Ex Parte Nagasaka et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201613242552 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/242,552 09/23/2011 25191 7590 02/09/2016 BURR & BROWN, PLLC POBOX7068 SYRACUSE, NY 13261-7068 FIRST NAMED INVENTOR Ryujiro NAGASAKA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 791_559 5318 EXAMINER ROLLAND, ALEX A ART UNIT PAPER NUMBER 1712 MAILDATE DELIVERY MODE 02/09/2016 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 RYUJIRO NAGASAKA, TATSUYA HISHIKI, and ICHIROWADA 1 Appeal2014-003753 Application 13/242,552 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge KENNEDY. Opinion Concurring filed by Administrative Patent Judge OGDEN. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, and 4--6. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is NGK Insulators, Ltd. App. Br. 1. Appeal2014-003753 Application 13/242,552 BACKGROUND The subject matter on appeal relates to a method of manufacturing a silica membrane. Spec. i-f 1; Claim 1. Claim 1 is reproduced below from page 11 (Claims Appendix) of the Appeal Brief: 1. A method of manufacturing a silica membrane, comprising: depositing a silica sol on a porous substrate; drying the silica sol by blowing air, the air having a dew point of -70 to 0°C; and firing the dried silica sol and porous substrate thereafter so as to form a silica membrane, wherein the air is at room temperature. EVIDENCE RELIED ON BY THE EXAMINER Tomaschke et al. F elthouse et al. 2 Tanaka3 us 4,990,252 WO 2007 /035949 WO 2007/094267 Al Feb. 5, 1991 Mar. 29, 2007 Aug. 23, 2007 Thomas F. Protzman et al., An Apparatus for the Determination of the Minimum Film Temperature of Polymer Emulsions, 4 J. Applied Polymer Sci. 81 (1960). REJECTIONS ON APPEAL 1. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanaka in view of Protzman, further in view of Tomaschke. 2 The Examiner cites U.S. equivalent US 7,740,827 B2, issued June 22, 2010. Final Act. 5. 3 The Appellants and the Examiner cite U.S. equivalent US 2008/0069950 Al, published March 20, 2008. Final Act. 3; App. Br. 5. 2 Appeal2014-003753 Application 13/242,552 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanaka in view of Protzman, further in view of Tomaschke and Felthouse. ANALYSIS In rejecting claim 1, the Examiner relies on Tanaka, Protzman, and Tomaschke. The Examiner finds that Tanaka teaches a method of manufacturing a ceramic porous membrane on a porous base member in which the base member is coated with a ceramic sol liquid (such as silica sol), dried, and then fired. Final Act. 3. The Examiner finds that Tanaka does not teach drying by air blowing, the dew point of the air, or the temperature of the air. Id. The Examiner finds that Protzman teaches an emulsion drying and film forming method wherein air can be drawn over the coating to dry it, and that the rate of drying can be partially controlled by the moisture content of the air. Id. at 3--4. The Examiner further finds that Protzman teaches the use of dry air at low temperatures, and that air may be saturated with water vapor at temperatures above room temperature in order to decrease the drying rate. Id. at 4. Based on those teachings, the Examiner finds that "Protzman establishes that the dew point of the drying air is a result effective variable." Id. The Examiner finds that Tomaschke teaches that air temperature and air velocity are resulted effective variables that are subject to routine optimization. Id. The Examiner concludes that it would have been obvious to dry the membrane of Tanaka with air having an "optimized dew point" and optimized temperature in light of Protzman and Tomaschke. Id. 3 Appeal2014-003753 Application 13/242,552 We do not find the Examiner's rationale to be persuasive. Even if Protzman teaches optimizing the dew point of drying air, claim 1 requires it to be optimized to the specific range of -70°C to 0°C at room temperature. Protzman teaches the use of drying air with a low dew point only "at low temperatures." Protzman 83. Protzman teaches that it is "frequently desirable" to "saturat[ e ]" air with water vapor at "temperatures above room temperature." Id. The only drying temperature taught by Tanaka appears to be a temperature slightly above room temperature in which the air is not dry. Tanaka i-fi-163---64; App. Br. 9 (describing Tanaka's drying conditions as "mild"). Tomaschke expresses a preference for drying temperatures of 40°C-80°C. Tomaschke at 11:46-47. Even if the references would have led a person of ordinary skill in the art to use drying air of room temperature, the Examiner's rejection does not adequately explain why Protzman would have motivated a person of ordinary skill in the art to modify Tanaka to use drying air having the claimed dew point. Moreover, as the Appellants explain, the goal of Tanaka "is to prevent the solvent from drying at the surface of the base member to thereby prevent the membrane from peeling off of the base member." App. Br. 8 (discussing Tanaka i-fi-1 5-7 ("during drying of the formed membrane, a solvent present in a base member pore sometimes flows out on a membrane side to cause membrane peeling," and "there is a problem that a defect is generated")). To achieve that goal, Tanaka teaches the use of vacuum suction and mild drying conditions. App. Br. 9; Tanaka i-fi-f 14, 64. The Appellants argue that the modifications to Tanaka proposed by the Examiner are directly contrary to the goal of Tanaka and would actually exacerbate the problem (peeling due to drying) that Tanaka seeks to solve. Id. at 8-9. Specifically, the 4 Appeal2014-003753 Application 13/242,552 Appellants argue that "Protzman and Tomaschke both disclose drying methods in which air is blown across a surface of the layer to be dried, and water contained in the layer dries from the surface thereof. This is exactly what [the method of] Tanaka is designed to prevent." Id. at 9. They further argue that the dry air of Protzman "would promote drying of the solvent on the membrane surface in Tanaka, which ... is opposite to the objective sought in Tanaka." Id. The Examiner responds that "Protzman and T omaschke do not teach away from Tanaka as Tanaka does not state that conventional blow drying destroys the invention." Ans. 4. That response does not persuasively address the Appellants' argument. If a person of ordinary skill would have understood the harsher drying methods of Protzman and Tomaschke to exacerbate the very problem that Tanaka seeks to solve, as alleged by the Appellants, then it is unclear why a person of ordinary skill in the art would have been motivated to combine the teachings of the references to arrive at the claimed invention, regardless of whether or not Tanaka disparages conventional blow drying. The Examiner's Answer does not adequately address that point. Establishing a prima facie case of obviousness requires an apparent reason to modify or combine the prior art as proposed by the Examiner. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). On this record, we are not persuaded that a preponderance of the evidence supports the Examiner's rejection of claim 1. We must therefore reverse the rejection. The Examiner's rejection of claims 2 and 4--6 does not remedy the errors identified above. Accordingly, we must likewise reverse the Examiner's rejection of those claims. 5 Appeal2014-003753 Application 13/242,552 CONCLUSION We REVERSE the Examiner's rejection of claims 1, 2, and 4--6. REVERSED 6 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYUJIRO NAGASAKA, TATSUYA HISHIKI, and ICHIROWADA Appeal2014-003753 Application 13/242,552 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. OGDEN, Administrative Patent Judge, concurring. I respectfully concur in the panel's decision, but would reverse the Examiner's decision for different reasons than the majority. Appellants argue that Protzman teaches that when an emulsion is dried at a temperature above room temperature, the drying air should be "very wet." App. Br. 5. This mischaracterizes the teaching of Protzman, which simply explains how the drying rate of an emulsion film "can be partially controlled by the moisture content of [the drying] air." Protzman 82. When drying using air below room temperature, Protzman teaches that the air should have a dew point below 0°C. Id. at 83. However, when drying at "temperatures above room temperature," Protzman states that "the drying rate is fast, and it is frequently desirable to slow down evaporation by saturating the air with water vapor." Id. Thus, Protzman teaches that when Appeal2014-003753 Application 13/242,552 drying with air above room temperature, the dew point may be increased above 0°C, if necessary, to slow down the rate of evaporation. When the general conditions of the claimed invention are disclosed in the prior art, "[ d]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art." In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (quoting In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). Because Protzman teaches the use of drying air that is below or above room temperature, and teaches that the air's dew point may be below 0°C, Protzman teaches the general conditions of air temperature and dew point required by claim 1. Protzman also teaches that the air temperature and dew point may be varied in order to partially control the rate of drying. Therefore, I would find no reversible error in the Examiner's conclusion, see Final Act. 4, that one of ordinary skill in the art at the time of filing would have known that the temperature and dew point of the drying air are result-effective variables. See Applied Materials, 692 F.3d at 1297 ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."). Nevertheless, I concur with my colleagues that Appellants have shown that the teachings of Protzman are contrary to the objective of Tanaka, and would result in undesirable peeling of the membrane. Therefore, I concur that the Examiner erred in concluding that it would have been obvious to combine the method of Tanaka with the teachings of Protzman. 2 Copy with citationCopy as parenthetical citation