Ex Parte Machida et al

Patent Trial and Appeal Board

Sep 22, 2015

11513103 (P.T.A.B. Sep. 22, 2015)

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.
11/513,103 08/31/2006 Hiroshi Machida SH-0065PCTUS RYU.028 3268
21254 7590 09/23/2015
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
09/23/2015 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 HIROSHI MACHIDA
and MITSUJI SATO
__________

Appeal 2014-000668
Application 11/513,103
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 3, 7‒14, 16‒21, and 23‒25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 3 is reproduced below from the Claims Appendix of
the Appeal Brief dated June 17, 2013 (“Br.”). The limitations at issue are
italicized.
3. A method for manufacturing a porous-glass material for optical
fiber, as performed in a reaction apparatus having a plurality of
burners for producing glass particles toward an initial base material
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and a ventilation mechanism at a position opposed to the plurality of
burners, the method comprising:
preventing soot floating within an inside of a chamber of the
reaction apparatus from adhering to the inside of the chamber of the
reaction apparatus during a deposition of the glass particles on the
initial base material, the preventing of the soot comprising:
using the ventilation mechanism to regulate a pressure
differential between an inside and an outside of the reaction
apparatus to be within a range of -80Pa ≤ Pmin≤ -40Pa; and
exhausting the soot to a location outside of the chamber,
wherein the ventilation mechanism is movable in
accordance with a reciprocal movement of the plurality of burners;
and
after the deposition of the glass particles on the initial base
material, removing the porous-glass material from the reaction
apparatus and beginning deposition of the glass particles on a second
base material without removing soot from walls of the chamber.
Br. 22 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 3, 7‒11, 14, 20, 21, and 23‒25 under 35 U.S.C. § 103(a) as
unpatentable over Watanabe1 in view of Kato;2 and
(2) claims 12, 13, and 16‒19 under 35 U.S.C. § 103(a) as unpatentable
over Watanabe in view of Kato and further in view of Ishihara.3
The rejections are sustained for the reasons set forth in the Examiner’s
Answer dated July 25, 2013 (“Ans.”). We add the following for emphasis.

1 JP 2000‒313625 A, published November 14, 2000. In this Decision on Appeal,
we refer to the English translation dated January 31, 2012, which is of record in the
instant Application.
2 JP 59207848 A, published November 26, 1984. In this Decision on Appeal, we
refer to the English translation dated February 2010, which is of record in the
instant Application.
3 US 2004/0060326 A1, published April 1, 2004.
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B. DISCUSSION
The Examiner finds Watanabe discloses a method for manufacturing porous
glass material for optical fiber including the steps of exhausting soot to the outside
of the chamber via a ventilation mechanism and preventing soot from adhering to
the inside of the chamber during deposition. Ans. 2‒3. The Examiner, however,
finds Watanabe does not disclose regulating a pressure differential between the
inside and the outside of the chamber as recited in claim 3. Ans. 3.
The Examiner finds Kato discloses a similar process of manufacturing glass
material wherein a pressure differential between the inside and the outside of the
reaction apparatus is between 0 and -10 mmH2O. The Examiner also finds Kato
exemplifies a pressure differential of -5 mmH2O (i.e., -49 Pa)4 in Table 1 which
falls within the claimed range of -80Pa ≤ Pmin≤ -40Pa. Ans. 3; see also Kato 6
(describing the use of a -5 mmH2O pressure differential as “Good”).
The Appellants do not dispute that it would have been obvious to one of
ordinary skill in the art to maintain a pressure differential in Watanabe’s chamber
as disclosed in Kato. See Ans. 3‒4. Likewise, the Appellants do not dispute that
Kato discloses a pressure differential within the claimed range (i.e., -5 mmH2O or -
49 Pa) having a “good” result. Br. 14.
Instead, the Appellants direct us to a disclosure in Kato of pressure
differentials outside the claimed range (i.e., -1 and -10 mmH2O) which also have a
“good” result and contend that Kato does not differentiate between the results of -
1, -5, and -10 mmH2O (i.e., -9.8, -49, and -98 Pa, respectively). Br. 14. The
Appellants argue that:
[The] results [of -1, -5, and -10 mmH2O are] . . . essentially just a
sampling of values that are more or less evenly spaced, with -5 being

4 The Appellants do not dispute that -5 mmH2O is -49 Pa. Br. 10.
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Application 11/513,103

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approximately halfway between -1 and -10. Understood in this way,
these values are analogous to the end points of a range. They serve
not to provide any specific example, but rather just to indicate the
extent of the range.
Br. 15.
We disagree. The disclosure of Kato is not limited to a range of pressure
differentials but rather includes a specific example of a pressure differential within
the range recited in claim 3 (i.e., -5 mmH2O or -49 Pa). See Kato 6. Current case
law dictates that this disclosure in Kato renders the claimed range unpatentable.
Cf. Titanium Metals Corp. v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985) (a
titanium base alloy containing 0.25% by weight Mo and 0.75% Ni is squarely
within the claimed ranges of 0.2‒0.4% Mo and 0.6‒0.9% Ni and thus anticipates
the claimed alloy).
Claim 3 also recites:
after the deposition of the glass particles on the initial base
material, removing the porous-glass material from the reaction
apparatus and beginning deposition of the glass particles on a second
base material without removing soot from walls of the chamber.
Br. 22 (emphasis added).
The Appellants argue that “Watanabe and Kato are both completely silent
about, and fail to teach or suggest, on whether soot must be or is in fact removed
from the walls of the chamber between runs.” Br. 17.
The Appellants’ argument is not persuasive of reversible error. According
to the Appellants’ disclosure, all soot is vacuumed out of the chamber when the
pressure differential is maintained within the claimed range (i.e., -80Pa ≤ Pmin≤ -
40Pa). See Spec. ¶ 28. Thus, the record on appeal supports a finding that
maintaining a pressure differential in Watanabe’s chamber at -5 mmH2O or -49 Pa
as disclosed in Kato would necessarily remove all of the soot from the chamber
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Application 11/513,103

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and eliminate the need to remove soot between runs. See PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (the concept of inherency when
applied to obviousness is present “when the limitation at issue is the ‘natural result’
of the combination of prior art elements”); Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) (“The fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be obvious.”).
C. 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

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