Ex Parte Kimura et al

Patent Trial and Appeal Board

Feb 22, 2017

12714696 (P.T.A.B. Feb. 22, 2017)

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.
12/714,696 03/01/2010 Hisamichi Kimura 815_028 DIV 7309
25191 7590 02/22/2017
BURR & BROWN, PLLC
PO BOX 7068
SYRACUSE, NY 13261-7068
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
02/22/2017 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 HISAMICHI KIMURA,
NAOKUNI MURAMATSU, and KEN SUZUKI
____________________

Appeal 2016-000142
Application 12/714,696
Technology Center 1700
____________________
Before: GEORGE C. BEST, AVELYN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.

ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our Decision, we refer to the Specification filed March 1, 2010 (Spec.),
the Final Office Action mailed October 17, 2014 (Final Act.), the Appeal
Brief filed March 4, 2015 (Appeal Br.), the Examiner’s Answer mailed July
28, 2015 (Ans.), and the Reply Brief filed September 15, 2015 (Reply Br.).
2 Appellants identify the real party in interest as NGK Insulators, Ltd. and
Akihisa Inoue. Appeal Br. 2.
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STATEMENT OF CASE
The claims are directed to copper alloy and copper alloy
manufacturing methods. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of manufacturing a copper alloy, comprising the
steps of:
melting a copper alloy by levitation melting, vacuum arc
melting or electron beam melting, said alloy having a
composition expressed, in atomic percent, by a composition
formula of
Cu100 − (a + b) ZraBb, wherein 1.0 ≤ a ≤ 8.0, 0 ≤ b ≤ 4.0, and a + b ≤ 8.0,
casting a melt obtained by the melting step in a mold to
produce a bulk copper alloy; and
performing cold working with a reduction of about 50% or
more for said bulk copper alloy without a solution treatment to
provide said copper alloy having a dual phase, layered structure
including a Cu matrix phase comprising a plurality of grains
having an average diameter of about 2 μm or more and 10 μm or
less, and a eutectic phase around said Cu matrix phase;
wherein at least part of each of said grains contacts another
of said grains within said eutectic phase, and wherein said
eutectic phase comprises at least one of a Cu-Zr compound and
a Cu-Zr-B compound.
Claims Appendix at Appeal Br. 17 (emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ashok3 in view of Fujita.4 Final
Act. 3.

3 Sankaranarayanan Ashok, US 5,017,250, issued May 21, 1991 (“Ashok”).
4 Fujita et al., US 5,889,813, issued March 30, 1999 (“Fujita”).
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B. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ashok in view of Fujita and
further teaching of Hori.5 Id. at 5.
C. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takeiri6 in view of Ashok and
Fujita. Id. at 7.
Appellants seek our review of rejections A–C. Appeal Br. 8, 13, and
15.
OPINION
Rejection A – Obviousness (claims 1 and 2)
The Examiner rejects claims 1 and 2 as obvious over Ashok and
Fujita. Final Act. 3. The Examiner finds that Ashok discloses a “Cu-B-Zr
composition (Example 3, col. 8, line 57 to col. 9, line 13), method steps such
as casting and cold working (col. 5, lines 23-63 and col. 6, lines 26-29),
precipitate particle size, eutectic phase, and dispersoids within grain and at
grain boundaries (reads on claimed grains contact each other, col. 7, lines
32-42).” Id. The Examiner also finds that Ashok teaches that conventional
direct chill casting and spray casting would result in alloys having similar
hardness values. Id. The Examiner acknowledges that Ashok “does not
disclose levitation melting, grain diameter, and cold worked layer structure,”
but finds that Fujita teaches a levitation melting furnace. Id. at 3 and 9. The

5 Hori et al., Thermomechanical Treatment of Cu-Zr Alloys, 29 J. Japan
Copper & Brass Research Assoc. 160, relying on the use of an English
language translation filed on October 11, 2013, which use is not contested
(“Hori”).
6 Takeiri et al., JP 60211026 A, published October 23, 1985, relying on use
of an English language translation, mailed August 20, 2015, which use is not
contested (“Takeiri”).
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Examiner reasons that “it would have been prima facie obvious for an
ordinary skilled artisan motivated by a reasonable expectation of success to
use conventional melting method/furnace for electrical conductive copper
alloys of Ashok in order to obtain all the known benefits.” Id. The
Examiner finds that the grain size and cold worked layer structure of the
claims would have naturally flowed from Ashok because the composition
and preparation methods are the same. Id. at 4. The Examiner further
explains that because the second phase dispersoid—having a particle size of
0.1 to 1.0 microns—is dispersed within a grain, the grain must have a
particle size greater than the dispersoid. Id. And, the Examiner finds that
Ashok discloses the droplets forming the cast alloy have a size of about 50
to 250 microns and therefore rationalizes that the grain size could not be
more than 50 microns. Id.
Appellants present several arguments in opposition to the Examiner’s
findings including: (1) alloy of Ashok is not the same as claimed because a
direct chill casting method and a spray casting method (of Ashok) do not
result in alloys of similar hardness values (Appeal Br. 8); (2) that the grain
sizes of Ashok are different than claimed, i.e., 0.1 to 1 µm (in Ashok)
compared to 2 to 10 µm (claim 1) (Appeal Br. 11–12; Reply Br. 2–3); and
(3) no reason exists to combine the teachings of Ashok and Fujita because
“[a] person of ordinary skill in the art would have understood that there is
nothing in Fujita to suggest any benefits to the actual melted alloy, much
less the copper alloy of Ashok” and Fujita does not suggest any benefits
(Appeal Br. 9–10). We address Appellants second argument as it is
dispositive of the issues before us.
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We are persuaded by Appellants argument that the grain sizes of
Ashok differ from the claimed grain sizes. Appeal Br. 11–12; Reply Br. 2–
3. As explained by Appellants, “claim 1 of the present invention recites
copper grains having an average diameter of about 2 μm or more and 10 μm
or less formed in a eutectic phase, and Ashok discloses low copper content
second phase . . . dispersoids having an average diameter of from about 0.1
μm to about 1.0 μm formed in a eutectic phase . . . .” Reply Br. 2. The
Examiner’s argument that “the dispersoids [of Ashok] would be formed
inside a grain” (Ans. 9 (emphasis added); see also id. at 12; Final Act. 4) as
opposed to corresponding to the grain as claimed does not appear to be
supported by Ashok. According to Ashok “[t]he alloy comprises a copper
based alloy matrix and a second phase dispersoid uniformly dispersed
through out the matrix. The dispersoid has an average size of from about 0.1
micron to about 1.0 micron.” Ashok, col. 2, ll. 49–53; see also id., col. 8, ll.
46–48 (describing “the formation of copper base alloys which contain a
second phase dispersoid uniformly dispersed through an alloy matrix”).
Ashok also explains that “[i]t is another advantage that the dispersoids are
uniformly dispersed throughout the cast alloy.” Id., col. 2, ll. 39–40; see
also id., col. 5, ll. 40–41. Thus, the copper matrix grains of the instant
invention are analogous to the dispersoid of Ashok and therefore do not have
the same average diameter.
Rejection B – Obviousness (claims 1 and 2)
The Examiner rejects claims 1 and 2 as obvious over Ashok, Fujita,
and Hori. Final Act. 5. In addition to the findings above for Rejection A,
the Examiner finds that Hori teaches a Cu-Zr alloy that has a grain size of
less than 20 µm and that the “dispersed precipitates in the shape of plate/disk
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like.” Id. at 6. The Examiner also “takes official notice that cold worked
alloys would have elongated/plate/layer grain structure.” Id. Thus, “[t]he
cold worked alloy of Ashok [and Hori] would have overlapped grain size
and worked layered structure as recited.” Id. The Examiner reasons that the
skilled artisan would have been “motivated by a reasonable expectation of
success to use conventional melting method/furnace for electrical conductive
copper alloys of Ashok in order to obtain all the known benefits.” Id.
Appellants urge that Hori does not “bolster” the Examiner’s findings
that Ashok has a dual phase layered structure with the claimed grain size.
Appeal Br. 13. Specifically, Appellants contend that, contrary to the
Examiner’s findings, the second phase of Hori would not have a plate-like
shape. Id. According to Appellants, Hori teaches that
the precipitate particles coarsen (i.e., grow) as the precipitation
hardening (i.e., aging) temperature is increased, leading to a
widening in the space between the plate-like precipitate particles
(i.e., the precipitate particles are no longer uniformly dispersed
in the copper alloy matrix), which results in a reduction of the
hardness of the copper alloy (see Hori, page 9, lines 11–17).
Id. at 13–14. Appellants also contend that the plate-like precipitates of Hori
are the result of a solution treatment and not being cold worked. Id. at 14.
And, Appellants urge that Ashok teaches away from the precipitation
hardening method of Hori because of cost and low product yield. Id.
On this record, we agree with Appellants. While the Examiner finds
that the Cu-Zr alloy of Hori has a grain size of 20 µm or less (Final Act. 6),
the Examiner fails to provide an adequate explanation of how the Hori alloy,
subjected to the method of Ashok and Fujita, would result in a dual phase,
layered structure having a grain size as claimed. “[M]ere identification in
the prior art of each element is insufficient to defeat the patentability of the
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combined subject matter as a whole.” In re Kahn, 441 F.3d 977, 986 (Fed.
Cir. 2006); see also In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)
(“rejecting patents solely by finding prior art corollaries for the claimed
elements would permit an examiner to use the claimed invention itself as a
blueprint for piecing together elements in the prior art to defeat the
patentability of the claimed invention.”). “Rather, to establish a prima facie
case of obviousness based on a combination of elements disclosed in the
prior art, the [Examiner] must articulate the basis on which it concludes that
it would have been obvious to make the claimed invention.” Kahn, 441 F.3d
at 986.
Rejection C – Obviousness (claims 1 and 2)
The Examiner rejects claims 1 and 2 as obvious over Takeiri, Ashok,
and Fujita. Final Act. 7. In addition to the findings discussed above for
Rejection A, the Examiner finds that Takeiri teaches a “cast alloy and cold
worked high-strength Cu-Zr-B composition[] with [a] boride dispersed
phase except for the microstructures, grain size, compounds formed by the
alloying elements.” Id. And, the Examiner finds that “[a]s is evinced by
Ashok that the casting and cold working steps of [Takeiri] would form
recited microstructures and phases.” Id.
Appellants argue that the Examiner recognizes that Takeiri fails to
teach the microstructure, grain size and compounds formed within the alloy.
Appeal Br. 15. Thus reasons Appellants, the Examiner is relying upon
Ashok and Fujita to meet these limitations, which for the reasons explained,
“fail to produce the claimed copper alloy having a dual phase, layered
structure.” Id.
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Appellants’ arguments are persuasive of reversible error. As
Appellants note (Appeal Br. 15), the Examiner admits that Takeiri does not
teach the claimed microstructure or grain size. Final Act. 7. As we
determined above with respect to Rejection A, Ashok does not teach the
grain size as claimed (see infra p. 5), therefore, the addition of Takeiri does
not remedy the identified deficiency.
Moreover, the Examiner offers no reason to combine Takeiri with
Ashok and Fujita, and as a result, the Examiner fails to establish a prima
facie case for obviousness. The Examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[T]o
establish a prima facie case of obviousness based on a combination of
elements disclosed in the prior art, the [Examiner] must articulate the basis
on which it concludes that it would have been obvious to make the claimed
invention.” Id.; see also In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).
Here, where an Examiner offers none, we cannot sustain the Examiner’s
rejection.
CONCLUSION
The Examiner reversibly erred in rejecting claims 1 and 2 under 35
U.S.C. § 103(a) as being unpatentable over Ashok in view of Fujita.
The Examiner reversibly erred in rejecting claims 1 and 2 under 35
U.S.C. § 103(a) as being unpatentable over Ashok in view of Fujita and
further teaching of Hori.
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The Examiner reversibly erred in rejecting claims 1 and 2 under 35
U.S.C. § 103(a) as being unpatentable over Takeiri in view of Ashok and
Fujita.
DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 2 is
reversed.
REVERSED