Ex Parte Oguri

Patent Trial and Appeal Board

Aug 18, 2016

11794261 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111794,261 0612712007
32628 7590 08/22/2016
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Kazuyuki Oguri
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.
OLI-014 9096
EXAMINER
LIN, JAMES
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUYUKI OGURI
Appeal2014-007191
Application 11/794,261
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JENNIFER R. GUPTA,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 twice rejecting claims 9 and 11-15. An oral hearing was held on
August 4, 2016. 3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to a method for manufacturing a
surface-treated aluminum alloy member. Spec. ,-i 9. Claim 9, reproduced
below, is illustrative of the claims on appeal.
1 The Appellant identifies the real party in interest as Mitsubishi Heavy
Industries, Ltd. Appeal Brief filed December 12, 2013 ("App. Br."), 2.
2 Non-Final Office Action mailed June 25, 2013 ("Final Act.").
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal2014-007191
Application 11/794,261
9. A method for manufacturing a surface-treated aluminum alloy
member, comprising:
a shot peening treatment step, in which an air stream
containing spherical particles having an average particle size of
not less than 10 µm and not more than 200 µm is blown onto a
surface of an aluminum alloy member at a spray pressure of not
less than 0.1 MPa and not more than 1 MPa, and
an anodizing treatment step in which the surface of the
aluminum alloy member is subjected to an anodizing treatment,
and
wherein the anodizing treatment step is performed on the
surface formed by the shot peening treatment.
REJECTIONS ON APPEAL
1. Claims 9, 11-13, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Osawa et al. 4 (JP 2002-082316, published
March 22, 2002) (hereinafter "Osawa") combined with Lipchik et
al. (US 3,758,203, issued Sep. 11, 1973) (hereinafter "Lipchik");
2. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Osawa combined with Lipchik, and further in view of Wong
et al. (US 4,894,127, issued Jan. 16, 1990) (hereinafter "Wong");
3. Claims 9, 11-13, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Isaka et al. (US 4,380,966, issued Apr. 26, 1983)
in view of Dhanial de Lloyd, "Standard sieves and mesh sizes,"
http://delloyd.50megs.com/moreinfo.mesh.html, last accessed
March 24, 2012 (hereinafter "de Lloyd"); and
4 We refer to the machine translation of record of Osawa as cited by the
Examiner. See, e.g., Non-Final Act. 2-3.
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Application 11/794,261
4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Isaka in view of de Lloyd, and further in view of Wong.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of Appellant and the Examiner, we determine that
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below and by the
Examiner in the Answer. See generally Ans. 2-17.
Rejections 1 & 2
Appellant argues claims 9, 11-13, and 15, subject to the first ground
of rejection, as a group. Claim 14, which is subject to the second ground of
rejection, depends from claim 9. Appellant does not offer separate
arguments with respect to claim 14. See App. Br. 21-22. We select claim 9
as representative of the claims rejected under the first and second grounds of
rejection, and the remaining claims will stand or fall with claim 9.
Osawa discloses making a spectacle frame from magnesium or a
magnesium alloy (iJ 5). Osawa teaches the frame is subjected to a sandblast
treatment that sprays an abrasive material such as glass beads having a mean
particle diameter of 30 µm to 300 µm onto the entire surface of the frame at
a spray pressure of 0.1 MPa to 0.9 MP a (iJiJ 16, 18, 20). The Examiner finds,
and Appellant does not dispute, that Osawa' s sandblasting treatment
corresponds to a shot peening treatment. Non-Final Act. 3. Osawa further
teaches that the frame can be anodized (iJ 22).
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Application 11/794,261
The Examiner finds that Osawa teaches a method comprising each
element of claim 9 except an aluminum alloy member. Non-Final Act. 3.
The Examiner finds that Lipchik is directed to making eyeglasses from
aluminum that can be anodized. Lipchik 1 :30-33. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time the invention was made to use Lipchik' s aluminum material in
Osawa's process because it is a desirable material from which to make
eyeglass frames, as taught by Lipchik, or to process Lipchik' s aluminum
frame using Osawa' s blasting and anodizing steps to improve the physical
properties of the alloy from which the eyeglass frames are constructed.
Non-Final Act. 3.
Appellant argues that there is no motivation to replace Osawa's
magnesium alloy with Lipchik's aluminum when Osawa's objection is to
make spectacles from Mg and Mg-alloys. App. Br. 9. This argument is not
persuasive.
In assessing the obviousness of the subject matter recited in the claims
on appeal, "[ o ]ften, it will be necessary for ... [us] to look to interrelated
teachings of [the] multiple [prior art references relied upon by the Examiner]
... in order to determine whether there was an apparent reason to combine
the known elements in the fashion claimed .... " KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). These prior art references must be read in
context, taking into account "demands known to the design community,"
"the background knowledge possessed by a person having ordinary skill in
the art," and "the inference and creative steps that a person of ordinary skill
in the art would employ." KSR, 550 U.S. at 418. The background
knowledge attributable to one of ordinary skill in the art includes what was
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Application 11/794,261
admittedly known in the art at the time of the invention. Jn re Nomiya, 509
F.2d 566, 570-71(CCPA1975) (The admitted prior art in applicant's
Specification may be used in determining the patentability of a claimed
invention.).
Lipchik relates to eyeglass construction and teaches that an aluminum
material is suitable for making frames, and is anodizable. Lipchik Abstract,
1 :31-34. Osawa, which also relates to eyeglasses, discloses a method of
manufacturing a frame with excellent rigidity and corrosion resistance by
subjecting the frame material to sandblasting (to improve hardness) and to
anodizing (to improve corrosion resistance). Osawa Abstract, iJiJ16, 22-23.
Like Osawa's disclosure of the advantage of sandblasting (shot peening) a
frame made from magnesium or a magnesium alloy that contains aluminum,
Appellant's Specification (iJ 2) also acknowledges that shot peening was a
known surface modification method used for enhancing the fatigue strength
of a metal material. See also App. Br. 13. Because it was known that a
blasting treatment (shot peening) improves fatigue strength (hardness) of a
metal material, it would have been obvious for one of ordinary skill in the art
to use Osawa's blasting treatment on Lipchik's aluminum-based frame to
improve hardness of the frame. See KSR 550 U.S. at 417 ("[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.").
Appellant contends that Osawa teaches that "polishing must intervene
its blasting and anodizing steps," and thus, "Osawa's anodizing step is not
performed on the surface formed by the shot peening treatment." App.
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Application 11/794,261
Br. 10. Appellant also argues that Osawa' s polishing step removes the shot
peening effect and thus teaches away from the method recited in claim 9.
App. Br. 11-12; see also Reply Brief filed June 10, 2014 ("Reply Br."), 10-
11. Neither argument is persuasive of reversible error in the Examiner's
rejection. First, Osawa's polishing step is merely a "preferred" step (iJ 21).
Likewise, Osawa teaches that it is "preferred" to perform anodizing after the
polishing processing treatment (iJ 22). Osawa, however, does not require
that the polishing step be performed after the sandblast treatment or that the
anodizing step only be performed after polishing. Osawa, as a whole,
teaches or fairly suggests that the anodizing step could have followed the
blasting step (the shot peening treatment) without the intervening polishing
step as recited in claim 9. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("[T]he fact that a specific [embodiment] is taught
to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered."). Further,
contrary to the Appellant's argument and the predictions made in the
Declaration under 37 C.F.R. §1.132 executed by Takahiro Sekigawa
(hereinafter "Sekigawa Declaration") (iJiJ 22, 33), Osawa teaches that the
effect of the sandblasting step (i.e., hardness) is not removed by polishing.
See Osawa iii! 32-33; Example 1 (where there was a 49% rise in hardness
when sandblasting and polishing were performed on a spectacle made from a
magnesium alloy). Moreover, claim 9 does not recite the extent of any shot
peening effect.
