Ex Parte Tomita et al

Patent Trial and Appeal Board

Aug 9, 2016

12730494 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121730,494 03/24/2010
25191 7590 08/09/2016
BURR & BROWN, PLLC
POBOX7068
SYRACUSE, NY 13261-7068
FIRST NAMED INVENTOR
Takahiro Tomita
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_474 9276
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1778
MAILDATE DELIVERY MODE
08/09/2016 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 TAKAHIRO TOMITA, ASUMI JINDO,
KENJI MORIMOTO, KEN KUW AM OTO, and
KATSUHIRO INOUE
Appeal2014-005493
Application 12/730,494
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVEL YN M. ROSS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal the Examiner's decision to reject claims 1, 3-10,
and 14 under 35 U.S.C. § 103(a) as obvious over Castillon3 in view of
1 In our opinion below, we refer to the Specification filed March 24, 2010
(Spec.), Final Office Action filed May 31, 2013 (Final), the Appeal Brief
filed December 2, 2013 (Appeal Br.), the Examiner's Answer filed January
27, 2014. (Ans.), and the Reply Brief filed March 24, 2014 (Reply Br.).
Appeal2014-005493
Application 12/730,494
Katsuyoshi, 4 as evidenced by Ketcham 5 and Cutler. 6 We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claims are directed to an alumina porous body. Claim 1 is
illustrative:
1. An alumina porous body having a porosity of 15 to
45% and an average pore size of 2 to 15 µm, the alumina
porous body comprising 5 to 30 mass% of titanium oxide and
0.01 mass% to 1.5 mass% of copper oxide.
Claims Appendix, Appeal Br. 14.
OPINION
Appellants' arguments focus on the rejection of claim 1. Thus, we
select claim 1 as representative for resolving the issues on appeal. Two
central issues arise:
1. Did the Examiner reversibly err in finding a suggestion within the
prior art for incorporating copper oxide into the ceramic material
of Castillon? And if not:
2. Did Appellants meet their burden of showing unexpected results
commensurate in scope with the breath of claim 1 such that when
2 Appellants identify the real party of interest as NGK Insulators, Ltd.
Appeal Br. 1.
3 US 5,415,775, issued May 16, 1995.
4 JP 01-308868, pub. Dec. 13, 1989 (English Abstract).
5 US 5,175,132, issued Dec. 29, 1992.
6 Sintering of Alumina at Temperatures of 1400°C. and Below, Presented at
the Fifty-Eighth Annual Meeting, The American Ceramic Soc., New York,
N.Y., April 23, 1956.
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Application 12/730,494
all the evidence is weighed as a whole a preponderance supports a
conclusion of non-obviousness?
Issue 1
Appellants contend sintering occurs between particles that directly
contact each other, and that Castillon's sintering is between alumina
particles, not titania 7 particles as in the case of Appellants' invention.
Appeal Br. 7. But Appellants' own Specification states that Castillon's
composition has a "bonding phase of titania." Spec. i-f 7. 8 Thus, Castillon
also bonds titania in the sintering process. This is further supported by the
substantial similarities in the method of forming the ceramic taught by
Appellants and Castillon. Compare Castillon, examples at col. 6, 1. 26 to
col. 7, 1. 43 with Spec. i-fi-163-64. We find no discemable difference between
the sintering mechanisms of Appellants and those of Castillon.
Ketcham suggests sintering ceramic powders of alumina together with
titania (Ti02) and a trans1t10n metal oxide such as copper oxide. Ketcham,
Abstract. According to Ketcham, the titania and copper oxide serve as
sintering aids that allow the ceramic powder to be sintered at a lower
temperature. Ketcham, col. 2, 11. 7-14.
Cutler, which Ketcham discusses, provides supportive evidence.
Ketcham, col. 1, 11. 23-29; Cutler, generally. Cutler explains that the
combination of copper and titanium oxides is more effective in aiding
sintering than either of the oxides alone. Cutler, p. 138 (§IV Discussion of
7 Titania is titanium dioxide (Ti02).
8 Appellants state that Castillon is the U.S. equivalent of Japanese Patent No.
2670967 discussed in the Specification. Appeal Br. 5.
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Results, i-f 1 ). Cutler proposes that "at least one of the contributing factors in
this remarkable effect is the formation of a eutectic liquid."
Based on the evidence, there would have been a reasonable
expectation that combinations of copper oxide and titanium oxide that form
eutectic liquid would aid sintering of alumina as suggested by Ketcham and
Cutler.
Castillon teaches alumina-based ceramics in which titanium oxide
(titania) serves as an additive to reduce sintering temperature, i.e., serves as
a sintering aid, and thus, the evidence supports the Examiner's finding that
those of ordinary skill in the art would have recognized that adding copper
oxide would further lower the sintering temperature given the teachings of
Ketcham and Cutler.
Although the Examiner further relied upon Katuyoshi, this reference
is not necessary to our discussion because Ketcham and Cutler provide
adequate evidence supporting the rejection. Katuyoshi is merely additive
with regard to the effect of sintering aids on alumina sintering.
Issue 2
Appellants contend that "[a]s discussed on page 4 supra, the data in
the specification unequivocally proves that, even when very small amounts
of copper oxide are added, the sinterability of the titania bonding phase is
improved to such an extent that the initial flexural strength of the alumina
body quadrupled." Appeal Br. 9.
On page 4, Appellants rely upon a comparison of the data of Example
1 in Table 3 to the Comparative Example in Table 6. Appeal Br. 4. Both
examples contain alumina, and a ratio of titanium oxide in the total amount
of alumna (Ab03 and Ti02) in the kneaded clay of 9. 7 mass%. Example 1
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Application 12/730,494
additionally contains 0.08% mass% copper oxide. Spec. i-f 74, Table 1 (Ex.
1) i-f 75, Table 2 (Ex. 18 (Comparative Example)), and i-f 76, Table 3. The
Comparative Example does not contain copper oxide. The Example 1
product has a flexural strength of 19 MPa. Spec. i-f 76, Table 3. The
Comparative Example product has a flexural strength of 5 MPa. Spec. i-f 79,
Table 6.
Appellants argue that the four-fold increase in flexural strength is per
se unexpected. Appeal Br. 9. The problem is that Appellants present no
evidence with regard to what result would have been expected. The
statements in the briefs that the result would have been unexpected is merely
attorney argument. Attorney argument cannot take the place of evidence.
See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007)
("[A ]ny superior property must be unexpected to be considered as evidence
of non-obviousness," and a proper evaluation considers what properties were
expected); In re Mayne, 104 F.3d 1339, 1343--44 (Fed.Cir.1997) (noting that
an unsupported assertion 1s msufficient to make a showing that "the claimed
invention exhibits some superior property or advantage that a person of
ordinary skill in the relevant art would find surprising or unexpected."). We
note that Ketcham discloses that ceramic products made from a base ceramic
such as alumina with a combination of titanium oxide (Ti02) and copper
oxide (CuO) provide excellent flexural strength notwithstanding the
incorporation of substantial proportions of sintering aids. Ketcham, col. 3,
11. 24--33. Thus, there is some evidence that those of ordinary skill in the art
would have expected to obtain flexural strength on par with the flexural
strength obtained when sintering an alumina-titania ceramic (not containing
copper oxide) at a higher temperature. Appellants sinter the comparative
sample at the same temperature as the inventive sample (1250°C for 2
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Application 12/730,494
hours). Spec. i-f 76, Table 3; i-f 79, Table 6. One would have expected that
the composition that did not contain copper oxide would have lower strength
given the known effect of copper oxide on sintering temperature. It is not
known what flexural strength would have been expected for the
Comparative Example fired at the same temperature as the copper-oxide-
containing sample.
Further, we agree with the Examiner that Appellants fail to show an
unexpected result commensurate in scope with the breath of the claim
because the relied upon composition contains 0.08 mass% copper oxide, but
claim 1 encompasses compositions containing anywhere from 0.01 mass%
to 1.5 mass% copper oxide. "Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for 'it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support."' In re
Greenfield, 571 F.2d at 1189 (quoting Jn re Tiffin, 448 F.2d 791, 792 (CCPA
1971)).
Appellants argue that the claimed range is not the salient point in this
case, it is the presence of the copper oxide. Reply Br. 4. We disagree
because the prior art suggests that copper oxide will act as a sintering aid.
Appellants contend that they discovered the poor sinterability problem
associated with the titania bonding phase in the filter of Castillon, and their
recognition of this problem should be given patentable weight. Appeal Br.
9-10. We have considered the statements in the Specification that
Appellants confirmed that supports formed as disclosed in Castillon had a
problem of insufficient initial strength due to poor sinterability of titania,
and conceived their solution (adding copper oxide to the ceramic of
Castillon) to remedy that problem. Spec. i-fi-17-8. However, the prior art
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provides evidence that it was known that adding copper oxide would reduce
the sintering temperature, and thus, provide the necessary strength at a lower
sintering temperature. Without evidence that the increase in flexural
strength that Appellants achieved would have been at an unexpected level
across the entire copper oxide range of claim 1, we cannot say that the
evidence as a whole supports a conclusion of non-obviousness.
CONCLUSION
We sustain the Examiner's rejection.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l ).
AFFIRMED
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