Ex Parte Citti et al

Patent Trial and Appeal Board

Jul 11, 2016

12519630 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/519,630 09/28/2009 Olivier Citti
92793 7590 07113/2016
OLIFF PLC (with Nony)
P.O. Box 320850
Alexandria, VA 22320-4850
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.
141950 4771
EXAMINER
MENDEZ, ZULMARIAM
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
07/13/2016 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):
OfficeAction92793@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIER CITTI, JULIEN FOURCADE, MICHEL GAUBIL,
CHARLES NICHOLAS MCGARRY, and MICHAEL J. SEABORNE1
Appeal2014-005006
Application 12/519,630
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-7 and 9-25, which are all of the
claims pending in the above-identified application. An oral hearing was
conducted on June 14, 2016. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is said to be Saint-Gobain Centre De Recherches
Et D'etudes Europeen. Appeal Brief filed September 19, 2013 ("App. Br.")
at 1.
2 Final Action entered March 13, 2013 ("Final Act.") at 2-6 and the
Examiner's Answer entered January 17, 2014 ("Ans.") at 2-6.
3 A transcript of the oral hearing has been entered into the electronic record.
Appeal2014-005006
Application 12/519,630
STATEMENT OF THE CASE
The subject matter on appeal is directed to "sintered products made
from zircon and zirconia ... for their ... use, in particular[,] in a
glassmaking furnace." Spec. 1, 11. 1-3. These sintered products are said to
have "a large electrical resistivity ... at a temperatures of approximately
l ,500°C, and a good molten glass corrosion resistance" to meet the
requirements imposed on the refractory material used in glassmaking
furnaces that employ high melting temperatures and increased electrical
energies. Spec. 3, 11. 6-16. Details of the appealed subject matter are recited
in illustrative claim 1, 4 which is reproduced below from the Claims
Appendix of the Appeal Brief:
1. A sintered product made from a starting batch
containing a dopant selected from the group consisting of
Nb20s, Ta20s, precursors thereof, and mixtures of such dopants
and/or precursors thereof, and 5 to 50% zircon, in percentage
by weight on the basis of the dry starting batch weight, and
having the follov,v"ing average chemical composition, in
percentages by weight on the basis of the oxides and for a total
of 100%:
silica, Si02, and zirconia, Zr02, the content of
zirconia being at least 64 %,
at least 0.2% of a dopant selected from the group
consisting of Nb20s, Ta20s, and mixtures thereof,
optionally, a stabilizer selected from the group
consisting of Y 203, MgO, CaO, Ce02, and mixtures thereof, at
a content of 6% or less, and
other oxides at a content of 6. 7% or less.
App. Br., Claims Appendix A-1 (emphasis added).
4 Independent claim 1 is the broadest claim on appeal.
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Appeal2014-005006
Application 12/519,630
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:
1. Claims 1-7, 9-18, and 21-24 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of US 6, 121, 1 77 issued in the
name of Guigonis et al. on September 19, 2000 ("Guigonis") and EP 0 388
747 A2 published in the name of Ketcham on September 26, 1990
("Ketcham"); and
2. Claims 19, 20, and 25 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Guigonis, Ketcham, and US 4,999,097
issued in the name of Sadoway on March 12, 1991 ("Sadoway"). Compare
App. Br. 4-18 and Reply Brief filed March 18, 2014 ("Reply Br.") at 2-6
with Final Act. 2-6 and Ans. 2-6.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellants, we
concur with Appellants that the Examiner has not established, by a
preponderance of the evidence, that the applied prior art would have
rendered the subject matter recited in claims 1-7 and 9-25 obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner's§ 103(a) rejections of the above
claims for the reasons set forth in the Appeal Brief and the Reply Brief. We
add the following primarily for emphasis.
As evidence of obviousness of the subject matter recited in claim 1,
the broadest claim on appeal, under 35 U.S.C. § 103(a), the Examiner has
relied upon the combined teachings of Guigonis and Ketcham. Final Act. 2
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Appeal2014-005006
Application 12/519,630
and Ans. 2. The Examiner has found that Guigonis discloses a sintered
refractory block having silica, 87 to 94% by weight of zirconia, a stabilizer,
such as Y 203, and less than 1 % by weight of other oxides, where the sintered
refractory block is prepared by sintering a starting batch containing 5 to 40%
by weight of zircon and is useful for glassmaking furnaces. Final Act. 2-3;
Ans. 2-3. Although the Examiner has acknowledged that Guigonis does not
disclose using "at least 0.2% of a dopant selected from the group consisting
ofNb20s, Ta20s, and mixtures thereof' as recited in claim 1, the Examiner
has found that "Guigonis discloses that the sintered material could contain
more additives (col. 2, lines 60-63)." Final Act. 3; Ans. 3.
To account for missing Nb20s, Ta20s, and mixtures thereof in
Guigonis' s sintered refractory block, the Examiner has relied upon Ketcham.
Ans. 3. The Examiner has found that Ketcham discloses using a dopant, i.e.,
V 20s, Nb20s, Ta20s and other oxides, in a sintered refractory material made
from zircon and zirconia based materials that include silica and a stabilizer,
such as Y 203. Id. According to the Examiner, this sintered refractory
material is useful for glass industry. Id. citing Ketcham abstract and page 2,
11. 4-9. Based on these findings, the Examiner has concluded that "one
having ordinary skill in the art would have found it obvious to incorporate
Nb20s, Ta20s [in ]to the sintered material produced from zircon and zirconia
of Guigonis, as taught by Tanner [(sic., Ketcham)], in order to yield a
toughening agent in situ which produces materials exhibiting pseudo-
plasticity coupled with high mechanical strength." Id.
This conclusion, however, is flawed. On this record, the Examiner
has not demonstrated that one of ordinary skill in the art would have been
led to incorporate Nb20s and/or Ta20s used for forming the ceramic material
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Appeal2014-005006
Application 12/519,630
having pseudo plasticity or shape memory behavior discussed in Ketcham
into the sintered refractory block useful for glassmaking furnaces taught by
Guigonis. Compare App. Br. 6-8 and 10-12 and Reply Br. 2--4 with Final
Act. 2-6 and Ans. 2-8. As pointed out by Appellants, Ketcham is directed
to "[ c Jeramie materials that deform plastically at room temperature to
demonstrate a measure of ductility [(pseudo-plasticity)]" and to exhibit
shape memory behavior. Ketcham p. 2, 4-5 and p. 4, 11. 42-49; App. Br. 6-
8. Ketcham defines ceramic materials having the above ductile or shape
memory property as follows:
Those objectives [of the invention] can be achieved in
ceramic alloys consisting essentially of specifically-defined
concentrations of partially-stabilized Zr02 and/or Hf02 and
transformation toughening agents therefor.
I have discovered two composition regions of Zr02
and/or Hf02 alloys, wherein the Zr02 and/or Hf02 is primarily
present in the tetragonal phase, \"1hich can exhibit substantial
plastic strain, viz., greater than 50% of pure elastic strain in
addition to the elastic strain, when subjected to four point
bending at room temperature before fracture .... The second
composition region consists essentially of Zr02 and/or Hf02
toughened with Nb20s and/or Ta20s and/or V 20s and partially
stabilized with Ce02, wherein Y 203 and/or Sc203 and/or a rare
earth oxide may replace up to one-half of the Ce02.
Ketcham, p. 3, 11. 24-58; App. Br. 6-7. Such ceramic materials, according
to Ketcham, are used for consumer or industry applications that take the
advantage of shape memory or ductile behavior, such as connector
components for optical waveguides. Ketcham p. 4, 11. 21-57; App. Br. 7.
The Examiner has not shown that the pseudo-plasticity and/or shape
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Appeal2014-005006
Application 12/519,630
memory properties associated with adding Nb20s and/or Ta20s and Ce02 to
Zr02 and/or Hf02 alloys are suitable for the sintered refractory block for
glassmaking furnaces taught by Guigonis. Compare App. Br. 6-7 with Final
Act. 2-6 and Ans. 2-8. Nor has the Examiner shown that Nb20s and/or
Ta20s taught by Ketcham would be useful as additives for the sintered
refractory block for glassmaking furnaces taught by Guigonis. Compare,
e.g., App. Br. 6 with Ans. 3 citing Ketcham abstract and page 2, 11. 4-9. As
explained by Appellants, "Guigonis, at col. 2, lines 60-63, discloses that
"the sinterable batch can contain usual additives," and these additives "'are
volatilized off during the firing step."' App. Br. 11. Nevertheless, the
Examiner has not referred to any teaching in the applied prior art and/or
supplied any evidence to show that Nb20s and/or Ta20s taught by Ketcham
are "usual additives" for a batch used in making a sintered refractory block
employed in glassmaking furnaces and/or "'are volatilized off during the
firing step."' Final Act. 2-6; Ans. 2-8. Moreover, the Examiner has not
relied upon the disclosure of Sadoway to remedy the above deficiencies in
Guigonis and Ketcham. Final Act. 5-6; Ans. 5-6.
It follows that the Examiner has not carried the burden of establishing
a prima facie case of obviousness regarding the subject matter recited in
claims 1-7 and 9-25 within the meaning of 35 U.S.C. § 103(a). In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Having determined that the
Examiner has failed to establish a prima facie case of obviousness, we need
not and do not reach the evidence submitted in support of unexpected
results. In re Geiger, 815 F.2d 686, 688 (Fed. Cir. 1987).
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Appeal2014-005006
Application 12/519,630
ORDER
In view of the foregoing, the decision of the Examiner to reject claims
1-7 and 9-25 under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
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