Ex Parte Kutilek et al

Board of Patent Appeals and Interferences

Oct 9, 2007

10409417 - (D) (B.P.A.I. Oct. 9, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUKE A. KUTILEK
and CORY D. STEFFEK,
APPELLANT
____________
Appeal 2007-4227
Application 10/409,4171
Technology Center 1700
____________

Decided: October 9, 2007
____________

Before FRED E. McKELVEY, Senior Administrative Patent Judge,
CAROL A. SPIEGEL, and MARK NAGUMO, Administrative Patent
Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application filed 8 April 2003. The real party in interest is listed as PPG
Industries, Inc. (Supplemental Brief on Appeal, filed 5 April 2007 ("Br."),
at 2.)
Appeal 2007-4227
Application 10/409,417

A. Introduction
Appellant ("Kutilek") appeals under 35 U.S.C. § 134 from the final
rejection of claims 1-8, 10–15, 26, and 27. Claims 16–25 are pending but
have been withdrawn from consideration by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The subject matter on appeal relates to a method of shifting the
amorphous to crystalline transition temperature of a titania (TiO2) coating
material comprising adding a metal to the titania.
Claim 1 is representative of the issues necessary to resolve this appeal
and reads:
A method of shifting the amorphous to crystalline transition
temperature of a titania coating material, comprising the steps
of:
adding at least one dopant to a titania-containing
material, the 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, Sn, Ge, and Pd,
and mixtures or combinations thereof.
(Br. at 7, Claims Appendix.)
The Examiner has maintained the following rejections:
(1) Claims 1-6, 13, and 14 are rejected under 35 U.S.C. § 102(b) in
view of Chopin2.
(2) Claims 7, 8, 10–12, 15, 26, and 27 are rejected under 35 U.S.C.
§103(a) in view of Chopin.

2 Thierry Chopin et al., Substrate with a Photocatalytic Coating Based on
Titanium Dioxide and Organic Dispersions Based on Titanium Dioxide,
U.S. Patent 6,362,121 B1, issued 26 March 2002.
2
Appeal 2007-4227
Application 10/409,417

B. Findings of Fact (FF)
The following findings of fact and any set out in the Discussion are
supported by a preponderance of the evidence of record.
417 Application
1. Application 10/409,417 ("417 Application") was filed 8 April 2003.
2. According to the inventors, the application relates to crystalline titania
films and methods of making them. (417 Application at 1, ¶ 1.)
3. The application states that crystalline titania films are typically
deposited at high temperatures, such as 1200°F to 1500°F (648°C to 800°C).
(417 Application at 1, ¶ 3.)
4. However, if the deposition temperature is below about 1150°F
(620°C), the titania films are said to tend to be amorphous. (417 Application
at 1, ¶ 3.)
5. Amorphous titania films are said to be less durable and therefore less
desirable in many applications compared to crystalline titania films.
(417 Application at 1, ¶ 3.)
6. According to the application, it is known to deposit a titania film on a
float glass ribbon in a float bath via a chemical vapor deposition (CVD)
apparatus. (417 Application at 1, ¶ 4.)
7. Another method of depositing titania films is said to be spray
pyrolysis, in which the precursor materials are dissolved in a solvent and
sprayed onto a substrate such as a float glass ribbon inside or outside of a
float bath. (417 Application at 2, ¶ 5.)
3
Appeal 2007-4227
Application 10/409,417

8. However, the temperature of a float glass ribbon as it exits the typical
float bath is said to be about 1150°F (620°C), so deposition of titania
precursors outside of the float bath, whether by CVD or spray pyrolysis,
tends to yield amorphous or poorly crystalline titania films.
(417 Application at 2, ¶ 4; and at 3, ¶ 6.)
9. The inventors disclose that the problems with low temperature
amorphous titania films may be overcome by adding to the titania precursor
materials a dopant comprising a metal from the list recited in claim 1.
(417 Application at 3, ¶ 8.)
10. According to the inventors, the dopant "can be present in any amount
to achieve a desired shift in the amorphous to crystalline transition
temperature of the titania material." (417 Application at 10, ¶ 26.)
11. More specifically, the inventors state that aluminum and molybdenum
can be present "in the range of greater than 0 atomic percent to less than 2
atomic percent," and that other dopants such as vanadium can be present "in
the range of 0 atomic percent to 8 atomic percent." (417 Application at 10,
¶ 26.)
12. According to the inventors, the crystalline structure of titania can
include one or more of anatase, rutile, brookite, or monoclinic crystalline
forms. (417 Application at 8, ¶ 20.)
13. These crystal structures are those commonly formed by titanium
dioxide, TiO2, and we understand Kutilek to be referring to TiO2 by the term
"titania."
4
Appeal 2007-4227
Application 10/409,417

14. In embodiments, the titania layer is said to be "photoactive," by which
is meant that an electron-hole pair is generated by illuminating the surface
with an appropriate wavelength of light. (417 Application at 8, ¶ 21.)
15. The 417 Application states that the photoactive surfaces may be
"photocatalytic," in that they may be self-cleaning: upon exposure to light,
organic materials on the surface may be catalytically degraded.
(417 Application at 9, ¶ 21.)
16. It is also taught that photoactive titania layers may be
"photohydrophilic" in that the contact angle with water may decrease with
increasing exposure to light. (417 Application at 9, ¶ 21.)
17. According to the inventors, a monoclinic vanadium-doped titania film
is photohydrophilic, but not photocatalytic, when exposed to UV radiation.
(417 Application at 15, ¶ 34.)
18. Upon conversion to predominately anatase form by annealing at
900°F (482°C) for 30 minutes, the vanadium-doped titania film is said to
become photocatalytic as well as photohydrophilic. (417 Application at 15,
¶ 34.)
19. The 417 Application shows that the monoclinic-to-anatase
transformation can be followed by x-ray analysis as presented in Example 3.
(417 Application at 17–18, ¶¶ 42-43, and Figure 4.)
Chopin
20. Chopin relates to substrates having a coating based on titanium
dioxide that have good photocatalytic properties as well as being durable,
transparent, and capable of being prepared industrially. (Chopin at 2:7–11.)
5
Appeal 2007-4227
Application 10/409,417

21. According to Chopin, these goals are met by providing a coating that
is at least partially crystalline in the anatase form. (Chopin at 2:12–17.)
22. Chopin provides a number of alternatives that are said to amplify the
photocatalytic effect of the titanium dioxide particles of the coating.
(Chopin at 4:27–35.)
23. In Chopin's words:
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 at 4:36–42.)
24. Chopin also teaches that the titanium dioxide surface, upon exposure
to appropriate radiation (e.g., visible or ultraviolet) "promotes the gradual
disappearance of dirty marks of organic origin, causing them to degrade by a
radical oxidation process." (Chopin at 6:36–42.)
25. In addition, Chopin states that the contact angle with water can be
reduced to 5° or less by exposing the titanium dioxide surface to light.
(Chopin at 6:43–56.)
26. Chopin discloses a method for producing substrates of the invention
that involves:
coating, by liquid-phase pyrolysis, from a dispersion
comprising at least one organometallic compound and titanium
dioxide particles, the said particles exhibiting the characteristics
of the particles incorporated in the final coating described
above.
6
Appeal 2007-4227
Application 10/409,417

The technique of deposition by pyrolysis is advantageous
because it makes possible the continuous deposition of the
coating directly on the float glass strip, when a glass substrate is
used.
(Chopin at 7:50–59.)
27. According to Chopin, "it can be advantageous to subject the coating,
after having deposited it, to at least one heat treatment of the annealing
type." (Chopin at 10:1–3.)
28. More specifically, "[t]his annealing generally consists in introducing
the substrate into an oven at a temperature of approximately 500 to 550°C
[932–1022°F] for a period of time which can range from 1 minute to 3
hours." (Chopin at 10:21–24.)
29. Chopin provides Examples 3 to 7 in which dispersions of titanium
dioxide particles are deposited on a substrate by pyrolysis. (Chopin at 16:36
to 19:6.)
30. The substrates are said to be 50 mm squares of clear soda-lime-silica
glass that are heated in an oven to a temperature of 400 to 650°C [752 to
1202°F] and then moved "at a constant rate in front of a movable nozzle
projecting an appropriate solution." (Chopin at 16:40–55.)
31. The "appropriate solutions" comprise, e.g., titanium diisopropoxy-
diacetylacetonate, titanium tetraoctylene glycolate, and organic solvents.
(Chopin at 16:60–67.)
32. According to Chopin, the pyrolyses were conducted at about 500°C
[932°F], and the liquid mixtures, which were held at room temperature, were
projected with compressed air. (Chopin at 17:18–21.)
7
Appeal 2007-4227
Application 10/409,417

33. The "liquid pyrolysis" described by Chopin appears to be reasonably
described as a "spray pyrolysis" process.
34. In Example 7, Chopin reports using a dispersion of titanium dioxide
particles containing 0.1% niobium-doped titanium dioxide particles (made in
Example 2 with an Nb/TiO2 molar ratio in the starting materials of 0.1%).
(Chopin at 19:1–5 and at 16:30–34.)
The Rejections and Counterarguments
Anticipation
35. The Examiner finds that Chopin teaches adding a dopant including
metals recited in claim 1, to titania-containing material. (Answer3 at 3;
FF21.)
36. The Examiner finds that adding the dopant inherently shifts the
temperature of the amorphous-to-crystalline transition. (Answer at 3.)
37. The Examiner finds further that Chopin teaches application of the
titania-containing layers by CVD or spray pyrolysis. (Answer at 3.)
38. The Examiner also finds that Chopin teaches that its doped titania
coatings are photocatalytic and [photo]hydrophilic, and concludes that the
coatings are therefore photo-active and photohydrophilic as required by
claims 13 and 14. (Answer at 3.)
39. Kutilek acknowledges the Examiner's findings of fact. (Br. at 3, first
paragraph.)

3 Examiner's Answer mailed 21 May 2007.
8
Appeal 2007-4227
Application 10/409,417

40. The only finding of fact that Kutilek disputes is the Examiner's
finding that Chopin inherently teaches shifting the transition temperature of
the titania. (Br. at 3–4.)
41. Kutilek argues that claim 1 "can be viewed as a new use (i.e., shifting
the amorphous to crystalline transition temperature of a titania coating
material) of some of the coating materials discussed in Chopin." (Br. at 3.)
42. Kutilek argues further that "[b]ecause Chopin does not disclose a
method of shifting the amorphous to crystalline transition temperature of a
titania coating material as recited in claim 1 of the present invention, it does
not disclose each and every element of the invention. Therefore, Chopin
cannot anticipate the present invention as recited in claim 1." (Br. at 4.)
43. Kutilek argues that claims 2–6, 13, and 14, which depend from
claim 1, are not anticipated for the same reason. (Br. at 4.)
44. Kutilek does not dispute the Examiner's findings that Chopin teaches
the additional limitations recited in the dependent claims.
Obviousness
45. The Examiner finds that Chopin teaches coating substrates with doped
titania using CVD or pyrolysis, but does not teach the deposition
temperature. (Answer at 4.)
46. The Examiner also finds that Chopin does not teach the combination
of anatase and monoclinic forms recited in claim 11. (Answer at 4.)
47. The Examiner finds further that Chopin teaches heat treatment of the
coated substrate, but does not teach the time and temperature of the heat
treatment as recited in claim 12. (Answer at 4.)
9
Appeal 2007-4227
Application 10/409,417

48. In the case of the deposition temperature and the heat treatment
temperature, the Examiner finds that the untaught parameter is a "cause-
effective variable," the optimization of which would have been obvious.
(Answer at 4.)
49. In the case of the crystal forms, the Examiner finds that it would have
been obvious to use monoclinic titania in Chopin's mixtures of crystals with
the expectation of successful results. (Answer at 4.)
50. Kutilek acknowledges the Examiner's findings of fact. (Br. at 4, third
paragraph.)
51. Kutilek repeats its argument that Chopin does not anticipate the
subject matter of claim 1, finding that "there is nothing in Chopin that
discloses or teaches, either implicitly or explicitly, the present invention
recited in claim 1 as further limited by claims 7, 8, 10–12, 15, 26 and 27."
(Br. at 4–5.)
52. Kutilek finds further that "there is no teaching of the heating
temperature, specific dopants and crystal structures as recited in claim 7, 8,
10–12, 15, 26 and 27." (Br. at 5, last paragraph.)
53. Kutilek concludes that "one of ordinary skill in the art would not be
led to the present invention from the teachings of Chopin." (Br. at 5, last
paragraph.)
54. Kutilek makes no other argument; in particular, Kutilek does not offer
any other explanation of why the Examiner's optimization of "cause-
effective" variables argument is reversible error.
10
Appeal 2007-4227
Application 10/409,417

C. Discussion
"A claim is anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference." Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374, 58 USPQ2d 1508, 1512
(Fed. Cir. 2001) (citation omitted). "In general, a limitation or the entire
invention is inherent and in the public domain if it is the 'natural result
flowing from' the explicit disclosure of the prior art." Schering Corp. v.
Geneva Pharm., Inc., 339 F.3d 1373, 1379, 67 USPQ2d 1664, 1669 (Fed.
Cir. 2003). The inherent characteristics need not have been recognized.
Id. at 1377–78, 67 USPQ2d at 1667. Moreover, "when the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not." In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990);
"[w]here . . . the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product,"
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (citation
omitted).
Obviousness is a legal conclusion based on factual inquiries including
the scope and content of the prior art, the differences between the prior art
and the claimed subject matter, and the level of ordinary skill in the pertinent
art. Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
The inquiry is broad and any secondary considerations that prove instructive
should be considered. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739,
82 USPQ2d 1385, 1389 (2007).
11
Appeal 2007-4227
Application 10/409,417

Any argument not made in the principal brief on appeal (or when
responding to a new ground of rejection, in the Reply Brief) is waived.
37 C.F.R. § 41.37(c)(1)(vii). In particular, if claims are not argued
separately, they stand or fall together. Id. The procedural burden is on the
Applicants to show reversible error by the Examiner.
Kutilek has not challenged the Examiner's substantive findings of fact
as to what Chopin teaches expressly. The Examiner and Kutilek appear to
part ways as to what one of ordinary skill in the art would make of the
disclosure, and on the role of inherency in an anticipatory reference.
Because Kutilek has not disputed the Examiner's findings with particularity
as to the limitations of the dependent claims, all the claims effectively stand
or fall with claim 1. In this posture, the dispositive issue is whether Kutilek
has shown that the Examiner erred in applying the theory that the shift of the
temperature of the amorphous-to-crystalline transition is inherent in the
doping of the TiO2 with metals.
We find the Examiner's position as to claim 1, that the addition of
metal dopants to the TiO2 necessarily—inherently—shifts the amorphous to
crystalline transition temperature, highly plausible. As the Examiner pointed
out (FF 33; Answer at 3), Chopin teaches that "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." (FF 23; Chopin at
4:36-40, emphasis added—bold indicates metals also recited in claim 1). In
this passage, Chopin teaches that the dopant metals are incorporated into the
TiO2 crystal lattice.
12
Appeal 2007-4227
Application 10/409,417

