NGK Insulators, Ltd.

Patent Trials and Appeals Board

Sep 1, 2020

2019005535 (P.T.A.B. Sep. 1, 2020)

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.
14/730,414 06/04/2015 Mika MURAKAMI 947_179 4231
25191 7590 09/01/2020
BURR & BROWN, PLLC
PO BOX 869
FAYETTEVILLE, NY 13066
EXAMINER
ALLEN, JOSHUA L
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
tpreston@burrandbrown.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKA MURAKAMI, SUMIKO HORISAKA, and
HIROKI FUJITA
____________

Appeal 2019-005535
Application 14/730,414
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–6, 8, and 10–12, which are all of the
claims pending in this application.3 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 This Decision refers to the Specification filed June 4, 2015 (“Spec.”); Final
Office Action dated Aug. 28, 2018 (“Final Act.”); Advisory Action dated
Dec. 7, 2018 (“Advisory Act.”); Appeal Brief filed Mar. 5, 2019 (“Appeal
Br.”); and Examiner’s Answer dated Apr. 9, 2019 (“Ans.”). There is no
reply brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies NGK Insulators, Ltd. as the real party
in interest. Appeal Br. 1.
3 Claims 7 and 9 are canceled. Appeal Br. 18, 19.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a sensor element and a gas sensor. Spec. ¶ 1,
Abstract. Claim 1 illustrates the subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A sensor element comprising:
a multilayer structure including a plurality of oxygen-ion-
conductive solid-electrolyte layers that are stacked one on top of
another, and a measurement-object-gas-flowing portion
provided in the multilayer structure and from one end of which a
measurement-object gas is introduced into the multilayer
structure;
a measuring electrode exposed in a space in which the
measuring-electrode is set and which is part of the measurement-
object-gas-flowing portion;
an outer electrode provided on an outer surface of the
multilayer structure; and
a blocking portion that includes an outer blocking layer
covering at least part of a nearest portion that is at a shortest
distance from the space in which the measuring-electrode is set
among portions of outer surfaces of the multilayer structure
where the solid-electrolyte layers are exposed, the outer
blocking layer not conducting one or more kinds of substances
that contain oxygen, wherein the outer blocking layer is spaced
from and does not cover the outer electrode,
wherein the outer blocking layer has a porosity of 5% or
lower, and
wherein the outer blocking layer has a thickness of 1 μm
to 30 μm.
Appeal Br. 17 (key disputed claim language italicized and bolded).
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REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Nakano et al.
(“Nakano”)
US 5,419,828 May 30, 1995
Alkemade et al.
(“Alkemade”)
US 2004/0112765 Al June 17, 2004
Fujita et al. (“Fujita”) US 2011/0147214 Al June 23, 2011
Horisaka et al.
(“Horisaka”)
US 2011/0186431 Al Aug. 4, 2011
Wakazono4 JP 2010–25793 A Apr. 2, 2010
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–3 and 11 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Wakazono in view of Nakano (“Rejection 1”).
Ans. 3.
2. Claims 4–6 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Wakazono in view of Nakano, as applied to claim
1 above, and further in view of Alkemade (“Rejection 2”). Ans. 7.
3. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Wakazono in view of Nakano, as applied to claim 1
above, and further in view of Horisaka (“Rejection 3”). Ans. 10.

4 The Examiner refers and cites to the machine translation of Wakazono
provided in the record. Ans. 3.
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4. Claims 1–3, 11, and 12 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Fujita in view of Wakazono, further in view of Nakano
(“Rejection 4”). Ans. 11.
5. Claim 4–6 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Fujita in view of Wakazono and Nakano, as
applied to claim 1 above, and further in view of Alkemade (“Rejection 5”).
Ans. 18.
6. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Fujita in view of Wakazono and Nakano, as applied to
claim 1 above, and further in view of Horisaka (“Rejection 6”). Ans. 21.
OPINION
Rejection 1
The Examiner determines that the combination of Wakazono and
Nakano suggests a gas sensor element satisfying the limitations of claim 1
and concludes the combination would have rendered the claim obvious. Ans.
3–6. Regarding “a blocking portion that includes an outer blocking layer
covering at least part of a nearest portion that is at a shortest distance from
the space in which the measuring-electrode is set” recitation of claim 1, the
Examiner relies on Wakazono. Id. at 4–5. In particular, the Examiner finds
that Wakazono’s surface cover portion 30a and insulating layer 11 teach that
recitation of the claim. Id. at 4–5 (stating “the surface side cover part 30a
and the insulating layer 11 are both spaced apart from and do not cover the
outer electrode”) (citing Wakazono ¶ 20, Figs. 2, 3). See also id. at 4 (stating
“both 30a and 11 [are] equivalent to the ‘blocking portion’”).
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Appellant argues the Examiner’s rejection of claim 1 should be
reversed because Wakazono does not teach or suggest “a blocking portion
that includes an outer blocking layer covering at least part of a nearest
portion that is at a shortest distance from the space in which the
measuring-electrode is set,” as required by the claim. Appeal Br. 11–12.
Appellant contends that, in contrast to the Examiner’s rejection, Wakazono’s
insulating layer 11 and surface-side cover portion 30a do not cover “a
nearest portion that is a shortest distance from the space in which the
measuring-electrode is set,” as claimed. Id. at 11. Rather, based on Figure 2
of Wakazono, Appellant argues that because the outer surface of
Wakazono’s solid electrolyte layer 2c is directly above measuring-electrode
6a and back-side cover portion 30b covers the entire surface of solid
electrolyte layer 2c, insulating layer 11 and surface-side cover portion 30a
do not cover a nearest portion that is at a shortest distance from the space in
which measuring-electrode 6a is set. Id. at 11–12 (arguing “the entire outer
surface of the solid electrolyte layer (2c), including the shortest direction
from the space in which the measurement electrode is set, is covered with
the back-side cover portion (30b)”).
The weight of the evidence supports Appellant’s argument. On the
record before us, we are not persuaded the Examiner has established by a
preponderance of the evidence that Wakazono teaches or suggests “a
blocking portion that includes an outer blocking layer covering at least part
of a nearest portion that is at a shortest distance from the space in which the
measuring-electrode is set,” as recited in the claim. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (holding the examiner bears the initial
burden of establishing a prima facie case of obviousness).
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The portions of Wakazono the Examiner cites and relies upon in the
rejection do not teach or suggest that limitation. See Wakazono ¶¶ 20, 25,
Figs. 2, 3. Although Figure 2 of Wakazono shows surface cover portion 30a
and insulating layer 11 spaced apart from measuring-electrode 6a, it does not
show or suggest that surface cover portion 30a and insulating layer 11 cover
“a nearest portion that is at a shortest distance from the space in which the
measuring-electrode is set,” as required by the claim. Rather, as Appellant
explains (Appeal Br. 11–12), because the outer surface of Wakazono’s solid
electrolyte layer 2c is directly above measuring-electrode 6a and back-side
cover portion 30b covers the entire surface of solid electrolyte layer 2c,
neither surface cover portion 30a nor insulation layer 11 would appear to be
the nearest portion that is the shortest distance from the space in which
measuring-electrode 6a is set.
The Examiner also does not identify sufficient evidence or
persuasively explain why one of ordinary skill would have had reason to
modify Wakazono’s sensor element to include “an outer blocking layer
covering at least part of a nearest portion that is at a shortest distance from
the space in which the measuring-electrode is set,” as claimed. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with
some rational underpinning to support the legal conclusion of obviousness”)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Although the Examiner contends that because “the surface-side cover
portion 30a, the insulating layer 11, and the back-side cover portion 30b all
serve the purpose of covering the solid electrolyte layer 2c . . . the
surface-side cover portion 30a and insulating layer 11 meet the limitation
covering the ‘nearest portion’” (Ans. 25), the Examiner has not provided the
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requisite factual basis and/or technical reasoning to support such finding.
KSR, 550 U.S. at 418.
Contrary to what the Examiner’s rejection seems to imply, the fact
that it may have been technically possible to modify Wakazono’s sensor
element to include an outer blocking layer covering a nearest portion that is
at a shortest distance from the space in which the measuring-electrode is
set, without more, does not necessarily mean or suggest it would have been
obvious to one of ordinary skill in the art to do so. See Belden Inc. v.
Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention.”).
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claims 2, 3, and 11 depend from claim 1, we also do not sustain the
Examiner’s rejection of those claims.
Accordingly, we reverse the Examiner’s rejection of claims 1–3 and
11 under pre-AIA 35 U.S.C. § 103(a) as obvious over Wakazono and
Nakano.
Rejections 2 and 3
The Examiner rejects dependent claims 4–6 and 8 under § 103 as
obvious over Wakazono, Nakano, and Alkemade (Rejection 2) and
dependent claim 10 under § 103 as obvious over Wakazono, Nakano, and
Horisaka (Rejection 3). Ans. 7–11. The foregoing deficiencies, however, in
the Examiner’s analysis and findings regarding claim 1 and the Wakazono
reference in Rejection 1 are not remedied by the Examiner’s findings
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regarding the additional references and combination of references the
Examiner cites in support of the second and third grounds of rejection.
Thus, for principally the same reasons we discuss above for reversing
the Examiner’s Rejection 1, we reverse the Examiner’s rejections of claims
4–6 and 8 under pre-AIA 35 U.S.C. § 103(a) as obvious over Wakazono,
Nakano, and Alkemade (Rejection 2) and claim 10 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Wakazono, Nakano, and Horisaka (Rejection 3).
Rejection 4
The Examiner rejects claims 1–3, 11, and 12 under 35 U.S.C. § 103(a)
as obvious over the combination of Fujita, Wakazono, and Nakano. Ans.
11–18. In response to the Examiner’s rejection, Appellant presents argument
for the patentability of claims 1–3, 11, and 12 as a group. Appeal Br. 14–15.
We select claim 1 as representative and claims 2, 3, 11, and 12 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Fujita, Wakazono,
and Nakano suggests a gas sensor element satisfying the limitations of claim
1 and concludes the combination would have rendered the claim obvious.
Ans. 11–14. On the record before us, we determine a preponderance of the
evidence and sound technical reasoning support the Examiner’s findings
regarding the teachings of Fujita, Wakazono, and Nakano and conclusion
that the combination would have rendered the sensor element of claim 1
obvious. Fujita ¶¶ 10, 29, 39, 55, 104, Figs. 1, 5–7; Wakazono, Abstract, ¶¶
5, 25, Fig. 2; Nakano 7:23–31, 10:6–9, Figs. 2, 4, 5.
Appellant argues principally that the Examiner’s rejection of claim 1
should be reversed because the combination of Fujita, Wakazono, and
Nakano does not teach or suggest the claimed “outer blocking layer.”
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Appeal Br. 14 (arguing “the combination would not have resulted in a sensor
element that includes the claimed outer blocking layer”). Relying on
essentially the same argument Appellant presents above in response to the
Examiner’s rejection based on the combination of Wakazono and Nakano
(Rejection 1), Appellant contends
the insulating layer (11) and surface-side cover portion
(30a) of Wakazono ‘793, would not have been formed on
an exposed outer surface of the solid electrolyte layer (6)
to cover a nearest portion that is a shortest distance from
the space in which the measurement electrode (44) is set.
Therefore, the Examiner’s asserted combination of Fujita
and Wakazono ‘793 would not have resulted in a sensor
element that includes the claimed outer blocking layer.
Id. at 15.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection because it is premised on what Appellant contends
Wakazono teaches individually, and not the combined teachings of the cited
prior art references as a whole, and what the combined teachings of the
references would have suggested to one of ordinary skill in the art. One
cannot show non-obviousness by attacking references individually where the
rejection is based on a combination of references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Appellant’s argument is misplaced because, unlike the Examiner’s
rejection above based on the combination of Wakazono and Nakano
(Rejection 1), in this rejection, which is based on the combination of Fujita,
Wakazono, and Nakano, the Examiner does not rely upon Wakazono for
teaching or suggesting “an outer blocking layer covering at least part of a
nearest portion that is at a shortest distance from the space in which the
measuring-electrode is set” recitation of the claim. Rather, the Examiner
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relies on Fujita for teaching that language of the claim. In particular, as the
Examiner finds (Ans. 12), Fujita teaches a blocking portion that includes an
outer blocking layer covering at least part of a nearest portion that is at a
shortest distance from the space in which the measuring electrode is set
among portions of outer surfaces of the multilayer structure where the
solid-electrolyte layers are exposed, i.e., porous protection layer 90 provided
on second solid electrolyte layer 6 and outside pump electrode 23, which a
preponderance of the evidence supports. Fujita ¶¶ 39, 104, Figs. 5–7.
As the Examiner further finds and explains (Ans. 12–13), because
Fujita is silent as to whether the outer blocking layer it describes blocks
substances that contain oxygen, the Examiner relies on Wakazono for
teaching the “not conducting one or more kinds of substances that contain
oxygen” recitation of the claim. Wakazono, Abstract, ¶¶ 5, 25. The
Examiner also relies on Wakazono for teaching the recitation “wherein the
outer blocking layer is spaced from and does not cover the outer electrode.”
Id. at Abstract, Fig. 2. Although the Examiner relies on Wakazono for
teaching those particular elements of the claimed outer blocking layer, the
Examiner does not rely on Wakazono for teaching or suggesting the “nearest
portion that is at a shortest distance from the space in which the
measuring-electrode is set” recitation of the claim, as Appellant argues.
The Examiner also provides a reasonable basis, which a
preponderance of the evidence in the record supports, to evince why one of
ordinary skill would have combined the teachings of Fujita and Wakazono to
arrive at the claimed blocking portion. Ans. 13 (explaining that one of
ordinary skill in the art would have had reason to modify Fujita’s porous
protection layer 90 to include Wakazono’s insulating layer structure to
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reduce warping of the sensor element); see also KSR, 550 U.S. at 420
(explaining that any need or problem known in the art can provide a reason
for combining the elements in the manner claimed).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings or analysis in this regard. Appellant’s assertions
that the “sensor element of Fujita is essentially the same as the sensor
element shown in Fig. 10 of the present application” and “Fujita fails to
recognize that electrode-less migration of oxygen ion occurs in the sensor
element” (Appeal Br. 14) are not persuasive because they are conclusory and
unsupported by persuasive evidence in the record. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere
lawyer’s arguments or conclusory statements, which are unsupported by
concrete factual evidence, are entitled to little probative value). Appellant’s
comments in this regard are also not particularly persuasive because the fact
that Appellant may have “recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise [have been] obvious.”
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Accordingly, we affirm the Examiner’s rejection of claims 1–3, 11,
and 12 under pre-AIA 35 U.S.C. § 103(a) as obvious over Fujita, Wakazono,
and Nakano.
Rejections 5 and 6
In response to the Examiner’s rejections of claims 4–6 and 8 under
§ 103 as obvious over Fujita, Wakazono, Nakano, and Alkemade (Rejection
5) and claim 10 under § 103 as obvious over Fujita, Wakazono, Nakano, and
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Horisaka (Rejection 6) (Ans. 18–22), Appellant does not present any
additional substantive arguments. Rather, Appellant relies on the same
arguments previously discussed and presented above in response to the
Examiner’s rejection of claims 1 under § 103 as obvious over Fujita,
Wakazono, and Nakano (Rejection 4). See Appeal Br. 16.
Thus, based on the fact-finding and reasoning provided by the
Examiner, and for principally the same reasons discussed above for
affirming the Examiner’s Rejection 4, we affirm the Examiner’s rejections
of claims 4–6 and 8 under pre-AIA 35 U.S.C. § 103(a) as obvious over
Fujita, Wakazono, Nakano, and Alkemade (Rejection 5) and claim 10 under
pre-AIA 35 U.S.C. § 103(a) as obvious over Fujita, Wakazono, Nakano, and
Horisaka (Rejection 6).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 11 103(a) Wakazono, Nakano 1–3, 11
4–6, 8 103(a) Wakazono, Nakano,
Alkemade
4–6, 8
10 103(a) Wakazono, Nakano,
Horisaka
10
1–3, 11, 12 103(a) Fujita, Wakazono,
Nakano
1–3, 11, 12
4–6, 8 103(a) Fujita, Wakazono,
Nakano, Alkemade
4–6, 8
10 103(a) Fujita, Wakazono,
Nakano, Horisaka
10

Overall
Outcome
1–6, 8,
10–12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED