Ex Parte Gray et al

Patent Trial and Appeal Board

Apr 19, 2016

12844250 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/844,250 07/27/2010
22928 7590 04/21/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Sandra Lee Gray
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.
SP09-241 7708
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA LEE GRAY, DANIEL EDWARD
MCCAULEY and CHRISTOPHER JOHN WARREN
Appeal2014-008063
Application 12/844,250
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims
1-10. We have jurisdiction under 35 U.S.C. § 6(b ).
1 In our opinion below, we refer to the Specification filed July 27, 2010
(Spec.), the Final Office Action mailed September 30, 2013 (Final Act.), the
Amendment/Response to Office Action filed January 8, 2014 (Amendment),
the Advisory Action mailed January 27, 2014 (Advisory Act.), the Appeal
Brief filed March 10, 2014 (App. Br.), and the Examiner's Answer mailed
May 8, 2014 (Ans.).
2 According to Appellants, the real party in interest is Coming Incorporated.
Appeal2014-008063
Application 12/844,250
We AFFIRM.
The Invention
Appellants claim methods for dimensional control during firing to
form aluminum titanate honeycomb structures. Claim 1, reproduced below,
is illustrative:
1. A method for controlling the shrinkage or growth of an
aluminum titanate (AT) honeycomb structure between a green
body state and a fired state, the method comprising the steps of:
(a) providing an AT-forming batch composition,
(b) extruding the batch composition into a green AT -
forming honeycomb structure,
( c) measuring the dimensions of the green structure,
( d) firing the green structure to form a fired AT
honeycomb structure,
( e) measuring the dimensions of the fired AT honeycomb
structure,
(t) determining the shrinkage or growth in the
dimensions between the green structure and fired structure, and
if shrinkage control between the green structure and the fired
strttcture is needed then:
(g) adjusting the alkali salt content of the AT-forming
batch composition by the addition of a selected amount of a
selected soluble alkali metal salt to the AT-forming batch
composition, and
(h) repeating (b) to (g) as necessary to control the
shrinkage or growth of the AT honeycomb between the green
body and fired states.
The References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Parsons
Merkel
Beall
us 1,998,686
US 6,300,263 Bl
US 6,455,124 Bl
2
Apr. 23, 1935
Oct. 9, 2001
Sept. 24, 2002
Appeal2014-008063
Application 12/844,250
("Beall '124")
Beall US 2004/0092381 Al
("Beall '3 81 ")
May 13, 2004
Douglas Montgomery, DESIGN AND ANALYSIS OF EXPERIMENTS 1-7 (John
Wiley & Sons, Inc. 2001) [hereinafter Montgomery]
The Rejections
Claims 1-10 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject which Appellants regard as the invention ..
Claims 1--4 and 6-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beall '381 in view of Montgomery, Merkel, and Parsons.
Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beall '381 in view of Montgomery, Merkel, and Parsons
in further view of Beall' 124.
OPINION
We affirm the rejection of claims 1-10 under 35 U.S.C. § 112, second
paragraph and affirm the rejections under 35 U.S.C. § 103(a).
Rejection under 35 USC,§ 112, second paragraph
"[T]he indefiniteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity."'
Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
In the Final Office Action, the Examiner rejected independent claim 1
for reciting in step (h) "repeating (b) to (g) as necessary" and independent
3
Appeal2014-008063
Application 12/844,250
claim 6 for reciting in step (i) "repeating (c) to (h) as necessary," stating that
"[i]t is unclear what repetition would be necessary in the context of the
current claims." Final Act. 2. The Examiner also stated claims 1 and 6
contain the newly added claim limitation "if shrinkage control between the
green structure and the fired structure is needed," and indicated it is unclear
when such control would be necessary or how it would be determined when
it would be necessary. Id. The remaining claims were rejected based on
their dependence from one of the independent claims. Id.
Appellants thereafter amended the independent claims and argued that
the amendments clarified the claims and overcame the § 112 rejections.
Amendment 1-2. However, the Examiner subsequently found that the
amendments did not address the § 112 rejection and did not place the claims
in condition for allowance over it. Advisory Act. 2.
Appellants presented no argument against the Examiner's § 112
rejection in their Brief. Accordingly, we will sustain the Examiner's § 112,
second paragraph rejection, proforma.
Rejection of claims under 35 US.C. § 103(a)3
For the purpose of our analysis, we interpret the claims as repeating
the required steps as necessary to control variability of shrinkage or growth
during firing to meet dimensional specifications. See Spec. i-f 27.
Appellants argue the claims as a group. Although Appellants address
claims 5 and 10 under a separate heading, they do not provide a substantive
3 When the claims are held to be indefinite, we normally do not assess the
propriety of rejections under 35 U.S.C. §103. In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970) ("Ifno reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not become obvious-the
4
Appeal2014-008063
Application 12/844,250
argument as to the separate patentability of those claims. We therefore limit
our discussion to a single claim, i.e., claim 1. Claims 2-10 stand or fall with
that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's determination that one of ordinary skill in the art,
armed with the knowledge reflected in the applied prior art, would have been
led to the subject matter recited in claims 1-10 within the meaning of 35
U.S.C. § 103(a). Accordingly, we sustain the Examiner's§ 103(a) rejections
of the claims on appeal for the reasons set forth in the Final Rejection and
the Answer.
We also add the following primarily for emphasis and completeness.
The Examiner finds that Beall '3 81 teaches a method of making an
aluminum titanate (AT) honeycomb body by extruding a batch of AT
material and sintering to form the finished body. Final. Act. 3 (citing Beall
'381 abstract, claim 28). Appellants do not dispute this finding.
The Examiner acknowledges that Beall '381 does not disclose
measuring the shrinkage or growth and adjusting the alkali salt content of
claim becomes indefinite."). However, in some instances, it is possible to
make a reasonable, conditional interpretation of claims adequate for the
purpose of resolving the patentability issues to avoid piecemeal appellate
review and in the interest of administrative and judicial economy. See Ex
parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Ionescu, 222
USPQ 537, 540 (BPAI 1984). In this case, we exercise our discretion to
review the obviousness rejections of record based the conditional
interpretation given in light of the particular arguments and issues raised by
Appellants in the interest of administrative and judicial economy. See Ex
parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion
to reach art rejections despite indefiniteness where nature of case permitted).
5
Appeal2014-008063
Application 12/844,250
the batch mixture to adjust the shrinkage or growth of the new batch material
formed by adjusting the alkali salt content. Id. However, the Examiner
finds that Merkel discloses that sodium (as an alkali salt) will become
incorporated into the structure of a ceramic crystal when present in the batch
material which alters the cell dimension of the ceramic material, and that the
adjustment to the size of the ceramic crystal would affect the shrinkage
during firing of the resulting ceramic. Id. (citing Merkel 6:59--7: 10).
Further, the Examiner finds that differing amounts of sodium in the batch
material would therefore change the size of the ceramic crystal cell, altering
the shrinkage and other properties in response to the amount of sodium
present in the batch material. Id. Appellants do not dispute that
incorporation of sodium into the structure of a ceramic crystal will have the
effects stated by the Examiner. Instead, Appellants seek to draw distinctions
between Merkel and Appellants' disclosures.
Appellants argue that Merkel' s method differs from that of
Appellants, pointing out that (1) the specific method of making a glass
ceramic article claimed by Merkel is different from Appellants'; (2)
Appellants' method allows adjustments of alkali metal content in the
batched AT composition that has not been extruded and fired, but Merkel
would have to re-batch materials to make adjustments; and (3) Merkel
requires changing the cordierite aluminum to silicon ratio whereas
Appellants' method does not require changing the AT aluminum to titanium
ratio. App. Br. 3-5. These enumerated differences form the basis for
Appellant's contention that aluminum titanate is "a very different material"
from cordierite substrates taught in Merkel, and "[t]herefore, it is reasonable
to expect differences in the chemistry of the two materials." Id. at 4.
6
Appeal2014-008063
Application 12/844,250
Appellants contend that they found that controlling the alkali metal
presented a novel method for controlling the shrinkage in AT honeycomb
substrates. App. Br. 6. In support, Appellants point to Merkel Table 2,
where the only changes in the Examples in Table 2 were in particle size and
time/temperature. Id. Appellants' argument ignores consideration of the
information in Merkel Tables 1 and 2 together. Such analysis reveals that
Merkel demonstrated that incorporating sodium as an alkali metal affected
the size of the resultant crystals, a result Merkel also makes in the text at
column 7, lines 1-5.
None of the differences identified by Appellants addresses the
Examiner's findings regarding Merkel, i.e., that the reference teaches that
sodium (an alkali metal) becomes incorporated within a ceramic crystal
structure and alters the dimensions of the ceramic crystal lattice of any
ceramic article (AT, cordierite, or other), since the sodium particle replaces a
metal particle within the crystal, as the sodium particle will have a size
different than that of any metal particle which it is replacing. Ans. 2-3. The
Examiner's findings with respect to Merkel remain unchallenged by
Appellants.
Appellants then contend that the Examiner's combination of Beall
'3 81, Merkel, and Montgomery (as teaching altering one factor or variable at
a time) "neglects consideration of the complexity involved when a plurality
of materials with different characteristics are combined and processed [by] a
plurality of sequential steps to form a single product." App. Br. 5. This
argument is irrelevant to the claims. Appellants have provided attorney
argument, but no evidence. It is well established that attorney argument
7
Appeal2014-008063
Application 12/844,250
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
With respect to Parsons, Appellants state that the reference does not
teach a method of controlling the shrinkage of a ceramic material by the
addition of sodium ions to a batched mixture of materials. App. Br. 7.
However, the Examiner did not rely on Parsons for such teaching, but rather
for disclosure of a method of incorporating sodium into a ceramic batch by
adding an aqueous solution of alkali salt such as sodium chloride to the
batch. Final Act. 4.
The Appellants' arguments are not well taken because they attack the
references individually when the rejection is based upon a combination of
the references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re
Young, 403 F.2d 754, 757-58 (CCPA 1968).
Based on the record before us, Appellant has not indicated reversible
error by the Examiner.
DECISION/ORDER
For the above reasons, the Examiner's rejection of claims 1-10 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009).
AFFIRMED
8