Ex Parte Naito et al

Patent Trial and Appeal Board

Aug 13, 2018

14351057 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/351,057 04/10/2014
23373 7590 08/15/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Kazumi Naito
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.
Q210133 8193
EXAMINER
WANG, NICHOLAS A
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
08/15/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUMI NAITO and SHOJI Y ABE
Appeal2017-010731
Application 14/351,057
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. For the reasons explained infra, we designate a portion
of our affirmance as a NEW GROUND OF REJECTION pursuant to 37
C.F.R. §41.50(b).
1 According to the Appellants, the Real Party in Interest is SHOW A
DENKO K.K. (Appeal Brief filed April 24, 2017, hereinafter "App. Br.,"
2.)
Appeal2017-010731
Application 14/351,057
THE INVENTION
Appellants state that the invention relates to a method of
manufacturing an anode body of a capacitor, and more specifically, a
method of manufacturing an anode body of a capacitor comprising a sintered
body of tungsten as an anode. (Spec. ,r 1.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for manufacturing an anode body of a
capacitor, wherein the anode body of a capacitor is obtained by
sintering a molded body of tungsten powder, comprising
sintering the molded body by exposing the molded body to
silicon vapor so that at least a part of the surface of the obtained
sintered body is made to be tungsten silicide.
(App. Br., Claims Appendix 21.)
THE REJECTIONS
The Examiner rejected the claims under pre-AIA 35 U.S.C. § 103(a)
as follows:
1. Claims 1, 2, 13, 15, and 16 as obvious over Hirakawa et al. (US
5,919,321, issued July 6, 1999) (hereinafter "Hirakawa") in view of Wainer
(US 2,593,943, issued April 22, 1952);
2. Claim 4 as obvious over Hirakawa in view of Wainer, as
evidenced by Victor E. Borisenko et al., (2000) General Material Aspects.
In: Semiconducting Silicides. Springer Series in Materials Science, Vol. 39.
Springer, Berlin, Heidelberg (hereinafter "Borisenko");
3. Claims 5, 7, 8, and 10-12 as obvious over Hirakawa in view of
Wainer, further in view of Shekhter et al. (EP 2 055 412 A2, published
May 6, 2009) (hereinafter "Shekhter");
2
Appeal2017-010731
Application 14/351,057
4. Claim 6 as obvious over Hirakawa in view of Wainer, and
Shekhter as applied to claim 5, further in view of Kumagai et al. (US
3,825,802, issued July 23, 1974) (hereinafter "Kumagai");
5. Claim 9 as obvious over Hirakawa in view of Wainer, and
Shekhter as applied to claim 5, further in view of Albrecht et al. (US
4,512,805, issued April 23, 1985) (hereinafter "Albrecht");
6. Claim 14 as obvious over Hirakawa in view of Wainer, as
applied to claim 13, further in view of Kumagai;
7. Claims 1, 2, 5-7, and 13-16 as obvious over Kumagai in view
of Wainer;
8. Claim 3 as obvious over Kumagai in view of Wainer, as applied
to claim 1, further in view of Iida et al. (US 2006/0215353 Al, published
Sep. 28, 2006 ) (hereinafter "Iida");
9. Claim 4 as obvious over Kumagai in view of Wainer, as applied
to claim 1, as evidenced by Borisenko;
10. Claims 8 and 10-12 as obvious over Kumagai in view of
Wainer, as applied to claim 1, further in view of Shekhter; and
11. Claim 9 as obvious over Kumagai in view of Wainer, as applied
to claim 5, further in view of Albrecht.
In addition the Examiner rejected the claims as follows:
12. The Examiner rejected claims 1---6 and 10-14 on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 2, 5-9,
and 13-15 of U.S. Patent No. 9,053,860 (hereinafter "'860 Patent") in view
of Wainer. (Final Rejection, mailed September 14, 2016, (hereinafter "Final
3
Appeal2017-010731
Application 14/351,057
Rej.") 3-20; Examiner's Answer, mailed June 16, 2017, (hereinafter "Ans.")
2-17.))
Rejection 1: Hirakawa in view of Wainer
ISSUE
Appellants argue claim 1 and present additional arguments for claims
13, 15 and 16. (See generally App. Br.) We therefore confine our
discussion to appealed claim 1 pursuant to 37 C.F.R. § 4I.37(c)(l)(iv), and
address the additional arguments presented separately.
The Examiner found that Hirakawa discloses making a tungsten
silicide material through sintering tungsten powder with silicon powder at a
temperature of 1,200 degrees C or higher. (Final Rej. 4, Hirakawa col. 5, 11.
13-25.) The Examiner found that Hirakawa exposes the tungsten silicide
material to a silicon vapor as recited in the claims, because Hirakawa's
method is similar to the claimed method. (Id.) The Examiner found that
Hirakawa is silent regarding the formation of a molded body of powder prior
to sintering, but found that Wainer discloses metering metal powder into a
die cavity to initially consolidate or mold the powder before sintering to
obtain any desired shape of anode. (Id.) The Examiner determined that it
would have been obvious to one of ordinary skill in the art to modify the
method disclosed in Hirakawa by metering metal into a die cavity as
disclosed in by Wainer to obtain a desired electrode shape. (Id.)
Appellants argue that Hirakawa does not disclose the use of silicon
vapor as recited in independent claim 1. (App. Br. 12.) In particular,
Appellants contend that Hirakawa discloses mixing a tungsten powder and
silicon powder, where the silicon powder is in the solid state, and that
4
Appeal2017-010731
Application 14/351,057
Hirakawa discloses that the temperature is limited so as not to cause melting
of silicon. (Id. at 12-13.)
Accordingly, the issue with respect to the rejections based on
Hirakawa is: did the Examiner err in finding that Hirakawa discloses silicon
vapor as required in claim 1?
DISCUSSION
Claim 1
We are not persuaded by Appellants' argument that under the
conditions disclosed in Hirakawa, a silicon vapor is not produced. At the
outset, we observe that claim 1 does not recite any specific conditions in
order to generate silicon vapor, and claim 2 broadly recites a temperature
range of 1,100 to 2,600°C.
As pointed out by Appellants, Hirakawa discloses preparation of a
calcined mass by a silicide reaction at 1350°C and a vacuum of not more
than 6 x 10-2 Pa. (App. Br. 13; Hirakawa, col. 7, 11. 46-49.) Appellants
point to the examples in the Specification disclosing temperatures of 1450
and 1500°C, which are higher than disclosed in Hirakawa, and a pressure of
1 x 10-2 Pa, which is lower than disclosed in Hirakawa. (App. Br. 13, Spec.
Ex. 1-8.) However, although Appellants argue that the conditions set forth
in Hirakawa do not result in a silicon vapor as compared to the examples set
forth in the Specification, we have not been directed to sufficient evidence
that silicon vapor would not exist under the conditions disclosed in
Hirakawa. Indeed, the Specification only states with respect to the reaction
of tungsten with silicon vapor that "when the reaction temperature is lower
than 1, 100°C, it takes time for silicification" (i-f 26), as opposed to the
5
Appeal2017-010731
Application 14/351,057
absence of silicon vapor under these conditions all together. In addition, as
mentioned above, the temperature in the cited example of Hirakawa is
within the temperature range recited in claim 2.
Hirakawa does disclose: "it is preferable to limit the upper limit of
the temperature to be not more than 1,400°C. which is lower than the
melting point of Si (1,414°C.). This is because, at a temperature more than
1,400°C., the structure of the sintered body becomes ununiform due to
melting of silicon." (Col. 5, 11. 54--59; see App. Br. 12.) However, because
of the similarity of conditions between Hirakawa and the instant
Specification and the absence of concrete results that no silicon vapor is
formed under the conditions disclosed in Hirakawa, we are of the view that
Appellants have not demonstrated error in the Examiner's position.
In this regard, we observe that although Appellants point out
differences in pressure between the examples in Hirakawa and the pressures
in the examples set forth in the Specification, the broader disclosure of the
Specification states that the reduced pressure condition "is preferably set to
10-1 Pa or lower" (Spec. ,r 26), which encompasses the pressure disclosed in
Hirakawa. Thus, we are not persuaded by Appellants' further argument,
which is unsupported by any persuasive evidence, that "it is technical
common knowledge that the melting point is hardly influenced by a
reduction in pressure." (Reply Brief filed August 15, 2017, ,r bridging pages
6-7.) Accordingly, we are not persuaded by Appellants' arguments.
Claims 13, 15, and 16
Regarding claim 13, which recites an anode body of a capacitor that is
subject to silicidation as recited in claim 1, the Examiner found that claim 13
6
Appeal2017-010731
Application 14/351,057
is a product-by-process claim, and serves to limit the structure of the anode
body, which is taught by the combination of Hirakawa and Wainer. (Final
Rej. 5.)
Regarding claims 15 and 16, which recite that the tungsten silicide is
formed and localized within 50 nm from the surface layer of the tungsten
particles, the Examiner found that Hirakawa and Wainer are silent regarding
the tungsten silicide being formed and localized within 50 nanometers from
the surface layer, but since Hirakawa discloses a similar method, the recited
localization would be expected. (Final Rej. 5.)
Appellants contend that Hirakawa discloses a target material
comprising WSi2 and free silicon, which has a different structure than the
anode body recited in claim 13. (App. Br. 14.) Appellants also contend that
Hirakawa discloses that the calcined mass is pulverized and sintered to
prepare the target material following silicification, which could not produce
the claimed tungsten molded body having tungsten silicide located within 50
nm from the surface layer and a core of tungsten particles. (Id.)
Appellants' arguments are not persuasive as they do not address the
Examiner's rejection, which relies on Wainer for initially forming a tungsten
body, but rather focuses on the independent disclosure of Hirakawa alone.
In an obviousness rejection, the combination of references must be
considered as a whole, rather than the specific teaching of each reference. In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); In re Simon, 461 F.2d
1387, 1390 (CCPA 1972).
In the instant case, Appellants have not provided persuasive argument
or evidence to rebut the Examiner's position that when the tungsten body of
7
Appeal2017-010731
Application 14/351,057
Wainer is subjected to the method of Hirakawa, an anode body having the
characteristics recited in claims 13, 15, and 16, would be produced.
Rejections 2-6
Appellants do not separately argue the claims subject to Rejections 2-
6 beyond the arguments addressed above. (See App. Br. 14.) Accordingly,
we affirm the Examiner's rejections for similar reason as discussed above
with respect to Rejection 1.
Rejection 7: Kumagai in view of Wainer
The Examiner found, inter alia, that Kumagai discloses a method of
fabrication including compressing tantalum and particles of a suitable dopant
containing material into a rigid porous mass, at a temperature sufficient to
diffuse the dopant throughout the porous mass, such as 1,700 to 2,100
degrees C. (Final Rej. 10.) The Examiner found that Kumagai discloses
that the dopant material may be combined with the particular film-forming
metal prior to or during sintering, in the form of a solid, liquid, or gas. (Id.
at 10-11.) In particular, the Examiner found that "SiH3 is composed of
silicon and in the gaseous form. Therefore it is maintained that SiH3 is
reasonably interpreted to meet the limitation of a silicon vapor." (Ans. 19.)
The Examiner further stated: "Since Kumagai broadly teaches silicon as a
dopant material in the form of a solid or gas, as stated previously, it is
maintained that the broad disclosure of silicon gas dopant meets the
limitation of silicon vapor." ( Ans. 19.)
Appellants argue that Kumagai does not disclose a reaction between
tungsten powder and silicon vapor, but rather uses elemental silicon in the
8
Appeal2017-010731
Application 14/351,057
form of a solid. (App. Br. 16.) Appellants contend that Kumagai discloses
SiH3 as a gas dopant, but that SiH3 is not silicon vapor as claimed. (Id.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in finding that Kumagai discloses "silicon
vapor" as recited in claim 1 and interpreted in light of the Specification?
ANALYSIS
Initially, we agree with Appellants that "silicon vapor" as recited in
the claims, does not include any "silicon gas dopant" as interpreted by the
Examiner. Rather, the Specification describes that the silicon vapor is
produced by heating silicon powder under reduced pressure conditions in
order to evaporate a part of whole of the silicon. (Spec. ,r,r 25, 26.) There is
no other starting material other than silicon powder disclosed in the
Specification and the Specification does not define any other gaseous
silicon-containing species as "silicon vapor." Accordingly, we interpret the
term "silicon vapor" to be elemental silicon in the gaseous state.
Thus, we are persuaded by Appellants' argument that Kumagai does
not disclose silicon vapor. Kumagai explicitly discloses that the silicon
dopant may be in the form of a gas, and identifies only SiH3 as an example.
(Kumagai, col. 4, 11. 7-11.) Accordingly, although Kumagai discloses
silicon as a dopant, which may be applied in the gaseous state, there is no
indication from Kumagai that the silicon gas dopant is "silicon vapor" as
recited in claim 1 and as interpreted in light of the Specification.
We acknowledge that Kumagai discloses the use of elemental silicon
as the dopant for use prior to or during the sintering operation. (Id.)
However, Kumagai is silent as to the conditions employed if tungsten were
9
Appeal2017-010731
Application 14/351,057
to be selected as the film-forming metal and elemental silicon would be
selected as the dopant such that silicon vapor would be produced.
Therefore, the Examiner does not provide sufficient rational underpinnings
to render the method recited in the claims, or anode bodies produced
therefrom obvious over Kumagai in view of Wainer. "'[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness."' KSR Int 'l.
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007), quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006).
Accordingly, we reverse the Examiner's rejection of the claims as
obvious over Kumagai and Wainer.
Re} ections 8-11
Because none of the other prior art applied in Rejections 8-11 remedy
the deficiencies identified above in the combination of Kumagai and Wainer,
we reverse Rejections 8-11 for the same reasons as discussed above with
respect to claim 7.
Obviousness Double Patenting Rejection
ISSUE
The Examiner found that claims 1, 2, 5-9, and 13-15 of the' 860
Patent discloses all of the claim limitations of claims 1---6 and 10-14, except
for a molded body prior to sintering. (Final Rej. 19.) The Examiner relied
on Wainer for this limitation and set forth a similar rationale as to the
obviousness rejections discussed above. (Final Rej. 19-20.)
10
Appeal2017-010731
Application 14/351,057
Appellants contend that the '860 Patent does not claim or disclose an
anode body prepared by reacting tungsten powder with silicon vapor, but
rather discloses mixing a tungsten powder and a silicon powder and reacting
the mixture by heating under reduced pressure. (App. Br. 18.) Appellants
argue that when a large amount of silicon vapor is generated during the
reaction in the '860 Patent, it is exhausted outside the reactor such that the
"silicification reaction thus primarily occurs between solids." (Id.)
Appellants contend also that the Examiner erroneously states that the
claimed invention does not require sintering without mixing, where the
claimed invention only requires exposing the molded body to silicon vapor,
which is not claimed or disclosed in the '860 Patent. (App. Br. 19.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in concluding that claims 1, 2, 5-9, and 13-15
of the'860 Patent in combination with Wainer render claims 1---6 and 10-14
obvious?
DISCUSSION
We are not persuaded by Appellants' argument that the '860 Patent
discloses a reaction between tungsten powder and silicon powder, as a result
of disclosing mixing tungsten powder and silicon powder.
Regarding Appellants' argument that the claims do not require
mixing, we observe that instant claim 1 recites "comprising" with respect to
the method claim, which does not preclude mixing silicon powder and
tungsten powder. Indeed, the Specification states that silicon powder can be
placed together with a tungsten molded body in a sintering furnace and then
evaporating a part or whole of the silicon. (Spec. ,r 25.) Thus, Appellants'
argument is not persuasive.
11
Appeal2017-010731
Application 14/351,057
Similar to the discussion above with respect to Hirakawa and Wainer,
we are of the view that because the '860 Patent discloses similar conditions
as set forth in the instant claims, a silicon vapor would be present. That is,
claim 15 of the '860 Patent recites that silicon powder and tungsten powder
are reacted by heating under reduced pressure.
Claim 16 of the '860 Patent recites that the heating temperature is
1,100 to 2,600 °C, which is the same temperature range recited in appealed
claim 2. We observe that the Examiner did not rely on claim 16 of the '860
Patent in the statement of rejection or in the course of the rejection itself.
As a result, we add claim 16 of the '860 Patent to the rejection for the
additional recitation of the specific temperature range recited in appealed
claim 2 and to support the Examiner's rejection with respect to the similarity
of conditions between the claims of the '860 Patent and the conditions
recited in the instant claims. Accordingly, in view of the added rationale, we
designate the obviousness double patenting rejection of claims 1---6 and 10-
14 as a new ground of rejection.
CONCLUSION
We affirm the Examiner's rejections of claims 1, 2, and 4--16 as
obvious over the cited prior art of record in Rejections 1---6.
We reverse the Examiner's rejection of claims 1-16 as obvious over
the cited prior art of record in Rejections 7-11.
We add claim 16 of the '860 Patent to the Examiner's obviousness
double patenting rejection of claims 1-6 and 10-14 and designate this
rejection as a NEW GROUND OF REJECTION under 37 C.F.R. § 4I.50(b).
12
Appeal2017-010731
Application 14/351,057
DECISION
We affirm the Examiner's rejection of claims 1-16.
It is ORDERED that new grounds of rejection of claims 1---6 and 10-
14 are entered for reasons set forth herein. 37 C.F.R. § 4I.50(b).
FURTHER ORDERED that 37 C.F.R. § 4I.50(b) provides that, "[a]
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
FURTHER ORDERED that 37 C.F.R. § 4I.50(b) also provides that
the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of proceedings as to the
rejected claims:
(1) submit an appropriate amendment of the rejected claims or new
evidence relating to the rejected claims, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner; or
(2) request that the proceeding be reheard under 37 C.F.R. § 41.52 by
the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. §4I.50(b)
13