NGK INSULATORS, LTD.Download PDFPatent Trials and Appeals BoardDec 17, 20212020006768 (P.T.A.B. Dec. 17, 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. 15/918,147 03/12/2018 Makoto NAKAJO 791_880 9775 25191 7590 12/17/2021 BURR & BROWN, PLLC PO BOX 869 FAYETTEVILLE, NY 13066 EXAMINER TROCHE, EDGAREDMANUE ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 12/17/2021 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 MAKOTO NAKAJO and TOSHIHIRO FUKUI Appeal 2020-006768 Application 15/918,147 Technology Center 1700 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NGK Insulators, LTD. Appeal Br. 1. Appeal 2020-006768 Application 15/918,147 2 BACKGROUND The subject matter on appeal is directed to a method of manufacturing a honeycomb structure which can be used, e.g., as a car exhaust gas purifying catalyst carrier, a diesel or gasoline particulate removing filter, or a heat reservoir for a burning device. Spec. ¶ 2. Claim 1 is illustrative of the claimed subject matter and is reproduced below with the key limitation on appeal italicized: 1. A manufacturing method of a honeycomb structure comprising: a dry mixing step of dry-mixing raw materials to form the honeycomb structure by a batch treatment, a wet mixing step of adding a liquid including at least one selected from the group consisting of water, a surfactant, a lubricant and a plasticizer to a dry mixture obtained in the dry mixing step, to perform wet mixing, a kneading step of kneading a wet mixture obtained in the wet mixing step, and a forming step of extruding a forming material prepared in the kneading step, wherein in the dry mixing step, a used forming material passed through the forming step is added as a part of the raw material, to perform dry mixing, and the kneading step includes a liquid re-adding step of further adding the liquid in a process of kneading the wet mixture. REJECTIONS The Examiner rejects the following claims under 35 U.S.C. § 103: Appeal 2020-006768 Application 15/918,147 3 I. Claim 1 over the combined disclosures of Noguchi2 and Nisimura3; II. Claim 2 over Noguchi, Nisimura, and further in view of Day4; and III. Claim 3 over Noguchi, Nisimura, and further in view of Nemoto.5 OPINION The dispositive issue on appeal is whether the Examiner established by a preponderance of the evidence that the claimed “kneading step of kneading a wet mixture,” which also “includes a liquid re-adding step of further adding the liquid in a process of kneading the wet mixture,” was disclosed in or would have been an obvious modification of the cited prior art. Because the Examiner has failed to do so, we reverse the appealed rejections. In the Final Office Action, the Examiner found that Noguchi failed to disclose that the kneading step includes the claimed liquid re-adding step during kneading of the wet mixture. Final Act. 3. The Examiner turned to Nisimura to evince this limitation, but failed to identify with precision where such kneading is disclosed. Id. at 3–4. After Appellant challenged the Examiner’s finding (Appeal Br. 12), the Examiner offered an explanation as to how the combined prior art discloses the claimed two additions of liquid––one to accomplish the 2 Noguchi et al., US 2006/0257620 A1, published Nov. 16, 2006. 3 Nisimura, US 5,679,292, issued Oct. 21, 1997. 4 Day et al., US 8,974,724 B2, issued Mar. 10, 2015. 5 Nemoto et al., US 2012/0096821 A1, published Apr. 26, 2012. Appeal 2020-006768 Application 15/918,147 4 claimed “wet mixing” step and one to accomplish the “liquid re-adding step” during kneading. Ans. 8–9. Specifically, the Examiner proposes introducing Nisimura’s “unused stream of build materials” into Noguchi’s method where “modified Noguchi will have a recycle stream of forming material entering into the wet mixing step (first feed of water added), then this wet mixed feed will enter to the kneading step, in which Noguchi discloses a feed of water is added.” Id. According to the Examiner, “this extra feed of water is a second feed of water added.” Id. at 9. This line of reasoning is erroneous, however, because it conflates the two separate methods of manufacturing disclosed in Noguchi and fails to account for certain details required by the claim. In particular, we note that the only method in Noguchi where water is added during the kneading step is the first method, and Noguchi is clear that no wet powder is obtained prior to kneading in that method. Id. ¶¶ 12, 13, 66. In other words, there is no “wet mixing” in Noguchi’s first method of manufacture and the powder remains dry. Id. ¶¶ 12, 66. Rather, wet mixing only occurs in Noguchi’s second method, where water is not added during kneading of the wet powder. Id. ¶ 13. Thus, the Examiner’s proposed incorporation of Nisimura’s unused stream of build material into Noguchi’s first method falls short because, even if Nisimura’s unused stream was not dried6 prior to introduction into Noguchi’s first method, it is not seen how this combination results in “a wet mixing step of adding a liquid . . . to a dry mixture obtained in the drying mixing step, to perform wet mixing” as recited in claim 1. To the extent the 6 Nisimura prefers drying the recycled material prior to comminution, but does not appear to require it. Nisimura 2:66–67. Appeal 2020-006768 Application 15/918,147 5 Examiner relies on modifying Noguchi’s second method, we are not persuaded that combination renders the claimed subject matter obvious because Noguchi’s second method fails to add water during the kneading step. Noguchi ¶ 13. In sum, Appellant is correct that both Noguchi and Nisimura only include a single addition of liquid in a given method. Appeal Br. 12; Reply Br. 6–7; Noguchi ¶¶ 12, 13, 66; Nisimura, 3:26, 4:45–46. And the Examiner has not explained why the skilled artisan would have been motivated to add more liquid during a kneading step of an already wet mixture. For these reasons, we do not sustain the Examiner’s rejections of claims 1–3. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Noguchi, Nisimura 1 2 103 Noguchi, Nisimura, Day 2 3 103 Noguchi, Nisimura, Nemoto 3 Overall Outcome 1–3 REVERSED Copy with citationCopy as parenthetical citation