Ex Parte Ye

Board of Patent Appeals and Interferences

Dec 16, 2010

10547740 (B.P.A.I. Dec. 16, 2010)

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.
10/547,740 09/01/2005 Liang Ye 1-17110 7330
1678 7590 12/16/2010
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604
EXAMINER
GAMBETTA, KELLY M
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
12/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LIANG YE
____________________

Appeal 2010-000759
Application 10/547,740
Technology Center 1700
____________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 27-36. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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We AFFIRM.
Appellant’s invention relates to a CVD process for the deposition of a
titanium oxide coating which uses a vapor comprising an organo titanium
compound, preferably titanium alkoxides such as titanium tetraisopropoxide
(TTIP) and titanium tetraethoxide (TTEt), and an oxygen-containing organic
compound, preferably a carboxylate ester. Claim 27 is illustrative:
27. A chemical vapor deposition process for the
deposition of a photocatalytically active coating comprising
titanium oxide on the surface of a substrate, the process
comprising contacting that surface with a vapor comprising
titanium tetraethoxide or titanium tetraisopropoxide and a
carboxylate ester at a temperature which is sufficiently high to
form the titanium oxide coating.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Hurst US 6,840,061 B1 Jan. 11, 2005
Greenberg
Johnson
Sheel
Ammerlaan
US 2002/0114945 A1
US 2003/0039843 A1
WO 98/06675
WO 00/75087 A1
Aug. 22, 2002
Feb. 27, 2003
Feb. 19, 1998
Dec. 14, 2000
The Examiner maintains, and Appellant seeks review of, the
following rejections:
1. The rejection of claims 27-33, 35, and 36 under 35 U.S.C. § 102(b) as
anticipated by Johnson;
2. The rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable
over Johnson;
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3. The rejection of claims 27-36 under 35 U.S.C. § 103(a) as
unpatentable over Sheel in view of Johnson or Greenberg;
4. The rejection of claims 27-36 under 35 U.S.C. § 103(a) as
unpatentable over Ammerlaan in view of Johnson or Greenberg;
5. The rejection of claims 27-36 under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over claims 1-9 of
Hurst in view of Johnson or Greenberg.
With respect to the first rejection, Appellant presents arguments with
respect to all the rejected claims as a group, for which we select independent
claim 27 as representative (Br. 10-11). Appellant does not advance any
additional arguments for the second rejection of claim 34 as obvious over
Johnson. Instead, Appellant asserts that claim 34 depends from claims 27
and is patentable for the same reasons as the independent claim (Br. 12).
Thus, the issues presented for both the first and second rejections are the
same.
With respect to the remaining rejections of claims 27-36, Appellant
presents arguments with respect to all the rejected claims as a group, for
which we select independent claim 27 as representative for each of the
remaining rejections (Br. 13-18).
II. ANTICIPATION
A. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellant and
the Examiner is: does the evidence support Appellant’s view that the
Examiner erred in finding that Johnson teaches TTIP or TTEt precursors in
combination with a carboxylate ester, as recited in claim 27? We answer
this question in the affirmative.
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B. DISCUSSION
Appellant contends that Johnson teaches the use of TTIP or TTEt as a
precursor alone or teaches the combination of Titanium tetrachloride (TiCl4)
and an organic oxygen source (carboxylate ester), but Johnson does not
expressly teach TTIP or TTEt in combination with an organic oxygen source
because, unlike the titanium alkoxides, TiCl4 fails to include a inherent
source of oxygen (Br. 10-11).
The Examiner contends that paragraph [0041] of Johnson teaches the
use of carboxylate ester “with the disclosed Ti precursors,” which would
include TTIP and TTEt (Ans. 9).
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978); Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116,
1120 (Fed. Cir. 2002) (“A single reference must describe the claimed
invention with sufficient precision and detail to establish that the subject
matter existed in the prior art.”).
The Examiner does not dispute that Johnson does not include an
express teaching combining TTIP or TTEt and a carboxylate ester. Johnson
merely describes including a source of organic oxide, specifically
carboxylate ester, in the precursor composition “[a]s an alternative to
including oxygen in the atmosphere of the tin bath to form oxide coatings”
(Johnson, ¶ [0041]). However, Johnson specifically teaches the use of the
organic oxygen source (carboxylate ester) with a TiCl4 precursor (Johnson ¶
[0014]; see also claim 35).
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Johnson clearly distinguishes between titanium alkoxides, such as
TTIP and TTEt, and TiCl4 as separate embodiments of titanium precursors
(see Johnson ¶ [0011]). In the paragraph that discusses the use of titanium
alkoxides, particularly the use of TTIP and TTEt, Johnson is silent about
including another oxygen source such as carboxylate esters (see Johnson ¶
[0035]).
The Examiner relies exclusively on the fact that paragraph [0041] is
not specific to any of the precursors as evidence that the organic oxides
could be used in combination with any of the disclosed precursors.
However, considering the evidence as a whole, we agree with Appellant that
Johnson fails to describe the particular combination of TTIP or TTEt and a
carboxylate ester with sufficient specificity to anticipate claim 27 in
accordance with 35 U.S.C. § 102(b).
Accordingly, we cannot sustain the Examiner’s anticipation rejection.
For the same reasons, we cannot sustain the Examiner’s obviousness
rejection of claim 34. The rejection of claim 34 does not cure the defect of
the anticipation rejection.
III. OBVIOUSNESS – SHEEL/JOHNSON OR GREENBERG
A. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellant
and the Examiner is: does the evidence support the Appellant’s view that
the Examiner erred in concluding that one of ordinary skill in the art would
have substituted a titanium alkoxide for TiCl4 in the process taught by Sheel
based on the teachings of Johnson or Greenberg? We answer this question
in the negative.

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B. DISCUSSION
The Examiner contends that Johnson and Greenberg both teach that
titanium alkoxides, specifically TTIP and TTEt, and TiCl4 are known
equivalent precursors for the production of titanium oxide films (Ans. 6 and
10). Thus, according to the Examiner, it would have been obvious to
substitute TTIP or TTEt for TiCl4 in the process taught by Sheel, which
teaches using TiCl4 in combination with a carboxylate ester, since doing so
would yield predictable results (id.).
Appellant contends that the teachings of Johnson and Greenberg
actually would have suggested to one of ordinary skill in the art substituting
either TTIP or TTEt for the combination of TiCl4 and carboxylate ester,
since there is no need for additional oxygen to be present when using TTIP
or TTEt, which have an inherent source of oxygen in the precursors (Br. 13).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
It has long been held that substitution of recognized equivalent
structures is a sufficient basis for a conclusion of obviousness, in the absence
of evidence of unexpected results. Hotchkiss v. Greenwood, 52 U.S. 248
(1851); In re Fischer, 62 F.2d 96, 97 (CCPA 1932); In re Walters, 168 F.2d
79, 80 (CCPA 1948); In re Fout, 675 F.2d 297, 301 (CCPA 1982); see also
In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to
interchange methods which achieve the same or similar results is not
necessary to establish obviousness).
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It is undisputed that Sheel teaches using a TiCl4 precursor in
combination with carboxylate ester. Johnson states that a titanium oxide
precursor may be TTIP, TTEt, or “alternatively” TiCl4 (Johnson ¶ [0035]).
Greenberg expressly teaches the use of TTIP, TTEt or TiCl4 as alternative
precursors (Greenberg ¶ [0025] and claim 27). Moreover, the Specification
indicates that the prior art recognized both inorganic (e.g., TiCl4) and
organic (e.g., TTIP and TTEt) titanium compounds as precursors for CVD
deposition of TiO2. The Specification teaches further that “[t]hose
precursors which do contain oxygen as part of their molecular structure may
be used with or without an additional source of oxygen.” (Spec. 1, 4th para.)
Appellant’s argument that a direct substitution of TTIP or TTEt for
TiCl4 in the process taught by Sheel, which would have meant using TTIP or
TTEt in combination with a carboxylate ester, would not have been expected
to yield predictable results contradicts the Specification’s teachings
regarding the prior art.
Moreover, Johnson and Greenberg teach using TTIP or TTEt in the
presence of other sources of oxygen, such as using oxygen as a carrier gas
for the precursor material (Johnson ¶¶ [0011] and [0036]; Greenberg ¶
[0025]).
The evidence as a whole supports the finding that one of ordinary skill
in the art would have reasonably expected success in obtaining a titanium
oxide coating as the predictable result of combining TTIP or TTEt with
other oxygen sources known in the art, such as a carboxylate ester.
Appellant provides no evidence to suggest that unexpected results occur
from using carboxylate ester, as opposed to any other known oxygen
sources, when using TTIP or TTEt as the titanium oxide precursor.
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The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
IV. OBVIOUSNESS – AMMERLAAN/JOHNSON OR GREENBERG
In addition to presenting arguments similar to those presented above
with respect to the combination of Sheel and Johnson or Greenberg,
Appellant also state that it was “discovered that the combination of the
alkoxide precursors with a carboxylate ester leads to coatings having
improved properties,” referring to Example 6 and the data presented in Table
8 of Appellant’s Specification for support (Br. 16). Appellant does not, in
the Brief, further discuss or explain the evidence. Appellant merely states
that “[i]t is submitted that the processes of this invention are novel, are non
obvious and provide a significant advance in the art.” (Br. 16.)
The bare citation to the Example and Table 8 of the Specification and
assertion that the processes are “novel, are non obvious and provide a
significant advance in the art” does little to overcome the prima facie case.
If Appellant’s intent was to rely on the data of the Example and Table 8 as
evidence of unexpected results, such is not clear from the Brief. Even if it
were clear, Appellant has failed to meet the relevant burden for such a
showing. “[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007). Appellants have not explained why the information
in Appellants’ Specification is evidence of unexpected results, and
Appellants’ Specification does not declare the results presented therein to be
unexpected.

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V. OBVIOUSNESS-TYPE DOUBLE PATENTING
A. ISSUE ON APPEAL
Another issue on appeal arising from the contentions of Appellant and
the Examiner is: does the evidence support the Appellant’s view that the
Examiner erred in concluding that one of ordinary skill in the art would have
substituted a titanium alkoxide for TiCl4 in the process taught by claims 1-9
of Hurst based on the teachings of Johnson or Greenberg? We answer this
question in the negative.
B. DISCUSSION
Appellant contends that the Hurst reference “corresponds to the
Amerlaan [sic] reference discussed above” (Br. 17). Appellant then make
similar arguments to those presented above with respect to the rejection
based on Sheel, i.e., that Johnson and Greenberg actually would have
suggested to one of ordinary skill in the art substituting either TTIP or TTEt
for the combination of TiCl4 and carboxylate ester, since there is no need for
additional oxygen to be present when using TTIP or TTEt, which have an
inherent source of oxygen in the precursors (Br. 17). Unlike the arguments
presented with respect to the rejection based on Ammerlaan, Appellant
includes no evidence of improved properties with respect to the
obviousness-type double patenting rejection.
It is undisputed that claims 1-9 of Hurst are directed to using a TiCl4
precursor in combination with carboxylate ester.
Based on our discussion above of the teachings of Johnson and
Greenberg, the Examiner has provided sufficient evidence that one of
ordinary skill in the art would have considered TTIP or TTEt directly
substitutable for TiCl4 as a titanium oxide precursor in the process of claims
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1-9 of Hurst. Fout, 675 F.2d at 301. Appellant provides no evidence that a
direct substitution, which would have meant using TTIP or TTEt in
combination with a carboxylate ester, would not have yielded predictable
results. KSR, 550 U.S. at 417. The Examiner has established that the
rejected claims encompass obvious variations of what was claimed by
Hurst. See General Foods v. Studiengesellschaft Kohle mbH, 972 F.2d
1272, 1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA
1970)) (The key question in any obviousness double patenting analysis is:
“Does any claim in the application define merely an obvious variation of an
invention claimed in the patent asserted as supporting double patenting?”).
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness-type double patenting under the law.
VI. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the Examiner’s obviousness rejection based on Sheel in view of
Johnson or Greenberg and the Examiner’s obviousness-type double
patenting rejection. However, we cannot sustain the Examiner’s anticipation
rejection, the Examiner’s obviousness rejection of claim 34 based on
Johnson, or the Examiner’s obviousness rejection based on Ammerlaan in
view of Johnson or Greenberg.
VII. DECISION
We affirm the Examiner’s decision.

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VIII. 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. § 1.136(a).

AFFIRMED

cam

MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO OH 43604