NGK Insulators, Ltd.

Patent Trials and Appeals Board

Apr 5, 2021

2020002136 (P.T.A.B. Apr. 5, 2021)

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.
14/492,600 09/22/2014 Tetsuya UCHIKAWA 791_698 1085
25191 7590 04/05/2021
BURR & BROWN, PLLC
PO BOX 869
FAYETTEVILLE, NY 13066
EXAMINER
MCCULLOUGH, ERIC J.
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
04/05/2021 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):
tpreston@burrandbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUYA UCHIKAWA, MAKOTO MIYAHARA,
MAKIKO ICHIKAWA, KENJI YAJIMA, MAKOTO TERANISHI, and
HIDEYUKI SUZUKI
Appeal 2020-002136
Application 14/492,600
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s January 28, 2019 decision to finally reject claims 1, 2, 5, 11, and
17–20 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as NGK
Insulators, LTD. (Appeal Br. 1).
Appeal 2020-002136
Application 14/492,600

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a honeycomb shaped porous
ceramic body (Abstract). The honeycomb shaped porous ceramic body
includes (1) a honeycomb shaped substrate having porous partition walls
that form a plurality of cells made of a porous ceramic material, (2) an
intermediate layer made of a porous ceramic material disposed at the surface
of the substrate and having a smaller average pore diameter as compared
with the average pore diameter at the surface of the substrate, and (3) a
separation layer membrane formed of a zeolite which separates a mixture,
directly or indirectly on the intermediate layer. Claim 1, reproduced below
from the Claims Appendix, is illustrative of the claimed subject matter:
1. A honeycomb shaped porous ceramic body comprising:
a honeycomb shaped substrate which has partition walls
made of a porous ceramic material in which there are formed a
plurality of cells to become through channels of a fluid passing
through the porous ceramic body by the partition walls, wherein
a substrate thickness of the shortest portion between the cells is
0.51 mm or more and 1.55 mm or less;
an intermediate layer which is made of a porous ceramic
material having a smaller average pore diameter as compared
with the average pore diameter at the surface of the substrate and
which is disposed at the surface of the substrate; and
a separation layer formed of a zeolite which separates a
mixture, directly or indirectly on the intermediate layer,
wherein at least a part of the intermediate layer has a
structure in which aggregate particles are bonded to one another
by a component of an inorganic bonding material,
wherein the component of the inorganic bonding material
of the intermediate layer is titania,
wherein a thickness of the intermediate layer is 150 μm or
more and 500 μm or less, and
wherein a ratio of the substrate thickness/the intermediate
layer thickness is 2.5 or more and 10 or less.
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Application 14/492,600

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Baba US 2007/0026190 A1 February 1, 2007
Teranishi et al.2 WO 2010/134514 A1 November 25, 2010

REJECTION
Claims 1, 2, 5, 11, and 17–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Teranishi over Baba.
DISCUSSION
Appellant does not argue the claims separately. Accordingly, we
select claim 1 as representative and focus our analysis on that claim.
The Examiner’s findings are set forth at pages 5–8 of the Final
Action. The Examiner finds that Teranishi discloses each of the limitations
of claim 1, except that Teranishi does not disclose the thicknesses of the
intermediate layer or of the substrate and thus does not specifically disclose
the limitations “the substrate thickness is 0.51 mm or more and 1.55 mm or
less, the intermediate layer thickness is 150 μm or more and 500 μm or less
or where a ratio of the substrate thickness/the intermediate layer thickness is
2.5 or more and 10 or less” (Final Act. 7, emphasis omitted). The Examiner
finds that this limitation would have been obvious in view of the disclosures
of Baba.

2 Teranishi is in Japanese. The Examiner, Appellant, and the Board make
reference to the US counterpart application – Teranishi et al., US
2012/0074061, published March 29, 2012.
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Application 14/492,600

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Appellant does not specifically dispute the foregoing findings, but
argues that they have provided ample evidence of unexpected results to
“rebut any prima facie case of obviousness” (Appeal Br. 7, emphasis
omitted). In particular, Appellant argues that the data in the Specification
shows unexpectedly good results are achieved by using titania as the
inorganic bonding material (id.).
It is well settled that Appellant has the burden of showing unexpected
results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellant to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991), and that is reasonably commensurate in scope with the
protection sought. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764,
786 (CCPA 1972). The extent of the showing relied upon by Appellant
must reasonably support the entire scope of the claims at issue. See In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
The Examiner finds that Teranishi teaches the use of titania as the
inorganic bonding material (Final Act. 6, citing Teranishi ¶ 113 (“As the
inorganic binder for a membrane, clay, kaolin, titania sol, silica sol, or glass
frit can be used.”)). Appellant argues that the formulation in Teranishi
quoted above would have suggested to a person of skill in the art that any of
clay, kaolin, titania sol, silica sol, or glass frit would have been equivalent
for this purpose (Appeal Br. 7). Appellant points to Table 1 from the
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Specification, reproduced below, as presenting data which supports its
assertion of unexpected results:

(Table 1, Spec. ¶ 106).
We have considered the arguments set forth by Appellant in the
Appeal Brief and the Reply Brief, along with the evidence proffered in
support thereof, including the Rule 132 Declaration of Hideyuki Suzuki
(“Suzuki Decl.”).3 However, on balance, we agree with the Examiner that
the evidence proffered by Appellant in support of its unexpected results
argument is not commensurate in scope with its claims. Accordingly, the
preponderance of the evidence of record supports the obviousness rejection
over Teranishi and Baba.
First, as explained by the Examiner, the evidence presented in Table 1
does not cover the entire range of the claimed ratio of the substrate thickness
to the intermediate layer thickness. The claimed ratio is from 2.5 to 10.
However, the data presented only shows ratios from 2.6 to 4.3, which only
covers 22% of the claimed range. Similarly, the claimed thickness for the
intermediate layer is from 150 µm to 500 µm, but the data only shows

3 The Suzuki Declaration has been fully considered, as evidence of what is
stated therein.
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thicknesses from 150 µm to 250 µm, which only covers 28.5% of the
claimed range. Appellant argues that the failure to provide evidence
covering the complete range of claimed ratios and thicknesses is not harmful
to its effort to show unexpected results because “the Examples shown in
Table 1 of the present specification are not presented to show any criticality
of the thickness of the claimed intermediate layer”4 (Appeal Br. 8). While
Appellant may not have sought to show the criticality of the thickness of the
intermediate layer, or the ratio of thicknesses, there is no evidence the
allegedly unexpected results shown in Table 1 would also be found with
different (but claimed) thicknesses and ratios. Accordingly, the data relied
on by Appellant is not commensurate in scope with the claims.
Moreover, while the data purports to show unexpected results from
the use of titania versus glass, there is no evidence of whether the use of
titania as the inorganic bonding material produces unexpected results in
comparison to the other options disclosed by Teranishi (i.e., clay, kaolin, sol,
or silica sol).
Appellant further argues that the Examiner’s findings that Teranishi
would have suggested the use of titania as the inorganic bonding material
and the use of zeolite for the separation layer are based on impermissible
hindsight because Teranishi discloses these materials as part of a larger list
of possible materials for those components (Appeal Br. 18, 19). This
argument is not persuasive. Teranishi specifically discloses that titania can
be used as the inorganic bonding agent and zeolite can be used as the

4 Presumably, although not explicitly stated, Appellant would also contend
the same arguments would be applicable to the absence of data covering the
claimed range of the ratios.
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separation layer (Teranishi ¶¶ 97, 113). That Teranishi also discloses other
possible inorganic bonding materials or materials for the separation layer
does not mean that Teranishi does not specifically suggest the use of titania
and zeolites. See, e.g., Sinclair & Carroll Co. v. Interchemical Corp., 325
U.S. 327 (1945).
Accordingly, we determine that Appellant has not demonstrated
reversible error in the obviousness rejection over Teranishi in view of Baba.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 11,
17–20
103(a) Teranishi, Baba 1, 2, 5, 11,
17–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED