13294451 (P.T.A.B. Jul. 28, 2017)

Ex Parte Matsuoka et al

Patent Trial and Appeal BoardJul 28, 2017

13294451 (P.T.A.B. Jul. 28, 2017)

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. 13/294,451 11/11/2011 Ryosuke Matsuoka 2008831 (3600-596) 9486 33432 7590 07/28/2017 KILYK & BOWERSOX, P.L.L.C. 400 HOLIDAY COURT SUITE 102 WARRENTON, VA 20186 EXAMINER YANG, JIE ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 07/28/2017 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 RYOSUKE MATSUOKA, EIJI KATAOKA, YOSHIKAZU NOGUCHI, JOHN KOENITZER and SRIDHAR VENIGALLA __________ Appeal 2016-000909 Application 13/294,451 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and MICHAEL G. McMANUS, 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 an Examiner’s decision finally rejecting claims 1–4 and 14–22 under 35 U.S.C. § 103(a) as unpatentable over Matsuoka et al.1 in view of Jones et al.2 A hearing was held on July 20, 2017. We have jurisdiction under 35 U.S.C. § 6(b). 1 JP 2007-291487, published November 19, 2008 (“JP 487”). We refer to the English language translation dated July 31, 2014, which is of record in the instant Application. 2 US 7,824,452 B2, issued November 2, 2010 (“Jones”). Appeal 2016-000909 Application 13/294,451 2 We REVERSE. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated May 11, 2015 (“App. Br.”). The limitation at issue is italicized. 1. A process for manufacturing agglomerated particles of tantalum comprising the steps of: obtaining hydrated aggregates by pulverizing secondary particles of tantalum obtained by tantalum salt reduction with a pulverizer or granulator and adding water to said pulverizer or granulator before said pulverizing or during said pulverizing or both; obtaining dry aggregates by drying the hydrated aggregates; obtaining spheronized particles by passing the dry aggregates through one or more screens wherein said screens are vibrated; and heat treating the spheronized particles. App. Br. 23 (indenting and spacing added). B. DISCUSSION In the Non-Final Office Action,3 the Examiner finds JP 487 discloses a method of manufacturing agglomerated particles of tantalum as recited in claim 1 with the exception of passing the dry aggregates through a screen while the screen is vibrated.4 Non-Final Act. 4–5. More specifically, the Examiner finds: [JP 487] teaches obtaining tantalum aggregated particle[s] by preparing secondary particles of tantalum with reducing potassium fluotantalate and dilution salt (paragraphs [0019] and [0022] of [JP 3 In the Final Office Action dated December 22, 2014 (“Final”), at 3, the Examiner indicates that claims 1–4 and 14–22 are rejected under 35 U.S.C. § 103(a) as unpatentable over JP 487 in view of Jones for the same reasons set forth in the previous Office Action (i.e., the Non-Final Office Action dated August 1, 2014). 4 The Examiner finds Jones teaches that screening and vibration were known to be useful for obtaining a desired powder size. Non-Final Office Action dated August 1, 2014 (“Non-Final Act.”), at 5. Appeal 2016-000909 Application 13/294,451 3 487]) and [JP 487] teaches process re-agglomerated powder with water as a binder before each re-aggregation (paragraphs [0027]- [0031] of [JP 487]), which reads on the process steps of obtaining hydrated aggregates by pulverizing particles of tantalum obtained by tantalum salt reduction and adding water before said pulverizing as recited in the instant claim. Non-Final Act. 4 (emphasis added). In the Final Office Action, the Examiner makes an additional finding that JP 487 teaches applying a roll granulator for the aggregating process. The Examiner finds that re-agglomerating powder with water before each re- aggregation in JP 487 “reads on the process steps of adding water to the pulverizer or granulator before said pulverizing as recited in the instant claims, because water is included in the re-agglomerated powder.” Final 3 (emphasis added). The Appellants argue that JP 487 discloses that “water is only used as a binder to form aggregates that are then dried and then subjected to crushing.” App. Br. 11 (citing JP 487, ¶¶ 24, 25, 28, 33). In contrast, the Appellants argue that claim 1 “requires pulverizing while the tantalum is wetted with water.” App. Br. 12. According to the Appellants, the reference to adding water in claim 1 “is actually water being added to the pulverizer or granulator before the pulverizing or during the pulverizing or both.” App. Br. 12. The Appellants argue: This clearly is not occurring in the process of [JP 487]. The possible temporary presence of water with tantalum aggregates or other processed tantalum material in the process of [JP 487] before the material is dried and introduced as dried agglomerated powder material in a subsequent crushing operation at a roll granulator, would not meet the indicated language of claim 1 on appeal. App. Br. 12. Appeal 2016-000909 Application 13/294,451 4 In response, the Examiner finds JP 487 “provides example[s] with water being added during aggregating and there is moisture in the Ta aggregated particles (examples 1-6 of [JP 487]).” Ans. 5.5 Significantly, claim 1 recites that water is added to the pulverizer or granulator before and/or during pulverizing to obtain hydrated aggregates. App. Br. 23. The Examiner does not direct us to any portion of JP 487 that discloses or suggests adding water to the roll granulator, as recited in claim 1, to obtain hydrated aggregates. For that reason, the § 103(a) rejection of claims 1–4 and 14– 22 is not sustained. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a prima facie case of unpatentability). C. DECISION The Examiner’s decision is reversed. REVERSED 5 Examiner’s Answer dated August 25, 2015.