Ex Parte Herzer et al

Patent Trial and Appeal Board

May 23, 2016

13447780 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/447,780 04/16/2012 Giselher HERZER
35161 7590 05/23/2016
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
707470-00066 7674
EXAMINER
SU,XIAOWEI
ART UNIT PAPER NUMBER
1733
MAILDATE DELIVERY MODE
05/23/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GISELHER HERZER,
CHRISTIAN POLAK, and VIKTORIA BUDINSKY
Appeal2014-007544
Application 13/447,780
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
July 2, 2013 decision finally rejecting claims 1-24 as unpatentable under
35 U.S.C. § 103(a).2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
1 Appellants identify the Real Party in Interest as V acuumschmelze GmbH
& Co. KG (Appeal Br. 2).
2 The Examiner also objected to claim 20 for containing an "s" between the
claim terms "speed" and "such that." Final Act. 2. Because objections are
normally addressed through a petition, rather than an Appeal, we do not
further address the objection. However, we note that Appellants filed an
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Application 13/447,780
We affirm-in-part.
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a soft magnetic alloy suitable for
use as a magnetic core and a process for producing a tape from the alloy
(Spec. 1:11-13). Claims 1and19 are representative and are reproduced
below from the Claims Appendix of the Appeal Brief (key claim limitations
shown in italics):
1. An alloy, consisting of
Fe 100-a-b-c-d-x-y-zCuaNb bMc T dS ixByZz
and up to 1 at % impurities, wherein M is one or more of
the elements Mo, Ta or Zr, T is one or more of the
elements V, Mn, Cr, Co or Ni, Z is one or more of the
elements C, P or Ge, and wherein 0 at% :S a < 1.5 at%,
0 at% :S b :S 1.5 at%, 0 at% :S (b+c) < 2 at%,
0 at% :S d < 5 at%, 10 at% < x < 18 at%,
5 at% < y < 11 at% and 0 at% :S z < 2 at%,
wherein the alloy is configured in tape form,
wherein the alloy has a nanocrystalline structure
having grains in which at least 5 0% vol of the grains have
an average size of less than 100 nm,
wherein the alloy exhibits a J-H hysteresis loop having
a central linear part,
wherein the alloy exhibits a remanence ratio
Jr/Js < 0.1 and wherein the alloy exhibits a ratio of
coercive field strength He to anisotropic field strength Ha
of< 10%.
Amendment After Final to amend claim 20 to delete the "s." Amendment 4
(Nov. 15, 2013). It appears that the Examiner did not see this Amendment.
In an Advisory Action, the Examiner stated that "[t]here is [sic] no
amendments to the instant claims." Adv. Act. 2 (Nov. 22, 2013).
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19. A process for producing a nanocrystalline alloy tape
according to claim 1, comprising:
providing a tape made of an amorphous alloy with a
composition consisting of
Fe100-a-b-c-d-x-y-zCuaNbbMc T dSixByZz and up to 1 at%
impurities, wherein M is one or more of the elements Mo,
Ta and Zr, wherein T is one or more of the elements V,
Mn, Cr, Co or Ni, wherein Z is one or more of the elements
C, P or Ge, and wherein 0 at% :S a < 1.5 at%,
0 at% :S b :S 1.5 at%, 0 at% :S (b+c) < 2 at%,
0 at% :S d < 5 at%, 10 at% < x < 18 at%,
5 at% < y < 11 at% and 0 at% :S z < 2 at%, and
heat treating the amorphous tape under tensile stress
in a continuous furnace at a temperature Ta such that
450 °C :S Ta :S750 °C.
Appeal Br. 1, 3 (Claims Appendix).
REJECTIONS
Appellants appeal the rejection of claims 1-24 as unpatentable under
35 U.S.C. § 103(a) over Yoshizawa3 in view ofWaeckerle.4
Appellants make substantive arguments in support of patentability of
any of the claims based on limitations present in independent claim 1 and
dependent claim 19 (see generally, Appeal Br. 4-18; Reply Br. 2-19).
Accordingly, our discussion will focus on the obviousness rejection of
claims 1 and 19. Appellants also make separate substantive arguments in
support of patentability of claims 2--4, 6, 8, 11, 12, 20, 22-24, and these
3 Yoshizawa et al., EP 0271657 A2, published June 22, 1988 ("Yoshizawa").
4 Waeckerle et al., US 2008/0196795 Al, published Aug. 21, 2008
("W aeckerle").
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Application 13/447,780
arguments will be addressed separately (see generally, Appeal Br. 18-26;
Reply Br. 19-29).
DISCUSSION
The Examiner finds Yoshizawa teaches each of the composition
limitations of claims 1 and 19 because the disclosed Fe, Cu, Nb, Si, B, Mo,
Ta, Zr, V, Mn, Cr, C, P, and Ge contents in Yoshizawa overlap the recited
compositions (Final Act. 3). The Examiner determines that "[i]t would have
been obvious to one of ordinary skill in the art to select the claimed
composition[] from the composition disclosed by Yoshizawa[], because
Yoshizawa[] discloses the same utility throughout the disclosed ranges"
(id.). The Examiner further finds that although Yoshizawa teaches heat
treating an amorphous ribbon at the same temperature range recited in claim
19, it is not performed under tensile stress as recited in the claims (id. at 4).
The Examiner relies on W aeckerle for teaching the missing tensile
stress element (id.). The Examiner finds Waeckerle teaches that annealing
amorphous ribbon under tensile stress reduces the extreme brittleness of the
ribbon, thereby preventing ribbon breakage during winding and unwinding
(id. (citing Waeckerle ,-i,-i 3, 75)). Therefore, according to the Examiner, it
would have been obvious to one of ordinary skill in the art to heat treat
Yoshizawa' s amorphous ribbon in the presence of tensile stress, as taught by
W aeckerle, in order to reduce the extreme brittleness of the ribbon and
reduce breakage during ribbon manipulation (Final Act. 4).
The Examiner further finds Yoshizawa teaches each of the
morphological and structural limitations of claim 1 (id. at 5). According to
the Examiner, "[ o ]ne of ordinary skill in the art would expect the grain of the
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ribbon disclosed by Yoshizawa[] in view of W aeckerle [to] have an
elongation in a preferred direction, because the ribbon is annealed under
tensile stress" (id.). The Examiner further determined that because
Yoshizawa, in view of W aeckerle, teaches: (i) an alloy with the same
elements in concentrations overlapping the recited compositions and (ii) a
heat treatment step under tensile stress performed under conditions
overlapping the claimed condition, it would, therefore, have been obvious to
the ordinary skilled artisan that the claimed alloy would possess all the
claimed properties recited in claim 1 (id.).
Appellants make the following arguments urging reversal of the
Examiner's§ 103(a) rejection: (1) one of ordinary skill in the art would not
have combined W aeckerle' s teachings, which relate to alloys having an Nb
content of 2 at% or greater, with "the low-Nb alloys disclosed by
Yoshizawa[] and recited in Appellant[]s['] claims" (Reply Br. 4);
(2) although Yoshizawa discloses alloys having an Nb content of 0.1-30
at%, the disclosure that the Examiner relies upon teaches the ordinary skilled
artisan to use Nb amounts outside the scope of the claims in order to obtain
good corrosion and wear resistance (id. at 3); (3) Yoshizawa and Waeckerle
relate to "two fundamentally different processes for producing a crystalline
wound coil, and are thus fundamentally incompatible and not properly
combinable" (id. at 7); and (4) the Examiner's findings regarding the
obviousness of the claimed properties are a failed attempt to show that the
alloy's properties are inherently disclosed by the teachings of each cited
reference (id. at 9-10).
With regard to argument ( 1 ), the Examiner's determination that
Yoshizawa suggests overlapping ranges for all of the compositional
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components recited in claim 1 is not in dispute (see, e.g., Ans., generally
App. Br.).
It is well established that:
a prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior art.
[Citations omitted.] Where the "claimed ranges are completely
encompassed by the prior art, the conclusion [that the claims are
prima facie obvious] is even more compelling than in cases of
mere overlap."
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003)). It is also well established that a
reference is not limited to its examples or preferred embodiments; see Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding
that the prior art's disclosure of over 1200 possible combinations rendered
all possible formulations obvious).
Appellants' conclusory arguments that one of ordinary skill would not
have been motivated to combine Waeckerle with Yoshizawa (Appeal Br. 6-
8) are not persuasive. As pointed out by the Examiner, Yoshizawa suggests
that the amorphous ribbons are wound to desired shapes before heat
treatment because the ribbons have good workability in amorphous state, but
once crystallized, the alloy becomes brittle after annealing (Ans. 7 (citing
Yoshizawa 8:4-10)). The Examiner further found that Waeckerle
exemplifies that it was known to anneal amorphous ribbon under tensile
stress to reduce the extreme brittleness of the nanocrystalline ribbon (e.g.,
Final Act. 4 (citing Waeckerle ,-i 3 (describing prior art FR 2823507)); see
also Spec. 3:8-9). Appellants have not directed us to any persuasive
technical reasoning or evidence to refute the Examiner's determination that
the use of stress annealing an amorphous ribbon would have been no more
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than the predictable use of a known prior art step for its known function in
producing a stronger nanocrystalline alloy tape.
With regard to argument (2), Appellants argue that Yoshizawa teaches
the ordinary skilled artisan to use Nb amounts outside the scope of the
claims because alloys within the scope of the claims provided unacceptable
losses of material in wear resistance tests and poor corrosion resistance
results (Reply Br. 3-4 (citing Yoshizawa 31; Table 8)). Whether a reference
teaches away from a claimed invention is a question of fact. In re Harris,
409 F.3d 1339, 1341 (Fed. Cir. 2005). "Under the proper legal standard, a
reference will teach away when it suggests that the developments flowing
from its disclosures are unlikely to produce the objective of the applicant's
invention." Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed.
Cir. 2005) (citations omitted).
In this case, the objectives of the Appellants' invention include
preparing a suitable alloy with desirable properties useful in magnetic cores
for transformers, power transformers and storage chokes (Spec. 3:22-30).
The Specification further describes that heat treatment under tensile stress
provides the resultant alloy with the desired properties of low hysteresis and
a permeability value independent of other factors to reach these objectives
(id.).
Appellants' teaching away arguments are not persuasive because
Yoshizawa's alleged objectives of providing an alloy with increased
corrosion and wear resistance (which would suggest not using an amount of
Nb which is within the scope of the appealed claims) is not particularly
pertinent to Appellants' objectives as set forth above. Therefore, we find
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that Yoshizawa does not teach away from the objectives of Appellants'
invention.
With regard to argument (3), Appellants argue that the Examiner's
proposed modification of heat treatment under tensile stress "changes the
principle of operation of Yoshizawa" because Yoshizawa's core is formed
by winding an amorphous ribbon with good workability, followed by a
crystal-forming annealing step (Reply Br. 12-13). Appellants further argue
that "such a modification would be expected to reduce the permeability of
the Yoshizawa[] cores so as to make them unsuitable for their intended
purpose" (Appeal Br. 9). We are unpersuaded because, inter alia,
Appellants' argument is supported only by attorney argument, not factual
evidence. Arguments of counsel cannot take the place of evidence. See In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d
303, 315 (CCPA 1979).
Moreover, the Supreme Court has made clear that an obviousness
analysis "need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because
"[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421. It is also well established that a reference is good
for all it fairly teaches a person having ordinary skill in the art, even when
the teaching is a cursory mention. E.g., In re Mills, 470 F.2d 649, 651
(CCP A 1972). As pointed out by the Examiner, Yoshizawa explicitly
suggests that the amorphous ribbons are wound to desired shape before heat
treatment because the ribbons have good workability in an amorphous state,
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the alloy becomes brittle after it is crystallized by annealing (Ans. 7 (citing
Yoshizawa 8:4-10)). The Examiner further found that Waeckerle
exemplifies that it was known to anneal amorphous ribbon under tensile
stress to reduce the extreme brittleness of the nanocrystalline ribbon (e.g.,
Final Act. 4 (citing Waeckerle ,-i 3 (describing prior art FR 2823507)); see
also Spec. 3:8-9).
Thus, a preponderance of the evidence supports the Examiner's
reasonable position that it would have been prima facie obvious to anneal
amorphous ribbon, comprised of all of the claimed compositional
components that overlap the claimed ranges, under tensile stress and under
heating conditions that overlap the claimed ranges, and that the resultant
alloy would have resulted with the morphological and structural limitations,
as required by the claim.
Regarding argument (4), the Examiner found that Waeckerle
exemplifies that it was known to anneal amorphous ribbon under tensile
stress to reduce the extreme brittleness of the nanocrystalline ribbon (e.g.,
Final Act. 4 (citing Waeckerle ,-i 3 (describing prior art FR 2823507)); see
also Spec. 3: 8-9) and that alloy properties, such as permeability, are
adjustable based on the tensile stress used (Ans. 9 (citing Waeckerle ,-i 86)).
Because of the Examiner's finding of overlapping ranges of all the
recited components in the alloy, as well as the predictable use of heat
annealing under tensile stress, the Examiner's determination that the specific
properties recited in the claim would follow is reasonable. Stated
differently, the fact that Appellants have recognized other properties which
would flow naturally from following the applied prior arts' teaching or
suggestion for the amounts of the components of the composition, along
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with the use of annealing under tensile stress, cannot be the basis for
patentability when the differences, if any, would otherwise have been
obvious. See Ex parte Obiaya, 227 USPQ 5 8, 60 (BP AI 1985). Cf In re
Papesch, 315 F.2d 381, 391(CCPA1963) ("From the standpoint of patent
law, a compound and all of its properties are inseparable; they are one and
the same thing"). The Examiner's determination that the alloy arrived at by
one of ordinary skill in the art through no more than ordinary creativity
would have the claimed properties recited in the Appellants' claim 1 is
reasonable. See KSR, 550 U.S. at 418 (in making an obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ").
When the difference between the claimed invention and the prior art is
some range or other variable within the claims, the Federal Circuit has
consistently held that the Appellants must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d at
1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden
rests with Appellants to establish (1) that the alleged unexpected results
presented as being associated with the claimed invention are, in fact,
unexpected, (2) that the comparisons are to the disclosure of closest prior art,
and (3) that the supplied evidentiary showing is commensurate in scope with
the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972).
On this record, Appellants have not adequately made such a showing.
As explained above and in the Answer, the Examiner had a reasonable
basis to believe that the alloy of the combined applied prior art to heat treat
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the amorphous tape under tensile stress would have the properties recited in
the claims. Appellants have not offered persuasive evidence to the contrary.
We, therefore, discern no error in the Examiner's determination that the
applied prior art renders obvious the alloy of claim 1 and the process of
claim 19 to prepare the alloy of Appellants' invention.
Appellants have not persuasively argued that the facts and reasons
relied on by the Examiner are insufficient to establish a prima facie case of
obviousness as to claims 1and19. Dependent claims 5, 7, 9, 10, 13-18, and
21 will fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, we affirm the rejection of claims 1, 5, 7, 9, 10, 13-19,
and 21 for the reasons set forth above and explained in the Examiner's Non-
Final and Final Office Actions and Answer.
Appellants separately argue for the reversal of the Examiner's
rejections of several dependent claims drawn to properties of the claimed
alloy. With regard to claims 2--4 and 12, Appellants argue that that "the
Office does not explain exactly how the 'combined' process of Yoshizawa[]
and Waeckerle[] is to be operated so as to inherently obtain the remanence
ratio recited in" these claims (Reply Br. 20). Likewise, with regard to claim
6, Appellants argue that the Examiner reversibly erred because "the Office
proffers no evidence" to support its contention that the permeability recited
in the claim is somehow different from Yoshizawa's disclosed effective
permeability at 1 kHz (id. at 22 (citing Yoshizawa 9)). Appellants'
arguments are not persuasive.
As set forth above, because the Examiner's finding of overlapping
ranges of all the recited components in the alloy is reasonable, as well as the
predictable use of heat annealing under tensile stress, the Examiner's
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determination that the properties recited in the claim would follow is also
reasonable. See Ex parte Obiaya, 227 USPQ 58 at 60. Appellants,
therefore, must show that the difference in ranges between the claimed
invention and the prior art is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See, e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d at 1578. Appellants
have made no such showing on this record.
Accordingly, we affirm the rejection of claims 2--4, 6, and 12 for the
reasons set forth above and explained in the Examiner's Non-Final and Final
Office Actions and Answer.
Regarding separately argued claim 8, which further limits the range of
Cu in the claimed alloy to less than 0.5 at.%, Appellants argue that "[t]he
teaching of Waeckerle[] to use at least 0.5 at.% Cu ... is a teaching away
from what Appellant[ s] ha[ ve] claimed" (Appeal Br. 21 ). The Examiner,
however, does not rely on Waeckerle's disclosure for the suggestion of a Cu
range less than 0.5 at.% (Ans. 25). Rather, the Examiner relies on
Yoshizawa's teaching of an Fe-based soft magnetic alloy, which contains
0.1-3% Cu, thereby overlapping the recited Cu content in claim 8. "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole." In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, we affirm the rejection of claim 8 for the reasons set
forth above and explained in the Examiner's Non-Final and Final Office
Actions and Answer.
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Regarding separately argued claim 11, Appellants argue that
"Yoshizawa[] does not disclose that the average size of each grain as an
operating parameter ... and certainly does not show that 70% of the grains
have an average grain size that is less than 50 nm" (Reply Br. 25). The
Examiner, however, found Yoshizawa teaches that the alloy has a
nanocrystalline structure in which at least 5 0% of the alloy structure consists
of fine crystalline particles with an average particle size of 5-20 nm (Ans.
26 (citing Yoshizawa 7:40-50 (teaching that an alloy with the described
nanocrystalline structure is particularly desirable))). Appellants' arguments
have not adequately explained how Yoshizawa does not suggest the
limitation recited in claim 11 when the reference teaches an alloy having a
nanocrystalline structure in which 5 0-100% of the alloy structure may
consist of fine crystalline particles with an average particle size of 5-20 nm.
Accordingly, we affirm the rejection of claim 11 for the reasons set
forth above.
Regarding separately argued claim 20, Appellants persuasively argue
that Yoshizawa teaches away from the limitation of tape heating for a
duration between 2 seconds and 2 minutes (Appeal Br. 24 (citing Yoshizawa
8: 18-20)). Yoshizawa teaches that the alloy in ribbon form should be heated
for a minimum of 5 minutes in order to avoid uneven magnetic properties
(Yoshizawa 8: 18-20). The Examiner has not directed us to any evidence
that teaches or suggests heating an alloy in ribbon form, which contains the
same elements in concentrations overlapping the recited compositions, for a
duration less than two minutes at the recited temperature Ta.
Accordingly, we reverse the rejection of claim 20 for the reasons set
forth above and in the Appeal Brief.
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Regarding separately argued claims 22 and 23, we affirm the rejection
of claims 22 and 23 for the reasons expressed in the Examiner's Non-Final
and Final Office Actions and Answer.
Regarding separately argued claim 24, a preponderance of evidence
supports the Examiner's position. Accordingly, we affirm the rejection of
claim 24 for the reasons expressed in the Examiner's Non-Final and Final
Office Actions and Answer.
CONCLUSION
We AFFIRM the rejection of claims 1-19 and 21-24 under 35 U.S.C.
§ 103(a) as obvious over Yoshizawa in view ofWaeckerle.
We REVERSE the rejection of claim 20 under 35 U.S.C. § 103(a) as
obvious over Yoshizawa in view of W aeckerle.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART
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