The technical basis of the Examiner's conclusion is readily apparent:
because the metals differ in their atomic numbers, the number of electrons,
the configuration of electrons in the ionic core, etc., each metal would have
an effective radius and an effective charge that would be expected to differ
from the corresponding values for titanium in titanium dioxide. Thus, the
presence of a dopant metal would have been expected to change the energy
and perturb the structure of the TiO2 lattice. These changes would have
been expected to manifest themselves in the properties of the lattice, in
particular, in the temperature at which an orderly, crystalline lattice would
form from a relatively disordered, amorphous state.4 In any event, we
observe that claim 1 requires only a "shift," not a decrease, of the transition
temperature5.
We conclude that the Examiner's rejection based on inherency is well-
founded. In the alternative, the Examiner has a sound basis for concluding
that the process of the prior art is the same or substantially the same as the
process claimed by the Applicants. In any event, Kutilek has not made any

4 The effect of dopants on transformations between different crystalline
forms of TiO2 is well known, as shown by Terry A. Egerton, Titanium
Compounds, Inorganic, 24 Kirk Othmer Encyclopedia of Chemical
Technology, 225, 235 (4th ed. 1997): “It is accepted that, at normal
pressures, rutile is the thermodynamically stable form of titanium dioxide at
all temperatures. Calorimetric studies have demonstrated that rutile is more
stable than anatase . . . The rate of transformation is critically dependent on
the detailed environment and may be either promoted or retarded by the
presence of other substances. For example, phosphorus inhibits the
transformation of anatase to rutile.” (Emphasis added; citations omitted.)
5 We note that Kutilek's specification appears to mention expressly only
instances in which the transition temperature is decreased: see, e.g., the
417 Application at 9, ¶ 22, at 10, ¶ 25, at 14, ¶ 33.
13
Appeal 2007-4227
Application 10/409,417

argument against the Examiner's conclusion. Nor has Kutilek presented any
evidence that this knowledge was beyond the comprehension of those of
ordinary skill in the art in 2003.
Kutilek's argument that the inventors have discovered a new use for
known compositions (FF 39; Br. at 3) is not persuasive. As the Examiner
pointed out in rebuttal (Answer at 5), the sole physical step, adding the
dopant to the titania, has been anticipated. The effects of that step are, on
the present record, prima facie fully met. Claim 1 does not limit the amount
of dopant. Kutilek has not argued, for example, that the amounts of dopant
suggested by Chopin would not suffice to shift the transition temperature.
Given the substantial overlap of the disclosed amount of dopant metal
(417 Application, 0-2% (Al, Mb) or 0-8% (V) (FF 10–11); Chopin, 0.01 to
10% (FF 23)), such arguments would seem to require significant evidentiary
support. In any event, the time to make such arguments has passed, and
those arguments have been waived.
Similarly, Kutilek's arguments that Chopin does not teach the heating
temperature, or specific dopants, or specific crystal structures (Br. at 5) do
not by themselves in the absence of supporting evidence explain or justify
Kutilek's conclusion that one of ordinary skill in the art would not have been
led to the present invention from the teachings of Chopin. Such an
abbreviated arguments amount to mere pleading and do not suffice to
counter the Examiner's evidence with evidence favoring Kutilek.
We conclude that Kutilek has not carried its burden of demonstrating
reversible error by the Examiner.
14
Appeal 2007-4227
Application 10/409,417

D. Summary
In view of the record and the foregoing considerations, it is
ORDERED that the rejection of claims 1-6, 13, and 14 under 35
U.S.C. § 102(b) in view of Chopin is AFFIRMED;
FURTHER ORDERED that the rejection of claims 7, 8, 10–12,
15, 26, and 27 under 35 U.S.C. §103(a) in view of Chopin is AFFIRMED;
and
FURTHER ORDERED that the time for taking further action is
not extendable under the provisions of 37 C.F.R. § 1.136(a)(2006).
AFFIRMED

cc (via U.S. Mail)

ANDREW C. SIMINERIO
PPG INDUSTRIES, INC.
INTELLECTUAL PROPERTY DEPT.
ONE PPG PLACE
PITTSBURGH, PA 15272

yrt
15