Ex Parte NARUMI et alDownload PDFPatent Trial and Appeal BoardAug 31, 201814599721 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/599,721 01/19/2015 27572 7590 09/05/2018 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Isshin NARUM! 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. 9319S-004345 9465 EXAMINER WANG, NICHOLAS A ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): troymailroom@hdp.com sto-ptomail@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IS SHIN NARUM!, HIDEFUMI NAKAMURA, and HIDEKI ISHIGAMI Appeal2017-010577 Application 14/599,721 Technology Center 1700 Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-3 and 5. 3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed January 19, 2015 ("Spec."), the Final Office Action dated November 22, 2016 ("Final Act."), the Appeal Brief filed February 20, 2017 ("Appeal Br."), the Examiner's Answer dated June 15, 2017 ("Ans."), and the Reply Brief filed August 8, 2017 ("Reply Br."). 2 Appellant is the Applicant, Seiko Epson Corporation, which, according to the Appeal Brief, is the real party in interest. Appeal Br. 3. 3 Claims 4, 9, and 14 were previously cancelled. Final Act. 2. Claims 6-8 and 11-13 are withdrawn from consideration by the Examiner. Id. Appeal2017-010577 Application 14/599,721 The subject matter of the claims on appeal relates to a method for manufacturing a compact comprising a metallic powder into a desired shape. Spec. ,r,r 1-2. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal. 1. A manufacturing method of a compact, compnsmg: pressure molding a composition including a metallic powder and a binder in order to obtain a green compact in which a relative density of a constituent material of the metallic powder with respect to real density is greater than or equal to 70% and less than or equal to 90%; and processing the green compact in order to obtain a compact, wherein the processing includes a first processing in which the green compact is subjected to a processing trace that removes material from a first surface of the green compact and a second and opposite surface of the green compact to define a shape of the compact, the compact being suspended between the first surface and the second surface by connections portions of the green compact that remain after the removal of the material from the first surface and the second surface; and the processing includes a second processing in which the compact is removed from the green compact by removing the connection portions. Appeal Br. 8 (Appendix A-Claims Appended). DISCUSSION The Examiner maintains the rejections under 35 U.S.C. § 103 of claims 1, 2, and 5 over Webb et al. (US 2013/0167447 Al, published July 4, 2013) ("Webb") in view of Richard van Noort, "The future of dental devices is digital," 28 Dental Materials 3-12 (2012) ("Noort), and claim 3 over 2 Appeal2017-010577 Application 14/599,721 Webb, Noort, and Harada (US 2002/0190236 Al, published December 19, 2002). Final Act. 4, 6. After consideration of the evidence on this record and each of Appellant's contentions, we find that the preponderance of evidence supports the Examiner's conclusions that the subject matter of Appellant's claims is unpatentable over the applied prior art. Accordingly, we sustain the Examiner's rejections for substantially the findings and reasons set forth by the Examiner in the Final Office Action, Answer, and below. The Examiner finds that Webb discloses all the steps of claim 1 's method for manufacturing a compact except that it is silent as to "the first and second processing steps of removing material from opposite surfaces to leave a compact suspended by connection portions, and removing the connection portions, respectively." Final Act. 4 (citing Webb, Abstract, ,r,r 44, 48). The Examiner finds that Noort discloses that it is well-known in the art to use subtractive manufacturing to mechanically cut a material into a desired shape, with the shape being suspended by connection portions of the original material. Final Act. 4 (citing Noort 4--5). The Examiner further finds that a step of removing the connection material, as disclosed in Noort, is a latent processing step that would naturally flow from the process of subtractive manufacturing as the compact is separated from the original material after processing. Final Act. 4--5. Appellant argues that Noort teaches away from the use of subtractive manufacturing, and therefore, it would not have been obvious to modify Webb in view ofNoort to arrive at the claimed invention. Appeal Br. 6. 3 Appeal2017-010577 Application 14/599,721 "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We find that Noort's disclosure falls short of teaching away from subtractive manufacturing. As Appellant points out, Noort teaches that subtractive manufacturing "is very wasteful as more material is removed compared to what is used in the final product" (Noort 4--5), that a drive for cost savings has resulted in a transition from making parts by subtractive manufacturing to additive manufacturing (id. at 5), and that "[ u ]sing additive methods for manufacturing is more advantageous as many problems associated with milling can be reliably overcome" (id. at 5). Although Noort identifies some disadvantages associated with subtractive manufacturing, we find its teachings do not rise to the level of discouraging the use of subtractive manufacturing to process a compact into a desired shape. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F .3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed.") (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine."). Accordingly, we are not persuaded by Appellant's argument that the Examiner erred reversibly in rejecting claims 1-3 and 5 for obviousness over the cited prior art. 4 Appeal2017-010577 Application 14/599,721 DECISION The rejections of claims 1-3 and 5 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation