Ex Parte Lee et al

Board of Patent Appeals and Interferences

Mar 8, 2010

10094606 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YONG-KYUN LEE and CHANG-JUNG KIM
____________

Appeal 2009-009951
Application 10/094,606
Technology Center 1700
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Decided: March 8, 2010
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and KAREN
M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009951
Application 10/094,606

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-15 and 17-23 (Appeal Brief filed March 19, 2007, as revised on
July 9, 2007, hereinafter “App. Br.,” at 2; Final Office Action mailed August
16, 2006). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention relates to a method of preparing and forming a
lead-zirconate-titanate (PZT) thick coating on a substrate, the thick coating
having wide application as a piezoelectric material (Specification,
hereinafter “Spec.,” ¶¶ [0003], [0008]).
Claim 1 reads as follows:
1. A method for preparing and forming a thick coating of
lead-zirconate-titanate (PZT) on a substrate, comprising:
preparing a first solution by dissolving a lead precursor in
a mixed solvent of acid and diol;
preparing a second solution by dissolving a zirconium
precursor and a titanium precursor in a mixed solvent of acid
and diol;
mixing the first and second solutions to prepare a PZT
stock solution;
forming a SiO2 layer on the substrate, wherein the SiO2
layer is formed to a thickness of between about 200 nm and
about 400 nm;
spin-coating the PZT stock solution on the substrate to
form a coated assembly; and
heat-treating the coated assembly to form a thick coating
of PZT having a substantially uniform crystal orientation.
(App. Br. 23; Claims App’x.)

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The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed August 21, 2007, hereinafter
“Ans.,” 2):
Ushikubo et al. (“Ushikubo”) 5,851,841 Dec. 22, 1998
Groves et al. (“WO ‘755”) WO 90/12755 Nov. 1, 1990
The Examiner rejected claims 1-15 and 17-23 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of WO ‘755 and
Ushikubo (Ans. 3-9).

ISSUES
The Examiner found that WO ‘755 describes a method for preparing
and forming a thick coating of PZT on a substrate comprising, inter alia, a
step of preparing a first solution by dissolving lead acetate (i.e., a lead
precursor) in a stabilizing agent, such as a mixture of acid and diol (i.e.,
mixed solvent of acid and diol) (Ans. 3-5). The Examiner also found that
WO ‘755 describes adding titanium alkoxide (titanium precursor) and
zirconium alkoxide (zirconium precursor) to the prepared first solution and
then adding water to form a mixed sol precursor (i.e., PZT stock solution)
(id.). The Examiner acknowledged, however, that WO ‘755 does not
disclose mixing a second solution of a zirconium precursor and a titanium
precursor in a mixed solvent of acid and diol with a first solution of the lead
precursor, as recited in claim 1 (Ans. 4). Nevertheless, the Examiner
concluded that a person of ordinary skill in the art would have reasonably
expected that the claimed mixing steps would have yielded similar results
relative to the disclosure in WO ‘755 in terms of the final product and thus
the claimed subject matter would have been prima facie obvious to a person
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of ordinary skill in the art (Ans. 4 and 11). Furthermore, the Examiner
reasoned that the prior art product would reasonably appear to possess
“substantially uniform crystal orientation,” as recited in claim 1, in view of
the substantial similarities between the claimed method and the prior art
method (Ans. 5).
Appellants assert that WO ‘755 “fails to enable the use of glycol with
acid in preparing a first lead solution” because WO ‘755 teaches that glycol
should be added after unreacted alkoxide groups are no longer present (App.
Br. 10-11). In addition, Appellants contend that the prior art references do
not teach or suggest the mixing of the specified first solution and the
specified second solution, as recited in claim 1 (App. Br. 11-15). Appellants
also argue that the Examiner’s position on the claimed uniform crystal
orientation characteristic is flawed because the prior art method is not
similar to the claimed method (App. Br. 12-13).
Thus, the issues are:
Does WO ‘755 teach away from using glycol in the presence of
unreacted alkoxide groups?
Does the relied-upon evidence indicate that the discovery of the
suitable mixing schemes and sequences for combining the lead precursor
solution, zirconium alkoxide sol, and titanium alkoxide sol in WO ‘755,
from a finite and limited number of possibilities, would have been within the
technical grasp of a person of ordinary skill in the art?
Is the prior art method sufficiently similar to the claimed method such
that it would reasonably appear that the prior art coating would inherently
possess “substantially uniform crystal orientation,” as recited in claim 1?

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FINDINGS OF FACT (“FF”)
1. WO ‘755 describes a method of making a mixed sol precursor
to produce a titanate-based or a zirconate-based ceramic by first
preparing a solution of at least one metal salt in a stabilizing
agent (solvent), adding a titanium alkoxide sol and/or a
zirconium alkoxide sol to form a mixed sol precursor, and then
adding water to form a mixed sol that is coated on a non-porous
substrate (WO ‘755 at 2, ll. 9-15; 3, ll. 20-23; 5, ll. 19-30).
2. WO ‘755 discloses that “lead acetate is preferably used with
acetic acid” (WO ‘755 at 3, ll. 20-23).
3. WO ‘755 also indicates that a mixture of acetic acid and glycol
may be used as a stabilizing agent (solvent) for the components
that make up the mixed sol (WO ‘755 at 2, l. 33 to 3, l. 3).
4. While WO ‘755 discloses, in a non-limiting embodiment, that it
is preferred that zirconium alkoxide sol is added to the metal
salt solution prior to adding titanium alkoxide sol, WO ‘755
does not disclose that any particular order of adding the
zirconium and titanium sols is required and states: “[t]he nature
of the alkoxide is not critical; typically alkoxides derived from
C1 to C4 alkanols are used” (WO ‘755 at 2, ll. 29-32; 4, ll. 15-
17 and 22-27).
5. WO ‘755 also teaches the further addition of glycol as a
surfactant after the formation of the mixed sol precursor to
improve film-forming properties (WO ‘755 at 4, l. 15 to 5, l.
19).

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PRINCIPLES OF LAW
“Where a skilled artisan merely pursues ‘known options’ from a
‘finite number of identified, predictable solutions,’ obviousness under § 103
arises.” In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)).
“It is the commonest of expedients to mix certain ingredients together
before they are mixed into the main article to be produced.” In re Hampel,
162 F.2d 483, 485 (CCPA 1947).

ANALYSIS
Appellants have argued the claims together, focusing only on certain
limitations appearing in claim 1. Accordingly, we confine our discussion to
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
We are in complete agreement with the Examiner that the claimed
mixing technique (i.e., mixing a first solution of a lead precursor with a
second solution of titanium and zirconium precursors) would have been
obvious to a person of ordinary skill in the art in view of the prior art
teachings (Ans. 4). WO ‘755 describes adding zirconium alkoxide sol
and/or titanium alkoxide sol to a solution of a lead precursor in a stabilizing
agent, which may be a mixture of acetic acid and glycol (FF 1-3). Given
these teachings, we conclude that the discovery of the suitable mixing
schemes and sequences for combining the lead precursor solution, zirconium
alkoxide sol, and titanium alkoxide sol in WO ‘755, from a finite and limited
number of possibilities, would have been within the technical grasp of a
person of ordinary skill in the art. See KSR, 550 U.S. at 421; Hampel, 162
F.2d at 485; Cf. In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (“There is
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no merit in the point here [that the references do not teach his characteristic
steps which are new in the art and which are necessary to obtain the desired
result] in the absence of any proof in the record that the order of performing
the steps produces any new and unexpected results.”).
Relying on the disclosure of WO ‘755 with respect to the further
addition of glycol as a surfactant to improve film forming properties (FF 5),
Appellants argue that WO ‘755 teaches away from using glycol as a solvent
in the preparation of the lead acetate solution (App. Br. 9-11). This
argument is unpersuasive. WO ‘755 plainly describes a mixture of
stabilizing agents, which include acid and glycols (i.e., diols), as a suitable
solvent system for preparing an initial solution comprising a lead salt (i.e.,
lead precursor) (FF 1-3).
Equally unavailing is Appellants’ contention that WO ‘755 teaches
away from the claimed mixed solvent of acid and diol for the first and
second solutions (App. Br. 15-16). As acknowledged by Appellants, WO
‘755 suggests that the nature of the titanium alkoxide sol and/or the
zirconium alkoxide sol is “not critical,” thus indicating to one of ordinary
skill in the art that any suitable solvent system may be used (App. Br. 15; FF
4). Specifically, WO ‘755 suggests a mixture of solvents including acetic
acid and glycol as a suitable solvent for the components (including the
titanium and zirconium alkoxides) that make up the mixed sol (FF 3). Thus,
contrary to Appellants’ belief, the disclosure of WO ‘755 would have
suggested to a person of ordinary skill in the art that a mixture of the
disclosed acid and glycol would have provided successful results in the
preparation of the PZT stock solution (FF 1 and 3).
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Finally, we disagree with Appellants’ assertion that the Examiner
failed to establish a prima facie case of inherency with respect to the
“substantially uniform crystal orientation” recited in claim 1 (App. Br. 12-
13). As explained by the Examiner (Final Office Action at 3; Ans. 5), WO
‘755 discloses the same or similar steps of preparing a PZT stock solution
with the same or similar components, relative to the claimed method (FF 1-
3). In view of these identical or substantially similar steps and components,
the Examiner had a reasonable factual basis upon which to shift the burden
to Appellants to demonstrate that the product resulting from the method of
WO ‘755 would not inherently result in a “substantially uniform crystal
orientation,” as recited in the claimed method. See In re Spada, 911 F.2d
705, 708-09 (Fed. Cir. 1990).
We need not discuss the teachings of Ushikubo because this reference
was cited for features of the invention unrelated to the issues raised in this
appeal.

CONCLUSION
WO ‘755 does not teach away from using glycol as a solvent in the
presence of unreacted alkoxide groups.
The relied-upon evidence indicates that the discovery of the suitable
mixing schemes and sequences for combining the lead precursor solution,
zirconium alkoxide sol, and titanium alkoxide sol in WO ‘755, from a finite
and limited number of possibilities, would have been within the technical
grasp of a person of ordinary skill in the art.
The prior art method is sufficiently similar to the claimed method
such that it would reasonably appear that the prior art coating would
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inherently possess “substantially uniform crystal orientation,” as recited in
claim 1.

DECISION
The Examiner’s decision to reject claims 1-15 and 17-23 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of WO ‘755
and Ushikubo 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)(iv).

AFFIRMED

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