 0 < x < 1 1
2
[3] 0 < y < 1 3
4
[4] 0 < z < 1 5
6
[5] w + x + y + z < 1, and 7
8
[6] 0.5 ≤ w + x + y. 9
10
[said ferroelectric ceramic material] having a single crystalline phase 11
of perovskite structure. 12
13
In the record, ASTR and the Examiner refer to the five components of the 14
claimed composition as follows: 15
PNN means Pb(Ni1/3Nb2/3)O3 (lead nickel niobiate) 16
PZN means Pb(Zn1/3Nb2/3)O3 (lead zinc niobiate) 17
PMN means Pb(Mg1/3Nb2/3)O3 (lead magnesium niobiate) 18
PZ means PbZrO3 (lead zirconate) 19
PT means PbTiO3 (lead titanate) 20
The invention 21
We are told in the Appeal Brief (p. 7) that [italics added]: 22
[a] ceramic . . . with a single crystalline phase of perovskite structure 23
had never been produced prior to the [inventors’] discovery of 24
methods as disclosed in the . . . specification which [is said to] enable 25
such a ceramic to be produced. 26
27
The Specification, as published, describes five embodiments, identified as 28
C1, C2, C3, C4 and C5. See Table 1 at ¶ 0028. 29

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Embodiment C1 does not appear to fall within the scope of Claim 1. See 1
Table 1 (¶ 0028) describing embodiment C1 as containing no PMN (i.e., y = 0, 2
whereas Claim 1 requires 0 < y < 1 meaning that y must be greater than 0). 3
Of particular interest is embodiment C5. The preparation of embodiment C5 4
is set out in Example 1 (¶¶ 0032-0040) and the steps used in Example 1 are shown 5
in Figure 1A reproduced below. 6
7
ASTR Fig. 1A 8
Flow chart showing a method for 9
preparing ferroelectric ceramic materials 10
Much of what appears below is taken from Example 1, parts of which are 11
verbatim (without quotation marks) and parts of which are our words. 12
As illustrated in Figure 1A, a preparation method 100 of the ferroelectric 13

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ceramic material of composition C5 having the composition: 1
0.10 PNN - 0.35 PZN - 0.15 PMN - 0.10 PZ - 0.30 PT 2
starts with synthesis of MNO, ZNO and NNO powder precursors. ¶ 0032. 3
To prepare MNO powder precursors, as shown in block 110, stoichiometric 4
amounts of high purity starting oxides, MgO (99.99%) and Nb2O5 (99.95%) are 5
mixed in ethanol using a planetary ball mill, in an agate container with agate balls 6
as the grinding media. The milled powders are then dried at 70 ºC. and collected. 7
The powders are compacted and calcined at a temperature of about 1000 ºC. to 8
form single columbite phase which is apparently determined according to X-Ray 9
Diffraction (XRD). The calcined powders are then crushed and milled in ethanol 10
using the same agate container and milling balls. The powders are then dried 11
overnight at 70 ºC., and collected. ¶ 0033. 12
To prepare ZNO powder precursors, as shown in block 120, stoichiometric 13
amounts of high purity starting oxides, ZnO (99.95%) and Nb2O5 (99.95%) are 14
mixed in ethanol using a ball mill. The milled powders are then dried at 70 ºC. and 15
collected. These powders are compacted and calcined at a temperature of about 16
800 ºC. to form single columbite phase which is determined by XRD. The calcined 17
powders are crushed and then milled. The powders are then dried overnight at 18
70 ºC. and collected. ¶ 0034. 19
To prepare NNO powder precursors, as shown in block 130, stoichiometric 20
amounts of high purity starting oxides, NiO (99.00%) and Nb2O5 (99.95%) are 21
mixed in ethanol using a planetary ball mill in an agate container with agate balls 22
as the grinding media. The milled powders are then dried at 70 ºC and collected. 23
These powders are compacted and calcined at a temperature of about 1000 ºC. to 24

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form a single columbite phase as determined by XRD. The calcined powders are 1
crushed and then milled in ethanol using the same agate container and milling 2
balls. The powders are then dried overnight at 70 ºC and collected. ¶ 0035 3
For the phase synthesis of C5, stoichiometric amounts of various oxides 4
PbO (99.90%), TiO2 (99.90%) and ZrO2 (99.90%), together with the pre-5
synthesized columbite powder precursors MNO, ZNO and NNO and an excess of 6
1% of PbO by weight are mixed through a ball milling process for 24 hours, as 7
shown in block 140. The ball milling process is conducted in ethanol using a 8
planetary mill with an agate container and agate balls as the grinding media. Upon 9
completion of the milling process, the powders are dried (block 150), compacted 10
and calcined at 800 ºC. to form the calcined powders. ¶ 0036. 11
With reference to ASTR Figure 1B, reproduced below, a method is 12
described for the fabrication of test samples from the ferroelectric ceramic 13
materials prepared in accordance with ¶¶ 0032-0036. 14
15

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1
ASTR Fig. 1B 2
Flow chart showing a method for fabricating 3
a device formed of a ferroelectric ceramic material 4
Calcined C5 composition powders are compacted (block 172) into pellets in 5
a mold, together with another 1% by weight excess PbO and 5 % by weight PVA 6
(polyvinyl alcohol) binder. After the PVA organic binder is removed at 400 ºC. 7
(block 174), the pellets are sintered in air at a temperature from 800 ºC. to 950 ºC. 8
for one hour (block 176). ¶ 0037. As will become apparent, the sintering 9
temperature may be significant. 10
After the surfaces of the pellets (sintered at various temperatures) are 11
polished, silver paste is applied on the two opposite surfaces, and fired at 12
520 ºC. to form electrode layers to form the test samples for electrical testing. 13
¶ 0038. 14

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Various properties of the test samples are said to have been investigated as 1
illustrated below, including (1) densities, (2) ferroelectric hysteresis, (3) dielectric 2
properties and (4) piezoelectric properties. ¶ 0039. 3
According to ASTR, XRD results exhibit a single perovskite phase in C5, 4
when the sintering temperature is above 830 º C. From the experimental data for 5
C5 as summarized in Table 2, composition C5 is sintered to its maximum density 6
7.67 g/cm3 at 850-900 ºC. A higher sintering temperature of 950 ºC. is said to lead 7
to a slight decline in density due to a slight loss of lead content. Dielectric constant 8
and remnant polarization increase with the sintering temperature from 800 ºC. - 9
950 ºC., and is said to be accompanied by improved crystallinity and grain growth. 10
¶ 0040. We are not certain what ASTR means by “improved crystallinity.” The 11
Specification, as filed, does not indicate whether a single crystalline phase of 12
perovskite structure is a function of density or dielectric constant. 13
Example 2 (composition C4), Example 3 (composition C3) and Example 4 14
(composition C2) do not discuss whether any of the compositions have any 15
perovskite structure. Hence, we are unable on this record to find that any of 16
compositions C2, C3 or C4 have perovskite structure. 17
With reference to ASTR Figure 5, reproduced below, the Specification as 18
published discusses the function of sintering temperature vis-à-vis the perovskite 19
and pyrochlore structures in a composition which is a slight variation of the C5 20
composition. ¶ 0049. 21

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1
ASTR Fig. 5 2
X-Ray diffraction pattern of a modified C5 composition 3
The XRD results of C5-M powders [similar to C5 except for a small excess 4
amount of MgO doping] after calcining at 800 ºC. and test samples made of C5-M 5
compositions after sintering at 800-950 ºC. are presented in Figure 5. Perovskite 6
phase significantly dominates over the minor pyrochlore phase in the calcined 7
powders as shown in the curve at the bottom of Figure 5. A single perovskite 8
phase is said to form in the test sample after sintering at a temperature of 850 ºC. 9
and above. ¶ 0049. We are not sure of how ASTR determined that a single 10
perovskite phase occurs at about 850 ºC. It is possible that the small peaks in the 11

