Ex Parte KUBODERA et al

Board of Patent Appeals and Interferences

Sep 5, 2002

08625008 (B.P.A.I. Sep. 5, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte NORIYUKI KUBODERA
and
YASUTO INAGAKI
_______________
Appeal No. 2001-2677
Application No. 08/625,008
_______________
ON BRIEF
_______________
Before PATE, STAAB, and NASE, Administrative Patent Judges.
PATE, Administrative Patent Judge.
This is an appeal from the final rejection of claims 2,
and 4 through 26. Claims 1, 3, 27, 28, and 29 have been
cancelled. Thus, the appealed claims are the only claims
remaining in the application.
Appeal No. 2001-2677
Application No. 08/625,008
2
The claimed subject matter is directed to a method for
cutting a ceramic block. A green ceramic block is prepared by
laminating a plurality of green ceramic sheets. The ceramic
sheets have been formed using an organic binder. The laminated
green ceramic sheets which form the green block are heat treated
to at least 50°C or higher. This gives the ceramic block a
Vickers hardness in the range of 20 to 100 kg/cm2. When these
blocks are cut with a dicing saw they exhibit surface roughness
values within the range of .05 to 0.15
m.
Claim 8, reproduced below, is further illustrative of
the claimed subject matter.
8. A method of cutting a ceramic block, comprising the
steps of:
preparing a ceramic green block by laminating a
plurality of ceramic green sheets and applying a metallic layer
to a surface of at least one of said plurality of ceramic green
sheets so as to form an inner metallic portion in said ceramic
green block; said ceramic green block including a binder, in an
amount of at least 4 percent by weight of the block;
heat treating said ceramic green block at 50 degrees C
or higher so as to cure it and improve its hardness, thereby
giving said heat treated ceramic block a Vickers hardness in the
range of 20 to 100 kg/cm2; and
cutting said heat treated ceramic block with a dicing
saw.
Appeal No. 2001-2677
Application No. 08/625,008
3
The references of record relied upon as evidence of
obviousness are:
O'Neill et al. (O'Neill) 3,794,707 Feb. 26, 1974
Wada et al. (Wada) 4,607,316 Aug. 19, 1986
REJECTION
Claims 2, and 4 through 26 stand rejected under
35 U.S.C. § 103 as unpatentable over O'Neill in view of Wada.
OPINION
We have carefully reviewed the rejection on appeal in
light of the arguments of the appellants and the examiner. As a
result of this review, we have determined that the applied prior
art does not establish a prima facie case of obviousness with
respect to the claims on appeal. Therefore, the rejection on
appeal is reversed. Our reasons follow.
To summarize the examiner's rationale underlying the
rejection, the examiner notes that O'Neill teaches the method
steps claimed in claims 8 and 15. The specific range of Vickers
hardness and surface roughness called for in these independent
claims are stated by the examiner to be a natural consequence of
performing the method within the recited range of parameters.
Appeal No. 2001-2677
Application No. 08/625,008
4
This conclusion regarding "natural consequences" is based on mere
supposition by the examiner. However, speculation and conjecture
cannot provide a proper evidentiary basis to support a rejection
under § 103.
While the measurement of a physical property may not of
itself impart patentability to otherwise unpatentable claims,
when the measured property serves to point up the distinction
from the prior art, or advantages over the prior art, that
property is relevant to patentability, and its numerical
parameters can not only add precision to the claims but also may
be considered, along with all of the evidence, in determination
of patentability. In re Glaug, 283 F.3d 1335, 1341, 62 USPQ2d
1151, 1155 (Fed. Cir. 2002) (citing Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1216, 36 USPQ2d 1225, 1228
(Fed. Cir. 1995)(affirming the district court’s definition of
“skinless” as a performance characteristic in accordance with
the measurements of bubble point, flow time, and KL curve)).
In our view, the claimed Vickers hardness in claim 8 or
the surface roughness in claim 15 is part of the heat treating or
cutting step respectively. Seen in this manner, it is clear that
O'Neill does not disclose these specific steps claimed by
appellants.
Appeal No. 2001-2677
Application No. 08/625,008
5
We further note the examiner's allegation that the
independent claims are silent with respect to critical
limitations such as the binder chosen or the property and
parameters used in the claimed sawing step. We agree with
appellants that the claims are merely broad in these respects,
and are not missing critical limitations.
Inasmuch as the examiner has failed to provide a sound
evidentiary basis to undergird a prima facie case of obviousness
under § 103, the rejection of all claims on appeal is reversed.
REVERSED

WILLIAM F. PATE III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
WFP:psb
Appeal No. 2001-2677
Application No. 08/625,008
6
Ostrolenk Faber Gerb & Soffen
1180 Avenue of the Americas
New York, NY 10036-8403