Ex Parte Ogden et alDownload PDFPatent Trial and Appeal BoardMay 19, 201412276094 (P.T.A.B. May. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________ Ex parte ORVAL D. OGDEN, JR., TOM LOVE, and JEFF KNOWLTON _________________ Appeal 2011-006536 Application 12/276,094 Technology Center 2800 _________________ Before RICHARD E. SCHAFER, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006536 Application 12/276,094 2 The named inventors and the real party-in-interest, Magnum Magnetics Corporation, appeal under 35 U.S.C. § 134 from the final rejection of claims 1-21. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellants’ Specification provides for systems with thin, flexible magnetic sheets. (Spec., 1.) The systems that Appellants claim include “magnetizable” sheets or layers, which, in some embodiments, are included with other layers, such as a printable layer and an attacher layer. (See independent claims 1 and 19, App. Br., Claims App’x.) In some embodiments the “magnetizable” sheet or layer comprises particles of strontium ferrite and have a magnetic energy greater than about one Megagauss Oersted (“MGOe”),1 when magnetized. (See independent claims 14 and 19, App. Br., Claims App’x.) Appellants’ Specification indicates that at the time of filing there was a need in the art for thin flexible sheets having higher potential for magnetic energy. (Spec., 2, ll. 3-4.) Rejections under 35 U.S.C. § 102(b) The Examiner rejected claim 1, as well as claims 2 and 4, which depend on claim 1, under 35 U.S.C. § 102(b) as being anticipated by Ogikubo.2 (Ans. 3-4.) Appellants’ claim 1 recites: A magnetizable-sheet laminate system comprising: a) at least one magnetizable laminate layer; b) at least one printable laminate layer; and 1 Megagauss Oersted (“MGOe”) is a measure of the performance of a magnet, as the maximum product of the magnetic flex density, measured in Gauss (G), and the magnetic field strength, measured in Oersted (Oe). 2 Ogikubo, US Patent No. 5,994,990, issued November 30, 1999. Appeal 2011-006536 Application 12/276,094 3 c) at least one attacher laminate layer structured and arranged to attach said at least one magnetizable laminate layer with said at least one printable laminate layer; d) wherein said magnetizable-sheet laminate system comprises at least one laminate less than about 20 mils thick. (App. Br. 17, Claims App’x.) Appellants do not argue for the separate patentability of any of the claims. Accordingly, we consider the rejected claims to stand or fall together and focus on the rejection of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Ogikubo teaches a magnetic display sheet that includes a magnet sheet and a printing sheet bonded together with an adhesive. (See Ogikubo, at 2: 46-50; Ans. 4.) Appellants argue that the magnetic sheet of Ogikubo is not equivalent to the “magnetizable laminate layer” claimed because the claimed layer is “magnetizable,” not “magnetized.” (App. Br. 6-7.) Appellants argue that their claimed system can be used with printing processes that are inhibited by magnetic fields because it is not magnetized, only “magnetizable.” (App. Br. 6.) Appellants also cite to their Specification, which describes manufacture using non-magnetized laminate. (Id., citing Spec., 12:13-16.) Appellants argue further that the definition of “magnetizable” is generally accepted as “susceptible to magnetization.” (App. Br., citing Random House Dictionary, 2010.) We are not persuaded by Appellants’ arguments. It is not clear how the magnetic sheets taught in Ogikubo are not “magnetizable,” even though they are magnetized. Appellants claim a product, not a process of making it. Therefore, even if Appellants’ Specification only provided for manufacture Appeal 2011-006536 Application 12/276,094 4 of a system using a non-magnetized layer, which it does not,3 Appellants have not directed us to evidence showing that the physical structure taught in Ogikubo is different from the physical structure claimed. We construe claims under the broadest reasonable interpretation. See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) (“[C]laims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims, the thought being to reduce the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified”.). Appellants have failed to persuade us that the broadest reasonable interpretation of “magnetizable” excludes magnetic sheets. Accordingly, we are not persuaded that the Examiner erred. Rejections under 35 U.S.C. § 103(a) The Examiner rejected independent claims 14, 19, and 21, as well as the claims dependent on them, under 35 U.S.C. § 103(a) as being obvious over Ogikubo and Ikawa4 together or in combination with other references. (Ans. 4-6.) Appellants’ claim 14 recites: A magnetizable-sheet system comprising: a) at least one homogenous sheet comprising i) at least one binder material structured and arranged to bind together components of said at least one homogenous sheet, and ii) at least one plurality of magnetizable particles held by said at least one binder material, 3 We note that Appellants’ Specification also provides for “magnet-friendly printing processes,” which accept laminate after it has been magnetized. (Spec., 12:23-13:4.) 4 Ikawa, Japanese Publication No. 8-152859 A, published June 11, 1996. Appeal 2011-006536 Application 12/276,094 5 iii) wherein said at least one plurality of magnetizable particles consist essentially of strontium ferrite, and iv) wherein said at least one plurality of magnetizable particles, when magnetized, comprise a magnetic energy of greater than about one Megagauss Oersted; b) at least one thickness of less than about 20 mils. (App. Br. 18, Claims App’x.) Like claim 14, Appellants’ independent claims 19 and 21 recite a magnetizable laminate layer with magnetizable particles, which “when magnetized, comprise a magnetic energy of greater than about one Megagauss Oersted.” (App. Br. 20, Claims App’x.) In addition to arguing that the prior art teaches a “magnetized” layer, but not a “magnetizable” layer (App. Br. 8-9), which, as discussed above, is not persuasive, Appellants argue that Ikawa does not teach a magnetized laminate layer having a magnetic energy of greater than one MGOe, as claimed (id. at 9-10). Appellants dispute the Examiner’s finding that strontium ferrite has a maximum energy product of 2.0-4.8 MGOe, arguing that Endo5 refers to the energy product of a permanent magnet, not a composite of magnetic strontium ferrite powder and ethylene-ethyl acrylate copolymer resin, as provided in Ikawa. (Id. at 10; see also Reply Br. 9-10.) Appellants also argue that contrary to the Examiner’s finding, Barbera- Guilem does not disclose a magnetic sheet with a maximum energy product of 1.6 MGOe. (Reply Br. 11.) This argument does not persuade us that the Examiner erred in rejecting independent claims 14, 19, and 21, as well as the claims dependent on them, under 35 U.S.C. § 103(a). Appellants do not argue that they 5 Endo, et al., “Use of Permanent Magnet for Direct Beam Injection System at KEK,” Proceedings of EPAC 2000, pp. 2101-3. Appeal 2011-006536 Application 12/276,094 6 invented a new strontium ferrite formulation. (Ans. 10.) Nor do Appellants provide a reason why those of skill in the art would have considered the energy product of a permanent magnet of strontium ferrite to be different from that of a strontium ferrite composite. As explained in In re Aller, 220 F.2d 454, 456 (CCPA 1955), limitations on parameters of materials are normally an unpatentable modification. To persuade us of patentability of a modification of a parameter such as magnetic energy, Appellant must show that the modified parameter produces a new and unexpected result that is different in kind and not merely in degree from the results of the prior art and that such modifications would not have been within the capabilities of one skilled in the art at the time. (Id.) Appellants do not direct us to evidence showing either criticality or that such modifications were beyond the skill of those in the art. (Ans. 10.) Accordingly, we are not persuaded that given the obviousness of including strontium ferrite in a magnetizable-sheet system, it would not also have been obvious to use sufficient strontium ferrite to provide a magnetic energy of greater than one MGOe. Thus, the Examiner’s finding that those of skill in the art would have considered it obvious to have used magnetizable particles of strontium ferrite with a magnetic energy of greater than about one MGOe in a magnetizable sheet system, as claimed, is reasonable in light of the record before us. Appeal 2011-006536 Application 12/276,094 7 Appellants also argue that the Examiner erred in rejecting claims 6, 7, 18, and 19 over Ogikubo in view of Ikawa and Fujii,6 in rejecting claims 8 and 20 over Ogikubo in view of Fujii and Jun,7 and in rejecting claims 16 and 17 over Ogikubo in view of Ikawa in view of Jun. (App. Br. 11-15.) Appellants argue that even though the prior art in each of these rejections teaches a sheet with magnetized particles, the cited part does not teach a sheet with “magnetizable” particles as claimed. As discussed above, we do not find this argument persuasive. Conclusion Upon consideration of the record and for the reasons given, the rejection of claims 1-21 over the cited prior art is sustained. Therefore, we affirm the decision of the Examiner. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED cdc 6 Fujii and Sasayama, Japanese Patent Application 63-6128, published February 8, 1988. 7 Jun, US Patent No. 3,858,136, issued December 31, 1974. Copy with citationCopy as parenthetical citation