Ex Parte OKAZAKI et alDownload PDFPatent Trials and Appeals BoardJun 6, 201915109455 - (D) (P.T.A.B. Jun. 6, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/109,455 07/01/2016 54072 7590 06/10/2019 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. 7 0404. 3100/ha 9167 EXAMINER FIORITO, JAMES A ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 06/10/2019 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 Appeal 2018-006188 Application 15/109,455 Technology Center 1700 Before JAMES C. HOUSEL, BRIAND. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-7. We have jurisdiction. 35 U.S.C. § 6(b). We REVERSE. Appellant is the Applicant, Sharp Kabushiki Kaisha, which, according to the Appeal Brief, is also the real party in interest. Appeal Br. 2. Appeal 2018-006188 Application 15/109,455 STATEMENT OF THE CASE2 Appellant describes the invention as relating to a light responsive photocatalyst material. Spec. ,-J 1. The material could be used to adsorb and decompose environmental pollutants under solar light or indoor light. Id. ,-i 2. Appellant explains that photocatalyst material, such as one comprising tungsten oxide, may be poisoned by exposure to carbon monoxide, sulfur dioxide, or oxygen. Id. ,-i 11. Appellant's Specification solves this problem by employing a titanium oxide shell layer: The present inventors have conducted extensive studies and found that, by completely covering the core particles containing tungsten oxide with the shell layer made of titanium oxide, the alkaline resistance of the photocatalyst material is significantly improved. Id. at ,-J 18. Figure 1 illustrates Appellant's invention and is reproduced below. FIG. 1 ., ,>\ . ..;:·i '" " ,,,······ /<::~~~~;~~~?:~ .. ~:~<>'·-~--~~·~.:?8::~ -~ ::~:~:~',~;~~~----~-·, ---·--: ............. ~~...... . .... 2 In this Decision, we refer to the Final Office Action dated August 25, 2017 ("Final Act."), the Appeal Brief filed November 22, 2017 ("Appeal Br."), and the Examiner's Answer dated March 9, 2019 ("Ans."). 2 Appeal 2018-006188 Application 15/109,455 Figure 1 is a cross-sectional view schematically showing a photocatalyst material according to embodiment 1 of Appellant's disclosure. Spec. ,i 16. Figure 1 illustrates titanium oxide shell layer 3 completely covering core particles 2 containing tungsten oxide and promoter 4. Id. ,i,i 17-36. Claim 1, reproduced below with emphasis added to certain key recitations, is illustrative of the claimed subject matter: 1. A photocatalyst material comprising: core particles including tungsten oxide; a promoter on a surface of the core particles; and a shell layer including titanium oxide and covering an entire surface of both the core particles and the promoter such that no portion of the surface of the core particles is exposed to an outside and no portion of the surface of the promoter is exposed to an outside. Appeal Br. 9 (Claims App.). Independent claim 7 is a method claim that similarly requires "that no portion of the surface of the core particles is exposed to an outside." Id. at 10. REJECTION On appeal, the Examiner maintains the rejection of claims 1-7 under 35 US.C. § 102 as anticipated by Hiromasa et al., JP 2013-208589, Oct. 10, 2013 ("Hiromasa"). Ans. 2. ANALYSIS Hiromasa teaches tungsten oxide particles 2, catalyst particle aid 4, and titanium oxide coated layer 3. Hiromasa Figure 1, reproduced below, illustrates Hiromasa' s arrangement: 3 Appeal 2018-006188 Application 15/109,455 Hiromasa Figure 1 illustrates the "structure of the coating film" of Hiromasa' s invention. Hiromasa 3. 3 Appellant argues that Hiromasa illustrates at least some of its tungsten oxide particles 2 being on the surface and exposed to the environment. Appeal Br. 5. The text of Hiromasa supports Appellant's position. Hiromasa 4 ("The catalyst particles are first oxygen reduction catalyst aid, W03 particles coming into physical contact with, and is exposed to the air in the part of the surface of the catalyst particles .... "). The Examiner does not dispute Appellant's factual position regarding Hiromasa regarding Hiromasa having tungsten particles at its surface. Instead, the Examiner determines that Hiromasa nonetheless meets the recitations of claim 1 even if some particles are exposed to the environment. The Examiner interprets claim 1 as being open ended such that it permits exposed particles: 3 Even if some the particles in the film are exposed, the claim does not exclude all particles of the photocatalyst material from being exposed under the broadest reasonable interpretation of claim 1. In particular, the transitional phrase "comprising" leaves the claim open to other particles in the photocatalyst material of claim 1, such as exposed particles. None-the-less, claim 1 is met because at least some the Citations are to the five page translation of Hiromasa. 4 Appeal 2018-006188 Application 15/109,455 particles meet claim 1 such as the particles that are embedded in the layer 3 of Fig. 1. Ans. 4. We agree with Appellant that the Examiner's interpretation of claim 1 is unreasonably broad. Appeal Br. 6. While claim 1 is open ended, the claim recites "[a] photocataylst material comprising ... core particles including tungsten oxide." Claim 1 also requires that "no portion of the surface of the core particles is exposed to an outside." The Hiromasa photocatalyst material comprises "core particles including tungsten oxide" and all of the Hiromasa tungsten oxide particles (regardless of where they are located) fall within claim l's descriptive category of "core particles including tungsten oxide. "4 Some of these "core particles," however, are "exposed to an outside." See Hiromasa 3 and Figure 1. The Hiromasa exposed core particles are therefore outside the scope of claim 1 because claim 1 requires that "no portion of the surface of the core particles is exposed to an outside." In other words, the language of claim 1 requires that the photocatalyst material does not include particles within the category of "core particles including tungsten oxide" which are "exposed to an outside." This claim interpretation is consistent with Appellant's Specification which emphasizes the importance of completely covering the core particles. See, e.g., Spec. Fig. l,,-Jl8. Because the Examiner errs by interpreting claim 1 too broadly, we do not sustain the Examiner's rejection of claim 1 or of the claims depending 4 The Examiner does not attempt to distinguish Hiromasa's particles as some being core particles while other particles are not core particles. 5 Appeal 2018-006188 Application 15/109,455 from claim 1. Our analysis of claim 7 is substantially the same, and we also do not sustain the Examiner's rejection of claim 7. DECISION For the above reasons, we reverse the Examiner's rejections of claims 1-7. REVERSED 6 Copy with citationCopy as parenthetical citation