Ex Parte Dogan

Patent Trial and Appeal Board

Mar 23, 2017

13423579 (P.T.A.B. Mar. 23, 2017)

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.
13/423,579 03/19/2012 Fatih Dogan 35-11173 3145
77741 7590 03/27/2017
Rrannnn Sowers; Rr rYarraft PP
EXAMINER
1 North Pennsylvania Street
Suite 800
DEL SOLE, JOSEPH S
Indianapolis, IN 46204 ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
docket @ bscattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FAITH DOGAN
Appeal 2016-004919
Application 13/423,579
Technology Center 1700
Before MICHAEL P. COLAIANNI, JENNIFER R. GUPTA,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
decision to finally reject claims 10-20 and 29-42. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the real party in interest as the Curators of the
University of Missouri. App. Br. 3.
Appeal 2016-004919
Application 13/423,579
Claim 10 illustrates the subject matter on appeal and is reproduced
below:
10. A method for producing a polycrystalline ceramic
material, comprising:
pressing a predetermined amount of substantially pure
substantially fine precursor powder to yield a generally dense
green body;
sintering the green body in an oxidizing atmosphere at
sufficient firing temperature for sufficient soak time to yield a
substantially densified sintered body; and
cooling the substantially densified body at a substantially
slow rate of about 3°C/min;
wherein the substantially densified sintered body has a
maximum porosity of less than about 1 percent; and
wherein the substantially densified sintered body has an
average grain size of less than about 300 nm.
Appellant requests review of the Examiner’s rejection of claims 10—
20 and 29-42 under 35 U.S.C. § 103(a) as unpatentable over Zhan
(US 6,905,649 B2, issued June 14, 2005), Hennings (US 5,759,480, issued
June 2, 1998), and Paul (US 7,910,510 B2, issued March 22, 2011). App.
Br. 9; Final Act. 2.
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Appeal 2016-004919
Application 13/423,579
OPINION
The Prior Art Rejection2
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s prior art rejection of claims 10—20
and 29-42 under 35 U.S.C. § 103(a) for the reasons presented by Appellant
and add the following.
Independent claims 10, 29, and 41 require a method of making a
densified sintered body having a maximum porosity of less than about 1
percent (less than about 0.1 percent for claim 41). We limit our discussion
to independent claim 10 with the understanding that the discussion applies
equally to all independent claims as well as dependent claims 11—20 and SO­
SO, and 42.
The Examiner found Zhan discloses a method of making a dielectric
substrate (polycrystalline ceramic) having a density equal to the theoretical
density (0% porosity)3 from a material such as barium titanate that differs
from the claimed invention in that Zhan does not disclose sintering the
material in an oxidizing environment. Final Act. 2; Zhan Abstract, col. 4,1.
13—col. 6,1. 53 (including table). The Examiner found Hennings discloses a
2 A discussion of the reference to Paul is unnecessary for disposition of this
appeal. Paul was relied upon by the Examiner for features not related to the
porosity of the sintered material. Final Act. 3.
3 Both Appellant and the Examiner interpret porosity as related to the per
cent theoretical density of the sintered body. Spec. 132; see Appeal Brief,
generally, Final Act. 2. For example, Appellants describes greater than
about 99.9% of theoretical density as equivalent to less than about 0.1 %
porosity while the Examiner refers to a density equal to theoretical
Density as corresponding to 0% porosity. Spec. 32; Final Act. 2. That is,
both Appellants and Examiner recognize that porosity is the difference
between the theoretical density for a material and its actual density.
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Appeal 2016-004919
Application 13/423,579
method of forming a dielectric ceramic component from barium titanate
having a density that is 96—98% of theoretical density (2-4% porosity) by
heating to a temperature as high as 1300 °C for 2 hours in an oxidizing
atmosphere to address difficulties of sintering barium titanate in a reducing
or inert atmosphere, such as becoming semiconducting. Final Act. 2—3; Ans.
3; Hennings col. 1,1. 57—col. 2,1. 9, col. 7,11. 43—59, claim 1. The Examiner
determined it would have been obvious to modify the process of Zhan by
replacing Zhan’s spark plasma sintering method with Henning’s sintering
method comprising an oxidizing environment for the reasons disclosed by
Hennings. Final Act. 3; Ans. 2.
Appellant argues Zhan’s results of a sintered body having low
porosity and small grain size are inextricably coupled to the spark plasma
sintering method utilized because Zhan teaches it is critical to increase the
temperature at a heating rate of at least about 350 °C per minute once the
compacted material reaches about 600 °C to achieve a small grain size and a
density approaching full density of 99.9% of theoretical density or greater.
App. Br. 12; Zhan col. 4,11. 13—51; col. 5,11. 1^4. Appellant argues
Hennings, on the other hand, discloses raising the temperature to 1300 °C at
a rate of 5 °C per minute and held for 2 hours to achieve sintered barium
titanate layers of 96-98 percent of theoretical density. App. Br. 13;
Hennings, col. 7,11. 42—58. Thus, Appellant asserts the combination of Zhan
and Hennings would necessarily change the principle of operation of Zhan
and/or Hennings because of the differences between the rapidly heating of
Zhan sintering process and the slow heat ramping sintering process of
Hennings. App. Br. 12, 15.
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Appeal 2016-004919
Application 13/423,579
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
We agree with Appellant that the Examiner has not met the burden in
this case. The Examiner’s proposed modification of Zhan is premised on
substituting Henning’s sintering method/oxidizing environment for Zhan’s
spark plasma sintering method because the claimed porosity would be
achievable through a sintering method in an oxidizing environment in view
of the high density disclosure of Hennings. Ans. 2-4; Zhan col. 4,11. 13—67;
Henning col. 7,11. 43—58. The Examiner has not adequately addressed
Appellant’s point that, if one were to modify the teachings of Zhan by
substituting Zhan’s high heating rate spark plasma sintering process in a
vacuum environment (Zhan col. 4,11. 13—67) with Henning’s low heating
rate sintering process under an oxidation environment (Henning col. 7,11.
43—58), the resultant process would not result in a sintered body having a
porosity of 0.1% or less desired by Zhan (as represented by the 99.9% or
greater of theoretical density achievement). Nor has the Examiner directed
us to any portion of Hennings that teaches a sintered body having the
claimed porosity or approaching Zhan’s near 0% porosity. Zhan col. 5,11.
\—A. At best, Hennings discloses achieving a minimum porosity of 2%
(98% of theoretical density). Hennings col. 7,11. 56—58. Given that Zhan
discloses the desired low porosity of 0.1% or less (99.9% of greater of
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Appeal 2016-004919
Application 13/423,579
theoretical density) is only achievable by a sintering process using a high
heating rate at temperatures above about 600 °C, the Examiner has not
adequately explained how one skilled in the art would have adapted
Henning’s low heating rate sintering process to reach this desired low
porosity without changing the principle of operation of Zhan. App. Br. 14—
15; Zhan col. 4,11. 13—51. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984) (“If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification.”); In re Ratti,
270 F.2d 810, 813 (CCPA 1959) (“If the proposed modification or
combination of the prior art would change the principle of operation of the
prior art invention being modified, then the teachings of the references are
not sufficient to render the claims prima facie obvious.”). Thus, the
Examiner has not provided an adequate technical explanation of how one
skilled in the art would have modified Zhan’s process of making a sintered
body in view of Hennings’ teachings.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See Oetiker, 977 F.2d at 1445; KSR, 550 U.S. at 418.
Accordingly, we reverse the Examiner’s prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by Appellant and given above.
In view of our reversal of the prior at rejection, we do not reach the
Declarations under 37 C.F.R. § 1.132 of Dr. Erik M. Erbe or Dr. Faith
Dogan, both submitted on July 11, 2014. Ans. 2.
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Appeal 2016-004919
Application 13/423,579
ORDER
The Examiner’s prior art rejection of claims 10—20 and 29 42 under
35 U.S.C. § 103 (a) is reversed.
REVERSED
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