Ex Parte Teranishi et al

Patent Trial and Appeal Board

Mar 29, 2017

13735233 (P.T.A.B. Mar. 29, 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.
791 611 8877
EXAMINER
PATEL, PRANAV N
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
13/735,233 01/07/2013
25191 7590 03/29/2017
BURR & BROWN, PLLC
PO BOX 7068
SYRACUSE, NY 13261-7068
Makoto TERANISHI
03/29/2017 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 MAKOTO TERANISHI, HIDEYUKI SUZUKI, and
MANABUISOMURA
Appeal 2016-002446
Application 13/735,233
Technology Center 1700
Before PETER F. KRATZ, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s decision to reject claims 4—6, 8,
12, and 13. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we REVERSE.
1 In our Decision, we refer to the Final Office Action appealed from, mailed
January 7, 2015 (“Final Act.”); the Appeal Brief dated June 4, 2015 (“App.
Br.”); the Examiner’s Answer to the Appeal Brief dated October 27, 2015
(“Ans.”); and the Reply Brief dated December 17, 2015 (“Reply Br.”).
2 Appellants identify NGK Insulators, Ltd. as the Real Party in Interest.
App. Br. 1.
Appeal 2016-002446
Application 13/735,233
The Claimed Invention
Appellants’ disclosure relates to a ceramic filter that is said to be
usable for a long period of time in high temperature conditions. Spec. 1;
Abstract. The ceramic filter comprises a ceramic porous body and,
according to Appellants, can be used for filtrating and removing suspended
substances, bacteria, dust, and the like present in a fluid such as liquid and
gas in the fields of water treatment and exhaust gas treatment. Spec. 1.
Claim 4 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
14) (key disputed claim language italicized):
4. A ceramic filter comprising:
a porous substrate made of ceramic and having partition
walls separating and forming cells extending from one end face
to the other end face,
a separation membrane made of ceramic and disposed on
wall surfaces of the cells, and
glass seals disposed on the one end face and on the other
end face so as not to cover openings of the cells;
wherein the glass seals are constituted of glass
constituent and ceramic particles, the ceramic particles have a
thermal expansion coefficient of 90 to 110% of that of the glass
constituent, and an area of occupancy of the ceramic particles
with respect to the entire glass seals is 5 to 50%.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Isomura et al., US 2006/0213165 A1 Sept. 28, 2006
(hereinafter “Isomura”)
Kato et al., JP 10-180060 July 7, 1998
(hereinafter “Kato”)
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Application 13/735,233
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 4—6, 8, 12, and 13 are rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Isomura. Ans. 3; Final Act. 4.
2. Claims 4—6, 8, 12, and 13 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Isomura in view of Kato. Ans. 5; Final Act. 6.
OPINION
Rejection 1
The Examiner bears the initial burden of establishing a prima facie
case of anticipation or obviousness. See generally In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
The Examiner determines that Isomura teaches or suggests all of the
limitations of claim 4 and that the reference anticipates the claim or, in the
alternative, would have rendered the claim obvious. Ans. 3—5. In particular,
the Examiner finds that Isomura teaches a ceramic filter comprising glass
seals and that the glass seals are constituted of glass constituent and ceramic
particles. Id. at 3 (citing Isomura 39, 40, 41, 43, 54, 71, Fig. 1).
The Examiner finds that because Isomura uses essentially the same
ceramic particles and the same glass constituent as the claimed glass seals, it
is inherent that the thermal expansion coefficient of the ceramic particles is
90 to 100% of that of the glass constituent, as recited in claim 4. Ans. 4.
The Examiner finds further that because Isomura teaches that the glass seal
comprises at least 5% of ceramic particles, it is inherent that the ceramic
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Application 13/735,233
particles occupy at least 5% of an area of the entire glass seal. Ans. 4, 5
(citing Isomura 171).
Appellants argue that the Examiner’s rejection should be reversed
because the Examiner has failed to establish a prima facie case of
anticipation or obviousness. App. Br. 6. In particular, Appellants argue that
Isomura does not “teach or suggest glass seals constituted of glass
constituent (i.e., glass) and ceramic particles,” as required by the claim.
App. Br. 9. Appellants further argue that Isomura does not teach or suggest
glass seals constituted of ceramic particles having “a thermal expansion
coefficient of 90% to 110% of that of the glass constituent” and “an area of
occupancy of the ceramic particles with respect to the entire glass seals is 5
to 50%,” as claimed. Id. at 9—10.
We agree with Appellants’ arguments in this regard. Based on the
record before us, we are not persuaded that a preponderance of the evidence
supports the Examiner’s finding that Isomura teaches or suggests the
“wherein the glass seals are constituted of glass constituent and ceramic
particles” limitation of claim 4.
The Examiner does not adequately explain how or direct us to
sufficient evidence in the record that Isomura teaches or suggests this
limitation. Contrary to the Examiner’s findings (Ans. 4), we are not
persuaded that the raw materials discussed in paragraph 71 and disclosed in
Table 2 of Isomura are “ceramic particles,” as recited in claim 4. Rather, as
Appellants note (App. Br. 7), Isomura teaches that these materials are
actually components of the “alkali-free glass” composition, which are
melted together for homogeneity, cooled, and ground into a glass frit.
Isomura H 71, 72, 80, Table 2. Isomura further teaches that the glass frit is
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Application 13/735,233
mixed with water and an organic binder to produce a slurry and that the
slurry is coated on the end faces of the ceramic filter, dried and then fired to
produce a glass seal. Id. at 172. However, none of the portions of Isomura
upon which the Examiner relies (Isomura 39, 40, 41, 43, 54, 71, Fig. 1)
teach or suggest that the compounds disclosed in Table 2 are and remain as
ceramic particles separate from the glass constituents of the glass seal, or
that at any point in the process Isomura discloses ceramic particles are added
to the glass frit slurry during production of a glass seal. The Examiner also
does not direct us to other evidence—whether in Isomura or elsewhere in the
record—to support such finding.
Moreover, we are not persuaded that the glass components disclosed
in Isomura’s Table 2 correspond to ceramic materials described in
Appellants’ Specification. As Appellants correctly point out (App. Br. 7),
the materials disclosed in Table 2 are oxide compounds that do not exist as
distinct particles in the finished (i.e., melted and cooled) glass frit. Isomura,
1172, 80; see also App. Br. 16 (Evid. App’x, attachment “a.” at p. 31)
(evidencing that oxide components of glass do not “exist as distinct, separate
oxides in the melt or glass”).
Isomura also specifically teaches and suggests the “formation of
homogeneous glass” (Isomura 63, 65); melting the glass materials for
“homogeneity” {id. at || 72, 76, 78); and cooling the “homogenous melt” in
forming the glass frit {id. at || 72, 76, 78).
Appellants’ Specification, on the other hand, does not seem to
describe or suggest that the claimed glass seal’s glass constituent and
ceramic particles are homogeneous. Rather, The Specification discloses that
the “glass seals are constituted of glass and ceramic materials” (Spec. 11,11.
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Application 13/735,233
16—18) and the “ceramic particles are dispersed in the glass seals 31
disposed on the end face of the porous substrate 3” {id. at 5,11. 13—16). The
Specification also discloses that the portions of the glass seal where the
ceramic particles are dispersed are “clearly distinguished” from the portions
of the glass seal containing glass {id. at 11,11. 10-16), which is consistent
with Appellants’ principal arguments (App. Br. 6—9) that the glass seals
Isomura discloses materially differ from the claimed glass seal and that
Isomura does not teach or suggest a glass seal constituted of glass
constituent and ceramic particles, as required by claim 4.
The Examiner’s assertion that “the seal composition disclosed in
Isomura comprises glass constituents and ceramic particles” (Ans. 8) is not
persuasive because it is largely conclusory and, without more, insufficient to
satisfy the Examiner’s evidentiary burden in this regard. In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (holding “rejections . . . cannot be sustained
by mere conclusory statements”).
We, therefore, cannot sustain the Examiner’s determination that
Isomura teaches or suggests the “wherein the glass seals are constituted of
glass constituent and ceramic particles” limitation of claim 4. Because
claims 5, 8, and 13 each includes this same missing limitation as claim 4 and
claims 6 and 12 each depends from claim 4, we also cannot sustain the
Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 4—6, 8,
12, and 13 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Isomura.
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Rejection 2
Because the Examiner’s Rejection 2 is based on the Isomura
reference, and the foregoing deficiencies in the Examiner’s analysis and
conclusion regarding Isomura’s teachings are not remedied by the
Examiner’s findings regarding the additional reference or combination of
references cited in support of the second ground of rejection, we also reverse
the Examiner’s rejection of claims 4—6, 8, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Isomura in view of Kato.
DECISION/ORDER
The Examiner’s rejections of claims 4—6, 8, 12, and 13 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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