Ex Parte Hung et al

Board of Patent Appeals and Interferences

Apr 16, 2012

11534346 (B.P.A.I. Apr. 16, 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.
11/534,346 09/22/2006 Cheng-Hung Hung 2147A1 5815
24959 7590 04/16/2012
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
PATEL, SMITA S
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
04/16/2012 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 CHENG-HUNG HUNG and
NOEL R. VANIER
____________

Appeal 2010-010592
Application 11/534,346
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 (2002) involving claims 1-14,
16 and 19 to a method for making ultrafine particles. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Claim 14 is illustrative:
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Application 11/534,346

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14. A method for producing ultrafine particles from a plurality of
precursors comprising introducing the plurality of precursors to a high
temperature chamber, the precursors comprising:

(a) a first precursor; and

(b) a second precursor different from the first precursor and
comprising an alkali metal dopant.

THE PRIOR ART
The Examiner relies upon the following references in the rejection
(Ans. 3):1
Zhang US 2005/0119398 A1 June 2, 2005
Y. Bessekhouad et al., “Effect of Alkaline-doped TiO2 on Photocatalytic
Efficiency”, 167 Journal of Photochemistry and Photobiology A: Chemistry
49-57( June 20, 2004), available at www.sciencedirect.com.

THE REJECTIONS
Claims 1-14, 16 and 19 are pending in the application. Claims 17, 18
and 20 are withdrawn from consideration. Claims 1-14, 16 and 19 stand
rejected under 35 U.S.C. § 103(a) as obvious over Zhang in view of
Bessekhouad.2

1 Our analysis makes reference to the Examiner’s Answer mailed March 30,
2010 (“Ans.”), the Appeal Brief filed February 5, 2010 (“App. Br.”), and the
Reply Brief filed May 26, 2010 (“Reply Br.”).
2The Office Action Summary of the Final Rejection mailed September 15,
2009, identifies claim 19 as pending but not rejected, and claim 20 as
withdrawn and rejected. Claim 19 is pending and rejected, and claim 20 is
withdrawn and not at issue (Ans. 2-3; App. Br. 2-3).
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ANALYSIS
We focus our analysis on illustrative claim 14. The Appellants separately
argue several groups of claims; however, our analysis of claim 14 applies
with equal force to all of the claims pending in the application.
There is agreement that Zhang, which is directed to a method for making
ultrafine particles, discloses all of the limitations of claim 14 except for the
use of an alkaline metal dopant in the second precursor (App. Br. 5-9; Ans.
4). According to the Examiner, Bessekhouad discloses a method for making
ultrafine particles that uses an alkaline metal dopant (Ans. 4).
The Appellants contend that Bessekhouad is outside the scope and
content of the prior art because it relates to a liquid phase method for
producing ultrafine particles, whereas the claimed invention relates to a
vapor phase method for producing ultrafine particles (App. Br. 6-7). The
Examiner found that “both processes are used to make titanium dioxide of
nanoparticle size and for use as a photocatalyst” (Ans. 7-8). Both processes
in fact recognize the desirability of reducing the size of titanium dioxide
nanoparticles and both are concerned with enhancing the efficiency of
titanium dioxide nanoparticles having a size of about 50 nanometers (see,
e.g., Spec. paras. [0003], [0017-18]; Bessekhouad p. 49 (Introduction)). On
this record, we agree with the Examiner that Bessekhouad is “reasonably
pertinent to the particular problem with [which] the applicant was
concerned” (Ans. 8, citation omitted).
We thus turn to the question whether an ordinary artisan would have been
motivated to use the alkaline metal dopant of Bessekhouad in the method of
Zhang. On this point, the Examiner determined that the requisite motivation
to combine consisted of a desire “to improve efficiency of titanium dioxide
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Application 11/534,346

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ultrafine particles” (Ans. 8). The Appellants contend, however, that even if
the Examiner has made out a prima facie case of obviousness, “such a case
would be rebutted by the evidence of surprising results described in the
present application” (App. Br. 8 citing Spec. para. [0028] and Examples).
Specifically, the Specification discloses that “[i]t has been surprisingly
discovered that several benefits” attend the use of the claimed method with
an alkaline metal dopant as compared to the use of an identical method
without an alkaline metal dopant (Spec. para. [0028]). These benefits
include “a significant reduction in the average primary particle size of the
ultrafine particles” in which the “reduction was achieved without any
significant effect on throughput” (App. Br. 8 citing Spec. para. [0028]). The
Appellants rely on Tables 2, 4, 6, and 8 of the Specification, which show
that “the B.E.T. specific surface area of ultrafine particles produced in
Examples 2, 3, 8 and 9 (cesium dopant) and Examples 4 and 5 (potassium
dopant) were > 100% higher than those of Example 1 (no dopant)” (App.
Br.. 8-9; see Spec. at Tables 2, 4, 6, and 8).3 “Similarly, as shown in Table
6, a small amount of lithium dopant in Example 7 dramatically (>10x)
increased the B.E.T. specific surface area of ultrafine particles produced as
compared to Example 6 (no dopant)” (App. Br. 9; see Spec. at Table 6).
A patent applicant may rely on the Specification as evidence of
unexpected results where, for example, the Specification “contains specific
data indicating improved properties” and teaches that the improvement was

3 The Specification defines the term “B.E.T. specific surface area” as “a
specific surface area determined by nitrogen adsorption according to the
ASTMD 3663-78 standard based on the Brunauer-Emmett-Teller method
described in the periodical ‘The Journal of the American Chemical Society’,
60, 309 (1938)” (Spec. para. [0016]).
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“much greater than would have been predicted.” In re Soni, 54 F.3d 746,
750 (Fed. Cir. 1995) (omitting internal citation). In such circumstances, it is
incumbent upon the Examiner to “consider comparative data in the
specification in determining whether the claimed invention provides
unexpected results.” Id. (citing In re Margolis, 785 F.2d 1029, 1031 (Fed.
Cir. 1986)). The appeal record before us contains no indication that the
Examiner considered the evidence of unexpected results contained in the
Specification and advanced by the Appellants in this appeal (App. Br. 8-9;
Ans. 8; Reply Br. 2).
The Appellants fully briefed their position regarding the evidence of
unexpected results contained in the Specification (App. Br. 8-9), but the
Examiner nowhere addresses that evidence (see, e.g., Ans. 8). The
Examiner recites the law that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does not [sic]
more than yield predictable results,” but fails to meet the Appellants’
argument that the results disclosed in the Specification were surprising or
unpredictable (Ans. 8-9 quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Under these circumstances, we agree with the Appellants that
the rejection of the pending claims cannot be sustained (Reply Br. 2).
The above analysis regarding claim 14 applies with equal force to each of
the remaining pending claims at issue in this appeal. Therefore, based on the
above analysis, we reverse the rejection of claims 1-14, 16 and 19 as obvious
under § 103(a).
REVERSED

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