Ex Parte Ito et alDownload PDFPatent Trial and Appeal BoardNov 8, 201713982613 (P.T.A.B. Nov. 8, 2017) Copy Citation 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. 13/982,613 07/30/2013 Hirotaka Ito 418617US41PCT 7272 22850 7590 11/13/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 11/13/2017 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 oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROTAKAITO and KENJI YAMAMOTO Appeal 2016-004699 Application 13/982,613 Technology Center 1700 Heard: October 18, 2017 Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner’s decision rejecting claims 1—9. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our Decision refers to the Specification (Spec.) filed July 30, 2013, the Examiner’s Final Office Action (Final Act.) dated May 12, 2015, Appellants’ Appeal Brief (Appeal Br.) filed September 9, 2015, the Examiner’s Answer (Ans.) dated March 2, 2016, Appellants’ Reply Brief (Reply Br.) filed March 31, 2016, and the Oral Hearing Transcript (Tr.) dated November 3, 2017. 2 According to Appellants, the real party in interest is KOBE STEEL, LTD. Appeal Br. 1. Appeal 2016-004699 Application 13/982,613 STATEMENT OF THE CASE The invention relates to a sliding member having slidability and abrasion resistance both at satisfactory levels. Spec. 17. Appellants disclose that the invention achieves this desired performance by providing the sliding member having a sliding surface with a base of a first material with concavities regularly arranged therein and a filling part of a second material arranged to fill the concavities, wherein the first and second materials differ from each other in at least one of frictional coefficient and hardness. Id. 1 8. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief (emphasis added), is illustrative of the subject matter on appeal. 1. A sliding member comprising a sliding surface, the sliding surface comprising: a base; and a filling part, the base comprising a first material and having concavities regularly arranged in the sliding surface; and the filling part comprising a second material and arranged in the sliding surface to fill the concavities, wherein: the first material comprises one material selected from the group consisting of metallic materials, ceramic materials, and carbonaceous materials; the second material comprises at least one material selected from the group consisting of metallic materials, ceramic materials, and carbonaceous materials; the first and second materials differ from each other in at least one of frictional coefficient and hardness, wherein the second material has a lower frictional coefficient and a higher hardness than the first material, and the base and the filling part are substantially flush with each other in the sliding surface. 2 Appeal 2016-004699 Application 13/982,613 Independent claims 2 and 3 similarly recite first and second materials of the respective base and filling part, wherein the second material has a lower frictional coefficient and a higher hardness than the first material. REJECTIONS The Examiner maintains, and Appellants request our review of, the following grounds of rejection under 35 U.S.C. § 103(a): 1. Claims 1, 4, 6, and 7 as unpatentable over Shaw (US 2,431,430, issued Nov. 25, 1947); 2. Claims 2 and 3 as unpatentable over Shaw in view of Tsuji (US 7,431,507 B2, issued Oct. 7, 2008); 3. Claims 1, 4, 6, 8, and 9 as unpatentable over Given (US 2,268,869, issued Jan. 6, 1942); and 4. Claims 1, 4, and 5 as unpatentable over Toshio (JP 60-135564 (A), published July 18, 1985). ANALYSIS Rejections 1 and 2: Obviousness based on Shaw The Examiner finds Shaw teaches a bearing or sliding member having a backing element or base forming a matrix covered with circular pits for receiving a bearing metal or filling part. Ans. 2. The Examiner further finds Shaw teaches the bearing metal may be any desired metal, including tin, lead, zinc, cadmium, or alloys thereof, while the matrix has greater strength and/or greater heat conductivity than the bearing metal and may be a metal such as copper, steel, silver, and alloys thereof. Id. Given the finite number of identified, predictable combinations of matrix and bearing metals, the Examiner determines that it would have been obvious to have selected 3 Appeal 2016-004699 Application 13/982,613 combinations of the listed elements such that the bearing metal has a lower frictional coefficient and a higher hardness than the matrix metal. Id. at 3. Specifically, the Examiner finds Shaw teaches that the bearing metal may be zinc and the matrix metal may be silver, which metals the Examiner finds fulfill the claimed relationship. Id. Appellants contend that one of ordinary skill in the art would not have selected zinc and silver as the bearing and matrix metals, respectively, because Shaw requires that a more rigid backing forms a matrix for supporting a softer bearing metal at a multiplicity of positions on the backing surface. Appeal Br. 4. Appellants assert that the fact that a claimed species is encompassed by a prior art genus is not sufficient by itself to establish a prima facie case of obviousness. Id. at 5. Appellants further urge that Shaw’s teaching would have motivated the ordinary artisan not to select zinc/silver as the bearing/matrix metals because Shaw teaches the bearing metal is softer that the matrix. Id. Moreover, Appellants argue that the zinc bearing/silver matrix species does not have a reasonable expectation of success based on Shaw’s contrary teaching. Reply Br. 1—2. Appellants’ arguments are persuasive of reversible error. As the Examiner notes, generally obviousness exists where the prior art discloses a finite number of identified solutions, or in this case combinations, where there exists a reasonable expectation that any of these solutions or combinations will successfully perform as the prior art requires. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). However, the Court begins this “‘[o]bvious to try’” test with the requirement that there be some reason to pursue the finite, known options, e.g., “a design need or market pressure.” Id. (internal citation omitted). Moreover, “[e]vidence of obviousness, 4 Appeal 2016-004699 Application 13/982,613 especially when that evidence is proffered in support of an ‘obvious-to-try’ theory, is insufficient unless it indicates . . . that skilled artisans would have had a reason to select the route that produced the claimed invention.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063, 1072—73 (Fed. Cir. 2012) (internal citations omitted). Here, the Examiner’s obviousness conclusion is based on the mere fact that the genus of possible combinations of listed metals in Shaw is so small, i.e., twelve possible combinations, that all these combinations would have been obvious to try with a reasonable expectation of success. This conclusion is inconsistent with the obvious to try analysis set forth in KSR because Shaw specifically directs the selection of combinations to provide a harder matrix metal and a softer bearing metal. Shaw 1:8—10. The selection of zinc/silver as the bear/matrix metals, respectively, does not meet Shaw’s requirements and, therefore, would not present a reasonable expectation of success in achieving Shaw’s stated purpose. We note the Examiner relies on Tsuji to address limitations of independent claims 2 and 3. However, Tsuji is not relied upon to remedy the deficiencies in Shaw discussed above. Accordingly, we will not sustain the Examiner’s rejections of claims 1—4, 6, and 7 over Shaw alone or in view of Tsuji. Rejection 3: Obviousness over Given The Examiner finds Given discloses a bearing structure or sliding member provided with small, narrow, or restricted bearing areas separated by bodies permanently embedded in the bearing face, wherein the bodies are formed of abrasive metallic oxide particles permanently bonded together. 5 Appeal 2016-004699 Application 13/982,613 Ans. 5. The Examiner finds Given discloses that the metallic oxide particles can be an oxide of tin, aluminum, or zinc {id.), and further finds that aluminum oxide has a greater hardness and a lower coefficient of friction than cast iron (the material of the bearing face) {id. at 6). The Examiner concludes it would have been obvious to have selected one of Given’s listed oxides, in particular, aluminum oxide for the abrasive metallic oxide to be used along with cast iron for the bearing material as one of a finite number of identified, predictable solutions disclosed in Given. Id. at 6, 16. Appellants argue that Given’s teaching would lead one skilled in the art to select properties different from those claimed, specifically that the second material, the metal oxide abrasive material, would have a higher coefficient of friction than the first bearing material, cast iron. Appeal Br. 6. Appellants contend that Given teaches that the first bearing material provides the bearing function while the metal oxide abrasive material only permits carrying greater loads. Id. As such, Appellants urge that it is Given’s first bearing material that should have the lower frictional coefficient. Id. Moreover, Appellants contend that since Given’s metal oxide abrasive material has a higher coefficient of friction, the first bearing material must have a lower hardness. Reply Br. 3. We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s obviousness rejection based on Given. In particular, though Appellants rely on Given’s description of the metal oxide particle material as abrasive to support their arguments, we note that Appellants’ claims merely require that the sliding member comprise, among other things, a filling part comprising a second material, wherein the second material has a lower frictional coefficient and a higher hardness than the first material. 