Ex Parte 6357919 et al

Board of Patent Appeals and Interferences

Nov 17, 2009

90007615 (B.P.A.I. Nov. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAIDO METAL COMPANY LTD.,
Patent Owner and Appellant
____________

Appeal 2009-013800
Reexamination Control 90/007,615
Patent 6,357,919 B11
Technology Center 3900
____________

Decided: November 17, 2009
____________

Before ROMULO H. DELMENDO, LINDA E. HORNER, and
DANIEL S. SONG, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘919 Patent”) issued to
Toshiaki Kawachi, Hideo Tsuji, Hideo Ishikawa, and Takayuki Shibayama
on March 19, 2002 from Application 09/583,557, which was filed on May
31, 2000.
Appeal 2009-013800
Reexamination Control 90/007,615
Patent 6,357,919 B1

2

Daido Metal Company Ltd., the owner of the ‘919 Patent under
reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a
final rejection of claims 1 and 3-17 (Appeal Brief filed February 26,
2009, hereinafter “App. Br.,” 1, 3; Final Office Action mailed
September 8, 2007; Advisory Action mailed December 5, 2007).2 We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We REVERSE.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request
for ex parte reexamination filed by Collard & Roe, P.C., of Roslyn,
New York (Request for Reexamination filed July 6, 2005). We are
unaware, however, of any “other prior and pending appeals,
interferences or judicial proceedings” pursuant to 37 C.F.R. §
41.37(c)(1)(ii) (App. Br. 2).
We heard Patent Owner’s oral arguments on October 21, 2009,
a written transcript of which will be entered into the record in due
course.
The ‘919 Patent states that the invention relates to “a plain
bearing, more particularly to [a] plain bearing for internal combustion
engines” (col. 1, ll. 3-5). According to Patentees, “an object of the
invention [is] to provide an overlay for plain bearings, which has

2 See Patent Assignment Abstract of Title, Reel 011013, Frame 0362,
which was entered into the record of this proceeding as “Title Report”
on July 8, 2005.
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excellent high temperature properties of anti-seizure and fatigue
resistance” (col. 1, ll. 38-40).
Claims 1, 5, 12, and 13, the only independent claims on appeal,
read as follows:
1. A plain bearing comprising a back metal layer,
a bearing alloy layer and an overlay which coats said
bearing alloy layer,
wherein said overlay is made of a lead-free tin-
base alloy which consists essentially of, by weight,
from more than [2%] 2.5% to [10%] 5% Ag, and
balance of Sn and inevitable impurities.

5. A plain bearing comprising a back metal layer,
a bearing alloy layer and an overlay which coats said
bearing alloy layer, wherein said overlay is made of a
lead-free tin-base alloy which consists of, by weight,
from [more than 2%] 2.5% to 10% Ag,
optionally one or more elements selected from the
group consisting of Cu, Sb, and Ni in a total amount of
0.1 to 25% by weight, and
balance of Sn and inevitable impurities,
wherein said overlay is directly formed on the
bearing alloy layer.

12. A plain bearing comprising a back metal layer,
a bearing alloy layer and an overlay which coats said
bearing alloy layer,
wherein said overlay is made of a lead-free tin-
base alloy which consists essentially of, by weight,
from more than 2.5% to 5% Ag, and
balance of Sn and inevitable impurities;
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wherein said overlay is formed on the bearing
alloy layer through an intermediate layer of Ag.

13. A plain bearing comprising a back metal layer,
a bearing alloy layer and an overlay which coats said
bearing alloy layer,
wherein said overlay is made of a lead-free tin-
base alloy which consists of, by weight,
from more than 2% to 10% Ag, and
balance of Sn and inevitable impurities,
wherein said overlay is directly formed on the
bearing alloy layer.

(Corrected Claims App’x, Examiner’s Answer mailed March
26, 2009, hereinafter “Ans.,” 31-33.)
The Examiner relied upon the following as evidence of
unpatentability (Ans. 3-14):
Adam 6,162,767 Dec. 19, 2000
Shibayama GB 2 321 468 A July 29, 1998
The Examiner rejected claims 1 and 3-17 as follows:
I. Claims 1, 3-8, and 11-16 under 35 U.S.C.
§ 102(a)3 as anticipated by Shibayama (Ans.
3-8);
II. Claims 5-8, 10, 11, and 13-16 under 35
U.S.C. § 103(a) as unpatentable over
Shibayama (Ans. 9-13); and

3 Shibayama is 35 U.S.C. § 102(b) prior art because it published more
than one year before the actual United States filing date of the ‘919
Patent. 35 U.S.C. § 119(a).
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Patent 6,357,919 B1

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III. Claims 9 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Shibayama in view of Adam
(Ans. 13-14).

ISSUE
The Examiner’s position in all three rejections is that
Shibayama describes, with sufficient specificity, the recited amounts
of Ag in the lead-free tin-base alloy overlay in each of the
independent claims (Ans. 4, 5, 7, 9, 12, 13, and 16-23).
Appellant, on the other hand, contends that Shibayama’s
relatively broad disclosure of a plain bearing having an overlay that
“may contain 0.1 to 25 wt% in total of at least one additive selected
from the group consisting of In, Zn, Cu, Sb, and Ag” (italics added)
does not anticipate the claimed plain bearing including a lead-free tin-
base alloy overlay having the recited range of Ag (App. Br. 18-19;
Reply Brief filed on May 26, 2009 at 9).
Thus, a dispositive issue in this appeal is:
Has Appellant shown reversible error in the Examiner’s finding
that Shibayama describes, with sufficient specificity, a plain bearing
including a lead-free tin-base overlay having Ag in the amounts as
recited in the independent claims?

Appeal 2009-013800
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Patent 6,357,919 B1

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FINDINGS OF FACT (“FF”)
1. Shibayama discloses a sliding bearing of copper-based
alloy comprising: a back metal layer; a specified bearing
alloy layer disposed on the back metal layer; an
intermediate layer consisting of a copper-zinc alloy
containing 20 to 50% by weight zinc; and a tin-based or
aluminum-based overlay (Abstract; p. 14, claim 1).
2. Shibayama teaches that “[t]he overlay . . . used in the
invention may contain 0.1 to 25 wt% in total of at least
one additive selected from the group consisting of In, Zn,
Cu, Sb and Ag in order to improve wear resistance” (p. 6,
ll. 20-23; emphasis added).
3. Shibayama discloses a working example in which a tin-
based overlay having 2% by weight Ag is applied on an
intermediate layer, which in turn is applied on a treated
steel sheet having a bearing alloy layer (pp. 8-13,
Example 6).
4. Shibayama also discloses failed experiments in which a
tin-based overlay including 2% by weight Ag and 2% by
weight Cu is applied directly onto the bearing alloy layer
(Comparative Examples 2 and 5).
5. None of Shibayama’s examples or other disclosed
embodiments describes a lead-free tin-based overlay
having Ag in an amount that falls within the ranges
recited in the independent claims.
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Patent 6,357,919 B1

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PRINCIPLES OF LAW
“Anticipation requires a showing that each limitation of a claim
is found in a single reference, either expressly or inherently.” Atofina
v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)
(citing Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1369 (Fed.
Cir. 2005)).
A prior art disclosure of a range that encompasses or overlaps a
claimed range does not necessarily anticipate. Atofina, 441 F.3d at
999-1000 (prior art general range of 100 to 500°C and preferred range
of 150 to 350°C do not anticipate claimed range of 330 to 450°C and
prior art oxygen to methylene chloride ratio of 0.001 to 1.0 does not
anticipate claimed range of 0.1 to 5.0). But see Perricone, 432 F.3d at
1376-77 (prior art disclosure of the use of 0.01 to 20% by weight of a
skin benefit ingredient selected from fourteen possible choices, one of
which was the same as the claimed ingredient, anticipated “up to
10%,” “from about 0.025% to about 5% by weight,” and “from about
0.025% to about 10%”).

ANALYSIS
We agree with Appellant that Shibayama does not describe the
claimed Ag amounts in the tin-based overlay with the sufficient
specificity required for a finding of anticipation. For one thing,
Shibayama’s disclosure as a whole is considerably broader than the
disclosure that constitutes the centerpiece of the Examiner’s rejection
(Ans. 4). To arrive at the claimed tin-based overlay having the recited
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Ag amounts, one of ordinary skill in the art would have first had to
pick from either a tin-based or aluminum-based overlay (FF 1). Then,
upon selecting a tin-based overlay, the person of ordinary skill in the
art would have had to further select Ag from a group of five additives
and then choose to add it into the tin-based overlay (FF 2). But that is
not the end of the selections. Only after having made these selections,
the person having ordinary skill in the art would have had to make an
additional discriminate selection of a narrow range of Ag amounts
from a substantially broader disclosed range (FF 2; appealed claims 1,
5, 12, and 13). A predecessor of our reviewing court has explained
that while such “picking and choosing” is entirely proper in the
context of an obviousness analysis, it has no place in a finding of
anticipation. In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
The Examiner’s reliance on the disclosure of 2% by weight of
Ag in Shibayama’s examples is misplaced (FF 3-5). According to the
Examiner, the 2% by weight Ag is “close” to the lower end of the
claimed ranges (Ans. 4). But a showing that something is “close” to a
claim limitation, while sufficient for obviousness in certain
circumstances, is not enough to demonstrate anticipation. Cf.
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)
(claimed alloy of 0.3% Mo, 0.8% Ni, and balance titanium would
have been obvious over two alloys in the prior art having 0.25% Mo-
0.75% Ni and 0.31% Mo-0.94% Ni).
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Because the Examiner’s rejections are premised on erroneous
findings of anticipation that were not supplemented by any
obviousness reasoning, we cannot affirm.4

CONCLUSION
On this record, Appellant has shown reversible error in the
Examiner’s finding that Shibayama describes, with sufficient
specificity, a plain bearing including a lead-free tin-base alloy overlay
having Ag in the amounts as recited in the independent claims.

DECISION
The Examiner’s decision to reject
I. Claims 1, 3-8, and 11-16 under 35 U.S.C.
§ 102(a) as anticipated by Shibayama;
II. Claims 5-8, 10, 11, and 13-16 under 35
U.S.C. § 103(a) as unpatentable over
Shibayama; and
III. Claims 9 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Shibayama in view of
Adam,
is REVERSED.

4 We need not discuss Adam because it has not been applied in a way
that cures the deficiencies in the Examiner’s findings as to the
disputed claim limitations.
Appeal 2009-013800
Reexamination Control 90/007,615
Patent 6,357,919 B1

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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).
REVERSED

bim

FOR PATENT OWNER:

BROWDY AND NEIMARK, P.L.L.C.
624 NINTH STREET, NW
SUITE 300
WASHINGTON, DC 20001-5303

FOR THIRD-PARTY REQUESTER:

COLLARD & ROE, P.C.
1077 NORTHERN BOULEVARD
ROSLYN, NY 11576