Ex Parte Shoji et al

Patent Trial and Appeal Board

Aug 27, 2014

11662503 (P.T.A.B. Aug. 27, 2014)

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.
11/662,503 03/12/2007 Toru Shoji MAM-090 8333
20374 7590 08/28/2014
KUBOVCIK & KUBOVCIK
SUITE 1105
1215 SOUTH CLARK STREET
ARLINGTON, VA 22202
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
08/28/2014 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 TORU SHOJI, MITSUO KATO, MIKIO HIYAMA,
TATSUYA TAKAYA, and TAKASHI AITOKU
____________

Appeal 2013-001413
Application 11/662,5031
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 16–21, 36, and 37. We have jurisdiction under 35 U.S.C.
§ 6.

1 According to Appellants, the Real Party in Interest is Tanaka Kikinzoku
Kogyo K.K. and Nippon Electric Glass Co., Ltd. App. Br. 2.

Appeal 2013-001413
Application 11/662,503

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STATEMENT OF THE CASE
Claims 16 is representative of the subject matter on appeal and is set
forth below (emphasis added):
16. A method for coating a platinum material, characterized in that a
coating material containing a refractory component including alumina and
silica, and a glass component selected from the group consisting of
borosilicate glass and aluminoborosilicate glass is coated or adhered onto a
surface of the platinum material and then fired, said alumina, silica and glass
component being contained in the coating material in amounts of 15 – 55 %
by weight, 10 – 50 % by weight and 20 – 70 % by weight, respectively, and
said silica being at least partly in the form of colloidal silica, wherein,
after the firing, the colloidal silica becomes indiscernible from the glass
component and forms a matrix phase with the glass component, and the
alumina particles are dispersed in the matrix phase consisting of the glass
component and the colloidal silica.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Little et al. US 3,397,076 Aug. 13, 1968
Paschke et al. US 5,286,269 Feb. 15, 1994
Kotani et al. US 5,629,067 May 13, 1997
Ott et al. US 2004/0067369 Al Apr. 8, 2004
Dorfeld et al. US 2004/0177649 Al Sept. 16, 2004

THE REJECTIONS
1. Claims 16, 19, and 36 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ott in view of Kotani.
2. Claims 17, 18, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ott in view of Kotani and Dorfeld.
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3. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ott in view of Kotani, as applied to claim 16, and
further in view of Little.
4. Claim 37 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ott in view of Kotani, as applied to claim 16, and
further in view of Paschke.

ANALYSIS
For the reasons set forth below, we AFFIRM. However, pursuant to
37 C.F.R. § 41.50(b), we designate our affirmance of the Examiner’s
rejection of claims 16–21, 36, and 37 as including a new ground of rejection
because our reasons for affirming such rejection materially differ from those
expressed by the Examiner. See In re Leithem, 661 F.3d 1316, 1319 (Fed.
Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art
references, alone, is insufficient to avoid making a new ground of rejection
when the Board relies on new facts and rationales not previously raised to
the applicant by the examiner.”).
Appellants argue claims 16, 19, and 36 as a group and present no
argument for separate patentability of claims 19 or 36. App. Br. 5–11. For
the remaining appealed claims, Appellants merely refer back to their
arguments in support of claim 16. Id. at 11–13. Therefore, the appealed
claims stand or fall together, and we need not address any of the appealed
claims separately from claim 16. 37 C.F.R. § 41.37(c)(iv). Furthermore,
Appellants focus their arguments on Ott and Kotani and do not contest the
Examiner’s findings or conclusions as to the other references. We therefore
do not need to address the other references.
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Appellants agree that both the claimed invention and the primary
reference -- Ott -- are directed to a method of coating of a metal element
used for producing glass. App. Br. 9; see also Spec. 1; Ott ¶¶ 1–2.
According to the Examiner, Ott teaches a method of coating platinum with a
mixture of glass and ceramic (including alumina and silica) and then firing.
Answer 2; Final Rejection 2–3; see Ott, Abstract, ¶ 27, claim 17. Appellants
do not contest the Examiner’s finding that Ott discloses all elements of
Appellants’ claim 16, except for the requirement that the silica be at least
partly in the form of colloidal silica. Final Rejection 2–3. Appellants
challenge the Examiner’s finding that “it would have been obvious . . . to
have incorporated colloidal silica as the form of at least a portion of the
silica in the method of Ott . . . .” Final Rejection 3–4; App. Br. 5–6.
Because the dispute before us focuses on whether it would have been
obvious to include at least part of the silica in the form of colloidal silica, we
consider the meaning of “colloidal silica.” Both a dictionary definition and
Appellants’ Specification establish that colloidal silica is distinguished from
other forms of silica by its particle size. “Colloid” is defined as “[t]he phase
of a colloidal system made up of particles having dimensions of 10–10,000
angstroms (1–1000 nanometers) . . . .” MCGRAW-HILL DICTIONARY OF
SCIENTIFIC AND TECHNICAL TERMS 327 (Sybil P. Parker, ed., 1984).
Appellants’ Specification teaches that silica can be in the form of either
silica particles or colloidal silica, distinguishing the two forms by their
particle size:
In the case where silica is used in the form of silica particles,
they preferably have a mean particle diameter in the range of
1 – 100 µm, more preferably in the range of 3 – 80 µm.
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Spec. ¶ 18.
In the case where silica is used in the form of colloidal silica, it
preferably has a mean particle diameter in the range of 10 – 100
nm, more preferably in the range of 10 – 50 nm, further
preferably in the range of 10 – 30 nm.
Id. at ¶ 19. We therefore conclude that “colloidal silica,” as used in
Appellant’s claims, means silica having a particle size in the range 1 - 1000
nanometers, which is the “broadest reasonable construction consistent with
the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007).
We further note that Appellants’ claims require that at least part of the
silica be in the form of colloidal silica, without specifying how much of the
silica must be in colloidal form. Therefore, any amount of colloidal silica
will satisfy Appellants’ claims.
Regarding particle size, Ott teaches: “The ceramic particles can be
coarse or finely ground, the particle size and particle size distribution being
selected in accordance with the intended use.” Ott ¶ 27. As noted by the
Examiner, Ott teaches that the ground ceramic particles can comprise silica
and/or alumina. Answer 2; Ott ¶ 50 (“Particularly well suited . . . are
ceramic . . . materials based on SiO2, ZrO2 and Al2O3 alone or in
combination with one another.”).
We find that the teaching of Ott alone is sufficient to support prima
facie obviousness of using colloidal silica in Appellants’ claimed method.
Ott establishes that particle size of the silica is a known result effective
variable, i.e., a variable which is known to affect a result or provide a certain
function. Ott ¶ 27. Absent a showing of unexpected results, it would have
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been a matter of routine experimentation for one of ordinary skill in the art
to select a particle size and particle size distribution that includes at least
some amount of colloidal silica. When a particular parameter is recognized
as a result-effective variable, the determination of the optimum or workable
ranges of such variable via routine experimentation is well within the ambit
of one of ordinary skill in the art. In re Boesch, 617 F.2d 272, 276 (CCPA
1980) (“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”). As our reviewing court has stated:
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations
omitted). On this record, Appellants have not proffered any evidence to
show that including at least some amount of silica having a particle size
within a range that qualifies as colloidal imparts unexpected results relative
to the coating method taught by Ott. We note that none of the examples in
Appellants’ Specification tests the effect of varying the particle size of silica
while keeping other variables constant.
Although Appellants’ arguments focus on whether it would have been
obvious to modify Ott in view of Kotani, we find that the Examiner’s
obviousness rejection is supported by Ott alone. We therefore do not need
to address Appellants’ arguments regarding Kotani.
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CONCLUSION OF LAW AND DECISION
For the reasons discussed above, we affirm the Examiner’s decision
rejecting claims 16–21, 36, and 37 under 35 U.S.C. § 103(a), but designate
our affirmance as new grounds of rejection because our reasons materially
differ from those expressed by the Examiner.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b)(2012). 37 C.F.R. § 41.50(b) provides “new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, 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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 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).

AFFIRMED; 37 C.F.R. § 41.50(b)

cdc

Notice of References Cited

Application/Control No.

11/662,503
Applicant(s)/Patent Under
Reexamination
Toru Shoji et al.
Examiner

Nathan Empie
Art Unit

1700

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