Ex parte Akioka et al.

Board of Patent Appeals and Interferences

Feb 24, 2000

08034009 (B.P.A.I. Feb. 24, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KOJI AKIOKA, TATSUYA SHIMODA,
TOSHIYUKI ISHIBASHI, RYUICHI OZAKI,
and OSAMU KOBAYASHI
____________
Appeal No. 1996-1777
Application No. 08/034,009
____________
HEARD: February 10, 2000
____________
Before OWENS, LIEBERMAN, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1 through 24, which are all of the claims
pending in this application.
BACKGROUND
The appellants’ invention relates to a process of
preparing a permanent magnet and product thereof. An
Appeal No. 1996-1777 Page 2
Application No. 08/034,009
understanding of the invention can be derived from a reading
of exemplary claims 1 and 24, which are reproduced below.
1. A method for preparing a permanent magnet having as
principal constituents at least one rare earth metal, iron,
boron and copper, comprising:
providing a magnet alloy composition including at least
one rare earth metal, iron, boron and copper;
melting the magnet alloy composition including the rare
earth metal, iron, boron and copper,
casting the alloy composition into an ingot,
hot working the alloy ingot at a temperature of at least
about 500EC with a strain rate of from about 10 to 10 per-4 2
second.
24. The permanent magnet formed by the method of claim 1.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kobayashi et al. 5,816,761 Feb. 16, 1993
(Kobayashi)
Akioka et al. (PCT/JP) WO 88/06797 Sep. 7, 1988
(Akioka ‘797)
Akioka et al. (UK) 2 206 241 Dec. 29, 1988
(Akioka ‘241)
Appeal No. 1996-1777 Page 3
Application No. 08/034,009
published UK patent application No. 2 206 2411
published PCT application (WO 88/06797). All subsequent2
references in this opinion to Akioka '797 are references to
the English language translation of the published PCT
application of record.
Claims 1-23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Akioka '241 . Claim 24 stands rejected1
under 35 U.S.C. § 102(b) as anticipated by, or in the
alternative,
under 35 U.S.C. § 103 as obvious over Akioka '797 . Claim 242
stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kobayashi.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we find that the examiner has not
carried the burden of presenting a prima facie case of
anticipation under 35 U.S.C. § 102 or a prima facie case of
obviousness under 35 U.S.C. § 103. Accordingly, we will not
sustain the examiner's rejections.
Appeal No. 1996-1777 Page 4
Application No. 08/034,009
§ 103 Rejection of Claims 1-23
The examiner acknowledges that Akioka '241 does not teach
the use of a copper containing alloy as is used in the claimed
process. According to the examiner, however, "... the
application of a known process such as the process taught by
Akioka et al. to a different starting material does not lend
patentability to the newly claimed process ..." (answer, page
3). We disagree. In our view, the case law cited by the
examiner in support of this proposition, In re Durden, 763
F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) and In re Kanter, 399
F.2d 249, 158 USPQ 331 (CCPA 1968) at page 3 of the answer
does not establish a universal rule regarding the obviousness
of process claims that distinguish over a prior art process by
the processing of different materials therein. As stated by
our reviewing court in In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules
of obviousness is legally incorrect and must cease.” Since
the only rationale proffered by the examiner is premised on
such a per se rule, we will not sustain the stated rejection.
Rejections of Claim 24
Appeal No. 1996-1777 Page 5
Application No. 08/034,009
At the outset, we note that appellants urge that neither
Akioka '797 or Kobayashi as separately applied by the examiner
against claim 24 is available as prior art thereto (reply
brief, pages 3, 4, 7, and 8). The examiner contends
otherwise. However, even if both of the above-noted
references were available as prior art to appealed claim 24,
we determine that the examiner has not presented a prima facie
case of anticipation or obviousness, on the present record.
Accordingly, we will not sustain the stated rejections for the
reasons as follows.
With regard to the examiner's stated rejection of claim
24 under either 35 U.S.C. § 102(b) as anticipated by, or in
the alternative, under 35 U.S.C. § 103 as obvious over Akioka
'797, we observe that the examiner acknowledges that Akioka
'797 does not teach appellants' claimed strain rate (answer,
page 4). Not withstanding that acknowledged process
difference, the examiner maintains that Akioka '797
anticipates or renders obvious the claimed product magnet
since, according to the examiner, the magnet of Akioka '797 is
of the same composition as appellants’
Appeal No. 1996-1777 Page 6
Application No. 08/034,009
and the process of producing the magnet of Akioka '797 is
substantially the same as that of appellants except for the
strain rate limitation.
The flaw in the examiner's position, however, is that
appellants have reasonably established, on the present record,
that variations in the strain rate during the manufacturing
process results in product magnets with different properties
(See, e.g., Table 13, specification, page 30). On this
record, the examiner has not established that any of the
magnet compositions disclosed by Akioka '797 are both
identical in composition and properties with the magnets
encompassed by claim 24. Nor has the examiner furnished any
convincing line of
reasoning suggesting the obviousness to one of ordinary skill
in the art of the product defined by claim 24 in light of the
teachings of Akioka '797.
Similarly, the examiner's stated rejection of claim 24 as
being unpatentable under § 103 over Kobayashi falls short of
presenting a prima facie case of obviousness. This is so
since Kobayashi, like Akioka '797 does not teach the claimed
strain rate and the examiner has not established that the
Appeal No. 1996-1777 Page 7
Application No. 08/034,009
claimed product herein with all of its attendant properties
would have been obvious within the meaning of 35 U.S.C. § 103
from the disclosure of copper as one of several possible
coercive force enhancing elements that may have been selected
for use as a magnetic alloy additive therein. Accordingly, we
will not sustain the examiner's stated rejections.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-23 under 35 U.S.C. § 103 as being unpatentable over
Akioka '241; claim 24 under 35 U.S.C. § 102(b) as anticipated
by,
Appeal No. 1996-1777 Page 8
Application No. 08/034,009
or in the alternative, under 35 U.S.C. § 103 as obvious over
Akioka '797; and claim 24 under 35 U.S.C. § 103 as being
unpatentable over Kobayashi is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
tdl
Appeal No. 1996-1777 Page 9
Application No. 08/034,009
Stroock & Stroock & Lavan LLP
180 Maiden Lane
New York, NY 10038
APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ OWENS
APJ LIEBERMAN
DECISION: REVERSED
Prepared By: TINA
DRAFT TYPED: 06 Dec 00
FINAL TYPED: