Ex Parte Kutilek et alDownload PDFPatent Trial and Appeal BoardApr 21, 201511952385 (P.T.A.B. Apr. 21, 2015) Copy Citation 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. 11/952,385 12/07/2007 Luke A. Kutilek 1845A1/C1 1153 24959 7590 04/22/2015 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER CHEN, BRET P ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 04/22/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUKE A. KUTILEK and CORY D. STEFFEK ____________ Appeal 2013-001181 Application 11/952,3851 Technology Center 1700 ___________ Before BEVERLY A. FRANKLIN, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HASTINGS. Opinion Concurring filed by Administrative Patent Judge NAGUMO. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 26 through 34, and 382 under 35 U.S.C. § 103(a) as being unpatentable over Chopin (US 6,362,121 B1, issued Mar. 26, 2002) alone, or with Greenberg (US 6,027,766, issued Feb. 22, 2000). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is PPG Industries Ohio, Inc. (App. Br. 2). 2 Claims 35 through 37 are withdrawn (App. Br. 2). Appeal 2013-001181 Application 11/952,385 Claim 26 is illustrative of the subject matter on appeal (emphasis added): 26. A method of making a crystalline titania coating on a glass substrate by aqueous spray pyrolysis without post-heating, comprising the steps of: providing a glass substrate having a temperature less than or equal to 1150ºF [621.1ºC]; directing an aqueous coating composition toward the glass substrate, the coating composition comprising a titania precursor material and at least one dopant selected from at least one of Mo, V, Al, Zn, Zr, Li, K, Co, La, Ca, Ba, Si, Ag, Cu, Ni, Mg, Mn, Cd, Fe, Cr, Tb, Y, Sn, Ge, Pd, and combinations thereof, wherein the dopant is present in a range of greater than or equal to 3 atomic percent less than or equal to 8 atomic percent, and wherein the coating composition pyrolyzes on the substrate to form the crystalline titania coating without subsequent post- heating. Appellants argue the claims as a group, and focus on limitations of independent claim 26 (App. Br. 4–9). Accordingly, all the claims stand or fall with claim 26. We also separately address independent claim 38 below. ANALYSIS After thorough review of the respective positions provided by Appellants and the Examiner, we AFFIRM the § 103(a) rejection on appeal for essentially the reasons presented by the Examiner, including the Response to Argument section (Ans., mailed August 21, 2012). We add the following primarily for emphasis. Appellants’ arguments directed to the deficiencies of Chopin are not persuasive as they fail to consider the applied prior art as a whole (App. Br. 4–8). Appellants do not specifically refute the Examiner’s findings that 2 Appeal 2013-001181 Application 11/952,385 Chopin encompasses a spray pyrolysis process generically comprising the claimed steps. Indeed, Appellants’ Specification describes a “conventional” spray pyrolysis process that includes the same steps as recited in claim 26 except it does not describe the use of a dopant (Spec. ¶ 6). Appellants’ contentions that Chopin does not explicitly teach or suggest that the use of a dopant lowers the amorphous-to-crystalline transition temperature, and does not use a dopant in examples with spray pyrolysis therein, are unavailing (App. Br. 5, 6) for essentially the reasons set out by the Examiner (e.g., Ans. 4, 5). Appellants do not provide any persuasive technical reasoning or credible evidence to refute the Examiner’s determination that it would have been prima facie obvious to use any of the known dopants as taught in Chopin for a spray pyrolysis in amounts that substantially encompass the claimed amount. Cf. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures” of the prior art “must be considered”, affirming obviousness of composition selected from among more than 1,200 compositions disclosed in patent); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–418 (2007) (The predictable use of prior art elements or steps according to their established function is ordinarily obvious; further, the “inferences and creative steps that a person of ordinary skill in the art would employ” can be taken into account). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Notably, Appellant’s Specification definition of “substantially crystalline” encompasses any degree of crystalline that results in “reflections in the x-ray diffraction pattern” (Spec. sentence bridging pp. 7, 8). Notably, claim 26 does not explicitly require a shift in the transition temperature; 3 Appeal 2013-001181 Application 11/952,385 rather, claim 26 requires that the recited process achieve a crystalline titania coating without subsequent post-heating. As pointed out by the Examiner, Chopin describes that some degree of a crystalline titania coating is achieved without post-heating/annealing (Ans. 5). Furthermore, if necessary, the Examiner’s determination that some shift in transition temperature would have naturally followed from following the suggestion of Chopin to use a dopant is reasonable (id.). Appellants have not provided any evidence to the contrary. Appellants do not dispute the Examiner’s finding that Chopin’s process includes the use of a dopant in amounts between 0.01 and 10% that encompass the amount claimed of 3 to 8 atomic percent (Ans. 2; App. Br., Reply Br. generally). The Examiner’s determination that this results in a situation that renders the claimed amount prima facie obvious is reasonable (e.g., Ans. 3). Cf. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003) (A prima facie case of obviousness exists when the ranges of a claimed composition overlap or are encompassed by the ranges disclosed in the prior art. When the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling). The normal desire of scientists to improve upon what is already generally known provides a reason to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. Thus, Appellants’ arguments that the applied prior art fails to render obvious the claimed invention are unavailing, and a preponderance of the evidence supports the Examiner’s reasonable position that it would have 4 Appeal 2013-001181 Application 11/952,385 been prima facie obvious to use the claimed dopants in the claimed ranges so as to result in the claimed spray pyrolysis process. Furthermore, a preponderance of the evidence supports the Examiner’s de facto position that the artisan of ordinary skill would have appreciated that the amount of the dopant, as well as the pyrolysis temperature, were known result effective variables (Ans. generally). In any event, the pyrolysis temperature recited in claim 26 is the same as that described in Appellant’s Specification for “conventional spray pyrolysis methods” (Spec. ¶ 6). The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. It is well settled that, generally speaking, it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. These cases have consistently held that the Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). On this record, Appellants have not met this burden. Appellants’ argument that their Specification exemplifies unexpected results for the claimed amounts of dopant (App. Br. 8, 9) is not persuasive of 5 Appeal 2013-001181 Application 11/952,385 error in the Examiner’s rejection. The evidence relied on by Appellants is unpersuasive of patentability. The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Appellants’ Specification does not describe the results as unexpected, and they have not shown how their Figure 2 is directed to a comparison with the closet prior art (Spec. ¶¶ 40 and 41; Fig. 2), nor have they shown why this limited showing of one example of a vanadium dopant in a range from 0 through 8 atomic percent is in any way commensurate in scope with the breadth of claim 26 which, e.g., encompasses many different dopants, numerous temperatures, and numerous precursors (e.g., Ans. 5).3 In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007)(“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). Here, the case of obviousness established by the Examiner is so strong that Appellants’ alleged superior results are ultimately insufficient. 3 Appellants’ contention that claims 27 and 32 recite vanadium as the dopant are likewise not persuasive of patentability, since the effect of many other variables has not been taken into account (Reply Br. 5, 6). 6 Appeal 2013-001181 Application 11/952,385 Notably, as pointed out by the Examiner, independent claim 38 does even recite a vanadium dopant, and recites a dopant range of greater than 0 to 3 that substantially differs from the allegedly unexpected dopant range of 3 to 8 atomic percent set out in claim 26 (Claims App’x). Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Thus, the rejection of claim 38 is affirmed for this additional reason. Accordingly, we affirm the Examiner’s § 103 rejection of all the claims on appeal based on the applied prior art. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED cdc 7 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUKE A. KUTILEK and CORY D. STEFFEK ____________ Appeal 2013-001181 Application 11/952,3854 Technology Center 1700 ___________ Before BEVERLY A. FRANKLIN, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. NAGUMO, Administrative Patent Judge, concurring. I concur in the judgment. I write separately to emphasize my view that, notwithstanding inaccuracies in the Examiner’s findings and analysis, Appellants have not shown harmful error in the holding of obviousness. First, as the majority points out (Op. 3–4), the term “crystalline titania coating” is not defined precisely in the ʼ385 Specification, and the broadest reasonable interpretation of that includes titania coatings that exhibit x-ray reflections characteristic of a crystalline structure. In this regard, Chopin discloses the formation of titanium dioxide coatings “with a degree of crystallinity preferably of at least 25%” (Chopin, col. 2, ll. 60–61), preferably from approximately 30 to 80% (id. at ll. 61–62). 4 The Real Party in Interest is PPG Industries Ohio, Inc. (App. Br. 2). Appeal 2013-001181 Application 11/952,385 The amount (and type) of crystallinity are measured by X-ray diffraction. (Id. at col. 3, ll. 5–6). As the Examiner finds (Ans. 5), Chopin teaches that “heat treatment of the annealing type is not essential in the case where the coating is deposited by a pyrolysis technique, . . . where the organometallic compound decomposes as soon as it comes into contact with the substrate.” (Chopin, col. 10, ll. 10–14.) Chopin provides a general description of liquid pyrolysis using substrates heated in an oven to a temperature of 400 to 650°C. (Id. at col. 16, ll. 52–55.) This range overlaps substantially the range recited in claim 1.5 Chopin also reports specific examples of liquid pyrolysis at 500°C [532°F] (Examples 3–5; col. 17, ll. 18–21), resulting in titania “partially crystallized in the anatase form” (id. at l. 26); see also Examples 6 and 7, reporting liquid pyrolysis at 200°C [392°F] (id. at col. 18, ll. 49-52), resulting in titania “crystallized to 65% in anatase form.” (Id. at ll. 57-58.) Thus, Chopin provides a reasonable expectation that liquid pyrolysis results in crystalline (anatase) films. Appellants’ generic characterization that titania films produced by liquid pyrolysis at temperatures less than 1150°F (~620°C) “tend to be amorphous rather than crystalline” (Spec. 1 ¶ 4), and their limited experimental showings (Figs. 2–4 and associated text) are not sufficient to place the specific teachings of Chopin in doubt. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“[W]e hold a 5 Appellants do not raise arguments for the separate patentability of any other claims in the principal Brief on appeal. Nor do they show good cause why arguments in the Reply directed to other claims could not have been presented earlier. 2 Appeal 2013-001181 Application 11/952,385 presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled.”) Similarly, Appellants do not support their unelaborated statement that “[a]t best, Chopin states that pyrolysis is advantageous and separately that a dopant can be used in a sol-gel process” (App. Br. 6, ll. 2–3) by a direct citation to Chopin. In particular, Appellants do not explain why Chopin’s statement6: According to a first alternative form, at least a portion of the titanium dioxide particles of the coating can comprise, in their crystal lattice, metal ions chosen from iron, copper, ruthenium, molybdenum, bismuth, tantalum, niobium, cobalt, nickel or vanadium. The ratio of the mass of these ions with respect to the mass of the titanium dioxide particles is generally between 0.01 and 10%. (Chopin, col. 4, ll. 36–42) would have been understood by persons having ordinary skill in the art to apply only to sol-gel processes. Moreover, Chopin presents Example 7 as a repetition of the liquid pyrolysis preparation of Example 6, using the niobium-doped titanium dioxide particle dispersion produced in Example 2. (Chopin, col. 19, ll. 1-6.) Thus, Appellants’ characterization of Chopin as not teaching or suggesting doped titania films prepared by liquid pyrolysis is contradicted by this working example. As the majority points out, Appellants’ arguments that the prior art does not teach that metal dopants will lower the temperature of the 6 This passage was cited by the Examiner in the office action mailed 3 January 2012, at page 2, next to last line, and in the Examiner’s Answer at 2, l. 11. 3 Appeal 2013-001181 Application 11/952,385 amorphous-to-crystalline transition are not probative of harmful error. (Op., para. bridging 3–4.) I part company from my colleagues, however, in the treatment of the Examiner’s holding that it would have been obviousness to vary the temperature and the dopant concentration. In particular, I am not persuaded that the Examiner makes sufficient findings to support the identification of metal dopants as a parameter recognized to affect titania crystallinity such that crystallinity would be optimized in the range of 3 to 8 atomic%, as required by claim 1. Cf. Application of Antonie, 559 F.2d 618, 620 (CCPA 1977) (the case “in which the parameter optimized was not recognized to be a result-effective variable[] is another exception [to the rule that discovery of an optimum value of a variable in a known process is normally obvious].”) Nonetheless, even though lacking the additional explanation proffered by Appellants, Chopin’s teachings would have provided the routineer with a reasonable expectation that metal-doped crystalline titania films would be obtained under the liquid pyrolysis conditions taught by Chopin.7 7 This could be characterized as a showing that these parameters are “result- effective” only in a trivial sense. The teachings only provide an expectation that the presence of the dopant would not affect the crystalline state of the undoped titania resulting from the liquid pyrolysis. The Examiner has not, in my view, demonstrated or explained that a cause-and-effect relation would have been recognized between adding a dopant and decreasing the crystallization temperature in this system. A similar objection may be raised to the characterization of temperature as a “result-effective variable” that may be “optimized” below T = 1150°F. Again, Chopin teaches that crystalline titania may be obtained at temperatures below 1150°F, but applying the term “optimization” is, in my view unwarranted in the absence 4 Appeal 2013-001181 Application 11/952,385 Appellants have not provided an evidentiary basis sufficient to rebut these teachings. In summary, given the scope of the term “crystalline,” as used in the appealed claims, and the failure of Appellants to establish that the routineer would have regarded as incorrect Chopin’s teachings that “crystalline” titania coatings are produced by liquid pyrolysis, I conclude that harmful error has not been shown in the Examiner’s holding of obviousness.8 I therefore concur in the affirmance of the appealed rejection. of showing there was a desired property known to be improved by the deliberate variation of the temperature in that range. 8 I do not find it necessary to consider the Examiner’s treatment of Greenberg, or to write separately regarding the arguments regarding unexpected results. 5 Copy with citationCopy as parenthetical citation