Ex Parte Laine

Patent Trial and Appeal Board

Jan 22, 2018

13258900 (P.T.A.B. Jan. 22, 2018)

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.
13/258,900 09/22/2011 Jarkko Ilari Laine 5421/0129PUS1 5309
60601 7590 01/22/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
01/22/2018 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 JARKKO ILARI LAINE
Appeal 2017-000756
Application 13/258,900
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and
AVELYN M. ROSS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1-5, 8, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Moore2 in view of Takeuchi.3 We
have jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies the real party in interest as Wartsila
Finland Oy (Br. 2).
2 Moore et al., EP 0 466 419 A2, published January 15, 1992
(“Moore”).
3 Takeuchi et al., US 6,395,117 Bl, issued May 28, 2002
(“Takeuchi”).
Appeal 2017-000756
Application 13/258,900
We REVERSE.4
STATEMENT OF THE CASE
The invention relates to a method of producing an article
having a cavity by filling a mold and a core made of yttria
tetragonal zirconia polycristal (Y-TZP) material with article
material, hardening the article material, and exposing the core to
steam to degrade and remove it. Spec. 1:25-2:11.
Claim 1, reproduced below from the Claims Appendix to the
Appeal Brief, is illustrative of the subject matter on appeal.
1. A method for producing an article having a
cavity, the method comprising:
providing a mold with a core made of yttria
tetragonal zirconia polycristal material (Y-TZP),
wherein the core is sintered;
filling the mold with article material;
hardening the article material around the core to
form the article;
after the hardening, exposing the core to a steam
atmosphere; and
after said exposing, removing the core from the
article.
ANALYSIS
The Examiner finds Moore discloses a method of producing a
molded product having a cavity using a core made of zircon which
4 Our Decision refers to the Specification (Spec.) filed September
22, 2011, the Examiner’s Final Office Action (Final) dated October
14, 2015, Appellant’s Appeal Brief (Br.) filed March 14, 2016, and
the Examiner’s Answer (Ans.) dated August 4, 2016.
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Appeal 2017-000756
Application 13/258,900
is removed by exposing the core to a pressurized jet of steam
(Final 2-3). The Examiner finds Moore does not disclose that the
core is made of Y-TZP (id. at 3). However, the Examiner finds
Takeuchi teaches that “zircon and yttria stabilized zirconia (i.e. [,]
Y-TZP as claimed) are functionally equivalent ceramic materials”
(id.). Therefore, the Examiner concludes it would have been
obvious to substitute the claimed Y-TZP core5 for Moore’s zircon
core with an expectation of success (id.).
Appellant contends that neither Moore nor Takeuchi disclose
the use of Y-TZP as the core material (Br. 5). Appellant asserts
that “since Y-TZP is not mentioned in Takeuchi, there is no
teaching in the cited documents that would allow one of ordinary
skill to arrive at the invention of claim 1” (id. at 6). Appellant
further argues that because Moore only emphasizes that the core
material needs to be inert, the ordinary artisan would not have
incentive to replace Moore’s zircon with those of Takeuchi (id.).
The Examiner has the initial burden of establishing a prima
facie case of obviousness based on an inherent or explicit
disclosure of the claimed subject matter under 35 U.S.C. § 103. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner
bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability”). To
5 The Examiner states that the Final Office Action mistakenly
refers to “the claimed PSZ core” (Ans. 3; “it is clear that the ‘PSZ’
is a typo and it should be ‘Y-TZP’ instead.”).
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Appeal 2017-000756
Application 13/258,900
establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on
the knowledge of those of ordinary skill in the art. In re Fine, 837
F.2d 1071, 1074 (Fed. Cir. 1988).
Here, the Examiner has not carried the burden of
establishing, by a preponderance of the evidence, the factual basis
for the conclusion that the claimed invention would have been
obvious. Takeuchi lists a number of ceramic materials suitable for
use in producing green sheets of ceramic including, inter alia,
partially stabilized zirconia (PSZ) that may include a stabilizer
such as yttria (Takeuchi 7:37-50). Takeuchi does not teach that
this yttria stabilized zirconia is tetragonal, i.e., that the yttria
partially stabilized zirconia is Y-TZP. In this regard, we note that
the Examiner fails to respond to Appellant’s argument (Br. 6) that
Takeuchi fails to mention, i.e., teach, Y-TZP. Absent either an
explicit teaching in Takeuchi or technical reasoning explaining
why Takeuchi’s yttria partially stabilized zirconia is inherently
the same as Y-TZP, we are unable to sustain the Examiner’s
rejection.
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Appeal 2017-000756
Application 13/258,900
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1-5, 8, 9 § 103(a) Moore,
Takeuchi
1-5, 8, 9
Summary 1-5, 8, 9
DECISION
Upon consideration of the record, and for the reasons given
above and in the Appeal Brief, the decision of the Examiner
rejecting claims 1-5, 8, 9 is reversed.
REVERSED
5