Ex Parte Tanaka et al

Patent Trial and Appeal Board

Apr 2, 2015

12451932 (P.T.A.B. Apr. 2, 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.
12/451,932 02/25/2010 Rika Tanaka 5120-008 8732
7590 04/02/2015
LOWE HAUPTMAN HAM & BERNER, LLP
Suite 310
1700 Diagonal Road
Alexandria, VA 22314
EXAMINER
TRAN, BINH X
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
04/02/2015 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 RIKA TANAKA, HARUKI NOJO, and
YOSHIHARU OTA
____________

Appeal 2012-012646
Application 12/451,932
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON REHEARING

Appellants request rehearing of a DECISION ON APPEAL dated
January 30, 2015,1 affirming the Examiner’s decision that claims 1–11 are
unpatentable over the prior art of record.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in a request for

1 Hereinafter, “Decision.”
Appeal 2012-012646
Application 12/451,932

2
rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See 37
C.F.R. § 41.52(a)(1) (2014).

I.
The Board’s Decision affirmed the Examiner’s rejections under 35
U.S.C. § 103(a) of claims 1–11 as unpatentable over Oshima in view of
Desai; claims 1–4 and 8–11 as unpatentable over Grumbine in view of
Desai; and claims 1–4 and 8–11 as unpatentable over Li in view of Desai.
In the Request for Rehearing, Appellants contend that the Board
misapprehended or overlooked:
(a) “that Appellants defined passive current value as a constant current
and argued as much in its opening Brief”;
(b) that a Tafel plot allows one of ordinary skill in the art to determine
the passive current value, but that the entire current curve on this
plot is not the passive current value; and
(c) that there is no reason to optimize and no reason to bypass the data
showing unexpected results from the specification.
Request 2–3.

Appellants’ contentions are addressed below.

II.
Initially, we note that Appellants neither argue nor establish that the
Board’s affirmance of the Examiner’s rejections is erroneous based on the
alleged points of misapprehension listed above. Indeed, the Decision
specifically finds no difference between the claimed polishing compositions
and those of the primary references, without regard to Desai’s teaching.
Decision 6. As such, Appellants’ contentions do not address the prima facie
obviousness of the claimed invention.
Appeal 2012-012646
Application 12/451,932

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Notwithstanding the above, with regard to the first two items
Appellants contend that the Board misapprehended, the Decision
acknowledges Appellants’ argument that the passive current value is a
constant value. Decision 4–5. Moreover, the Decision notes that page 8 of
the Specification provides a definition of passive current value. Decision 7.
However, as the Decision also notes, this definition does not define passive
current value as a constant value. Id. Instead, Appellants define passive
current value as the minimum current value observed in a Tafel plot, after a
metal surface is passivated and the current value rapidly decreases. Id.,
citing Spec. 8:5–12. Appellants describe a Tafel plot measurement is made
by dipping work, counter, and reference electrodes in an oxidizing agent
solution, and plotting current as voltage is changed from -1.0V to 2.0V.
Decision 6, citing Spec. 8:16–20. The Decision finds that it is the oxidizing
agent that is associated with the passive current value. Decision 6.
Appellants do not teach that the passive current value is independent of
oxidizing agent concentration, which is the variable shown in Desai in
discussing passive current density. Decision 7. As such, Appellants have
not established that the passive current value is a constant value in contrast
to Desai’s teaching.
With regard to the third item Appellants contend the Board
misapprehended or overlooked, we note this contention is merely
conclusory. Moreover, the Decision finds Desai teaches passive current
density may be adjusted based on the oxidizing agent concentration in the
range 0.15–0.45 mA. Decision 4, 7. Appellants have not shown that this
finding is erroneous. As for Appellants’ data in the Specification, the
Appeal 2012-012646
Application 12/451,932

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Decision does not “bypass” this data, but specifically addresses it. Decision
8.
Accordingly, we decline Appellants’ request to modify the Decision
by reversing the Examiner’s obviousness rejection.

III.
The Appellants’ Request for Rehearing has been granted to the extent
that the DECISION ON APPEAL dated January 30, 2015, has been
reconsidered in light of Appellants’ arguments. However, the Request is
denied, and the Decision is not modified in any respect.

REHEARING DENIED

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