Ex Parte HERZER et alDownload PDFPatent Trial and Appeal BoardMay 23, 201613447780 (P.T.A.B. May. 23, 2016) Copy Citation 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 Appeal2014-007544 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). 2 Appeal2014-007544 Application 13/447,780 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"). 3 Appeal2014-007544 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 4 Appeal2014-007544 Application 13/447,780 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 5 Appeal2014-007544 Application 13/447,780 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 6 Appeal2014-007544 Application 13/447,780 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 7 Appeal2014-007544 Application 13/447,780 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, 8 Appeal2014-007544 Application 13/447,780 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 9 Appeal2014-007544 Application 13/447,780 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 10 Appeal2014-007544 Application 13/447,780 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 11 Appeal2014-007544 Application 13/447,780 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. 12 Appeal2014-007544 Application 13/447,780 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. 13 Appeal2014-007544 Application 13/447,780 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 14 Copy with citationCopy as parenthetical citation