Ex Parte Kondoh et al

Patent Trial and Appeal Board

May 31, 2016

12600709 (P.T.A.B. May. 31, 2016)

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.
12/600,709 11/18/2009 Katsuyoshi Kondoh 12112-0053 1288
22902 7590 06/01/2016
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
06/01/2016 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 KATSUYOSHI KONDOH, MAKOTO HOTTA, JINSUN LIAO,
KANTARO KANEKO, NORIO FUJII, HIROHITO KAMENTANI, and
AKIHIKO KOSHI
____________

Appeal 2014-009871
Application 12/600,709
Technology Center 1700
____________

Before PETER F. KRATZ, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s second or subsequent rejection of claims 1–7. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a process of producing a
magnesium alloy powder billet wherein a magnesium alloy plate is subjected
to plastic deformation under conditions to introduce a strain without
generating dynamic recrystallization. According to Appellants, the
magnesium material that is made has a fine crystalline structure and superior
mechanical properties (Spec. 4, ll. 16–26; 10, ll. 6–17).
Claim 1 is illustrative and reproduced below:
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Application 12/600,709

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1. A production method of an extrusion billet comprising
the steps of:
preparing a plate starting material comprising a
magnesium alloy and having a thickness of 3 mm to 10 mm;
performing a plastic deformation process at a rolling
reduction of 70% or more to said plate starting material at a
temperature of 250°C or lower to introduce a strain without
generating dynamic recrystallization;
producing powder by granulating the material after said
plastic deformation process; and
producing a powder billet by compressing said powder.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Kondoh ’268 US 2009/0263268 A1 Oct. 22, 2009
Kondo ’349 JP 2006-348349 A Dec. 28, 2006
(English Translation)

The Examiner maintains the following grounds of rejection:
Claims 1–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kondoh.1
We reverse the stated rejection. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Kondoh is the sole prior art evidence relied upon by the Examiner.2

1 The Examiner identifies the applied reference as JP 2006-348349 A or JP
(’349 A).
2 The Examiner principally refers to a non-idiomatic English language
translation of the applied Kondoh reference, of record, and both Appellants
and the Examiner also refer to portions of U.S. Patent Pub. No.
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Application 12/600,709

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Kondoh discloses a method that includes plastic working a
magnesium alloy powder material with rollers (¶¶ 25–31, 53–55; Fig. 1).
In maintaining the stated rejection, the Examiner finds, inter alia, that
Kondoh “discloses a method of producing an extrusion billet comprising:
preparing a tabular granular starting material comprising a magnesium alloy
and having a size of about 0.1-10 mm, which would meet the limitation of
the claimed plate starting material having a thickness of 3 mm to 10 mm”
(Non-final Act. 2–3) or that letting granular material disclosed in paragraph
[0027] “be a starting material” would have taught starting material in the
form of a plate because it would have been obvious to an ordinarily skilled
artisan “that machining and cutting of an ingot would produce the starting
granular material in various forms including [in] the instantly claimed plate
form” (Ans. 3).
Appellants argue, inter alia, that Kondoh employs a powder starting
material and does not teach preparing a plate starting material that is
subjected to a plastic deformation process as recited in the first two steps of
appealed claim 1 and the Examiner has not established that one of ordinary
skill in the art would have been led to modify Kondoh to subject a plate
starting material to the plastic working unit multi-stage rolling reduction
process of Kondoh, much less in a manner so as to provide a 70 percent or
more rolling reduction as required by Appellants’ claim 1 (App. Br. 11–19;
Reply Br. 2–6).
As argued by Appellants, the Examiner has not established that
Kondoh teaches or suggests employing a plate instead of powder as the

2009/0263268, which publication is a publication of a corresponding U.S.
Patent Application and serves as a better translation according to Appellants.
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Application 12/600,709

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starting material that is subjected to the plastic working unit multi-stage
rolling reduction process of Kondoh. The Examiner has not provided a
sufficient factual predicate to support the Examiner’s assertion that the
description provided in paragraph [0027] of the English language translation
of Kondoh with respect to granular material of a specified size that is
extracted from a magnesium alloy ingot would have obviously suggested a
magnesium alloy plate as the staring material. In this regard, Kondoh
repeatedly refers to a starting material powder as the material that is
subjected to the multi-stage roller treatment or granular material that is
employed as a starting material (¶¶ 25, 29).
Moreover, we concur with Appellants that certain portions of the
disclosure of Kondoh would have been understood as set forth in the
corresponding paragraphs of the U.S. published Application cited to by
Appellants (App. Br. 11–12; Reply Br. 3). In any event, the Examiner has
not established that the connected tabular granular material that is a product
of the plastic working that takes place in the pairs of rolls of Kondoh
corresponds to the claimed plate starting material that is subjected to plastic
deformation with the specified rolling reduction as required by Appellants’
claim 1 (Ans. 3–4).
On this record, the Examiner has furnished insufficient evidence to
support the Examiner’s conclusory theories as to how Kondoh’s disclosures
would have been understood to teach or suggest a process corresponding to
the process of Appellants’ claim 1. For reasons argued by Appellants, the
Examiner’s efforts fail to establish that Kondoh, the sole applied prior art
reference, furnishes sufficient evidence to establish the obviousness of a
method that corresponds to the claimed method to one of ordinary skill in
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the art and particularly without need for modification of the powder starting
material employed by Kondoh as urged by the Examiner (Ans. 4).
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“‘[R]ejections 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’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner has not otherwise carried the burden to address the
differences between the relied upon disclosures of Kondoh, as found and
expressed in the English language translation of Kondoh relied upon by the
Examiner and the claimed subject matter and adequately explained why,
regardless of the differences, one of ordinary skill in the art would have been
led by the teachings of Kondoh to a method corresponding to that claimed
by Appellants.
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants’ claims. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). Accordingly, we do not
sustain the Examiner’s rejection.

CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED