NGK Insulators, Ltd.Download PDFPatent Trials and Appeals BoardApr 5, 20212020002136 (P.T.A.B. Apr. 5, 2021) 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. 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 2 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. Appeal 2020-002136 Application 14/492,600 3 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. Appeal 2020-002136 Application 14/492,600 4 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 Appeal 2020-002136 Application 14/492,600 5 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. Appeal 2020-002136 Application 14/492,600 6 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. Appeal 2020-002136 Application 14/492,600 7 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 Copy with citationCopy as parenthetical citation