Ex Parte Ogden et al

Patent Trial and Appeal Board

May 19, 2014

12276094 (P.T.A.B. May. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ORVAL D. OGDEN, JR., TOM LOVE, and
JEFF KNOWLTON

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Appeal 2011-006536
Application 12/276,094
Technology Center 2800
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Before RICHARD E. SCHAFER, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

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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.
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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
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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.
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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.
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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.

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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.