Ex Parte Ma

Patent Trial and Appeal Board

May 2, 2018

13870631 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/870,631 04/25/2013 ShuweiMa
23399 7590 05/04/2018
REISING ETHINGTON P.C.
755 W. Big Beaver Road
Suite 1850
TROY, MI 48084
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.
1626-3917-3 [IR-42158] 6466
EXAMINER
HORIKOSHI, STEVEN Y
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
05/04/2018 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):
docketing@reising.com
USPTOmail@reising.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUWEI MA 1
Appeal2017-004615
Application 13/870,631
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
DEBRA L. DENNETT, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1 and 4--24, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims on appeal are directed to a spark plug comprising, inter
alia, center and ground electrodes. The electrode material is a ruthenium-
based material that includes rhenium (Re) and tungsten (W). The Appellant
1 The real party in interest and the Applicant are said to be Federal-Mogul
Ignition Company. Appeal Brief dated August 1, 2016 ("App. Br."), at 4.
Appeal2017-004615
Application 13/870,631
discloses that the electrode material is more ductile than some comparable
ruthenium-based materials, but still maintains an acceptable level of erosion
and corrosion resistance. Spec. ,r 22.
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief. The limitation at issue is italicized.
1. A spark plug, comprising:
a metallic shell having an axial bore;
an insulator having an axial bore and being at least
partially disposed within the axial bore of the metallic shell;
a center electrode being at least partially disposed within
the axial bore of the insulator; and
a ground electrode being attached to the metallic shell;
the center electrode, the ground electrode or both the
center and ground electrodes including a ruthenium-based
electrode material having ruthenium (Ru), rhenium (Re) and
tungsten (W), wherein the electrode material includes rhenium
(Re) from about 0.5wt% to 2wt%, inclusive, tungsten (W) from
about 0.5wt% to 2wt%, inclusive, and ruthenium (Ru) is the
single largest constituent of the electrode material on a weight
percentage (wt%) basis.
App. Br. 26.
The claims on appeal stand rejected as follows:
(1) claims 1, 4--11, 13-16, and 18-24 under 35 U.S.C. § I03(a) as
unpatentable over Menken et al. 2 in view ofWatanabe3 and Joo et al.; 4
2 EP 1123985 Al, published August 16, 2001 ("Menken"). We refer to the
English translation of record in the instant Application.
3 US 2005/0194878 Al, published September 8, 2005 ("Watanabe").
4 US 2003/0011013 Al, published January 16, 2003 ("Joo").
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Application 13/870,631
(2) claim 12 under 35 U.S.C. § I03(a) as unpatentable over
Menken in view of Watanabe and Joo, and further in view ofLykowski et
al. 5 and L ykowski et al.; 6 and
(3) claim 17 under 35 U.S.C. § I03(a) as unpatentable over
Menken in view of Watanabe and Joo, and further in view of Eaton et al. 7
B. DISCUSSION
The Examiner finds Menken discloses a spark plug comprising, inter
alia, an electrode comprising a ruthenium-based material including rhenium
(Re) and rhodium (Rh) as auxiliary components. Non-Final Act. 8. 8 The
Examiner finds Menken "is silent as to the electrode material also including
tungsten (W)." Non-Final Act. 8.
The Examiner finds Watanabe discloses a platinum-based chip for a
spark plug9 having at least one of iridium (Ir), rhenium (Re), and tungsten
(W) in a range from 3 to 25 percent, wherein Ir, Re, and W have higher
melting points than platinum (Pt) and have a characteristic of minimizing
crystal grain growth of the platinum-based chip. Non-Final 8 (citing
Watanabe ,r 16).
The Examiner finds Joo discloses that crystal grains grow when noble
metals, including platinum and ruthenium, are exposed to heat. Non-Final 8
( citing Joo ,r,r 27-29). Therefore, the Examiner concludes that it would have
5 US 2009/0107440 Al, published April 30, 2009 ("Lykowski 440").
6 US 6,412,465 Bl, issued July 2, 2002 ("Lykowski 465").
7 US 3,868,530, issued February 25, 1975 ("Eaton").
8 Non-Final Office Action dated March 8, 2016.
9 Watanabe discloses that the platinum chip is joined to at least one of the
confronting portions of the center electrode and the ground electrode.
Watanabe ,r 7.
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Appeal2017-004615
Application 13/870,631
been obvious to one of ordinary skill in the art to modify Menken's
ruthenium-based electrode to include rhenium and tungsten "in order to have
the predictable result of reducing crystal grain growth, as taught by
Watanabe." Non-Final 8-9.
As for the concentration of rhenium and tungsten recited in the claims
on appeal, 10 the Examiner finds Menken teaches that the amount of the
auxiliary or minor component (i.e., iridium, platinum, palladium, rhenium,
or a mixture thereof) is 5 percent by mass or more. The Examiner also finds
Watanabe discloses that the amount of the minor component (i.e., at least
one of iridium, rhenium, and tungsten) is 3-25 wt%. Non-Final 9. The
Examiner finds "Menken is silent as to the amount of rhenium and tungsten
when the two are included together in a ruthenium based alloy." Non-Final
9. Nonetheless, the Examiner explains:
[W]hen the general conditions of the claim are met, it is
generally not inventive to find optimum or workable ranges
through routine experimentation. See MPEP §2144.05(II)(A)[.]
As seen in Watanabe et al., the amount of grain growth
inhibitor of the additive as a whole (Iridium, Rhenium and
Tungsten together) is from 3 to 25 wt%. (Paragraph 16[.])
Therefore, it would be [ sic, have been] obvious to one having
ordinary skill in the art to modify the device to have 3 to 25 wt
% of grain growth inhibiting additive ( or a little more or a little
less, depending on if the interaction with ruthenium and grain
growth inhibitors is slightly stronger or slightly weaker as
compared to platinum), particularly, W and Re, for example 2%
10 Independent claim 18 recites that "the electrode material includes rhenium
(Re) from about 0.1 wt% to 5wt%, inclusive, tungsten (W) from about
0.1 wt% to 5wt%, inclusive." App. Br. 28. Similar to claim 1, independent
claim 24 recites that "the electrode material includes rhenium (Re) from
about 0.5wt% to 2wt%, inclusive, tungsten (W) from about 0.5wt% to
2wt%, inclusive." App. Br. 29.
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Application 13/870,631
and 2% and Rhodium (Rh) in an amount of 8wt%, since it
would be [ sic, have been] obvious to find optimum or workable
ranges. It is noted that this makes a total of 4 wt % grain
growth inhibitor (satisfies the 3-25 wt% range of Watanabe et
al.) and a total of 10 wt %[1lJ oxidation resistance material
(satisfies 8 to 32 % range of Menken et al. as well as the at least
one component being greater than 5 percent by mass) .... [ 12J
Non-Final Act. 9--10 (emphasis added).
The Appellant argues that Watanabe discloses adding tungsten to a
platinum-based alloy, not a ruthenium-based alloy, to impact grain growth.
App. Br. 10. The Appellant recognizes that Joo discloses that "platinum and
ruthenium have similar characteristics, such as the growth of crystal grains,"
but argues that Joo does not disclose that "platinum and ruthenium
experience similar rates or types of grain growth." App. Br. 10. Thus,
"while Watanabe may disclose adding rhenium or tungsten to a platinum-
based alloy for suppression of grain growth during operation of the spark
plug," the Appellant argues that "the mere possibility that this same benefit
may occur with Menken's [ruthenium-based] alloy is not sufficient on its
own to support the legal conclusion of obviousness." App. Br. 22. In that
regard, the Appellant argues that "[t]he Examiner has failed to show that the
prior art would have directed one to make the modifications necessary to
convert the ruthenium-based alloy of Menken having an auxiliary precious
metal in an amount of 5wt% or more to a ruthenium-based alloy including
0.5-2wt% rhenium and 0.5-2wt% tungsten." App. Br. 14.
11 It appears that "10 wt%" should be 8 wt% based on the Examiner's
example which includes 8 wt% rhodium.
12 The Examiner does not make separate findings as to the ranges of rhenium
and tungsten recited in claim 18, presumably because 2wt% rhenium and
2wt% tungsten also fall within the ranges recited in claim 18.
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Application 13/870,631
The Appellant's arguments are persuasive of reversible error. We
recognize that "where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). The
Examiner, however, has not shown that the general conditions of claims 1,
18, and 24 are disclosed in the prior art. That is, the prior art relied on by the
Examiner (i.e., Watanabe) discloses the amount of tungsten and rhenium in a
platinum-based electrode material, not a ruthenium-based electrode material
as claimed.
The Examiner recognizes that ruthenium and platinum are different
elements and thus, "one having ordinary skill would expect some possibility
of variation of the optimum or workable range." Ans. 14. 13 The Examiner,
however, has failed to show any correlation between Watanabe's platinum-
based electrode material and Menken's ruthenium-based electrode material,
apart from the fact that both platinum and ruthenium exhibit grain growth
when heated.
On this record, the Examiner has not directed us to any evidence
showing that an amount of tungsten and an amount of rhenium within the
claimed ranges would have been expected to minimize grain growth in
Menken's ruthenium-based electrode material. To the extent that mitigating
oxidation and minimizing grain growth are related to one another, 14 Menken
discloses that more than 5% by mass 15 rhenium ( or more than 5% by mass of
13 Examiner's Answer dated November 21, 2016.
14 See Ans. 2-3 (finding that minimizing grain growth mitigates the effects
caused by oxidation).
15 We interpret more than 5% by mass to include 5.01 % by mass.
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Application 13/870,631
a mixture of iridium, platinum, palladium, and/or rhenium) improves
oxidation resistance in Menken's ruthenium-based electrode material.
Menken 4--5. We recognize that the more than 5% by mass disclosed in
Menken may be satisfied by a mixture of, for example, 2% by mass rhenium
and 3.01 % by mass platinum. See Ans. 15. Nonetheless, we are still left
with the fact that the Examiner has not directed us to any evidence showing
that an amount of tungsten within the ranges recited in claims 1, 18, and 24
(in combination with rhenium) would have been expected to minimize grain
growth in Menken's ruthenium-based electrode material.
For the reasons set forth above, the§ 103(a) rejections on appeal are
not sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
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