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bottom curve at 222, 400, 440 and 622 disappear when the 850 ºC. temperature is 1
reached and when they disappear one can conclude there is no pyrochlore phase. 2
In a “Comparative” Example, ASTR describes a process wherein all the 3
oxides are mixed with grinding and thereafter sintered. ¶ 0053. According to 4
ASTR, ceramics made by simple blending results in ceramics having pyrochlore 5
structure even when sintered at 950 º C, as shown in ASTR Figure 8 (characterized 6
as being the prior art), reproduced below. See the curve at the top of Fig. 8. 7
8
ASTR Fig. 8 9
XRD pattern of test sample formed according 10
to prior art “conventional preparation method (¶ 0026) 11

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Prior art rejection 1
The Examiner rejected all the claims on appeal as being unpatentable under 2
35 U.S.C. § 103(a) over (1) what ASTR and the Examiner refer to as 3
JP63011523A—Shirasaki et al. (Shirasaki) and (2) Kwon (U.S. Patent 6,656,378). 4
Ans., p. 5. 5
We are confused by what is meant by JP63011523—Shirasaki. 6
We do not know whether Shirasaki is a reference to an abstract of the 7
Japanese language Shirasaki or the Japanese patent document itself. 8
The Appeal Brief does little to help us given that it too refers to Shirasaki 9
(JP 63-11523). Br., p. 2. 10
Apparently a copy of the English translation of the full text of Shirasaki was 11
provided with the Examiner’s Answer on November 24, 2010. We refer to this 12
translation, below. 13
Shirasaki 14
Shirasaki describes a method for manufacturing a perovskite-based 15
piezoelectric ceramic powder. Translation, p. 2. 16
The ceramic powder is made from (1) an oxide is represented by what we 17
will call Formula 1, 18
Pb(ZrtTi1-t)O3 19
where t = 0.1 to 0.9, and (2) an oxide or oxides having what we will call 20
Formula 2, 21
PbA1/3B2/3O3 22
where: 23
A represents one or several elements selected from Mg, Ni, Zn, and Mn and 24

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B represents Nb and/or Ta. 1
Translation, p. 2. 2
The Formula 1 is precipitated then calcined and thereafter the Formula 2 3
oxides are blended with the Formula I oxides followed by calcination. Translation, 4
pp. 5-6. 5
According to Shirasaki, the Zr-Ti precipitate is calcined at 400-1000 ºC, 6
preferably 600-900 ºC. P. 7. After blending with the PbA1/3B2/3O3, “final 7
calcination is carried out at 400-1000ºC, preferably, 700-1000 ºC”. Translation, p. 8
9. 9
Example 1 illustrates a process wherein the Ti oxide and the Zr oxide are 10
said to have been prepared and calcined. Translation, p. 10. There was then added 11
both MgO and Nb2O3 followed by additional calcining at 900 ºC. Pb3O4 was then 12
blended in further calcining, which is described as taking place at 800 ºC. 13
A ceramic powder was obtained having the composition: 14
Pb(Mg1/3Mb2/3)0.500Zr0.135Ti0.365O3. 15
Shirasaki Example 2 is similar to Example 1. 16
Comparative Examples 1 and 2 (Translation, p. 12) are similar to ASTR’s 17
Example 1 in that all the individual oxides were simultaneous blended and then 18
milled and calcined. Based on data in Table 1 (id., p. 14), Shirasaki concludes that 19
its inventive oxides have low-temperature sinterablity and high density as well as 20
“excellent electrical characteristics” vis-à-vis its comparative examples. Id., p. 15. 21
As mentioned earlier, the Shirasaki product is said to be a “lead-containing 22
perovskite oxide” (Translation, p. 6) for making “perovskite-based piezoelectric 23
ceramic powder” (id., p. 5). 24

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Kwon 1
In view of our rationale for holding that the claimed invention would have 2
been obvious, we need not consider Kwon. 3
Discussion 4
We will not foreclose the possibility of the correctness of ASTR’s assertion 5
that “a single crystalline phase of perovskite structure had never been produced 6
prior to the … [inventors’] discovery.” (Br. 7.) If that be the case, then ASTR 7
may well be entitled to a patent. 8
However, on the record before us, we are unable in view of the disclosure of 9
Shirasaki to confidently verify ASTR’s claim to being the first to invent a 10
ferroelectric ceramic material having a single crystalline phase of perovskite 11
structure. 12
Why? 13
Based on its Specification, as published, ASTR describes embodiment C5 as 14
being a ferroelectric ceramic material having a single crystalline phase of 15
perovskite structure. No other embodiment disclosed in the Specification 16
(including embodiments C2, C3 and C4) are described as having a single 17
crystalline phase of perovskite structure. 18
Unfortunately for ASTR, Shirasaki also describes ferroelectric ceramic 19
materials which Shirasaki characterizes as a perovskite-based piezoelectric ceramic 20
powder. Translation, pp. 2 and 5-6. In addition, Shirasaki indicates that the 21
ceramic powder can be made with all the oxides called for by Claim 1. If the 22
Shirasaki ceramic powder is a single phase perovskite-based piezoelectric ceramic 23

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powder, then ASTR’s claim to have been the first to come up with a single phase 1
perovskite structure is undermined. 2
The USPTO does not have a laboratory in which it can compare prior art 3
materials to those claimed by an applicant. Thus, in appropriate cases, the USPTO 4
can shift the burden to an applicant to show that its claimed subject matter differs 5
from that of the prior art. In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re 6
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980). 7
It would appear that the materials defined by Claim 1 fall within the broad 8
scope of the materials described by Shirasaki. Both ASTR and Shirasaki describe 9
comparisons of their respective invention to ceramics made by a similar manner 10
(e.g., ASTR Ex. 1 and Shirasaki Comparative Exs. 1 and 2). The Shirasaki method 11
for making its product is different from the ASTR method shown in ASTR Figure 12
1A to make composition C5. However, both ASTR and Shirasaki claim to have 13
obtained materials with a perovskite structure, albeit by different methods. We 14
understand ASTR to allege that it describes single crystalline phase of perovskite 15
structure throughout the range of Claim 1. We understand Shirasaki to state that it 16
makes perovskite-based ceramics. If our understandings are correct, then ASTR 17
has not shown that its subgenus is patentably distinct from the broad genus 18
described by Shirasaki. 19
We might have a different view if the record contained credible scientific 20
experimental data showing that the products of Shirasaki Examples 1 and 2 either 21
(1) are not single crystalline phase perovskite structures or (2) do not contain any 22
perovskite structure. In connection with future prosecution, ASTR may wish to 23
consider conducting experimental work and determine whether Shirasaki 24

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Examples 1 and 2 have perovskite structure and, if so, the extent of that pervoskite 1
structure vis-à-vis product C5 (for which ASTR already has data). 2
Answer to ASTR’s arguments 3
According to ASTR, Shirasaki does not “suggest that the claimed 4
composition could have a single crystalline phase.” Br, p. 3. The other side of that 5
argument is that it can also be said that Shirasaki does not say its products do not 6
have a single phase perovskite structure. What Shirasaki does say is that its 7
materials are perovskite-based materials. As discussed above, more information is 8
needed to resolve precisely what is described by Shirasaki. In re Best, supra. 9
The Examiner and ASTR discuss “optimizing” to obtain results. We do not 10
appreciate the relevance of the discussion as applied to the facts of this case. 11
Either Shirasaki actually describes single phase perovskite structures or it does not. 12
On page 6 of the Appeal Brief, ASTR refers to Table III in a journal article 13
in Am. Ceram. Soc. 1997. We decline to consider Table III or any other portion of 14
the article because ASTR has not shown where the article was entered by the 15
Examiner. Likewise, the article has not been included in the Evidence Appendix. 16
37 C.F.R. § 41.37(c)(1)(ix). ASTR should feel free to submit the article for the 17
Examiner’s consideration in future prosecution. 18

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Other arguments based on obviousness 1
We have considered ASTR’s remaining arguments and find none that 2
warrant a holding of non-obviousness. Cf. Hartman v. Nicholson, 483 F.3d 1311, 3
1315 (Fed. Cir. 2007). 4
New ground of rejection 5
After the application on appeal was filed, Claim 1 was amended to include 6
the “having a single crystalline phase of perovskite structure.” Compare Claim 1 7
as published with Claim 1 on appeal. 8
ASTR’s assertion in its Appeal Brief that it has invented a single crystalline 9
phase perovskite structure commensurate in scope with the breadth of its Claim 1 10
gives us pause. In its Specification as filed ASTR describes only one composition 11
as having a single crystalline phase perovskite structure and that is composition 12
C5. ¶ 0040. A modified C5 (i.e., C5-M) is also said to have a perovskite structure. 13
¶ 0048-0049. Apart from the C5 compositions, ASTR has not described any other 14
embodiment (or its ferroelectric ceramic materials, as a whole) as having a single 15
crystalline phase perovskite structure. 16
ASTR does not explicitly state that compositions C2, C3 and C4 have the 17
claimed perovskite structure. 18
We feel confident saying that the subject matter (composition C5) of 19
dependent Claim 6 is described in the Specification, as filed. But, given the 20
assertion in the Appeal Brief that the inventors were the first to come up with a 21
single crystalline phase perovskite structure and the limited supporting discussion 22
concerning on C5 in the Specification, as filed, we find that only C5 and modified 23
C5-M are described as having a single crystalline phase perovskite structure. 24

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Claim 1 is now limited to single crystalline phase perovskite structures. On 1
this record we find that one skilled in the art, looking at the original disclosure, 2
reasonably would find that only C5 has the claimed structure. Accordingly, all 3
claims except Claim 6 are unpatentable for failure to comply with the written 4
description requirement of § 112, first paragraph. 5
For the reasons given, Claims 1-2, 4, 7-9 and 11-14 are rejected under 6
35 U.S.C. § 112, first paragraph, based on a Specification which does not contain a 7
written description of the subject matter of claims 1-2, 4, 7-9 and 11-14. 8
In future prosecution, ASTR may wish credible evidence which would 9
establish whether C2, C3 and C4 are in fact materials having a single crystalline 10
phase perovskite structure. 11
Decision 12
Upon consideration of the appeal, and for the reasons given herein, it is 13
ORDERED that the decision on the Examiner rejecting claims 1-2, 4, 14
6-9 and 11-14 as being unpatentable over the prior art is affirmed. 15
FURTHER ORDERED that since our rationale differs from the 16
rationale of the Examiner, our affirmance is designated as a new rejection. 17
Likewise, we have entered a rejection based on lack of written description. 18
37 CFR § 41.50(b) (2006). 19
FURTHER ORDERED that our decision is not a final agency action. 20
FURTHER ORDERED that within two (2) months from the date of 21
our decision, appellant may further prosecute the application on appeal by 22
exercising on of the two following options: 23

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Option 1: Request that prosecution be reopened by submitting 1
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1). 2
Option 2: Request rehearing on the record presently before the 3
Board. 37 C.F.R. § 41.50(b)(2). 4
FURTHER ORDERED that no time period for taking any subsequent 5
action in connection with this appeal may be extended under 37 C.F.R. 6
§ 1.136(a)(1)(iv). 7
AFFIRMED 8
New grounds of rejection. 9
37 C.F.R. § 41.50(b) 10
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