Ex Parte Hirano et al

Patent Trials and Appeals BoardMar 27, 2019

13879882 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/879,882 21874 7590 Locke Lord LLP P.O. BOX 55874 BOSTON, MA 02205 04/17/2013 03/29/2019 FIRST NAMED INVENTOR Satoshi Hirano 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. 1451345.353US9 2650 EXAMINER FUQUA, SHAWNTINA T ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/29/2019 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): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATOSHI HIRANO, TOSHIHIRO TACHIKA WA, JUNICHI MIYAHARA, and TOSHIHIKO HANAMACHI 1 Appeal2018-003854 Application 13/879,882 Technology Center 3700 Before JOHN C. KERINS, MICHELLE R. OSINSKI, and PAUL J. KORNICZKY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Satoshi Hirano et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1, 4--7, and 10-13. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 The Appeal Brief identifies NHK SPRING CO., LTD., as the real party-in- interest. Appeal Br. 3. Appeal2018-003854 Application 13/879,882 THE INVENTION Appellants' invention relates to a method of manufacturing a ceramic sintered body. Independent claim 1 is illustrative of the claimed invention and reads as follows: 1. A method of manufacturing a ceramic sintered body, compnsmg: a film forming step of forming, on a surface of a heat-resistant metal material which is molybdenum or a molybdenum alloy, a metal coating film made of titanium, tantalum, or zirconium which is a metal material having a standard free energy of formation of metal carbides lower than that of the heat-resistant metal material; a molding step of disposing the heat-resistant metal material provided with the coating film in the film forming step at a predetermined position in powder that serves as a starting material of a ceramic base, and molding a ceramic green body by press-molding the powder; and a sintering step of generating a ceramic sintered body by sintering the ceramic green body molded in the molding step; wherein the metal coating film suppresses a carbonization reaction of the heat-resistant metal material during the sintering. 2 Appeal2018-003854 Application 13/879,882 THE REJECTION The Examiner rejects claims 1, 4--7, and 10-13 under 35 U.S.C. Â§ I03(a) as being unpatentable over Hideyoshi (JP 2001244321, published September 7, 2001)2 and Goto (US 2006/0118402 Al, published June 8, 2006). ANALYSIS The Examiner finds that Hideyoshi discloses all aspects of method claim 1, with the exception that Hideyoshi fails to disclose that a metal coating film that coats a heat-resistant metal material is made of titanium, tantalum, or zirconium, and has the property of suppressing a carbonization reaction of the heat-resistant metal material. Final Act. 2-3. The Examiner cites to Goto as disclosing a metal coating film made of titanium, and that the titanium suppresses a carbonization of the metal material coated by the coating film in the process carried out by Goto. Id. at 3. The Examiner concludes that it would have been obvious, in view of Goto, to employ titanium as the metal coating film in Hideyoshi, "because titanium will consume the free carbon atoms first, thus preventing carbonization of the underlying metal and preserving the properties of that metal." Id. (citing Goto para. 66). Appellants argue that "nothing in the cited references suggests that the metals disclosed in Goto might be used in Hideyoshi to achieve the object" which the Hideyoshi coating is provided for. Appeal Br. 9. Appellants rephrase this argument at a later point, maintaining that "there would have 2 Reference herein to Hideyoshi is to an English-language machine translation of the Japanese published application, dated May 11, 2015, of record in the application file. 3 Appeal2018-003854 Application 13/879,882 been no reasonable expectation of success in achieving the claimed invention or its effects based on the teaching of the cited art." Id. at 12. Hideyoshi discloses that, when producing an electrostatic chuck with an electrode made of metallic molybdenum or an alloy thereof, which is embedded in an aluminum nitride ceramic body, the surface of the molybdenum tends to react and form molybdenum oxides, which, during the sintering of the ceramic body, volatilize (i.e., evaporate) and degrade the desorption responsiveness of the electrode. Hideyoshi, paras. 6-13. Hideyoshi additionally discloses that driving off the molybdenum oxide and providing a conductive film coating made of tungsten, aluminum, platinum, or a carbide or nitride thereof, was shown to avoid the degradation of desorption responsiveness, presumably by eliminating or reducing the volatilization of molybdenum oxides as the ceramic body is sintered. Id. at paras. 14--28. In short, Hideyoshi teaches using a conductive film coating of one of the materials disclosed to prevent oxidation of the surface of the molybdenum electrode, and subsequent volatilization of those oxides during sintering. The Examiner's stated reason to modify Hideyoshi to employ a titanium coating instead of the materials disclosed by Hideyoshi, quoted above and repeated here, is that the "titanium will consume the free carbon atoms first, thus preventing carbonization of the underlying metal and preserving the properties of that metal." Final Act. 3. Nowhere in Hideyoshi do we see any reference to problems associated with "free carbon atoms," or issues with carbonization of the molybdenum electrode material. 4 Appeal2018-003854 Application 13/879,882 Rather, that is an issue in the Goto process, which is considerably different than the Hideyoshi process, both in kind and in desired result. Goto teaches that, in a process for applying a hardfacing to a component such as a turbine blade via an electric discharge surface treatment, it is desired that the hardfacing material, an example being molybdenum, be oxidized when deposited on the surface of the component to form the hardfacing. Goto, paras. 4--7, 65. Goto discusses that, because the electric discharge surface treatment is performed in a dielectric field containing carbon, such as an oil coating on the component, the material that is desirably oxidized to form the hard coating tends to be carbonized instead, preventing oxidation thereof. Id. The solution Goto proposes is to provide a coating of, for example, titanium, which more readily forms carbides than the hardfacing base material, to thereby tie up the carbon by forming titanium carbides, and thus allowing the base molybdenum material to oxide instead, as desired. Id. at paras. 65---66. As such, aside from the broad concept of applying a coating over a base metal to achieve a desired effect, nothing in the Goto disclosure appears to be of much, if any, pertinence to the process of Hideyoshi and to solving the problems faced therein. Instead, it appears that the proposed combination is a result of using impermissible hindsight reconstruction in view of Appellants' disclosure. The Examiner thus fails to provide an adequate reason to combine the teachings that is supported by rational underpinnings, and does not point to adequate evidence or technical reasoning as to why a person of ordinary skill 5 Appeal2018-003854 Application 13/879,882 in the art would have a reasonable expectation that a titanium coating would be successful in obtaining the desired results in the Hideyoshi process. The rejection of independent claim 1 as being unpatentable over Hideyoshi and Goto is not sustained. Claims 7 and 13 are independent, include limitations similar to those in claim 1, and are subject to the same rejection and articulated reason as to why they would have been obvious. The rejection is not sustained as to those claims as well. The remaining claims on appeal depend from one of these independent claims, and the rejection is not sustained as to those claims, either. DECISION The rejection of claims 1, 4--7, and 10-13 is reversed. REVERSED 6