Ex Parte Aruga

Patent Trial and Appeal Board

Aug 4, 2017

12811339 (P.T.A.B. Aug. 4, 2017)

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.
12/811,339 06/30/2010 Y asuhiro Aruga 361282US0PCT 5637
22850 7590 08/08/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
patentdocket @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUHIRO ARUGA
Appeal 2016-001690
Application 12/811,339
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 seeks our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1—14 of Application 12/811,339.
We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
July 27,2017.
We reverse.
1 This Decision includes citations to the following documents:
Specification filed June 30, 2010 (“Spec.”); Final Office Action mailed Dec.
18, 2014 (“Final Act.”); Appeal Brief filed May 18, 2015 (“Appeal Br.”);
Examiner’s Answer mailed Sept. 23, 2015 (“Ans.”); and Reply Brief filed
Nov. 20, 2015 (“Reply Br.”).
2 Appellant is the Applicant, Yasuhiro Aruga. Appellant identifies the real
party in interest as Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd).
App. Br. 1.
Appeal 2016-001690
Application 12/811,339
BACKGROUND
The subject matter on appeal relates to a copper alloy sheet having
specific content ranges for nickel, tin, and phosphorous, and a stress
relaxation ratio in the direction perpendicular to the rolling direction of less
than 10%; a difference between the stress relaxation ratio of the copper alloy
sheet in the direction parallel to the rolling direction and the stress relaxation
ratio in the direction perpendicular to the rolling direction of 3% or less; a
total number of Cu, Ni, and P atoms in an atomic cluster of the copper alloy
sheet of 15 or more and less than 100; and an average density of the atomic
clusters of the copper alloy sheet of 5 x 105/pm3 or more. App. Br. 6.
According to Appellant’s Specification, the process for making the copper
alloy sheet includes holding the sheet at room temperature for 60 minutes or
less from the end of annealing to the start of cold rolling, and from the finish
of cold rolling to the start of final annealing at low temperature, in order to
achieve the density of atomic clusters defined in the invention. Spec. 63—
67.
Claim 1 is illustrative of the claimed subject matter:
1. A copper alloy sheet, comprising:
Ni in 0.1 to 3.0 mass%;
Sn in 0.01 to 3.0 mass%;
P in 0.01 to 0.3 mass%; and
a remainder comprising copper and an inevitable impurity,
wherein the copper alloy sheet has a stress relaxation ratio in
the direction perpendicular to the rolling direction of less than
10%,
the difference between the stress relaxation ratio in the
direction parallel to the rolling direction and the stress
relaxation ratio in the direction perpendicular to the rolling
direction is 3% or less, and
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Appeal 2016-001690
Application 12/811,339
the copper alloy sheet comprises an atomic cluster which is
detected with a three-dimensional atom probe field ion
microscope, and the atomic cluster comprises at least one of a
Ni atom or a P atom, wherein:
a distance between the Ni atom or P atom and an Ni atom or
P atom adjacent to the Ni atom or P atom is 0.90 nm or less;
a total number of Cu, Ni, and P atoms in the atomic cluster
is 15 or more and less than 100; and
an average density of the atomic clusters is 5 x 105/pm3 or
more.
App. Br. 48, Claims App’x.
THE REJECTIONS
1. Claims 1—14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over WO 2006/132317 Al.3 Final Act. 5-6.
2. Claims 1—14 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 2—6, 10, 12, and 14—21 of copending
Application No. 12/374,154.4 Final Act. 2.
3. Claims 1—14 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 4, and 8 of copending Application No.
11/916,730. Final Act. 3.
3 The Examiner, without objection by Appellant, relies upon US
2009/0116996 Al, published May 7, 2009 (“Aruga ’996”), as the English
language equivalent of WO2006/132317 Al, published Dec. 14, 2006.
4 Application No. 12/374,154 issued as US 9,631,260 B2 on April 25, 2017.
Claims 2—6, 10, 12, and 14—21 were not amended between the time of the
final rejection in the instant case and the issuance of the patent.
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Appeal 2016-001690
Application 12/811,339
4. Claims 1—14 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1, 5—7, and 9-12 ofU.S. Patent No. 8,063,471. Final Act.
3.
DISCUSSION
Obviousness Rejection
The Examiner finds that Aruga ’996 discloses the composition of
Appellant’s claimed copper alloy sheet, and that the sheet has a stress
relaxation ratio in the direction perpendicular to the rolling direction of 15%
or less, which overlaps Appellant’s claimed range of less than 10%. Final
Act. 5, providing citations to Aruga ’996. As to the difference between
stress relaxation ratios in the direction parallel to the rolling direction and
the perpendicular direction, the Examiner finds that a person of ordinary
skill in the art would have understood stress relaxation to be uniform in all
directions, based on the Society of Automotive Engineers of Japan standard
for stress relaxation, which does not specify a direction. Id., citing Aruga
9-10. The Examiner acknowledges that Aruga is silent about the total
number of Cu, P, and Ni atoms and the average volume density of the
atomic clusters as recited in claim 1, but finds that those properties would
have been inherent in Aruga ’996’s copper alloy sheet because Aruga ’996
discloses processing steps substantially the same as those described in the
Specification. Id., citing Aruga ’996 H 70-87, Spec. 1 53. The Examiner
also acknowledges that some of Aruga ’996’s processing parameters merely
overlap those described in the Specification (Ans. 12—13), but determines
that a person of ordinary skill in the art would have optimized Aruga ’996’s
process in order to achieve a copper alloy sheet having the claimed
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Appeal 2016-001690
Application 12/811,339
properties. Ans. 13, citing In reAller, 220 F.2d 454 (CCPA 1955), In re
Boesch, 617 F.2d 272, 205 (CCPA 1980).
Appellant argues that Araga ’996 does not necessarily or inherently
possess the claimed properties of Appellant’s copper alloy sheet. App. Br.
7. Appellant relies on the comparative evidence in the Specification to show
that unless holding times before final cold rolling and final heat treatment
are both maintained less than 60 minutes while processing Araga ’996’s
disclosed copper alloy sheet, the sheet will not possess Appellant’s claimed
properties regarding stress relaxation ratios, the total number of Cu, Ni, and
P atoms in an atomic cluster, and the average density of the atomic clusters.
Id. 7—8, 16—18. Appellant further notes that Araga ’996 provides only one
example of a copper alloy sheet having a stress relaxation ratio in the
direction perpendicular to the rolling direction of less than 10% and does not
mention the additional claim limitations relating to total number of Cu, Ni,
and P atoms in an atomic cluster of the copper alloy sheet and average
density of those atomic clusters. App. Br. 12, citing Araga ’996 Table 2, Ex.
113.
Appellant’s arguments are persuasive of harmful error in the
Examiner’s findings as to Araga ’996 and inherency of the claimed
properties of Appellant’s copper alloy sheet. For the reasons explained by
Appellant, the Examiner has not shown by a preponderance of the evidence
that Araga ’996’s copper alloy sheet having an elemental composition
overlapping the claimed amounts would inherently possess all of the
properties recited in Appellant’s claims. The comparative data in
Appellant’s Specification shows that only copper alloy sheet that was
processed with holding times before final cold rolling and final heat
treatment 60 minutes or less possessed the claimed properties (Spec., Tables
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Application 12/811,339
1 & 2), and that copper alloy sheet having an elemental content within
Appellant’s claimed range but which was not processed with holding times
less than 60 minutes did not possess the claimed properties. Spec., Table 3,
Examples 23—31. Appellant therefore meets the burden of showing that
Aruga ’996’s copper alloy sheet does not inherently possess Appellant’s
claimed properties. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”)
Additionally, the Examiner’s response that Appellant’s Specification
evidence does not show criticality (e.g. Ans. 9-10) fails to adequately
respond to Appellant’s evidence. Appellant does not rely on the evidence to
show unexpected results. Appellants rely on the evidence to demonstrate a
lack of inherency. The Examiner has failed to overcome Appellant’s
showing of a lack of inherency.
Rejections 2-4
These obviousness-type double patenting rejections are based on the
same finding of inherency as Rejection 1, discussed above. See Ans. 16.
Because we find reversible error in the finding of inherency, we also reverse
Rejections 2-4.
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Appeal 2016-001690
Application 12/811,339
SUMMARY
We reverse the rejections of claims 1—14.
REVERSED
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