Ex Parte Hattori et al

Patent Trial and Appeal Board

Mar 22, 2016

12478876 (P.T.A.B. Mar. 22, 2016)

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.
12/478,876 06/05/2009 Akiyoshi HATTORI 947_035 1301
25191 7590 03/22/2016
BURR & BROWN, PLLC
PO BOX 7068
SYRACUSE, NY 13261-7068
EXAMINER
MILLISER, THERON S
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
03/22/2016 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 AKIYOSHI HATTORI and HIROKAZU NAKANISHI
____________

Appeal 2014-006899
Application 12/478,876
Technology Center 2800
____________

Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
MATTHEW J. McNEILL, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 3–5, and 11.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a bonded structure including a
connecting member that is bonded to a terminal embedded in a ceramic base
and a connecting member that supplies electric power to an electrode

1 According to Appellants, the real party in interest is NGK Insulators, Ltd.
(App. Br. 1).
2 Claims 2 and 7 have been canceled, and claims 6 and 8–10 have been
withdrawn from consideration.
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embedded in a ceramic base (Spec. ¶ 1). Exemplary claim 1 under appeal
reads as follows:
1. A bonded structure, comprising:
a ceramic base that is composed of alumina, includes a
printed electrode embedded therein, said printed electrode being
composed of tungsten carbide and alumina, and said ceramic
base having a concavity and a terminal hole, the concavity
being concaved at a surface of the ceramic base toward the
printed electrode and the terminal hole extending from a bottom
of the concavity to the printed electrode;
a terminal that is made of a sintered body of a mixture
consisting of niobium carbide and alumina and containing not
less than 5 wt% and not more than 60 wt% of alumina with
respect to the total weight of the terminal, wherein the terminal
is placed in the terminal hole so that a first surface of the
terminal is in contact with the printed electrode and a second
surface of the terminal is exposed at the bottom of the
concavity;
a braze layer that is provided in the concavity to be in
contact with the second surface of the terminal; and
a connecting member that is made of a high-melting-
point metal having a coefficient of thermal expansion close to
that of the ceramic base and is inserted into the concavity to be
in contact with the braze layer.
The Examiner’s Rejections
The Examiner rejected claims 1 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Fujii (US 7,252,872 B2; Aug. 7, 2007), Mori (US
2006/0169688 A1; Aug. 3, 2006), and Suzuki (US 5,916,833; June 29,
1999) (see Final Act. 3–6.)
The Examiner further added Knudsen (US 2004/0196620 A1; Oct. 7,
2004) to reject claim 3; Sue (US 2009/0244772 A1; Oct. 1, 2009) to reject
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claim 5; and Aihara (US 7,442,450 B2; Oct. 28, 2008) to reject claim 11
under 35 U.S.C. § 103(a) (see Final Act. 6–8.)

ANALYSIS
In rejecting claim 1, the Examiner relies on Fujii as disclosing the
recited bonded structure including a ceramic base, a terminal, a braze layer,
and a connecting member (Final Act. 3 (citing Fujii Fig. 1)). The Examiner
further relies on Mori as disclosing a printed electrode composed of tungsten
carbide and alumina and on Suzuki as disclosing a ceramic conducting
element composed of alumina and niobium carbide (Final Act. Ans. 4–5).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to use each of the compositions disclosed in Mori and Suzuki
“on the basis of its suitability for the intended use as a matter of obvious
design choice” in order to reduce cracks and breakage due to different
coefficients of thermal expansion (see id.).
First Argument – Printed Electrode
Appellants contend the Examiner erred in characterizing the “printed”
part of the “printed electrode” limitation of claim 1 as a process limitation
that is entitled to no patentable weight (App. Br. 5). Appellants conclude the
mesh electrode disclosed in Fujii is different from the claimed “printed
electrode” because the claim limitation is directed to a structural feature
(id.).
The Examiner responds that a printed electrode describes an electrode
that is formed by printing process which corresponds to a process for
forming conductive layers (Ans. 4). The Examiner explains, absent any
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evidence to the contrary, an electrode produced by printing is not
distinguishable over an electrode produced by any other methods (id.).
We agree with the Examiner’s interpretation of the term “printed
electrode” as a product-by-process which is not distinguishable over similar
structures produced by other methods. Additionally, we agree with the
Examiner’s finding (Ans. 4) that Mori does disclose the electrode composed
of tungsten carbide with alumina is a printed electrode (see Mori, ¶ 46).
Second Argument – Mori
Appellants contend the Examiner erred by relying on the recited
limitation for selecting tungsten carbide from the list of materials disclosed
in Mori because “[t]here is nothing in Mori that otherwise teaches a
preference for tungsten carbide over any of the other several disclosed
electrode materials” (App. Br. 5). The Examiner relies on the holding in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) and explains that
selecting tungsten carbide is within the knowledge of ordinary skill and
common sense which would make the proposed combination obvious (Ans.
5).
We are unpersuaded by Appellants’ argument because Mori explicitly
suggests the electrode may be formed by any of the listed materials mixed
with alumina powder (¶¶ 46–47). The combination is based on Mori’s
suggestion for selecting one of the listed materials, and not based on a
teaching of a preferred material. In other words, the claimed subject matter
would have been obvious to one of ordinary skill in the art because Mori
suggests selecting from the disclosed list of high melting materials, which
includes tungsten.
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Third Argument – Suzuki
Appellants contend the Examiner erred in finding Suzuki’s cutting
tool that includes a ceramic component containing alumina and niobium
carbide meets the claimed terminal “because claim 1 calls for the terminal to
consist of these two specific materials” (App. Br. 6). The Examiner
responds the combination is proper because Suzuki discloses the recited
materials and some “rationale/motivation to use those materials” (Ans. 5; see
Suzuki 3:53–59, 7:62–66). The Examiner further finds paragraph 52 of
Mori discloses the recited terminal as the bonding member 13 which is made
of alumina-containing sintered body and further contains niobium in order to
reduce crack formation in the bonding member (Ans. 6).
Appellants’ contentions are unpersuasive of Examiner error. Similar
to the above discussion regarding Mori, each of Suzuki’s disclosed materials
provides the desired benefit of reducing crack formation in a conductive
ceramic body used in die milling or wire cutting electrical discharge
machining for making lead frames for semiconductor devices (Suzuki 2:14–
26, 9:7–11).
Fourth Argument – Propriety of the Combination
Appellants contend the Examiner erred in combining Fujii with Mori
and Suzuki because (1) reducing cracks in the tungsten carbide electrostatic
chuck of Fujii and Mori would require using similar materials for the
electrode, such as tungsten carbide of Suzuki, rather than a niobium carbide
material; (2) Appellants’ table 1 on page 17 of the Specification shows the
advantage of using the claimed niobium+alumina terminal with a tungsten
carbide+alumina electrode to be an unexpected result; (3) Suzuki is non-
analogous art because the disclosed ceramic body relates to a cutting tool;
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and (4) the proposed combination of materials disclosed in the applied
references is based on hindsight (App. Br. 6–10).
1. Combination
The Examiner responds that Appellants’ discussion of using similar
materials in contrast to the claimed electrode and terminal compositions is
not based on any factual evidence or declarations (Ans. 6 (citing MPEP
§ 716.01(c))). We agree with the Examiner that Appellants’ explanation
regarding the desirability of selecting similar materials for the terminal and
the electrode for reducing crack formation is speculative and not based on
any evidence of record (see also Reply Br. 1, 4). That is, various
combinations of, or even similar, compositions of electrode and terminal
materials disclosed by Mori and Suzuki would have resulted in the desired
crack reduction in those elements.
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. Here, the Examiner
has identified specific electrode and terminal materials which are described
by Mori and Suzuki as conductive ceramic bodies having higher hardness
and thermal conductivity.
2. Unexpected Result
With respect to the alleged unexpected results shown in Appellants’
table 1, the Examiner points out that Appellants have presented no
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persuasive evidence or argument to show that such measurements are
indicative of unexpected results (Ans. 7). We agree and observe that,
contrary to Appellants’ contention (Reply Br. 7–8), table 1 shows, at best, a
set of good results but includes no comparative data that would lead to the
alleged improvements over the previously known techniques or unexpected
results.
3. Non-Analogous Art
Regarding the argument that Suzuki is non-analogous art, the
Examiner responds that Fujii, Mori, and Suzuki provide solutions for crack
formation in conductive ceramic working tools that are subjected to heat and
pressure (Ans. 7 (citing Fujii Abstract, Mori ¶ 9, Suzuki 7:55–67)). The
Examiner states that even if Suzuki may not be in the same field of endeavor
as Fujii and Mori, Suzuki is “reasonably pertinent to the problem faced by
the inventor” (Ans. 7–8).
We agree with the Examiner’s findings and conclusion. Contrary to
Appellants’ contention (Reply Br. 5), one of ordinary skill in the art, faced
with the problem of crack formation in conductive ceramic bodies, would
have looked to Suzuki, a reference that teaches specific materials for a
ceramic body with reduced crack formation (see, e.g., Suzuki 7:55–66) for
solutions to the problem. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
4. Hindsight
We are also unpersuaded by Appellants’ contention that the Examiner
relied on hindsight for the proposed combination. In KSR, the Supreme
Court stated that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
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post reasoning.” KSR Int’l v. Teleflex, Inc., 550 U.S. at 421 (citing Graham
v. John Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, the Court also
qualified the issue of hindsight by stating that “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” Id. at 421. Cognizant of this
precedent, we are satisfied that the Examiner’s proposed combination of
Fujii with Mori and Suzuki involve nothing other than combining prior art
elements that perform their ordinary functions to predictably result in the
claimed method (see Ans. 5–6).

CONCLUSION
As discussed herein, Appellants’ arguments have not persuaded us
that the Examiner erred in finding the combination of Fujii with Mori and
Suzuki teaches or suggests the disputed limitations of claim 1, claim 5 which
is argued based on similar arguments presented for claim 1 (App. Br. 11–
12), and the remaining claims which are not argued separately. Therefore,
we sustain the 35 U.S.C. § 103(a) rejections of claims 1, 3–5, and 11.

DECISION
The decision of the Examiner to reject claims 1, 3–5, and 11 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)(1)(iv).

AFFIRMED