Tatsuhiro Sato et al.

Patent Trials and Appeals Board

Apr 24, 2020

12515727 - (D) (P.T.A.B. Apr. 24, 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.
12/515,727 05/20/2009 Tatsuhiro Sato ISH-0302 2119
74384 7590 04/24/2020
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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):
ctercenio@chenglawgroup.com
lcheng@chenglawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TATSUHIRO SATO, NOBUMASA YOSHIDA,
KATSUHIDE ORIKASA, and MAKOTO TANAKA
____________________

Appeal 2018-008117
Application 12/515,727
Technology Center 1700
____________________

Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
October 6, 2017 decision finally rejecting claims 1 and 10 (“Final Act.”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Shin-Etsu Quartz Products Co., Ltd.
as the real party in interest (Appeal Br. 2).
Appeal 2018-008117
Application 12/515,727

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method for producing a synthetic
opaque quartz glass (Abstract). The claimed process involves a specific
method of producing and depositing silica soot prior to heating it at specified
pressures and temperatures (Abstract). Details of the claimed process are set
forth in claim 1, which is reproduced below from the Claims Appendix to
the Appeal Brief:
l. A method for producing a synthetic opaque quartz glass,
consisting essentially of:
hydrolyzing a silicon compound with an oxyhydrogen
flame to form quartz glass soot,
depositing the quartz glass soot onto a rotating base body
to produce a quartz glass porous body;
setting the quartz glass porous body in a furnace;
pressurizing an atmosphere of the furnace containing the
quartz glass porous body to a pressure within a range of
0.15 MPa to l000 MPa, the atmosphere of the furnace
containing an inert gas;
heating the furnace containing the quartz glass porous
body to a temperature within a range of 1200°C to 2000°C; and
maintaining said pressure and said temperature for 30 minutes
to 10 hours,
thereby burning the quartz glass porous body into the
synthetic opaque quartz glass having a nitrogen concentration
that is in a range of 0 to 10 ppm,
wherein the synthetic opaque quartz glass comprises
bubbles spread uniformly throughout an entirety of the
synthetic opaque quartz glass, and wherein an average diameter
of the bubbles is 1 to 50 µm.
Appeal 2018-008117
Application 12/515,727

3
REJECTIONS
1. Claims 1 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kamo2 in view of Tokimoto3 and Flamenbaum.4
2. Claims 1 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kamo in view of Tokimoto, Daniel,5 and Flamenbaum.
Both rejections under 35 U.S.C. § 112 (written description and
indefiniteness) have been withdrawn by the Examiner (Ans. 3) and,
therefore, are not before us.

DISCUSSION
Appellant does not make separate arguments regarding Rejections 1
and 2, or about dependent claim 10. Accordingly, we focus our analysis on
the rejection of claim 1 over Kamo, Tokimoto, and Flamenbaum.
The Examiner’s findings underlying the rejection are set forth at pages
7–11 of the Final Action. The Examiner finds that Kamo “discloses the
invention substantially as claimed, except for the use [of] an oxyhydrogen
flame for the hydrolysis” which, according to the Examiner, is suggested by
Tokimoto (Final Act. 7). The Examiner further finds that Kamo’s
“compacting” step — described by Kamo beginning at col. 6, line 56 —
corresponds to the claimed step of “depositing the quartz glass soot onto a
rotating base body,” and that although Kamo does not disclose rotation of its
mold, the claim requirement of a rotating base body is met “because the

2 Kamo et al., US 5,585,173, issued December 17, 1996.
3 Tokimoto, et al., US 4,038,370, issued July 26, 1977.
4 Flamenbaum et al., US 3,806,570, issued April 23, 1974.
5 Daniel, US 2,962,790, issued December 6, 1960.
Appeal 2018-008117
Application 12/515,727

