Ex Parte Morimoto et al

Patent Trial and Appeal Board

Sep 14, 2016

11575928 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111575,928 03/23/2007
54070 7590 09/16/2016
HITACHI METALS, LTD.
C/O KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Hideyuki Morimoto
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.
60303.66/ok 3806
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
JKEATING@KBIPLA W.COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte HIDEYUKI MORIMOT0 1
and Tomoori Odaka
Appeal2015-002009
Application 11/575,928
Technology Center 1700
Before CHUNG K. PAK, MARK NAGUMO, and A VEL YN M. ROSS,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Hideyuki Morimoto and Tomoori Odaka ("Morimoto") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1, 3, and 6,
which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 The real party in interest is identified as Hitachi Metals, Ltd. (Appeal
Brief, filed 26 June 2014 ("Br."), 2.)
2 Office Action mailed 27 February 2014 ("Final Rejection"; cited as "FR").
Appeal2015-002009
Application 11/575,928
A. Introduction3
OPINION
The subject matter on appeal relates to permanent rare-earth-iron-
boron sintered magnets said to have both high coercivity (Hc1) and high
remanence (Br) compared to prior art magnets. Such magnets are said to
have two phases: a main magnetic R2T14B phase, where Risa rare earth
(usually Nd or Pr), Tis a transition metal consisting essentially of iron, and
Bis boron; and an R-rich grain boundary phase that is a low-melting
nonmagnetic phase. (Spec. 2 [0003].) The '928 Specification teaches that
high coercivity magnets are made by partially replacing Nd or Pr with Dy,
Ho, or Tb. (Id. at 3 [0005].) Moreover, the Specification reveals, small
amounts of Cu or Al, initially regarded as impurities, are now regarded as
"almost essential elements that should be added to increase the coercivity of
the R-T-B based sintered magnet." (Id. at 3--4 [0006].) Unfortunately, Dy,
Tb, and Ho are said to be scarce, while the demand for highly refractory
magnets for electric car motors continues to rise. (Id. at 5 [001 OJ.)
Moreover, Cu and Al are said to decrease the remanence. (Id.)
The inventors seek patent protection for rare-earth sintered magnets
that are said to have high coercivity and high remanence compared to
magnets to which Al or Cu is added. (Id. at [ 0011].) Such magnets are said
to be achieved by including small amounts of an additive metal A, that is
3 Application 11/575,928, Rare earth sintered magnet and method for
production thereof, filed 23 March 2007, as the national stage under
35 U.S.C. § 371 of PCT/JP2006/314076, filed 14 July 2006, claiming the
benefit of five distinct applications filed in Japan. We refer to the
'"928 Specification," which we cite as "Spec."
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Appeal2015-002009
Application 11/575,928
Ag, Au, or Ni, while keeping the amount of Al to a maximum of 0.4 at%.
(Id. at 6 [0012]-[0016].) According to the '928 Specification, in the prior
art, "the effect of increasing the coercivity to be achieved by adding a very
small amount of Ag, Ni or Au was overwhelmed by the effect of increasing
the coercivity to be achieved by adding Al, Cu or Dy and was quite
unnoticeable." (Id. at 15 [0045].) The Specification indicates that the
additive metal is present in the (non-magnetic) grain boundary phase of the
sintered magnet, although the precise mechanism by which the coercivity is
increased is as yet unknown. (Id. at 16 [0047].)
Claim 1 is representative of the dispositive issues and reads:
A magnet comprising:
12.0 at% to 15.0 at% of rare-earth element(s), which is at
least one element selected from the group consisting of Nd,
Pr, Gd, Tb, Dy and Ho and at least 50% of which is Nd;
5.5 at% to 8.5 at% of boron (B);
a predetermined percentage of additive metal A; and
iron (Fe) and inevitably contained impurities as the
balance; wherein
the predetermined percentage of additive metal A includes
one of
0.005 at% to 0.10 at% of silver (Ag) and
0.005 at% to 0.10 at% of gold (Au); and
the magnet is a rare-earth sintered magnet; wherein
the inevitably contained impurities include Al, of which
the content is 0.4 at% or less.
(Claims App., Br. 8; some indentation, and emphasis added.)
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Appeal2015-002009
Application 11/575,928
The Examiner maintains the following ground of rejection4 :
Claims 1, 3, and 6 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Hirosawa5 and Fujii.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Morimoto argues that the Examiner erred harmfully in combining the
teachings of Fujii to add up to 1. 5 atomic% silver (Ag) to improve the
magnetic properties of non-sintered thin film permanent magnets with the
teachings of Hirosawa, which are directed to sintered rare-earth-iron-boron
magnets. Morimoto points out that the two types of magnets have very
different structures, as shown in Fujii, Figs. 1 and 2, below. (Id. at 5.)
{Fig. 1: R-Fe-B non-sintered, columnar main phases}
{Fig. 2: sintered magnet without columnar main phases}
4 Examiner's Answer mailed 7 October 2014 ("Ans.").
5 Satoshi Hirosawa et al., Magnetically anisotropic sintered magnets,
WO 89/08318 (1989).
6 Hideo Fujii et al., JP 07-272929, Rare-earth element-Fe-B thinfilm
permanent magnet, (1995) (Patent Abstracts of Japan machine-assisted
translation.)
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Appeal2015-002009
Application 11/575,928
Morimoto argues further that Fujii teaches "that the magnetic properties of a
magnet material will be largely influenced by fine texture." (Br. 5, 11. 10-
127.) Moreover, according to Morimoto, neither Hirosawa nor Fujii suggests
that adding Ag to a sintered magnet would improve the magnetic properties.
In particular, Morimoto urges that Fujii shows that a magnet according to
Fig. 2 has a maximum energy product (BM)max8 of14 MGOe, whereas
magnets of Fig. 1 have (BM)max values that exceed 14 MGOe. (Br. 6, citing
Fujii ,-i,-i [0023] and [0019], respectively). Thus, in Morimoto's view, the
Examiner points to no evidence that supports the extension of Fujii's results
with non-sintered magnetic films to sintered films having a distinct structure.
The Examiner responds that the combination of the teachings of the
references must be considered, and that because Fujii teaches adding up
to 1 at% Ag to a rare earth magnet to improve the maximum energy product,
it would have been obvious to add up to 0.1 at% Ag to the sintered magnet
described by Hirosawa. (Ans. 4, 11. 1-12, citing Fujii ,-i,-i [0002] and [0014].)
The Examiner finds further that Fujii [0003] provides a general teaching that
addition of silver improves the properties of rare earth magnets having the
7 Morimoto quotes a translation provided by the Japanese patent counsel,
(Br. 5-6, nn.1-3), which are in more standard English form than the
machine-assisted translation of record. We adhere to the record copy, noting
that "Appellant has not independently verified the accuracy of the translation
[of paragraphs [0004], [0023], and [0019]" (Br. 5 n.l), and noting that our
Rules do not provide for the admittance of new evidence to the record on
Appeal without good cause (37 C.F.R. § 41.37(c)(2)). Nonetheless, we also
note that the proffered translations are consistent with the translation of
record, and are easier to read.
8 Energy product (BM)max is said to be the product of a residual magnetic
flux density (Br) and coercive force (iHc) (Fujii 2, 11. 1-3).
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Appeal2015-002009
Application 11/575,928
formula R-Fe-B "regardless of sintered or non-sintered." (Ans. 4, 11. 15-18.)
The Examiner concludes, "[ s ]ince appellant has not provided any factual
evidence to show that incorporating Fujii would have upset the magnet of
Hirosawa et al. appellant's argument is not found convincing." (Ans. 4,
11. 12-14; 5' 11. 2--4.)
Our review of Fujii indicates the weight of the evidence supports
Morimoto. Fujii states that "Ag is included as the 4th component and the
evaluation is explained in full detail later on as occasion demands,
[permanent magnet composition of the present invention]." (Fujii 2 [0003];
emphasis added.) Thus, Fujii directs its comments to magnets having the
thin film non-sintered columnar phases illustrated in Fig. 1, supra.
Moreover, while Fujii does refer in paragraph [0014] to the efficacy of
replacing a part of Fe by Ag, and the increased magnetic isolation between
the "grain children" upon addition of Ag, these remarks are expressly
directed to "the R-Fe-B system magnet of the present invention"
(Fujii [0014], 1st sentence), not to rare earth magnets generally.
In the absence of more detailed fact-finding and analysis by the
Examiner, we are not presented with a sufficient evidentiary basis to
conclude that a prima facie case of obviousness has been established.
Therefore, the Examiner concluded erroneously that the burden has been
shifted to Morimoto to demonstrate that the artisan would have expected the
sintered magnets described by Hirosawa to be affected adversely by the
presence of small amounts of silver. 9
9 Although not necessary to our Decision, in this regard, it has not escaped
our notice that the minimum amount of Ag added in the examples presented
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Appeal2015-002009
Application 11/575,928
C. Order
It is ORDERED that the rejection of claims 1, 3, and 6 is reversed.
REVERSED
by Fujii is 0.5 at% (see Fujii, Fig. 5, not reproduced here), which is five
times the maximum amount permitted by the claims. Moreover,
the '928 Specification shows, in Fig. 1 (not reproduced here), that the
coercivity, HcJ, falls off quickly after 0.1 at% Ag. Although not raised by
Morimoto, the further determination that any range of added Ag less
than 1.5 at% would have been obvious appears to require more evidentiary
support than Fujii readily provides.
7