13509196 - (D) (P.T.A.B. Mar. 5, 2019)

Ex Parte Nakai et al

Patent Trials and Appeals BoardMar 5, 2019

13509196 - (D) (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/509, 196 05/10/2012 Junichi Nakai 22850 7590 03/07/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 398039US99PCT 2079 EXAMINER RICKMAN, HOLLY C ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 03/07/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUNICHI NAKAI and YUKI TAU CHI Appeal2017-004987 Application 13/509,196 Technology Center 1700 Before DONNA M. PRAISS, MICHAEL G. McMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1--4, 7, 8, 11, 12, and 20-22. An oral hearing was held on February 5, 2019. 1 We have jurisdiction under 35 U.S.C. Â§ 6(a). We AFFIRM. 1 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal2017-004987 Application 13/509,196 The claimed invention is directed to a film comprising an Ag alloy comprising Ag and having a film thickness ranging from 150 to 270 nm with a surface roughness Ra of 1.0 nm or less. App. Br. 2. The film is used to rapidly cool a recording medium after heating in the recording process (thermal diffusion). Spec. 3. Claim 1 is illustrative of the inventive subject matter and is reproduced below: 1. A film, comprising a Ag alloy comprising Ag, and having a surface roughness Ra of 1. 0 nm or less, a thermal conductivity of 100 W /(mÂ· K) or more, a thermal diffusivity of 4.0 x 10- 5 m 2/s or more, and a film thickness ranging from 150 to 270 nm wherein the Ag alloy comprises 0.05% to 0.8% by atom of at least one of Nd and Y and 0.05% to 0.5% by atom of Bi. Appellants2 (see generally Appeal Brief) request review of the Examiner's decision to finally reject claims 1--4, 7, 8, 11, 12, and 20-22 under 35 U.S.C. Â§ I03(a) as unpatentable over Tauchi (US 2006/0182991 Al, published August 17, 2006). Final Act. 4; App. Br. 3. 3 Appellants present arguments only for independent claim 1 and dependent claims 2, 3, 20, and 21. See generally Appeal Brief. We select 2 Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.) is identified as the real party in interest. App. Br. 1. 3 The Examiner's rejection statement has been modified to reflect the cancellation of claim 10. App. Br. 3; Ans. 3. We also note that the Examiner withdrew the provisional rejection of claims 1--4, 7, 8, 10-12, and 2 Appeal2017-004987 Application 13/509,196 claim 1 as representative of the claims on appeal. Dependent claims 4, 7, 8, 11, 12, and 22 stand or fall with independent claim 1. App. Br. 4. We address dependent claims 2, 3, 20, and 21 separately. OPINION After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's rejection of claims 1--4, 7, 8, 11, 12, and 20-22 for the reasons presented by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. Claim 1 We refer to the Examiner's Final Office Action for a complete statement of the rejection of claim 1. Final Act. 4---6. Tauchi is directed to an Ag alloy film that can function as a thermal diffusion film. Tauchi ,r 8. Briefly, the Examiner finds that Tauchi discloses an Ag alloy film having surface roughness within the claimed range for surface roughness of 1.0 nm or less. Final Act. 5; Tauchi ,r 158, Tables 1, 2, 9, 10. The Examiner also finds that Tauchi discloses Ag alloy films having thicknesses of 50-200 nm that also overlap the claimed range for thickness of 150 to 270 nm. Final Act. 5---6; Tauchi ,r 65. The Examiner determined that a prima facie case of obviousness exists because the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, absent a showing to the contrary. Final Act. 5---6. 20 on the ground of nonstatutory double patenting in view of the submission of a Terminal Disclaimer. Ans. 5. 3 Appeal2017-004987 Application 13/509,196 There is no dispute by Appellants that Tauchi teaches an Ag alloy film having a surface roughness within the claimed range for this property. App. Br. 5. Appellants' principal argument is centered on whether Tauchi teaches the claimed surface roughness for a film having a claimed thickness of 150 to 270 nm. Id. Appellants acknowledge that Tauchi teaches films having thicknesses that overlap the claimed thickness range, but argue that Tauchi only exemplifies the claimed roughness for films having a thickness no greater than 100 nm, outside the claimed range. Id. Thus, Appellants argue that, absent undue experimentation, there is no reasonable expectation that Tauchi's thicker films will have the claimed surface roughness. Id. Appellants also contend that Tauchi's disclosure teaches away from the claimed invention. Id. at 28-29. We are unpersuaded of Examiner error by these arguments. It is well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992). As noted above, the Examiner finds Tauchi discloses a surface roughness of less than 1 nm for Ag alloy films is desirable as indicative of high durability. Ans. 6-7; Tauchi ,r 158. There is no disclosure in Tauchi that associates this surface roughness range to a film having a thickness of only 100 nm. Thus, the Examiner has provided a reasonable basis for one skilled in the art to infer that it would be desirable for Tauchi's films having thicknesses of 50-200 nm to also have a surface roughness of less than 1 nm. Appellants also argue that Tauchi only exemplifies Ag alloy films having a thickness of no greater than 100 nm as having a surface roughness 4 Appeal2017-004987 Application 13/509,196 of less than 1 nm. App. Br. 15-16. Appellants further assert that they discovered that surface roughness increases at a rate of more than 50% higher as the thickness of the deposited Ag alloy film increases from 50 to 100 nm than it does as the thickness of the deposited Ag alloy film increases from 150 to 270 nm. Id. at 26. Thus, Appellant argues that Tauchi would not have led and enabled persons having ordinary skill in the art to make and use the claimed Ag alloy film without undue experimentation because Tauchi does not recognize that difference. Id. We are unpersuaded of Examiner error by these arguments. It is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellants. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[ A ]11 disclosures of the prior art, including unpreferred embodiments, must be considered." (Quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference's disclosure is not limited to its examples). Tauchi' s exemplified embodiments are preferred embodiments. Tauchi ,r 99. Appellants have not directed us to any portion of Tauchi that limits the desirable surface roughness of less than 1 nm to just the exemplified Ag alloy films having a thickness of no more than 100 nm. Even assuming arguendo that one skilled in the art would have expected from Tauchi' s disclosure that surface roughness increases linearly at the same fast rate over the full range of film thicknesses from 50-300 nm as for film thicknesses of 100 nm or less, as allegedly shown in Appellants' 5 Appeal2017-004987 Application 13/509,196 Figure 6 (App. Br. 13)4, extrapolating the plotted line based on this assumption suggests that there is an overlapping range above a thickness of 150 nm where the surface roughness Ra is 1.0 nm or less, as claimed. See Figure 6 below. FIG. 6 50 100 150 200 250 300 FILM THICKNESS (nm) Figure 6 is a graph showing the relationship between surface roughness and the thickness of a Ag alloy film. Based on Appellants' contention, Tauchi enables one skilled in the art to make and use the claimed invention over a limited overlapping range and, thus, supports the Examiner's conclusion of obviousness. See In re 4 Appellants state that Tauchi' s Tables 9 and 10 have surface roughness Ra values ranging from 0.50--0.58 nm that are consistent with the results reported in Appellants' Figure 6 for Ag-Bi-Nd alloy films having thicknesses ranging from 50 to 100 nm. App. Br. 5. However, Appellants have not directed us to any evidence that adequately establishes that Tauchi's data is in fact represented in that Figure. Given that the reference to Tauchi and the instant application are owned by the same assignee (Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.)) and share two common inventors, the reference to Tauchi is Appellants' own prior art and Appellants are in the best position to explain the reference. 6 Appeal2017-004987 Application 13/509,196 Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.) Therefore, Appellants' arguments do not point to error in the Examiner's conclusion of obviousness. Appellants also allege impermissible hindsight because the Examiner noted that Appellants' Figure 6 essentially agrees with Tauchi for the desirability of a surface roughness of less than 1 nm. App. Br. 16. We are also unpersuaded by this argument. As discussed above, the Examiner has provided a reasonable basis for one skilled in the art to infer from Tauchi's disclosure that it would be desirable for Tauchi's films having thicknesses of 50-200 nm to also have a surface roughness of less than 1 nm. The Examiner's reference to Appellants' Figure 6 (Final Act. 5-6) merely notes that Tauchi is consistent with the Specification in recognizing that a surface roughness of less than 1 nm is desirable for an Ag alloy film. Appellants contend that Figure 6 unexpectedly shows that films having a thickness ofup to 270 nm have a surface roughness of 1 nm or less. App. Br. 13-14. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F .2d 1048, 1052 (CCP A 197 6). The burden of establishing unexpected results rests on Appellants. Appellants may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and 7 Appeal2017-004987 Application 13/509,196 attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). After weighing Appellants' evidence in support of patentability, we agree with the Examiner's determination that a preponderance of the evidence weighs in favor of obviousness. Ans. 8-9. We first note that there is no recognition in the Specification that the data shown in Figure 6 describes anything unexpected. Spec. 25-26. Instead, the discussion of Figure 6 points out the desirability of a film having a surface roughness of 1 nm or less. Id. at 26. Further, as both Appellants and the Examiner recognize, the data shown in Figure 6 is for a single Ag alloy composition. Ans. 8; App. Br. 14. Appellants contend that nonobviousness of a broader claimed range can be supported by evidence from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data, which would allow the artisan to reasonably extend the probative value thereof. App. Br. 20. However, Appellants have not adequately explained why this single composition is representative of the broad scope of Ag alloy compositions claimed so as to provide an adequate basis to support a conclusion that other embodiments falling within the claim will behave in the same manner. Moreover, Appellants' Reply Brief dated January 25, 8 Appeal2017-004987 Application 13/509,196 201 7 does not address the deficiencies of the showing noted by the Examiner. Thus, on this record, Appellants have not adequately explained why the evidence shows the claimed roughness would have been unexpected by one of ordinary skill in the art and that the testing is reasonably commensurate in scope with the claims. Claims 2, 3, 20, and 21 We refer to the Examiner's Final Office Action for a complete statement of the rejection of claims 2, 3, 20, and 21. Final Act. 4---6. For these claims, Appellants also rely of the data shown in Figure 6 to establish unexpected results. App. Br. 29-33. After further consideration of the data shown in Figure 6 as establishing unexpected results, we maintain our determination that Appellants have not adequately explained why the evidence shows an unexpected improvement or is reasonably commensurate in scope with the claims for the reasons presented above and given by the Examiner. Accordingly, we affirm the Examiner's prior art rejection of claims 1--4, 7, 8, 11, 12, and 20-22 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejection of claims 1--4, 7, 8, 11, 12, and 20-22 under 35 U.S.C. Â§ 103(a) is affirmed. 9 Appeal2017-004987 Application 13/509,196 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 10