Ex Parte Tomita et alDownload PDFPatent Trial and Appeal BoardSep 26, 201310992109 (P.T.A.B. Sep. 26, 2013) Copy Citation 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. 10/992,109 11/19/2004 Takahiro Tomita 791_357 7457 25191 7590 09/26/2013 BURR & BROWN PO BOX 7068 SYRACUSE, NY 13261-7068 EXAMINER KEMMERLE III, RUSSELL J ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 09/26/2013 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 and SHINJI KAWASAKI ____________________ Appeal 2012-002816 Application 10/992,109 Technology Center 1700 ____________________ Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002816 Application 10/992,109 2 Appellants1 seek relief under 35 U.S.C. § 134(a) from the Examiner’s final rejection2 of Claims 1-5, 8, and 17 under 35 U.S.C § 103(a) as being unpatentable over Mitchell3 in view of Miller4, and Claims 6 and 7 under 35 U.S.C § 103(a) as being unpatentable over Mitchell and Miller, and further in view of Banin5. Claims 9-16 are pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.6 STATEMENT OF THE CASE The invention relates to a method of manufacturing a honeycomb structure, in which a forming material containing a cordierite forming material and an organic binder is kneaded and formed to prepare the honey- comb-shaped article, which is then fired to obtain the final product composed mainly of cordierite. Spec. 5:1-7. The forming material contains a layered clay mineral whose layer charge (X) is 0.2 < X ≤ 2 in addition to the cordierite forming material and the organic binder. Id. at 8-10. The amount of oxide of at least one of sodium, potassium, and calcium is set at 0.5% mass or less with respect to the total amount of cordierite forming material. Id. at 10-15. 1 Appellants identify the real party in interest as NGK Insulators, Ltd. 2 Final Office Action mailed September 22, 2011. 3 US 5,021,373, issued June 4, 1991. 4 Miller, M., et al., “The Use of Montmorillonites as Extrusion Aids for Aluminaâ€, Ceram. Eng. Sci. Proc. 12[1-2], pp. 33-48 (1991). 5 US 3,725,528, issued April 3, 1973. 6 Our decision refers to Appellants’ Appeal Brief (App. Br.) filed August 10, 2011, the Examiner’s Answer (Ans.) mailed October 5, 2011, and Appellants’ Reply Brief (Reply Br.) filed December 2, 2011. Appeal 2012-002816 Application 10/992,109 3 Independent claim 1, set forth below, is illustrative of the subject matter on appeal: 1. A method of manufacturing a honeycomb structure, comprising the steps of: kneading and forming a forming material containing a cordierite forming material and an organic binder to prepare a honeycomb formed article, and firing the prepared honeycomb formed article to obtain a honeycomb structure mainly composed of cordierite; wherein the cordierite forming material comprises a layered clay mineral having a layer charge X of 0.2 < X ≤ 2; wherein an amount of the layered clay mineral in the cordierite forming material is 0.05 mass% to 20 mass% with respect to a total amount of the cordierite forming material; wherein a total amount of at least one element selected from the group consisting of sodium, potassium, and calcium in the layered clay mineral of the cordierite forming material is 0.5% by mass or less in terms of an oxide with respect to the total amount of the cordierite forming material; and wherein the organic binder comprises 0% to 5% by mass with respect to 100 parts by mass in total of the cordierite forming material including the layered clay mineral. App. Br. 10, Claims App’x. The Issue Presented The dispositive issue before us on appeal is whether the Examiner reversibly erred in concluding it would have been obvious to add Miller’s hectorite as an extrusion aid to Mitchell’s cordierite forming material. We answer this question in the affirmative and therefore reverse the Examiner’s rejection of the claims as unpatentable over the combination of Mitchell and Miller. Appeal 2012-002816 Application 10/992,109 4 ANALYSIS Appellants’ arguments on appeal are based primarily on claim 1’s limitations. See generally App. Br. 12-21. Claim 1 requires kneading and forming a forming material containing a cordierite forming material and an organic binder to prepare a honeycomb formed article, and firing the article to obtain a honeycomb structure mainly composed of cordierite, wherein the cordierite forming material includes 0.05 mass% to 20 mass% of a layered clay mineral having a layer charge X of 0.2 < X ≤ 2, and 0.5 mass% or less of at least one oxide of sodium, potassium, and calcium in the layered clay mineral. The Examiner finds Mitchell discloses a method of manufacturing a porous ceramic honeycomb structure mainly composed of cordierite including mixing cordierite forming material with an organic binder, extruding the mixture to form a honeycomb article, and then firing the article. Ans. 4. The Examiner acknowledges Mitchell does not disclose that the forming material has 0.05 mass% to 20 mass% of a layered clay mineral having a layer charge X of 0.2 < X ≤ 2, and 0.5 mass% or less of at least one oxide of sodium, potassium, and calcium in the layered clay mineral. Id. at 5. However, the Examiner finds “Miller discloses that water washed hectorite dispersed in water is a good extrusion aid to assist in creating an extruded piece with improved qualities, especially when added at around 1- 2% by mass.†Id. The Examiner also finds Miller’s hectorite is “a Na or Ca type smectite since the interlayer cation is either Na or Ca.†Id. The Examiner then concludes it would have been obvious to have added Miller’s hectorite to Mitchell’s forming material as an extrusion aid to improve the qualities of the extruded article. Although the Examiner acknowledges that Appeal 2012-002816 Application 10/992,109 5 neither Mitchell nor Miller discuss the amount of Na, K, and/or Ca oxide in the extruded article, the Examiner concludes it would have been obvious that the amount would be less than 0.5 mass% because neither reference teaches the addition of Na, K, or Ca from any source other than the hectorite and, when added in the amount of 1-2 mass%, “would result in a mixture having a total of Na, K and Ca less than 0.5% by mass.†Id. Finally, while the Examiner acknowledges Miller’s hectorite fails to meet the layer charge limitation of claim 1, the Examiner nonetheless concludes “it would have been within the ability of one of ordinary skill in the art to substitute a theoretically ideal hectorite for the hectorite of Miller.†Id. at 6. Appellants contend that one of ordinary skill in the art would not have found it obvious to add Miller’s extrusion aid to Mitchell’s composition primarily because Miller’s hectorite would be expected to increase the thermal expansion coefficient (TEC) of Mitchell’s cordierite honeycomb structure, in contravention of Mitchell’s purpose to reduce TEC. App. Br. 12-15. In addition, Appellants argue one would have expected Miller’s hectorite to produce an anisotropic effect if added to Mitchell’s forming material, also in contravention of Mitchell’s purpose of achieving an essentially isotropic honeycomb structure. Id. at 14-15. Moreover, Appellants argue that one skilled in the art would have recognized that Miller’s hectorite would not function as an extrusion aid in Mitchell as Mitchell uses calcined materials and calcining clay would remove any potential desirable lubricity effects of the hectorite. Id. Instead, Appellants assert one of ordinary skill in the art, faced with these issues, would have looked to other non-clay materials as extrusion aids, if desired, rather than to Miller’s hectorite. Id. at 17-18. In support of these arguments, Appellants Appeal 2012-002816 Application 10/992,109 6 direct our attention to the Tomita I, II, III and Schulze declarations.7 Id. at 12-15; Reply Br. 6-8. Appellants assert that this evidence demonstrates that one of ordinary skill in the art would not have combined Mitchell and Miller in view of the expected detrimental effects of adding hectorite to Mitchell’s cordierite compositions. Reply Br. 7. In response, the Examiner urges that one skilled in the art would be able to weigh the advantages and disadvantages of adding Miller’s hectorite as an extrusion aid in Mitchell, and would “be able to determine when the TEC affect of the hectorite would outweigh its use as an extrusion aid.†Ans. 8. The Examiner further urges that Appellants have not provided any evidence that Mitchell discourages use of a layered clay such as Miller’s as an extrusion aid. Id. With regard to Appellants’ declaration evidence, the Examiner urges that this evidence fails to establish that one skilled in the art would have expected addition of a small amount (1-2 mass%) of Miller’s hectorite “to have a significantly negative impact on the TEC that it would not be suitable for use in the body of Mitchell.†Id. at 10. As to Mitchell’s use of calcined materials, the Examiner urges “[o]ne skilled in the art would find it obvious to use the extrusion aid in that state described by Miller, which is uncalcined and acting to aid extrusion.