Ex Parte Suwabe et al

Patent Trial and Appeal Board

Aug 2, 2017

12680556 (P.T.A.B. Aug. 2, 2017)

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.
12/680,556 03/26/2010 Hirohisa Suwabe Q118154 5035
23373 7590 08/04/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
WANG, XIAOBEI
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROHISA SUWABE, MASARU YOSHIDA, and
TOMOMASA KUMAGAI
Appeal 2016-001697
Application 12/680,556
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—3, 5, and 6. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on July 27, 2016. We reverse.
1 We cite to the Specification (“Spec.”) filed March 26, 2010, as amended
July 25, 2012; Final Office Action (“Final Act.”) dated August 28, 2014;
Appellants’ Appeal Brief (“App. Br.”) dated May 27, 2015; Examiner’s
Answer (“Ans.”) dated September 22, 2015, and Appellants’ Reply Brief
(“Reply Br.”) dated November 23, 2015.
2 Appellants identify Hitachi Metals, Ltd. as the real party in interest. App.
Br. 2.
Appeal 2016-001697
Application 12/680,556
BACKGROUND
The subject matter on appeal relates to a ceramic honeycomb filter
useful for cleaning particulate-containing exhaust gas. Spec. 11. Claim 1—
the sole independent claim on appeal—is reproduced below from the Claims
Appendix of the Appeal Brief, with italics added to highlight the key
recitation in dispute:
1. A honeycomb structure obtained by sintering a
honeycomb molding made of a mixture comprising titania
powder, alumina powder, silica powder and mullite powder,
said mixture containing 1-10 parts by mass of silica powder and
5-30 parts by mass of mullite powder per the total amount (100
parts by mass) of said titania powder and said alumina powder,
and said mullite powder having a maximum particle size of 75
pm or less and containing 40-60% by mass of particles having
particle sizes of 10-50 pm and 5-30% by mass of particles
having particle sizes of 3 pm or less, wherein the honeycomb
structure has main crystal phases of aluminum titanate and
mullite, which said aluminum titanate is silica-aluminum
titanate solid solution.
REJECTION
Claims 1—3, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogunwumi,3 Day,4 Saito,5 and Noguchi.6
3 US 2004/0020846 Al, published February 5, 2004 (“Ogunwumi”).
4 US 4,483,944, issued November 20, 1984 (“Day”).
5 US 2011/0265439 Al, published November 3, 2011 (“Saito”).
6 US 6,773,481 B2, issued August 10, 2004 (“Noguchi”).
2
Appeal 2016-001697
Application 12/680,556
DISCUSSION
Claim 1 is directed to a honeycomb structure obtained from, inter
alia, “mullite powder having a maximum particle size of 75 pm or less and
containing 40-60% by mass of particles having particle sizes of 10-50 pm
and 5-30% by mass of particles having particle sizes of 3 pm or less.”
The Examiner finds that Ogunwumi discloses forming a honeycomb
structure from, inter alia, mullite powder that “preferably has a median
diameter of at least 15 pm.” Final Act. 4. The Examiner states that “[t]his
range overlaps with the claimed range, creating a prima facie case of
obviousness.” Id. The Examiner also finds that Ogunwumi “does not
expressly teach the other particle size distributions as claimed.” Id. at 5
(emphasis added).
We cannot discern from the Examiner’s statements what part of the
claimed mullite particle size distribution is deemed to overlap with
Ogunwumi’s disclosed median diameter. Nor do we understand what the
Examiner means by the “other” claimed particle size distributions. Claim 1
recites only one particle size distribution—mullite powder having a
maximum particle size of 75 pm or less and containing 40-60% by mass of
particles having particle sizes of 10-50 pm and 5-30% by mass of particles
having particle sizes of 3 pm or less. In any event, we agree with
Appellants’ argument, App. Br. 12, that Ogunwumi’s teaching of a median
particle diameter alone discloses nothing concerning the maximum particle
size, the percentage of particles in the range of 10-50 pm, or the percentage
of particles in the range of 3 pm or less.
The Examiner also determines, based on teachings in Saito and
Noguchi, that “the particle size distribution of raw material used to make
3
Appeal 2016-001697
Application 12/680,556
ceramic honeycomb bodies is recognized in the art as a result effective
variable,” for obtaining a desired pore size distribution and coefficient of
thermal expansion. Final Act. 5 (citing Saito 1 86; Noguchi 6:3—9). Saito
states at the relied upon passage that “[t]he pore diameter and the like of the
honeycomb unit may be adjusted by adjusting the firing temperature and the
particle diameter of the ceramic powder.” Saito | 86. The Examiner fails to
identify any evidence in Saito regarding particle size distribution of mullite
or the expected effects which would result from varying percentages of
mullite particles having a size within the claimed ranges. Noguchi teaches
that particle sizes of alumina source components, such as aluminum
hydroxide and aluminum oxide, can affect coefficient of thermal expansion
and pore size distribution. Noguchi 6:3—9. Here too, the Examiner does not
identify evidence regarding mullite particles or the expected effects that
would result from the size of mullite in forming a honeycomb filter body.
Moreover, Appellants’ Specification explains that the claimed mullite
particle distribution is selected based, at least in part, on the resulting effect
on microcrack formation. Spec. 30, 31. Thus, even if we were to accept
that particle size in honeycomb forming materials impacts porosity, that
would be insufficient to support a finding that optimizing particle size to
achieve a desired porosity would have yielded a mullite particle size
distribution within the claimed ranges. To the contrary, Table 1 of
Appellants’ Specification demonstrates that mullite distributions both within
and outside of the claimed ranges resulted in essentially the same porosity.
Compare Spec. | 61, Example 1 (50% porosity), with id., Comparative
Example 1 (51% porosity).
4
Appeal 2016-001697
Application 12/680,556
On this appeal record, we agree with Appellants’ argument, App. Br.
10, that the Examiner fails to demonstrate that the mullite particle size
distribution in Ogunwumi would have been recognized as a result-effective
variable, or that optimization as such would have resulted in a particle size
distribution within the claimed range of values.
For the foregoing reasons, we are persuaded that the Examiner has not
set forth a factual basis which is sufficient to support a prima facie case of
obviousness. Accordingly, the Rejection is not sustained.
DECISION
The Examiner’s decision rejecting claims 1—3, 5, and 6 is reversed.
REVERSED
5