6 Appeal 2016-004699 Application 13/982,613 Thus, the claims do not require that the filling part, nor any other structural element of the sliding member, per se has a lower frictional coefficient and a higher hardness than the first material. “[T]he PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. Here, the Examiner made a finding that aluminum oxide has a lower frictional coefficient and a higher hardness than cast iron. Other than a naked assertion that the ordinary artisan would select properties of the metal oxide abrasive material that are “different from those claimed” (Appeal Br. 6), Appellants do not challenge or identify any error in this finding in either the Appeal or Reply Briefs. We, therefore, adopt the Examiner’s finding as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (a finding not shown by Appellant to be erroneous may be accepted as fact). At oral hearing, Appellants argued that because Given describes the metal oxide materials as abrasive, it would make no sense that they would have a low coefficient of friction as abrasives having low coefficients of friction would be less effective as abrasive materials. Tr. 6. Appellants also urged at oral hearing, for the first time, that the Examiner fails to provide any support for the finding that aluminum oxide has a lower frictional coefficient and a higher hardness than cast iron. Id. at 7. 7 Appeal 2016-004699 Application 13/982,613 We are not persuaded by these arguments both because they are untimely3 and because they fail to address in a meaningful way the Examiner’s findings concerning the properties of the metal oxide particles. Accordingly, for the reasons given in the Examiner’s Answer and above, we sustain the Examiner’s obviousness rejection based on Given. Rejection 4: Obviousness over Toshio The Examiner finds Toshio discloses a metallic sliding member and a means to improve its wear resistance by vapor-depositing a hard material such as TiN and a solid lubricating material such as Au on the sliding surface of the sliding member to form a film having a spotted pattern. Ans. 7. In particular, the Examiner finds Toshio discloses a sliding member having a hard material 2 (TiN or TiC) and a solid lubricating material 3 (Au, Ag, or M0S2) to provide a sliding member having reduced frictional resistance and improved wear resistance. Id. at 7—8. The Examiner concludes that it would have been obvious to have selected TiC as the hard material and Au or Ag as the solid lubricating material to produce a sliding member having the desired wear resistance. Id. at 8. According to the Examiner, “[t]his selection includes a filling material that would have a hardness greater than the base material while having a lower coefficient of friction.” Id. 3 Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief or presented in Oral Hearing, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See 37 C.F.R. § 41.37 and § 41.41. Appellants have provided this record with no such showing. 8 Appeal 2016-004699 Application 13/982,613 Appellants argue that when material 2 is a “hard” material and material 3 is a “solid lubricating” material, neither material 2 nor 3 has both a lower frictional coefficient and a higher hardness. Appeal Br. 8. The Examiner responds that Appellants’ argument focuses on the description of these materials as “hard” and “solid lubricating,” rather than on the materials themselves. Ans. 17. The Examiner determines that selecting TiC as material 2 and Au or Ag as material 3 would satisfy Toshio’s teaching of having a hard material and a solid-lubricating material. Id. at 18. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). We are persuaded of reversible error in the Examiner’s obviousness rejection based on Toshio. In particular, we note that the Examiner fails to find that material 3 has both a lower coefficient of friction and a higher hardness than material 2 as would be required for Toshio to render obvious Appellants’ claims. Merely finding that materials 2 and 3 may be TiC and Au or Ag, respectively, is insufficient to support the Examiner’s determination of obviousness because it is not clear whether the Examiner has a reasonable belief that Toshio’s material 2 or TiC, which corresponds to 9 Appeal 2016-004699 Application 13/982,613 Appellants’ second material, has a lower coefficient of friction and is harder than Toshio’s material 3 or Au or Ag. This is especially true given that Toshio describes material 2 as the “hard” material, whereas material 3 is described as the “solid-lubricating” material. Absent such a finding, the Examiner’s conclusion of obviousness lacks sufficient rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”), quoted with approval in KSR, 550 U.S. at 418. Accordingly, we will not sustain the Examiner’s obviousness rejection based on Toshio. DECISION Upon consideration of the record, and for the reasons given above and in the Examiner’s Answer, the decision of the Examiner rejecting claims 1, 4, 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Given is affirmed. However, the decision of the Examiner rejecting as unpatentable, under 35 U.S.C. § 103(a), claims 1—4, 6, and 7 over Shaw alone or taken with Tsuji and claims 1, 4, and 5 over Toshio is reversed. 10 Appeal 2016-004699 Application 13/982,613 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation