Ex Parte Koyata et al

Patent Trial and Appeal Board

Dec 11, 2012

11121937 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ATSUSHI KOYATA and TAKAAKI SORIN
__________

Appeal 2011-001480
Application 11/121,937
Technology Center 1600
__________

Before LORA M. GREEN, ERICA A. FRANKLIN, and
RAMA G. ELLURU, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1, 2, and 19.
1
We have jurisdiction under 35
U.S.C. § 6(b).

1
Claims 3-5, 9, 10, 13, and 15-18 are also pending, but stand withdrawn
from consideration (Supplemental Appeal Brief filed September 30, 2009
(hereinafter, App. Br.) 2).
Appeal 2011-001480
Application 11/121,937

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. A magnetic material comprising a plurality of magnets that are
arranged in contact one with another in parallel to a direction of
magnetization in such a manner that south and north poles of adjacent
magnets are reversed alternately, wherein the magnetic material has at
least one peak of a magnetic force of 600 gausses or more in a
magnetic pole surface.

The following ground of rejection is before us for review:
Claims 1, 2, and 19 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Chen
2
or Somogyi
3
as combined with Li
4
(Ans. 3).
We affirm.

ANALYSIS
According to the Specification, the “invention relates to a magnetic
material for collecting magnetic particles, a method of collecting magnetic
particles using the magnetic material, and an apparatus for using the
magnetic material” (Spec. 1). The Specification thus teaches “a magnetic
material for collecting magnetic particles, the magnetic material including a
plurality of magnets that are arranged in contact one with another in parallel
to a direction of magnetization in such a manner that south and north poles
of adjacent magnets are reversed alternately” (id. at 3).

2
Chen et al., US 6,132,607, issued Oct. 17, 2000.
3
Somogyi et al., US 6,292,680 B1, issued Sep. 18, 2001.
4
Li et al., US 4,988,618, issued Jan. 29, 1991.
Appeal 2011-001480
Application 11/121,937

3
According to the Specification:
The magnetic material of the present invention can be
produced by arranging a plurality of the above-mentioned
magnets in contact with each other in parallel to the direction of
magnetization in such a manner that the south and north poles
of adjacent magnetic poles are reversed alternately. Even when
a space is present between the magnets, the magnets are
considered to substantially contact with each other as long as
the magnetic material is constituted integrally and the desired
magnetic force is sufficiently obtained. The term “in contact”
in the present invention includes the case in which the magnets
substantially contact each other in this manner. However, it is
preferable that no space is present between the magnets.

(Id. at 10 (emphasis added).)
The Specification teaches further:
In contrast, in the case of the magnetic material of the
present invention, a plurality of magnets are arranged in parallel
to the direction of magnetization in such a manner that the
south and north poles of adjacent magnets are reversed
alternately. Thus, it is found that strong magnetic force can be
obtained at the sites where the magnets contact each other in the
magnetic material (hereinafter, this being also referred to as
“layered portion”) and the magnetic force is weak in the central
portion of each magnet. That is, in the single magnet-magnetic
material, a strong magnetic force can be obtained only at the
end portion of the magnet in a pole surface having a certain
fixed area. In contrast, the magnetic material of the present
invention has such a feature that strong magnetic force is
obtained at a plurality of sites of the pole surface of the
magnetic material since a plurality of the magnets are layered to
constitute the magnetic material. In other words, the magnetic
material of the present invention has at least one peak of
magnetic force in the pole surface. “Having a peak” means that
the magnetic force at a point in the magnetic pole surface is
greater than the magnetic forces at points on both sides of the
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Application 11/121,937

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above-mentioned point in the cross-sectional direction of the
magnets, with this point being called a “peak”.

(Id. at 8-9.)
The Examiner‟s rejects claims 1, 2, and 19 as being rendered obvious
by Chen or Somogyi as combined with Li (Ans. 3-4). Claims 2 and 19 stand
or fall with claim 1 (App. Br. 4). As we agree with the Examiner‟s finding
and conclusions, we adopt them as our own.
Appellants argue that the combination based on Chen does not teach
the claim 1 requirement that the “plural magnets be arranged „in contact one
with another‟” (id. at 5). Appellants acknowledge that Chen states at
columns 3 and 9 that the magnets “can be arranged „in contact with one
another‟” (id. at 6). Appellants assert, however, that Figure 1 of Chen
“unequivocally demonstrates that what Chen means by „in contact with one
another‟ is, at best, that the magnetic fields of his individual magnets are „in
contact with one another‟ as the individual magnets 27 themselves in Figure
1 of Chen are clearly physically separate from one another when arranged in
channel 25” (id.).
Appellants‟ arguments are not convincing. Claim 1 requires “a
plurality of magnets that are arranged in contact one with another.” As
defined by the Specification, “contact” as used in the claim does not require
direct contact, but encompasses situations in which there may be space
between the magnets, but the desired magnetic force is obtained (see Spec.
10). That definition of “contact” does not exclude Appellants‟
characterization of the Chen reference.
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Application 11/121,937

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Moreover, we disagree with Appellants‟ characterization that Chen
does not teach magnets that are not in direct contact with one another.
Figure 1 of Chen, relied upon by Appellants, is reproduced below.

Figure 1 of Chen is a “perspective view of the magnetic system” taught by
Chen (Chen, col. 8, ll. 48-49). As characterized by the Appellants, Figure 1
demonstrates that magnets 27 have a space between them in channel 25.
Chen specifically teaches that the “magnets are arranged on one side
of the channels and are in contact with one another to create a magnetic
field” (id. at col. 3, ll. 38-40). Further, in describing Figure 1, Chen
specifically states that “[t]he magnets 27 are in contact with one another”
(id. at col. 9, ll. 20-21).
“[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.” Hockerson-
Halberstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951, 956 (Fed. Cir.
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Application 11/121,937

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2000) (holding that the drawings could not be relied upon to construe
whether the term “central longitudinal groove” required that the width of the
groove be less than the combined width of the fins). “Ordinarily drawings
which accompany an application for a patent are merely illustrative of the
principles embodied in the alleged invention claimed therein and do not
define the precise proportions of elements relied upon to endow the claims
with patentability.” In re Olson, 212 F.2d 590, 592 (CCPA 1954).
In this case, given Chen‟s explicit teaching that the magnets are in
touch with each other, the ordinary artisan would understand that Figure 1 is
illustrative of the invention, but does not describe the precise proportions.
Thus, the fact that some space can be seen between the representations of the
magnets (element 27) in Figure 1 does not obviate the specific teaching of
the disclosure of Chen that the magnets are in contact with one another.
Similarly, as to the rejection as it is based on Somogyi, Appellants
assert that “[w]hile the fields of the magnets interact, Somogyi is quite
careful in describing the first and second magnets as being „in close
proximity‟ to one another (see, for example, column 2, lines 24-26 and lines
46-54)” (App. Br. 7). That argument is not found to be convincing, because,
as discussed above, “contact” as defined in the Specification does not
exclude that there is space between the magnets. That definition of contact,
therefore, does not exclude the configuration of Somogyi, wherein the
magnets are in close proximity to one another.
Appellants argue further that claim 1 describes “a magnet
arrangement that is quite different from anything disclosed or suggested” by
the prior art of record, as arranging the magnets in contact with one another
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Application 11/121,937

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“provides a unique distribution of strong magnetic forces” (id. at 7-8 (citing
Spec. 9 and Fig. 8)). According to Appellants, the “magnetic materials
according to the present invention having at least one peak of a magnetic
force of 600 gausses or more in a magnetic pole surface are
superior for collecting magnetic particles in, e.g[.], an immunoassay while
similar materials not including at least one peak of 600 gausses or more are
substantially inferior” (id. at 8-9).
Appellants‟ arguments are not convincing. As argued by Appellants
and as set forth at pages 8-9 of the Specification (set forth above), it is
arranging the magnets in contact with one another that allows for the unique
distribution of the magnetic forces. But as discussed above, both Chen and
Somogyi teach the configuration of magnets required by claim 1. As to the
limitation of “wherein the magnetic material has at least one peak of a
magnetic force of 600 gausses or more in a magnetic pole surface,” the
Examiner relies on Li for teaching a configuration of magnets that are
arranged such that the poles of adjacent magnets are alternated, which
results in an increase in the magnetic field from 500-600 Gauss to 1400-
1600 Gauss. We note further that Appellants have not pointed out how the
Examiner‟s fact finding as to Li is in error.

Appeal 2011-001480
Application 11/121,937

8
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as being
rendered obvious by Chen or Somogyi as combined with Li. Claims 2 and
19 fall with claim 1.

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).

AFFIRMED

cdc