NGK INSULATORS, LTD.

Patent Trials and Appeals Board

Dec 17, 2021

2020006768 (P.T.A.B. Dec. 17, 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.
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

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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

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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

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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

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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