Ex Parte KITAMURA et alDownload PDFPatent Trials and Appeals BoardMay 9, 201914556516 - (D) (P.T.A.B. May. 9, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/556,516 12/01/2014 25191 7590 05/13/2019 BURR & BROWN, PLLC POBOX869 FAYETTEVILLE, NY 13066 FIRST NAMED INVENTOR Kazumasa KITAMURA 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. 791_71 l 1015 EXAMINER LEYSON, JOSEPH S ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 05/13/2019 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): tpreston@burrandbrown.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUMASA KITAMURA, HIROFUMI HOSOKA WA, and TOMOKI NAGAE Appeal2018-006745 Application 14/556,516 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and MICHAEL G. MCMANUS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals from the Examiner's decision to finally reject claims 1, 4, and 13-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a die for forming a honeycomb structure (see, e.g., claim 1) and a method of manufacturing a die for forming a 1 In explaining our Decision, we cite to the Final Office Action of July 12, 2017 ("Final Act."), Appeal Brief of November 28, 2017 ("Appeal Br."), Examiner's Answer of April 19, 2018 ("Ans."), and Reply Brief of June 18, 2018 ("Reply Br."). 2 NGK Insulators, Ltd. is the applicant under 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 1. Appeal2018-006745 Application 14/556,516 honeycomb structure (see, e.g., claim 14). The claims require first and second plate-shaped portions with surfaces bonded to each other. See, e.g., claims 1 and 14. Claim 1, with the limitations at issue highlighted, is illustrative: 1. A die for forming a honeycomb structure, comprising: a second plate-shaped portion having a second bonded surface, where a back hole for introducing a forming raw material is formed; and a first plate-shaped portion that has a first bonded surface and is formed of tungsten carbide based cemented carbide, where a cavity communicating with the back hole is formed in the first bonded surface, and a slit communicating with the cavity to form the forming raw material is formed, wherein the second plate-shaped portion is formed of a material containing at least one selected from a group consisting of iron, steel, aluminum alloy, copper alloy, titanium alloy, and nickel alloy, wherein the first plate-shaped portion is arranged on the second plate-shaped portion such that the first bonded surface is bonded to the second bonded surface, wherein a diameter of an open end of the back hole on the second bonded surface is larger than a diameter of an open end of the cavity on the first bonded surface, the diameter of the open end of the back hole on the second bonded surface is 1.01 to 1.50 times of the diameter of the open end of the cavity on the first bonded surface and a bottom portion as a head edge of the cavity has a flat shape on a cross section perpendicular to a top surface of the first plate-shaped portion at an end opposite to the open end of the cavity such that the flat shape of the bottom portion extends to a cavity sidewall and is parallel to the first bonded surface of the first plate-shaped portion, and 2 Appeal2018-006745 Application 14/556,516 wherein the open end of the cavity on the first bonded surface is arranged inside the open end of the back hole on the second bonded surface. Appeal Br. 12-13 ( claims appendix) ( emphasis added). The Examiner maintains the rejection of claims 1, 4, 14, and 15 under 35 U.S.C. § I03(a) as obvious over Hayashi3 in view ofKragle4, Takahashi5, and JP '806 6. Final Act. 3; Ans. 3. The Examiner further adds JP '2087 to reject claims 13 and 16. Final Act. 7; Ans. 6-7. The Examiner further rejects claims 1, 4, and 13-16 on the ground of non-statutory double-patenting as being unpatentable over claims 1-15 of U.S. Patent 9,616,637 B2 in view of Hayashi, Kragle, and JP '806. Final Act. 9-10; Ans. 7-8. OPINION Obviousness Rejections In arguing against the Examiner's rejection of claims 1, 4, 14, and 15 under 35 U.S.C. § I03(a) as obvious over Hayashi in view ofKragle, Takahashi, and JP '806 and the rejection of claims 13 and 16, which adds JP '208, Appellant focuses on the rejection of claim 1. Appeal Br. 7-9. Thus, our focus will also be on the rejection of claim 1 and, particularly, on the Examiner's combination of Hayashi and Kragle, which the Examiner used to support the conclusion that it would have been obvious to the ordinary 3 Hayashi et al., US 2009/0061040 Al, published Mar. 5, 2009. 4 Kragle et al., US 5,702,659, issued Dec. 30, 1997. 5 Takahashi, US 2010/0074982 Al, published Mar. 25, 2010. 6 Japanese Patent Publication JP 6-22806 B2, published Mar. 30, 1994. 7 Japanese Patent Publication, JP 56-38208 A, published Apr. 13, 1981. 3 Appeal2018-006745 Application 14/556,516 artisan at the time of the invention to bond Hayashi' s abrasive portion 5 to introduction main body 4. Final Act. 3-5. Hayashi discloses that prior art dies used bonded plate-like members. Hayashi ,r 3. Hayashi' s improvement is a plate-shaped portion ( abrasion portion) that is "detachably disposed" on the introduction portion main body so that the abrasion portion can be easily replaced once it is worn. Hayashi ,r 15. Kragle further provides evidence that it was known in the art to use conventional metal fastening or joining techniques, which include mechanical fastening and diffusion bonding, to bond the plates of extrusion dies. Kragle col. 9, 11. 50-59. Appellant contends it would not have been obvious to modify the die of Hayashi based on the teachings of Kragle because "the entire object of the invention of Hayashi is to detachably dispose the abrasion portion 5 (asserted second plate-shaped portion) to the introduction portion main body 4 (asserted first plate-shaped portion)." Appeal Br. 8. The Examiner provides a well-supported response to Appellant's arguments (Ans. 9-13), which we adopt as our own. We offer the following for emphasis. As stated by Appellant, "modifying the invention of Hayashi as asserted by the Examiner would have resulted in the die of Hayashi being nothing more than a replica of the prior art over which the invention of Hayashi is a direct improvement." Reply Br. 1. Appellant and the Examiner agree that Hayashi' s invention is an improvement over prior art dies, which bonded plate-shaped portions. Compare Ans. 10, with Reply Br. 1. Use of a patent as a reference is not limited to what the patentee describes as their own invention. In re Heck, 4 Appeal2018-006745 Application 14/556,516 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). Although Hayashi describes a die with a detachably disposed abrasion plate, Hayashi also provides evidence that dies with bonded plates were known in the art. Kragle provides further evidence that it was known in the art to bond the plates of extrusion dies. One cannot patent what was known in the art even if the prior art also discloses an improvement. Looking at the issue in another way, the evidence shows that various methods of attaching one plate to another in an extrusion die were known in the art and all would achieve their known function of securing the plates together. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Here, the predictable result is joining, which can be achieved by various known methods including bonding. Appellant has not identified a reversible error in the Examiner's obviousness analysis. Thus, we sustain the obviousness rejections. Non-Statutory Double Patenting Rejection The Examiner further rejects claims 1, 4, and 13-16 on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent 9,616,637 B2 in view of Hayashi, Kragle, and JP'806. Final Act. 9-10. Appellant has requested the Examiner hold the non-statutory double patenting rejection in abeyance. Appeal Br. 10. Because Appellant does not advance arguments against the rejection, we summarily sustain it. 5 Appeal2018-006745 Application 14/556,516 CONCLUSION We sustain the Examiner's rejections. DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE 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). AFFIRMED 6 Copy with citationCopy as parenthetical citation