Ex Parte IWAYAMA et al

Patent Trials and Appeals Board

Jul 2, 2019

14684206 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/684,206 04/10/2015
20277 7590 07/05/2019
MCDERMOTT WILL & EMERY LLP
THE MCDERMOTT BUILDING
500 NORTH CAPITAL STREET, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Isao IW A Y AMA
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.
070456-0404 2010
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
07/05/2019 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAO IWA Y AMA, YOSHIHIRO NAKAI,
TAICHIRO NISHIKAWA, YOSHIYUKI TAKAKI,
MISATO KUSAKARI, and TOSHIYA IKEDA
Appeal2018-007923 1
Application 14/684,206
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1---6. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant and the real party in interest SUMITOMO ELECTRIC
INDUSTRIES, LTD. (App. Br. 1.)
Appeal2018-007923
Application 14/684,206
Appellant's invention is directed generally to a composite member
having porosity lower than 3 % made of a composite of magnesium or a
magnesium alloy and silicon carbide (SiC). (Spec. 6, 11. 7-9.) Of the
currently rejected claims, claims 1 and 4 are independent. See Claim
Appendix. Claim 1 illustrates the subject matter on appeal and is reproduced
from the Appeal Brief below:
1. A composite member made of a composite of magnesium
or a magnesium alloy and SiC, characterized in that
said composite member has porosity lower than 3 %,
said SiC is present in a particulate form dispersed in said
magnesium or said magnesium alloy, and
said composite member contains 50 volume% or more and
86.3 volume % or less of said SiC,
wherein in a cross-section of said composite member, an SiC
outer peripheral region of the composite member has a higher
oxygen concentration than a main region of the composite
member,
where:
the SiC outer peripheral region of the composite member is a
region of the composite member that has a shape similar to a
shape of the SiC and extends from a contour line of SiC
outward by no more than 150 nm,
the main region of the composite member is a region of the
composite member that is disposed a distance of at least 1 µm
from the contour line of SiC, and
the SiC outer peripheral region contains Mg oxide.
2
Appeal2018-007923
Application 14/684,206
The following rejection is presented for our review:
Claims 1---6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Yun et al. (US Patent 5,746,267; issued May 5, 1998) in view of Skibo et al.
(US Patent 4,865,806; issued Sept. 12, 1989).
The complete statement of the rejection on appeal appear in the Final
Office Action. (Final Act. 2-5.)
OPINI0N2
The Examiner found Yun discloses a composite comprising silicon
carbide particles in a matrix material selected from materials such as
magnesium or a magnesium alloy. Yun discloses the use of a high volume
fraction of aggregate such as 60 and 65 volume % and above, and defines
pore free to be a porosity of 2 volume % or less. (Final Act. 2; Yun col. 2,
11. 11-15, col. 3, 11. 9-67, col. 4, 11. 23-51). The Examiner found Yun did
not disclose the outer peripheral region of the SiC to have a higher oxygen
content than the main region as claimed. The Examiner found Skibo
discloses a composite material which includes silicon carbide particles in a
matrix of magnesium wherein the SiC particles are oxidized thereby
improving wetting of the particles resulting in an improvement in the
properties of the composite (Final Act. 3.) The Examiner concluded "it
obvious to oxidize the SiC particles of Yun et al., as directed by Skibo et al.,
in order to provide improved wetting of the particles by the metal matrix
material thereby improving the mechanical properties of the composite."
2 Appellant limits the arguments to independent claim 1. Appellant has not
presented arguments addressing separately claims 2---6. (App. Br. 3-9.) We
limit our discussion to the independent claim 1.
3
Appeal2018-007923
Application 14/684,206
(Final Act. 3.)
Appellant argues one of skill in the art would not have found it
obvious to combine Yun and Skibo in the manner suggested by the
Examiner because Yun is directed to a composite having a high volume
fraction of silicon carbide and Skibo warns against forming a wetted
material when silicon carbide fractions exceed 40 volume percent. (App. Br.
4--8.) Appellant specifically argues
[ A ]ssuming arguendo that a person of skill in the art had been
motivated to provide the SiC particles subjected to the roasting
treatment of Skibo into the composite of Yun as suggested in the
Office Action, that person would have understood based on the
teachings of Skibo that use of the SiC particles subjected to the
roasting treatment of Skibo required maintaining a "maximum amount
of silicon carbide" of "about 40 volume percent" (Skibo, col. 11: 19-
24) in order to preserve the ability to prepare a sound, wetted material.
(App. Br. 6.)
In light of Appellant's arguments, the dispositive issue on appeal is:
Did the Examiner err in determining that the combination of
Yun and Skibo would have suggested a composite member made of a
composite of magnesium or a magnesium alloy and SiC containing 50
volume % or more and 86.3 volume % or less of said SiC as required
by independent claims 1 and 4?
We sustain the Examiner's rejection. The claimed invention requires
the composite member made of magnesium or a magnesium alloy and SiC
containing 50 volume % or more and 86.3 volume % or less of SiC. The
claimed invention further requires the SiC outer peripheral region to have a
higher oxygen concentration than a main region of the composite member.
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Appeal2018-007923
Application 14/684,206
According to the Specification, this characteristic is achieved by oxidation
treatment of SiC. (Spec. 6, 11. 14--25.) The Examiner relies on Skibo for
describing the oxidation treatment of SiC. (Final Act. 3.) Appellant argues
Skibo warns against forming a wetted material when silicon carbide
fractions exceed 40 volume percent. (App. Br. 6; Skibo col. 11, 11. 19--24.)
The complete portion of Skibo relied upon by Appellant is reproduced
below:
The amount of particulate silicon carbide added to the melt may
vary substantially, with the maximum amount being dependent upon
the ability to stir the melt containing the particles to achieve
homogeneity. With increasing amounts of particulate, the melt
becomes more viscous and harder to stir. It has been observed that the
roasted silicon carbide particles can be added to a greater
concentration before unacceptably high viscosity is reached, as
compared with unroasted silicon carbide. Higher amounts of silicon
carbide also provide increased surface area for the retention and
stabilization of gas within the melt, limiting the ability to prepare a
sound, wetted material. The maximum amount of silicon carbide in
aluminum alloys has been found to be about 40 volume percent. The
size and shape of the silicon carbide particles may also be varied.
(Col. 11, 11. 10-25.)
A person of ordinary skill in the art would have reasonably expected that
oxidized SiC, such as described by Skibo, would have been suitable for the
formation of a composite, such as described by Yun, utilizing 60 volume%
and above of SiC aggregate with the expectation of achieving acceptable
viscosity during the formation of the composite. Yun discloses the
composite comprises 60 volume% and above SiC aggregate. Yun
specifically states:
A special advantage of the invention has been found to lie in its ability
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Appeal2018-007923
Application 14/684,206
to achieve essentially porosity-free MMC's 25 containing a high
volume fraction of aggregate, particularly volume fractions of 60v%
and 65v% and above, for instance up to 80v%. and even 85v% and
above.
(Col. 4, 11. 23-27.)
As such, Yun has determined that acceptable viscosity is achieved utilizing
60 volume % and above of SiC aggregate in the formation of metal matrix
composites (MMC). A person of ordinary skill in the art would have
reasonably expected that oxidized SiC aggregate was suitable for use in the
formation of essentially porosity-free MMC as described by Yun without
achieving unacceptably high viscosity during the formation because Skibo
discloses - as compared to unroasted silicon carbide- the roasted
( oxidized) silicon carbide particles could have been added to a greater
concentration before unacceptably high viscosity is reached. (Skibo col. 11,
11. 15-18.) "[O]bviousness does not require absolute predictability of
success ... all that is required is a reasonable expectation of success." In re
Kubin, 561 F.3d 1351, 1359---60 (Fed. Cir. 2009) (citing In re O'Farrell, 853
F.2d 894, 903---04 (Fed. Cir. 1988)).
Accordingly, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) for the reasons given by the Examiner and presented above.
ORDER
The Examiner's prior art rejection of claims 1-6 under 35 U.S.C.
§ 103(a) is affirmed.
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Appeal2018-007923
Application 14/684,206
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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