†Id. at 8. Having considered the record before us including Appellants’ declaration evidence, we are persuaded that one of ordinary skill in the art 7 Appellants rely on the following evidence: 1) Declaration under 37 C.F.R. § 1.132 of Dr. Takahiro Tomita, filed January 14, 2008 (Tomita I); 2) Declaration under 37 C.F.R. § 1.132 of Dr. Takahiro Tomita, filed September 18, 2009 (Tomita II); 3) Declaration under 37 C.F.R. § 1.132 of Dr. Takahiro Tomita, filed July 1, 2010 (Tomita III); and 4) Declaration under 37 C.F.R. § 1.132 of Prof. Walter A. Schulze, filed December 7, 2010 (Schulze). Appeal 2012-002816 Application 10/992,109 7 would not have found it obvious to include Miller’s extrusion aid in Mitchell’s honeycomb structure manufacturing method. In particular, we find the Examiner erred by dismissing the declarations of Appellants’ experts, Drs. Tomita and Schulze, addressing the issue of whether one of ordinary skill in the art would have added Miller’s extrusion aid to Mitchell’s cordierite compositions. Mitchell is directed to essentially isotropic cordierite compositions having improved (reduced) TEC. Mitchell, Abstract and 4:27-30. Appellants provide declaration evidence to demonstrate that one would expect Miller’s hectorite to increase the Mitchell structure’s TEC, if added to the cordierite forming material. The Examiner does not dispute the declarants’ expertise, nor the factual underpinning the declarants provide in support of their expert opinions. Tomita I provides evidence that Miller’s hectorite is not a layered clay mineral having a layer charge X of 0.2 < X ≤ 2. 8 Tomita I, ¶ 6. Tomita II states one skilled in the art, would not have a “reasonable expectation of successfully attaining the objectives of Mitchell, namely of obtaining reduced shrinkage and a lowered TEC.†Tomita II, ¶ 6. In support of this opinion, Tomita II demonstrates Miller’s hectorite would be expected to increase Mitchell’s TEC. Tomita II, ¶¶ 10-11, 14-15. Schulze states “Mitchell . . . teaches away from using clays as extrusion aids, since such clays would be expected to produce an anisotropic effect,†citing to Mitchell’s disclosed objectives of obtaining essentially isotropic cordierite 8 Appellants do not contest the prior art status of the theoretically ideal hectorite of Tomita I, nor the obviousness of substituting this hectorite for Miller’s as an extrusion aid in Mitchell. However, the Declaration under 37 C.F.R. § 1.132 of Prof. Walter A. Schulze, filed December 7, 2010 appears to question the existence of the theoretically ideal hectorite and the obviousness of its selection. Schulze, ¶ 12. Appeal 2012-002816 Application 10/992,109 8 compositions with improved TEC. Schulze, ¶ 5. Schulze states “I would never consider adding a component to the composition that I would expect to undermine the main purpose of Mitchell.†Schulze, ¶ 6. Further, Schulze states that if improving extrudability of Mitchell’s composition were a concern, extrusion aids other than Miller’s hectorite are known in the art that would not subvert Mitchell’s objectives. Schulze, ¶ 8-10. Finally, with regard to the Examiner’s proposed substitution of theoretically ideal hectorite for Miller’s, Schulze states the mere possibility that this substance may exist is not enough to render such a substitution obvious in Mitchell, especially given the known disadvantages these substances are expected to have. Schulze, ¶ 12. Relative to these declarations, the Examiner does not dispute that one skilled in the art would expect Miller’s hectorite to increase Mitchell’s TEC and anisotropy, nor that other suitable extrusion aids are known which would not have these detrimental effects. The Examiner’s assertion that Appellants have not shown that small amounts of hectorite as taught by Miller would have significant negative effects does not refute Appellants’ evidence. Instead, such an argument constructively concedes the accuracy of Appellants’ evidence, merely asserting that the quantitative amount of negative effects correlate to the amount of hectorite added. We are persuaded therefore that Mitchell teaches away from use of Miller’s hectorite. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend Appeal 2012-002816 Application 10/992,109 9 on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.â€) Accordingly, we will not sustain the Examiner’s rejection of claim 1 as being unpatentable over the combination of Mitchell and Miller. Turning to the § 103 rejection of claims 6 and 7 as being unpatentable over the combination of Mitchell and Miller, and further in view of Banin, we note the Examiner does not rely on Banin to resolve the deficiencies noted above. As such, our decision above applies equally to this rejection. We therefore will not sustain this rejection for the reasons given above. CONCLUSION For the foregoing reasons, we find that the Examiner has failed to establish the combination of Mitchell and Miller would have been obvious to one of ordinary skill in the art. We therefore reverse the 35 U.S.C. § 103(a) rejections of Claims 1-8 and 17. REVERSED tc Copy with citationCopy as parenthetical citation