Ex Parte NAGASAKA et al

Patent Trial and Appeal Board

Feb 9, 2016

13242552 (P.T.A.B. Feb. 9, 2016)

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.
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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.
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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
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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.
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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.
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