4
plain meaning of the claim does not define over the mold” and “the claim
does not recite a step/act of rotating anything” (Final Act. 7–8).
The Examiner also finds that it would have been obvious to use soot
prepared as taught by Flamenbaum in Kamo’s process because “it would
make [the] pulverizing step easier, than if the hydrolysis resulted in [a] fully-
dense material” (Final Act. 8). The Examiner determines that there would
be a reasonable expectation of creating a glass with a high level of purity
with the conventional oxyhydrogen flame method of creating soot because
“neither oxygen nor hydrogen gases would be expected to have any of the
impurities” (id.)
Appellant argues, inter alia, that Kamo differs from the claimed
method in that Kamo’s method recites a compacting step for the amorphous
silica powder which is excluded from the claimed method by the use of the
“consisting essentially of” transition phrase (Appeal Br. 10).
The transitional phrase “consisting essentially of” limits the scope of a
claim to the specified materials or steps “and those that do not materially
affect the basic and novel characteristic(s)” of the claimed invention. In re
Herz, 537 F.2d 549, 551–52 (CCPA 1976). Generally, it is Appellant’s
burden to show that the additional steps/components affect the basic and
novel characteristics of the claimed invention. In re De Lajarte, 337 F.2d
870, 874 (CCPA 1964).
In this instance, Appellant argues that the compacting step in Kamo’s
process, which requires contacting the silica powder or slurry with surfaces
of a mold, ball, pot, etc., inevitably results in some degree of contamination
of the silica (Appeal Br. 11). Therefore, according to Appellant, Kamo’s
compacting step materially affects the basic and novel characteristics of its
Appeal 2018-008117
Application 12/515,727

5
process, particularly in the glass which results from the process (Appeal Br.
12). Appellant also argues that the Specification, which discloses possible
variations for different steps, does not disclose any variations for the
“depositing” step and, therefore, a person of skill in the art would understand
that the “depositing” step should not be varied.6
Upon consideration of the respective positions of the Appellant and
the Examiner, we determine that the preponderance of the evidence of
record supports Appellant’s position that the transitional phrase “consisting
essentially of” would exclude the compacting step required by Kamo.
Because the Examiner has not adequately established why a person of skill
in the art would remove that step from Kamo’s process, we conclude that
Appellant had demonstrated reversible error in the rejection.
As noted above, it is Appellant’s burden to show that the additional
steps/components affect the basic and novel characteristics of the claimed
invention. De Lajarte, 337 F.2d at 874. In this instance, Appellant has met
this burden by providing a reasonable technical explanation — as well as
some supportive experimental data — of why the additional steps recited in
Kamo would affect the final product produced by the claimed method and,
therefore, would affect the basic and novel characteristics of that process.
Specifically, Appellant has explained that the additional steps described by
Kamo, including ball milling and/or the use of mold, would result in a final
product with higher levels of impurities than are present in a product

6 In particular, in Comparative Example 2, a mold is used to prepare the
silica particles prior to heating (as occurs in Kamo’s process), and the
resulting quartz glass has much higher levels of metal impurities, which are
said to result from diffusion of the metal impurities from the mold, and
which creates a glass which is not as strong (Spec. ¶¶ 32, 33).
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Application 12/515,727

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produced using the claimed process (i.e., one which does not include those
compacting steps disclosed by Kamo).
Although the Specification does not explicitly state that extremely low
levels of certain metal impurities are among the basic and novel
characteristics of the invention, the description in the Specification and the
comparative examples would have informed a person of skill in the art that a
compacting step (using a mold) would result in a final product different in a
meaningful manner (higher levels of impurities and lower overall strength)
from a product produced according to the disclosed process.
Accordingly, we reverse the rejections of claims 1 and 10.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C.
§
References(s)/Basis Affirmed Reversed
1, 10 103(a) Kamo, Tokimoto,
Flamenbaum
1, 10
1, 10 103(a) Kamo, Tokimoto,
Daniel, Flamenbaum
1, 10
Overall
Outcome
1, 10

REVERSED