Ex Parte OKAZAKI et al

Patent Trials and Appeals Board

Feb 7, 2019

14892251 - (D) (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/892,251 11/19/2015
54072 7590 02/11/2019
SHARP KABUSHIKI KAISHA
C/0 KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Shinya OKAZAKI
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.
70404.2841/ha 1028
EXAMINER
FIORITO, JAMES A
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/11/2019 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):
JKEATING@KBIPLA W.COM
uspto@kbiplaw.com
epreston@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINY A OKAZAKI, HIROYUKI NISHINAKA, and
MASAKAZU MATSUBA Y ASHI
Appeal2018-002799
Application 14/892,251
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's non-final decision to reject claims 1---6, 8, and 10.2
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appellant is the Applicant, "Sharp Kabushiki Kaisha" (Application
Data Sheet filed November 19, 2015 at 5), which, according to the Brief, is
the real party in interest (Appeal Brief filed July 7, 2017 ("Appeal Br.") at
2).
2 Appeal Br. 3-7; Reply Brief filed January 19, 2018 ("Reply Br.") at 2-5;
Non-Final Office Action entered April 10, 2017 ("Non-Final Act.") at 2-7;
Examiner's Answer entered November 30, 2017 ("Ans.") at 2-8.
Appeal2018-002799
Application 14/892,251
I. BACKGROUND
The subject matter on appeal relates to a photocatalyst material and to
a method of producing such a photocatalyst material (Appeal Br. 8, 9
(Claims Appendix)); Specification filed November 19, 2015 ("Spec.") ,r 1).
Representative claim 1 is reproduced from the Claims Appendix, as follows:
1. A photocatalyst material comprising:
a core particle; and
a shell layer with which a whole surface of the core
particle is fully covered, the core particle containing at least a
tungsten oxide, and the shell layer being constituted by a titanium
oxide.
(Appeal Br. 8 (indentations added).)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, as follows:
A. Claims 1, 2, and 8 under AIA 35 U.S.C. § 102(a)(l) as
anticipated by Su et al. 3 ("Su");
B. Claims 1, 2, and 10 under 35 U.S.C. § 102(a)(l) as anticipated
by CN 102872774 A 4 ("CN '774"; Inventor's name not
provided in English);
C. Claims 5 and 6 under 35 U.S.C. § 103 as unpatentable over CN
'774 in view of Arai et al. 5 ("Arai"); and
3 Su et al., "Formation of Tungsten Oxide Encapsulated in Titanium Oxide
Nanocages by Modified Plasma Arc Gas Condensation,"
18 Nanotechnology 155602 (2007). A clean copy of this reference is
available at the URL listed on page 7 of the Examiner's Answer
(https://iopscience.iop.org/article/10.1088/0957-4484/18/15/155602/meta).
4 CN 102872774 A, published January 16, 2013 (Google Patents translation
of record).
5 JP 2008-149312, published July 3, 2008 (machine translation of record).
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Appeal2018-002799
Application 14/892,251
D. Claims 3 and 4 under 35 U.S.C. § 103 as unpatentable over CN
'774 in view of Sogabe et al. 6 ("Sogabe").
(Ans. 2-8; Non-Final Act. 2-7.)
III. DISCUSSION
Rejection A. The Appellant focuses the arguments on claim 1
(Appeal Br. 3-5). Therefore, we confine our discussion to this claim, which
we designate as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). As
provided by this rule, claims 2 and 8 stand or fall with claim 1.
The Examiner finds that Su describes every limitation recited in claim
1 (Ans. 2). Regarding the limitation recited in claim 1 that the "whole
surface of the core particle is fully covered" by the shell layer, the Examiner
finds that Su teaches this limitation in Figures 4, 5, and 7 (id.).
The Appellant disagrees, arguing that "Su ... completely fails to
teach or suggest that the alleged shell layer (a Ti02 nanocage. which must
necessary [sic] include apertures to define a cage shape) could or should
have fully covered the whole surface of the alleged core particle (W1s049)"
(Appeal Br. 4).
The Appellant's argument 7 fails to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
6 US 2010/0304954 Al, December 2, 2010.
7 In the Reply Brief, the Appellant argues that "[t]he term 'photocatalyst' is
used as a positively recited modifier of the claimed 'material' in the
preamble of [claiml]" and that Su's W1s049 is not a photocatalyst material
(Reply Br. 2, 3--4). The Appellant, however, does not explain why these
arguments were not presented in the Appeal Brief. 37 C.F.R. § 41.4I(b)(2).
Even if we assume that these belated arguments were timely raised in the
Appeal Brief, they would be unpersuasive because Su teaches that Ti02,
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Appeal2018-002799
Application 14/892,251
As the Examiner finds (Ans. 2, 7), Su's Figures 4 and 5 show one or
more W1s049 nanoparticles encapsulated in Ti02 (Su 3). That finding is
further confirmed in the image of the nanoparticles shown in Figure 2 and
the growth mechanism depicted in Figure 7 (id. at 2, 4). Furthermore, Su
explicitly teaches that "[t]he outer shell [Ti02] serves as a nanocage,
protecting the inner core [W1s049]fromfurther oxidation or degradation by
the environment, and thus the properties of the encapsulated materials are
preserved" (id. at 1; emphasis added). Although Su uses the term
"nanocage," a person having ordinary skill in the art would have drawn a
reasonable inference from this explicit disclosure, taken together with the
Figures, that an encapsulated nanoparticle would not have any apertures that
would allow oxygen to pass through-i.e., a W1s049 nanoparticle would be
"fully covered" by a Ti02 shell. 8 The Appellant does not direct us to
objective evidence ( e.g., experimental evidence) to the contrary. In re Best,
562 F.2d 1252, 1255 (CCPA 1977) ("Whether the rejection is based on
'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35
U.S.C. § 103,jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture products or to
obtain and compare prior art products.")
which is present in Su's material, has excellent photocatalytic properties (Su
at 1 "Introduction"). The Appellant has not demonstrated that the broadest
reasonable interpretation of claim 1 is sufficiently narrow as to require the
tungsten oxide to have photocatalytic properties.
8 In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.").
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Appeal2018-002799
Application 14/892,251
For these reasons, and those given by the Examiner, we sustain
Rejection A.
Rejection B. The Examiner finds that CN '774 describes every
limitation recited in claim 1 (Ans. 3). The Examiner finds that CN '774
discloses a dopant (core), such as tungsten oxide, that is covered by a
titanium oxide shell, and that the method of making the composite particles
involves growing the titanium oxide onto the surface of monodispersed core
material, which would fully cover the surface (id.).
The Appellant argues that CN '774 merely teaches a tungsten oxide
(W200ss) particle that is covered by a titanium oxide (Ti02) shell but does
not teach a shell layer that "could or should have fully covered the whole
surface of the alleged core particle" (Appeal Br. 6).
Again, we agree with the Examiner. CN '774's method for making
the core-shell composite particles is the same or substantially the same as
that described in the current Specification (compare CN '774 ,r 32 and claim
1 with Spec. ,r 20). Under these circumstances, the burden of production
was shifted to the Appellant to show that CN '774's composite particles
would not have a shell layer that fully covers the surface the tungsten oxide
particles. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]e conclude
that the Board correctly found that the virtual identity of monomers and
procedures sufficed to support a prima facie case of unpatentability of
Spada's polymer latexes .... "); Best, 562 F.2d at 1255 ("Where ... the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.").
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Application 14/892,251
For these reasons, and those given by the Examiner, we uphold
Rejection B.
Rejections C and D. Regarding the obviousness rejections, the
Appellant argues that Arai and Sogabe also do not teach the limitations that
are argued as lacking in CN '774's disclosure (Appeal Br. 7). As we
discussed above, however, CN '774 describes the contested claim
limitations.
Therefore, we also uphold Rejections C and D.
IV. SUMMARY
Rejections A through Dare sustained. Therefore, the Examiner's
non-final decision to reject claims 1---6, 8, and 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).
AFFIRMED
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