Ex Parte YeDownload PDFBoard of Patent Appeals and InterferencesDec 16, 201010547740 (B.P.A.I. Dec. 16, 2010) 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. 10/547,740 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. Appeal 2010-000759 Application 10/547,740 2 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; Appeal 2010-000759 Application 10/547,740 3 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. Appeal 2010-000759 Application 10/547,740 4 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). Appeal 2010-000759 Application 10/547,740 5 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. Appeal 2010-000759 Application 10/547,740 6 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). Appeal 2010-000759 Application 10/547,740 7 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. Appeal 2010-000759 Application 10/547,740 8 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. Appeal 2010-000759 Application 10/547,740 9 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 Appeal 2010-000759 Application 10/547,740 10 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. Appeal 2010-000759 Application 10/547,740 11 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 Copy with citationCopy as parenthetical citation