Ex Parte Chen et al

Patent Trials and Appeals Board

Jan 30, 2019

11920111 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/920,111 11/19/2008
23562 7590
BAKER & MCKENZIE LLP
PA TENT DEPARTMENT
1900 North Pearl Street
Suite 1500
DALLAS, TX 75201
02/01/2019
FIRST NAMED INVENTOR
Zheng Chen
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.
24250309-001001 2459
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
02/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@bakermckenzie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHENG CHANG and JAMES MICHAEL McHALE, 1
Appeal2017-005755
Application 11/920, 111
Technology Center 1600
Before ULRIKE W. JENKS, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's rejection
of claims to a multilayer antimicrobial glaze which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as Ideal Standard
International BVBA. Appeal Br. 3.
2 We have considered and herein refer to the Specification of Nov. 8, 2007
("Spec."); Non-Final Office Action of July 29, 2015 ("Non-Final Act.");
Appeal Brief of Feb. 29, 2016 ("Appeal Br."); Examiner's Answer of Des.
22, 2016 ("Ans."); and Reply Brief of Feb. 22, 2017 ("Reply Br.").
Appeal2017-005755
Application 11/920, 111
STATEMENT OF THE CASE
Certain metals, including silver and zinc exhibit antimicrobial
activity. Spec. 1. While silver is more effective against certain
bacteria, zinc, in the form of zinc oxide, is more effective against
fungi. Id. In addition, zinc is less expensive. Id. While it is
considered desirable to incorporate zinc into glazes to impart
antimicrobial properties to ceramic and enamel products, efforts to
produce such products have been hampered by the fact that it is
difficult to incorporate significant amounts of zinc into glazes. Id. at 2
The Specification describes a two layer glaze wherein one layer
contains a high level of zinc oxide. Spec. 3.
Claims 1-5, 25-28, 39, and 40 are on appeal. 3 Claim 1 is
representative of the claims and reads as follows:
1. A multilayer antimicrobial glaze/enamel,
compnsmg:
a base glaze layer, wherein the base glaze layer
comprises less than about 8.0 percent by weight ZnO; and
a top glaze layer, wherein the top glaze layer comprises
about 8.0 percent by weight to about 35.0 percent by weight
ZnO,
wherein the base glaze layer is between about 300 µm
and 1000 µm in thickness;
wherein the top glaze layer is between about 25 µm and
250 µm in thickness;
wherein relative thicknesses and concentrations of the top
glaze layer and base glaze layer are such that a total
concentration of the multilayer antimicrobial glaze/ enamel is
less than about 5.0 percent by weight ZnO; and
3 Claims 6-14, 18-24 are pending in the application but have been
withdrawn from consideration. Non-Final Act. 1.
2
Appeal2017-005755
Application 11/920, 111
wherein the multilayer antimicrobial glaze/enamel is
substantially free of surface defects.
The claims stand rejected as follows:
Claims 1-5, 39, and 40 have been rejected under 35 U.S.C. § I03(a)
as unpatentable over Tomioka. 4
Claims 25-28 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Tomioka in view of Ando. 5
DISCUSSION
Issue
As discussed below, the issue presented by both rejection is the same.
Therefore we will address the rejections together.
The Examiner finds that Tomioka is directed to sanitary ware having a
coating comprising at least two layers of glazes. Non-Final Act. 4. The
Examiner finds that Tomioka teaches a base layer having a thickness of from
100 to 1000 µm and contains up to 20% by weight of a pigment. Id. The
Examiner also finds that Tomioka teaches a top layer having a thickness of
from 100 to 500 µm and comprising up to 11 % zinc oxide. Id. at 5. The
Examiner finds that Tomioka teaches that the surface of the multilayer glaze
would be substantially free of defects as recited in the claims. Id. With
respect to the concentrations of zinc oxide and thicknesses of the layers, the
Examiner finds that these parameters would have been obvious to one
skilled in the art and the ranges overlap and the determination of the
4 Tomioka et al., US 6,383,646 Bl, issued May 7, 2002 ("Tomioka").
5 Ando et al., JP 2000-044368, published Feb. 15, 2000 ("Ando"). Citations
are to the English translation of record.
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Appeal2017-005755
Application 11/920, 111
optimum values would have been well within the ability of one skilled in the
art. Id. at 5---6. The Examiner also finds that having a base layer that is
thicker than the top layer is an option that one skilled in the art would have
considered based on the teachings of Tomioka. Id. at 6. The Examiner
concludes "the invention as a whole is prima facie obvious to one of
ordinary skill in the art at the time the invention was made, as evidenced by
