Ex Parte Hosek et al

Patent Trial and Appeal Board

Jan 30, 2018

13836615 (P.T.A.B. Jan. 30, 2018)

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.
13/836,615 03/15/2013 Martin Hosek PERS-126J 8136
32488 7590 01/30/2018
Iandiorio Teska & Coleman, LLP
255 Bear Hill Road
Waltham, MA 02451
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
01/30/2018 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 MARTIN HOSEK and SRIPATI SAH
(Applicants: PERSIMMON TECHNOLOGIES CORPORATION)
__________

Appeal 2017-003618
Application 13/836,615
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) the final rejection of
claims 7–20. Claims 1–6 were withdrawn from consideration by the
Examiner (Final Act., Office Act. Summary). We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.
The appeal is directed to a method for making a structured material
and more particularly making a material having domains with insulated
boundaries (Spec. 2:19–21; claim 7).
Claim 7 is illustrative:
7. A method of forming a soft magnetic bulk material of a
predetermined shape from a magnetic material and a source of insulating
material, the method comprising:

providing a heating device;

providing a deposition device;

providing a support configured to support the soft magnetic bulk
material of the predetermined shape;

providing a mask subsystem configured as a negative of at least a
portion of the predetermined shape;

heating the magnetic material with the heating device to form particles
having a softened state;

locating the mask subsystem between the deposition device and the
support;

depositing successive layers of particles of the magnetic material in
the softened state with the deposition device on the support; and

indexing, to a position relative to the support, the mask subsystem
upon deposition of the successive layers;

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wherein the mask subsystem selectively blocks the successive layers
of particles of the magnetic material in the softened state from being
deposited on the support thus forming the soft magnetic bulk material of a
predetermined shape on the support.

Appellants appeal the following rejection:
Claims 7–20 are rejected under 35 U.S.C. § 103(a) as obvious over
Kugimiya (US 5,350,628; issued Sept. 27, 1994) in view of Illston (US
2009/0081066 A1; published Mar. 26, 2009) and Bi (US 2003/0203205 A1;
published Oct. 30, 2003).
Appellants argue the claims separately. For reasons discussed below,
we select claim 7 as representative of the claim grouping claims 7 to 12, and
claim 13 as representative of claims 13 to 20. 37 C.F.R. § 41.37(c)(1)(iv).

FINDINGS OF FACT & ANALYSIS
CLAIM 7
Appellants argue that Kugimiya, Illston, and Bi do not teach or
suggest indexing a mask subsystem in relation to the support (App. Br. 9–
10). Appellants argue that Appellants’ Figure 37 depicts the embodiment
recited in claim 7 (App. Br. 10). Appellants argue that the step of “indexing,
to a position relative to the support, the mask subsystem upon deposition of
the successive layers” means that the masks 1124 and 1126 in Figure 37
move up or down as indicated by arrow 1132 relative to the support 1122
(App. Br. 10).
The Examiner finds that Kugimiya teaches the subject matter of claim
7, except for the depositing and indexing steps (Final Act. 2–3). The
Examiner finds that Illston discloses using an additive process to form
successive layers on the base plate and indexing the base plate upon
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deposition of the successive layers (Final Act. 3). The Examiner finds that
Bi teaches using a self-supporting mask to control the particle deposition
(Final Act. 3; Ans. 4). The Examiner concludes that the combined teachings
of Bi and Illston would have suggested the mask subsystem as recited in
claim 7 (Ans. 4).
Claim 7 recites “indexing, to a position relative to the support, the
mask subsystem upon deposition of the successive layers.” Appellants argue
that the subject matter of claim 7 corresponds to the embodiment shown in
Figure 37. The Specification describes Figure 37 as having masks 1124,
1126 that are coupled together and may be indexed in a direction 1132
(Spec. 70: 4–10). The Specification clearly describes indexing of the mask
assembly as requiring a step of positively moving the mask relative to the
support substrate.
The Examiner’s findings regarding Bi and Illston fail to explain how
the combined teachings of Illston and Bi would have suggested a mask
subassembly that may be indexed (i.e., moved up or down) in a position
relative to the support (Ans. 4). The Examiner has not dispensed with the
burden of showing that the claimed step of indexing the masked subsystem
would have been obvious over the combined teachings of Kugimiya, Illston,
and Bi.
CLAIM 13
The Examiner finds that the combined teachings of Kugimiya, Illston,
and Bi would have suggested the subject matter of claim 13. Regarding the
step of “heating the magnetic material and the non-magnetic material in the
reservoir to an ignition temperature of a reaction thus forming the soft
magnetic bulk material of a predetermined shape,” the Examiner finds that
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Kugimiya’s oxidizing of the Fe/Al particles at a temperature of 800°C
constitutes heating to an ignition temperature (Ans. 4–5).
Appellants argue that the claim recites heating the magnetic and non-
magnetic material in a reservoir to an ignition temperature of a reaction,
which is not taught or suggested by Kugimiya’s heating to oxidize magnetic
particles (Reply Br. 7, 9, 10).
We understand Appellants to argue that the heating of the magnetic
material occurs in a reservoir where the magnetic material is formed into a
predetermined shape. In other words, the reservoir corresponds to a mold or
forming surface on which the magnetic material is to be molded.
Appellants’ Specification describes that the reservoir may be a plate or mold
(Spec. 72:22, 73:4; 74:11; 75:22). The Specification describes that the iron
oxide is provided “within” a reservoir, seemingly requiring that the reservoir
is a hollow feature meant to hold the powder that is shaped into a
predetermined shape that is then heated. Accordingly, we construe the
disputed claim limitation as requiring that the reservoir serve as the mold
that forms the powder into the desired shape. Therefore, the heating step to
the ignition temperature of a reaction must occur in a mold where the
powder is formed into the predetermined shape as the insulating boundaries
are formed by the heating step.
With this construction in mind, the Examiner has not established that
Kugimiya’s oxidizing step occurs in a mold so as to satisfy this claim
limitation. Rather, Kugimiya’s Example 3 relied upon by the Examiner
teaches that the powder is oxidized by heating, the oxidized powder is mixed
with wax and then formed into a mold where it is then sintered. In other
words, the Examiner has not established that Kugimiya’s oxidizing step
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takes place in a reservoir as that term as been construed. The Examiner does
not rely on Illston or Bi to cure this deficiency.
On this record, we reverse the Examiner’s § 103 rejection of record
over Kugimiya in view of Illston and Bi.

DECISION
The Examiner’s decision is reversed.

ORDER

REVERSED