Ex Parte ISHIKAWA et al

Patent Trials and Appeals Board

Feb 11, 2019

12568753 - (D) (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/568,753 09/29/2009
7055 7590 02/13/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Tsuyoshi ISHIKAWA
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.
P36805 7028
EXAMINER
OCHYLSKI, RY AN M
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI ISHIKAWA, YOSHIYUKI OGA W ARA,
TOMOHIKO YOSHITAKE, and YUKIKO MURAKAMI
Appeal2017-006030
Application 12/568,753
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4--10, and 17-22. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision refers to the Specification ("Spec.") filed September 29,
2009, the Examiner's Final Office Action ("Final") dated October 8, 2015,
Appellants' Appeal Brief ("Appeal Br.") filed May 2, 2016, the Examiner's
Answer ("Ans.") dated January 13, 2017, and Appellants' Reply Brief
("Reply Br.") filed March 6, 2017.
2 Appellants identify Hoya Corp.oration as the real party in interest (Appeal
Br. 3).
Appeal2017-006030
Application 12/568,753
STATEMENT OF THE CASE
The invention relates to methods of producing fluoroapatite powder,
the fluoroapatite powder product, and an adsorption apparatus that uses the
fluoroapatite powder (Spec. 1: 5-11 ).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized. Remaining independent claim 1 7 recites a similar method of
producing fluoroapatite powder.
1. A method of producing fluoroapatite powder from raw
materials consisting of a calcium compound, a phosphate
compound, a fluorine compound, and water, the method
compnsmg:
preparing a slurry containing fluoroapatite primary
particles mainly constituted of fluoroapatite from the raw
materials at a pH of 2.5 to 4.5;
applying an ultrasonic wave to the slurry; and
drying the slurry to which the ultrasonic wave is applied
to granulate the fluoroapatite primary particles contained in the
slurry to obtain the fluoroapatite powder mainly constituted of
the fluoroapatite,
wherein applying the ultrasonic wave to the slurry is
carried out by using an ultrasonic washing machine having an
ultrasonic tank containing water, wherein the slurry is put in a
container and then the container containing the slurry is put in
the ultrasonic tank, and wherein in such a state, when a total
amount of the slurry and the water is 180 L, a power of the
ultrasonic wave to be applied to the slurry is in the range of
500 to 2500 W, and
wherein the fluoroapatite powder has a compressive
particle strength of 5.4 MP a or more, and the compressive
particle strength is measured for fluoroapatite powder particles
having an average particle size is [ sic, of] 40 ± 5 µm.
2
Appeal2017-006030
Application 12/568,753
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 1, 2, 4--9, and 17-22 as unpatentable over Kobayashi3 in
view ofDeutsch4 and Yanagi; 5 and
2. Claim 10 as unpatentable over Kobayashi in view of Deutsch
and Yanagi, and further in view of Tomlinson. 6
ANALYSIS
After review of the opposing positions Appellants and the Examiner
articulate, the applied prior art, and Appellants' claims and Specification
disclosures, we determine that Appellants' arguments are sufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we reverse the
stated obviousness rejections for substantially the reasons Appellants set
forth in the Appeal and Reply Briefs. We offer the following for emphasis
only.
The Examiner finds that Kobayashi discloses a method of producing
fluoroapatite powder substantially as recited in claims 1 and 17, except for
"whether the agitation could be produced by applying an ultrasonic wave to
the slurry" (Final 3--4). To remedy this deficiency, the Examiner finds that
Deutsch teaches that ultrasonic waves are an appropriate form of energy for
incorporating material into hydroxyapatite (id. at 4). The Examiner
3 JP 2004330113 A, published November 25, 2004 ("Kobayashi").
4 US 5,690,908, issued November 25, 1997 ("Deutsch").
5 US 4,893,320, issued January 9, 1990 ("Yanagi").
6 US 4,157,378, issued June 5, 1979 ("Tomlinson").
3
Appeal2017-006030
Application 12/568,753
concludes that it would have been obvious to use ultrasonic waves in
Kobayashi's process "as part of the incorporation of fluorine into the
hydroxyapatite, since ultrasonication is identified by Deutsch as a well-
known mixing aid, ... to yield the predictable result of mixing a
hydroxyapatite slurry" (id.). The Examiner finds that stirring and ultrasound
are known alternative forms of agitation (Ans. 3). In addition, the Examiner
finds that Kobayashi teaches that the power requirement for mixing per liter
of slurry is an important consideration, thereby establishing the relationship
as a result-effective variable that would have motivated the ordinary artisan
to operate at the claimed conditions (Final 6).
Appellants argue that the Examiner has not shown that ultrasonic
power is a result-effective variable and that there is a nexus, i.e., functional
relationship, between stirring and ultrasound power (Appeal Br. 14--17). In
addition, Appellants contend that Deutsch applies ultrasonic power to a
slurry of hydroxyapatite particles and metal ions to adsorb the metal ions
onto the particle surfaces, not to improve particle strength (id. at 17).
Appellants' arguments are persuasive of reversible error. We
recognize that the substitution of one known element for another element
used for the same purpose likely would have been obvious when the
combination yields no more than a predictable result. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007); In re Fout, 675 F.2d 297, 301
( CCP A 1982 ). Here, however, the Examiner has neither established that
stirring and ultrasound are used in the art for the same purpose, nor that the
combination yields no more than a predictable result. As Appellants
contend, Deutsch discloses that ultrasound and heat are alternative sources
of energy for facilitating adsorption of metal ions onto the surface of
4
Appeal2017-006030
Application 12/568,753
hydroxyapatite particles, not that ultrasound is an alternative for stirring or
otherwise agitating a slurry, especially one composed "mainly of
fluoroapatite" (Deutsch 5:32-37). Indeed, the adsorption of metal ions onto
the surface ofhydroxyapatite particles that Deutsch teaches does not involve
the same substitution of fluorine ions for hydroxyl ions in hydroxyapatite
particles as Kobayashi teaches and Appellants' Specification provides
( compare Deutsch 5 :32--49 with Kobayashi Abstract and Spec. 14,
Fluoroapatite Synthesis Step). Thus, the Examiner fails to establish a
relationship in the record between stirring and ultrasound as known
alternative forms of agitation. Nor, therefore, does the Examiner establish
that ultrasound power is a result-effective variable. Obviousness cannot be
established if a prior art reference, which fails to specify any range, does not
recognize a variable or parameter involved is a result-effective variable. In
re Antonie, 559 F.2d 618, 620 (CCPA 1977). The Examiner does not rely
on either Yanagi or Tomlinson to remedy this deficiency.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). See KSR, 550 U.S. at 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). Accordingly, we reverse the Examiner's prior art
rejections of claims 1, 2, 4--10, and 17-22.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 2, 4--10, and 17-22 under 35 U.S.C. § 103(a) as unpatentable over
5
Appeal2017-006030
Application 12/568,753
Kobayashi in view of Deutsch and Yanagi, alone or further in view of
Tomlinson, is reversed.
REVERSED
6