Ex Parte Nakata et al

Patent Trial and Appeal Board

Aug 3, 2016

11943207 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111943,207 11120/2007 Mamoru NAKATA
22850 7590 08/05/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
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.
318663USOX 3040
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
patentdocket@oblon.com
oblonpat@oblon.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 MAMORU NAKATA,
YUUICHI YAMADA, KOJI ITAKURA, YOSHIO OKADA,
YOSHIHITO KAWAMURA, and MICHIAKI YAMASAKI
Appeal2014-006740
Application 11/943,207
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
JULIA HEANEY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1 and 13 under 35 U.S.C. § 112 ,-i 1 as
failing to comply with the written description requirement and also rejected
claims 1, 2, and 8-21 of Application 11/943,207 under 35 U.S.C. § 103(a) as
obvious. Non-Final Act. (August 20, 2013). The Examiner further entered
obviousness-type double patenting (OTDP) and provisional OTDP
Appeal2014-006740
Application 11/943,207
rejections. Id. Appellants1 seek reversal of the§ 112 and§ 103 rejections of
claims 1, 2, 8-12, and 17-21 pursuant to 35 U.S.C. § 134(a).2' 3 Because at
least one of the claims on appeal has been rejected at least twice, we have
jurisdiction under 35 U.S.C. § 6.
On June 17, 2016, we held a hearing in this appeal.
After the hearing, we requested Appellants to provide more legible
copies of various photomicrographs used as figures in the '207 Application's
Specification and in various declarations relied upon by Appellants. Request
for Briefing and Information (June 27, 2016). On July 14, 2016, we
received the requested information from Appellants.
For the reasons set forth below, we now REVERSE.
BACKGROUND
The '207 Application describes improved magnesium alloy materials
intended for use in the automobile industry. Spec. iii! 1-6. Claim 1 is
representative of the '207 Application's claims and is reproduced below:
1. A magnesium alloy material composed of an Mg-Zn-RE
alloy comprising essential components in the form of Zn within
the range of 0.5 to 3 atomic percent and RE within the range of
1 to 5 atomic percent, with the remainder comprising Mg and
unavoidable impurities, the RE being at least one element
1 Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd), Nissan Motor Co.,
Ltd, and National University Corporation Kumamoto University are
identified as the real parties in interest. Appeal Br. 1.
2 On June 2, 2014, the Examiner entered an Amendment After Final
canceling claims 13-16.
3 Appellants do not seek review of the OTDP and provisional OTDP
rejections. See generally Appeal Br.; see also Hearing Tr. 2.
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Appeal2014-006740
Application 11/943,207
selected from the group consisting of Y, Dy, Ho, Er and Tm,
wherein
the magnesium alloy is produced by a process
comprising preparing a cast material by dissolving and casting
said Mg-Zn-RE alloy and producing a processed material by
conducting a hot plastic forming process on the cast material
without any heat treatment;
the alloy structure of the Mg-Zn-RE alloy has a lamellar
phase formed from a long period stacking ordered structure and
a-Mg, and
at least a portion of the long period stacking ordered
structure has at least one of a curved portion and a bent portion
and has a divided portion.
Amended Claims App. 2 (April 23, 2014).
REJECTIONS
On appeal, the Examiner maintains4 the following rejection:
1. Claims 1, 2, 8-12, and 17-21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination ofYamasaki5 and Akihisa. 6
Non-Final Act. 4.
4 The Examiner has withdrawn the § 112 rejection of claim 1. Answer 2-3.
5 Michiaki Yamasaki et al., Development of novel Mg.Zn-Gd alloy with long
period stacking ordered structure by heat treatment process, Summary of
Lectures in No. 108 Spring Conversation 22 (May 2005). A translation of
Yamasaki is of record in the '207 Application.
6 JP 2002-256370, published September 11, 2002. A translation of
Akihisa' s Abstract is of record in the '207 Application.
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Appeal2014-006740
Application 11/943,207
DISCUSSION
Appellants argue for reversal of the rejection of claims 1, 2, 8-12, and
17-21 as a group. Accordingly, we select claim 1 as representative of the
group. 37 C.F.R. § 41.37(c)(l)(iv) (2014). We limit our discussion to claim
1, with which the remaining claims shall stand or fall.
The Examiner rejected claim 1 as unpatentable over the combination
of Yamasaki and Akihisa. Final Act. 4. In doing so, the Examiner found
that Yamasaki describes a Mg·Zn·Gd alloy having a deformed long period
stacking ordered structure and an a-magnesium phase that was made by the
process set forth in claim 1. Id. In particular, the Examiner found that
Yamasaki' s alloy had a long period stacking ordered structure that has at
least one of a curved portion and a bent portion and also has a divided
portion as recited in claim 1. Id. at 4-5. The Examiner further found that
Yamasaki did not describe or suggest an alloy comprising magnesium zinc
and one of the claimed rare earth elements. Id. at 5. To remedy the defects
in Yamasaki' s disclosure, the Examiner relies upon Akihisa as describing
the claimed rare earth elements (Y, Dy, Ho, Er, and Tm) as performing the
same function as Gd in refining the grain structure of magnesium alloys. Id.
Appellants argue that the rejection should be reversed because
Yamasaki' s method for making the alloy includes a heat treatment step that
is specifically excluded by claim 1. Appeal Br. 7-8. Appellants further
argue that the Examiner erred by finding that Yamasaki' s alloy has the
structure recited in claim 1. Id. at 9-10 (citing Yamasaki 2011 Declaration
(executed September 12, 2011); Yamasaki 2012 Declaration (executed
February 27, 2012)).
After reviewing Figures 2-7 of the '207 Application's Specification
and both Yamasaki Declarations, we are persuaded by Appellants' argument
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Appeal2014-006740
Application 11/943,207
that the Examiner erred in finding that Yamasaki' s alloy has a structure
recited in claim 1. Thus, we reverse the rejection of claim 1 as unpatentable
over the combination of Yamasaki and Akihisa.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1, 2,
8-12, and 17-21 of the '207 Application.
REVERSED
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