Ex Parte OKAZAKI et al

Patent Trials and Appeals Board

Jun 6, 2019

15109455 - (D) (P.T.A.B. Jun. 6, 2019)

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
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~:~<>'·-~--~~·~.:?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