Ex Parte Teranishi et alDownload PDFPatent Trial and Appeal BoardMar 29, 201713735233 (P.T.A.B. Mar. 29, 2017) Copy Citation 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”) 2 Appeal 2016-002446 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 3 Appeal 2016-002446 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 4 Appeal 2016-002446 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. 5 Appeal 2016-002446 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. 6 Appeal 2016-002446 Application 13/735,233 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 7 Copy with citationCopy as parenthetical citation