Ex Parte Machida et al

Patent Trial and Appeal BoardSep 22, 2015

11513103 (P.T.A.B. Sep. 22, 2015)

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. 11/513,103 08/31/2006 Hiroshi Machida SH-0065PCTUS RYU.028 3268 21254 7590 09/23/2015 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER DEHGHAN, QUEENIE S ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 09/23/2015 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 HIROSHI MACHIDA and MITSUJI SATO __________ Appeal 2014-000668 Application 11/513,103 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection of claims 3, 7‒14, 16‒21, and 23‒25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Representative claim 3 is reproduced below from the Claims Appendix of the Appeal Brief dated June 17, 2013 (“Br.”). The limitations at issue are italicized. 3. A method for manufacturing a porous-glass material for optical fiber, as performed in a reaction apparatus having a plurality of burners for producing glass particles toward an initial base material Appeal 2014-000668 Application 11/513,103 2 and a ventilation mechanism at a position opposed to the plurality of burners, the method comprising: preventing soot floating within an inside of a chamber of the reaction apparatus from adhering to the inside of the chamber of the reaction apparatus during a deposition of the glass particles on the initial base material, the preventing of the soot comprising: using the ventilation mechanism to regulate a pressure differential between an inside and an outside of the reaction apparatus to be within a range of -80Pa ≤ Pmin≤ -40Pa; and exhausting the soot to a location outside of the chamber, wherein the ventilation mechanism is movable in accordance with a reciprocal movement of the plurality of burners; and after the deposition of the glass particles on the initial base material, removing the porous-glass material from the reaction apparatus and beginning deposition of the glass particles on a second base material without removing soot from walls of the chamber. Br. 22 (emphasis added). The claims on appeal stand rejected as follows: (1) claims 3, 7‒11, 14, 20, 21, and 23‒25 under 35 U.S.C. § 103(a) as unpatentable over Watanabe1 in view of Kato;2 and (2) claims 12, 13, and 16‒19 under 35 U.S.C. § 103(a) as unpatentable over Watanabe in view of Kato and further in view of Ishihara.3 The rejections are sustained for the reasons set forth in the Examiner’s Answer dated July 25, 2013 (“Ans.”). We add the following for emphasis. 1 JP 2000‒313625 A, published November 14, 2000. In this Decision on Appeal, we refer to the English translation dated January 31, 2012, which is of record in the instant Application. 2 JP 59207848 A, published November 26, 1984. In this Decision on Appeal, we refer to the English translation dated February 2010, which is of record in the instant Application. 3 US 2004/0060326 A1, published April 1, 2004. Appeal 2014-000668 Application 11/513,103 3 B. DISCUSSION The Examiner finds Watanabe discloses a method for manufacturing porous glass material for optical fiber including the steps of exhausting soot to the outside of the chamber via a ventilation mechanism and preventing soot from adhering to the inside of the chamber during deposition. Ans. 2‒3. The Examiner, however, finds Watanabe does not disclose regulating a pressure differential between the inside and the outside of the chamber as recited in claim 3. Ans. 3. The Examiner finds Kato discloses a similar process of manufacturing glass material wherein a pressure differential between the inside and the outside of the reaction apparatus is between 0 and -10 mmH2O. The Examiner also finds Kato exemplifies a pressure differential of -5 mmH2O (i.e., -49 Pa)4 in Table 1 which falls within the claimed range of -80Pa ≤ Pmin≤ -40Pa. Ans. 3; see also Kato 6 (describing the use of a -5 mmH2O pressure differential as “Good”). The Appellants do not dispute that it would have been obvious to one of ordinary skill in the art to maintain a pressure differential in Watanabe’s chamber as disclosed in Kato. See Ans. 3‒4. Likewise, the Appellants do not dispute that Kato discloses a pressure differential within the claimed range (i.e., -5 mmH2O or - 49 Pa) having a “good” result. Br. 14. Instead, the Appellants direct us to a disclosure in Kato of pressure differentials outside the claimed range (i.e., -1 and -10 mmH2O) which also have a “good” result and contend that Kato does not differentiate between the results of - 1, -5, and -10 mmH2O (i.e., -9.8, -49, and -98 Pa, respectively). Br. 14. The Appellants argue that: [The] results [of -1, -5, and -10 mmH2O are] . . . essentially just a sampling of values that are more or less evenly spaced, with -5 being 4 The Appellants do not dispute that -5 mmH2O is -49 Pa. Br. 10. Appeal 2014-000668 Application 11/513,103 4 approximately halfway between -1 and -10. Understood in this way, these values are analogous to the end points of a range. They serve not to provide any specific example, but rather just to indicate the extent of the range. Br. 15. We disagree. The disclosure of Kato is not limited to a range of pressure differentials but rather includes a specific example of a pressure differential within the range recited in claim 3 (i.e., -5 mmH2O or -49 Pa). See Kato 6. Current case law dictates that this disclosure in Kato renders the claimed range unpatentable. Cf. Titanium Metals Corp. v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985) (a titanium base alloy containing 0.25% by weight Mo and 0.75% Ni is squarely within the claimed ranges of 0.2‒0.4% Mo and 0.6‒0.9% Ni and thus anticipates the claimed alloy). Claim 3 also recites: after the deposition of the glass particles on the initial base material, removing the porous-glass material from the reaction apparatus and beginning deposition of the glass particles on a second base material without removing soot from walls of the chamber. Br. 22 (emphasis added). The Appellants argue that “Watanabe and Kato are both completely silent about, and fail to teach or suggest, on whether soot must be or is in fact removed from the walls of the chamber between runs.” Br. 17. The Appellants’ argument is not persuasive of reversible error. According to the Appellants’ disclosure, all soot is vacuumed out of the chamber when the pressure differential is maintained within the claimed range (i.e., -80Pa ≤ Pmin≤ - 40Pa). See Spec. ¶ 28. Thus, the record on appeal supports a finding that maintaining a pressure differential in Watanabe’s chamber at -5 mmH2O or -49 Pa as disclosed in Kato would necessarily remove all of the soot from the chamber Appeal 2014-000668 Application 11/513,103 5 and eliminate the need to remove soot between runs. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (the concept of inherency when applied to obviousness is present “when the limitation at issue is the ‘natural result’ of the combination of prior art elements”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”). C. DECISION The decision of the Examiner 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). AFFIRMED kmm