the references, especially in absence of evidence to the contrary." Id. at 7.
Appellants contend that Tomioka is silent with respect to the relative
thicknesses and concentrations of zinc oxide in the respective layers.
Appeal Br. 8. Appellants argue that the Examiner has not shown why one
skilled in the art would have been motivated to use the concentrations or
thicknesses recited in the claims nor has the Examiner explained why one
skilled in the art would create a composition where the zinc oxide
concentration in the multilayer structure is less than about 5 percent by
weight. Id. at 9. Appellants contend that Ando does not cure the deficiency
of Tomioka. Id. Appellants argue that the Examiner has engaged in
impermissible hindsight in making the rejection. Id. at 11. Appellants
contend that the Examiner failed to properly consider evidence of
unexpected results. Id. at 13.
The issue with respect to both rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
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Appeal2017-005755
Application 11/920, 111
the claims would have been obvious over Tomioka alone or in combination
with Ando.
Principles of Law
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. '[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.' The patent
applicant may then attack the Examiner's prima facie
determination as improperly made out, or the applicant may
present objective evidence tending to support a conclusion of
nonobviousness.
In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted).
Most if not all inventions arise from a combination of old
elements. Thus, every element of a claimed invention may
often be found in the prior art. However, identification in the
prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. Rather, to
establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the specific
combination that was made by the applicant."
In re Kotzab, 217 F.3d 1365, 1369-70 (Fed. Cir. 2000).
Analysis
We have considered the arguments advanced by both the Examiner
and Appellants and find that Appellants have the better position. We find
that Tomioka does not teach or suggest a multilayer composition where the
thickness of and concentration of zinc oxide in each layer results in a
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Appeal2017-005755
Application 11/920, 111
multilayer structure containing less than about 5% by weight zinc oxide. We
also find that the Examiner has not adequately explained why one skilled in
the art would have been motivated to modify the multilayer structure taught
by Tomioka to create such a structure.
The Examiner contends that based on the teachings of T omioka, one
skilled in the art could create a multilayer structure having a base layer 700
µm thick and containing 3 % by weight zinc oxide and a top layer with a
thickness of 100 µm and containing 10% zinc oxide. Ans. 8. The Examiner
notes that these values are within the ranges taught by T omioka and within
the ranges recited in the present claims. Id. at 9. The Examiner then uses
these values to calculate a total concentration of zinc oxide for the multilayer
structure of 3.88%. Id.
The Examiner's argument is unpersuasive. While the values selected
by the Examiner would yield a total zinc oxide concentration of less than 5%
by weight for the entire multilayer structure, the Examiner has not explained
why one skilled in the art would have been motivated to select those values
or why one skilled in the art would want to develop a multilayer structure
having less than 5% by weight zinc oxide. This is especially significant as
selection of other values for zinc oxide concentration and thickness of the
layers can result in zinc oxide concentrations for the entire structure of
greater than 5% by weight. For Example, using the same values as the
Examiner except increasing the base concentration to 6% ( still within the
scope of the claims and the teachings of Tomioka), the calculated zinc oxide
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Application 11/920, 111
concentration for the multilayer structure is 6.5% by weight
((6%)(0.875)+(10%)(0.125)).
Having failed to explain why one skilled in the art would have been
motivated to select relative thickness and concentrations from within the
ranges taught by Tomioka to arrive at a total concentration of the multilayer
glaze that has less than about 5% by weight zinc oxide as required by the
claims, the Examiner has not established a prima facie case of obviousness.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that the subject matter of the claims would have
been obvious over Tomioka alone or combined with Ando.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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