Appellant argues that the secondary evidence of unexpected results
provided in the Declaration under 37 C.F.R. § 1.132 of inventor Kazuyuki
Oguri (hereinafter "Oguri Declaration") points to patentability, effectively
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rebutting the Examiner's prima facie case of obviousness. App. Br. 12-21.
This evidence of unexpected results relied upon by Appellant is not
reasonably commensurate in scope with the claims. In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results "limited
to sodium only" were not commensurate in scope with claims to a catalyst
having "an alkali metal"). Reference Example 1 and Example use a shot
peening treatment using shot material comprising ceramic particles with an
average particle size of 40 µm and a spray pressure of 0.4 MPa (Spec. ,-i 27),
but the shot peening treatment of claim 9 is not so limited and covers any
shot material as well as a broad range of particle sizes (10 µm to 200 µm)
and spray pressures (0.1 MPa to 1 MPa). Nevertheless, on this record,
Appellant has not provided any explanation or evidence that the results
obtained using the one shot peening treatment tested would extend over the
range of materials, particles sizes, spray pressures encompassed by claim 9.
See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with the claims." (emphasis
added)).
Accordingly, based on the totality of the appeal record, including due
consideration of Appellant's arguments, we determine that the
preponderance of the evidence weighs most heavily in favor of obviousness
of the subject matter recited in claims 9 and 11-15 within the meaning of
35 U.S.C. § 103(a).
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Application 11/794,261
Rejections 3 & 4
Appellant argues claims 9, 11-13, and 15, subject to the third ground
of rejection, as a group. Claim 14, which is subject to the fourth ground of
rejection, depends from claim 9. Appellant does not offer separate
arguments with respect to claim 14. See App. Br. 24-25. We select claim 9
as representative of the claims rejected under the third and fourth grounds of
rejection, and the remaining claims will stand or fall with claim 9.
Isaka discloses a process for fabricating a developer supporting
member or sleeve that is made of stainless steel or another non-magnetic
material such as aluminum. Isaka Abstract, 11: 11-14. The surface of the
sleeve can be roughened by a sand blast treatment with irregular abrasive
particles of #800 at air pressure of 3 Kg/cm2 (0.294 MP a) for one minute.
Id. at 11:46--49. Isaka teaches, however, that the sleeve can also be
roughened by sand blast treatment with regularly shaped and sized abrasive
particles such as glass beads, steel balls, ferrite balls, and the like. Id. at
12:8-11. The Examiner finds, and Appellant does not dispute, that abrasive
particles of #800 corresponds to particles of 15 µm. Non-Final Act. 5; see,
App. Br. generally). 5 The roughened sleeve is then subjected to an anodized
aluminum treatment. Id. at 11 :53-56.
The Examiner finds, and Appellant does not dispute, that Isaka's
blasting step corresponds to the shot peening treatment step, and Isaka's
anodizing step corresponds to the anodizing treatment step in claim 9. Non-
Final Act. 5; App. Br. 22-24, generally.
5 Isaka discloses its mean particle diameter used for roughening is in a range
of 5µ to 30µ, preferably 5µ to 15µ (7:48-50).
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Application 11/794,261
Appellant argues that column 12, lines 8-11 of lsaka teaches away
from performing a shot pending treatment using spherical particles as recited
in claim 9. App. Br. 22-23. This argument is not persuasive. Although the
phrase "similar advantages" disclosed at column 12, lines 8-11 oflsaka may
refer to the toner coatings on the roughened surface being very improved
with no irregularity (11 :58-62), Isaka teaches at column 12, lines 8-11 that
similar improvements can be obtained using a sand blast treatment with
either irregular or regularly shaped and sized abrasive particles. Moreover,
Isaka expressly teaches that the sleeve may be roughened by bead blast
treatment using spherical particles. Isaka 4:63-65.
Appellant argues that the average particle size and pressure used in
Isaka's sand blast treatment are suitable for stainless steel and would not be
suitable for an aluminum sleeve. App. Br. 23-24. This argument is not
persuasive. "[A] reference is not limited to the disclosure of specific
working examples." In re Mills, 470 F.2d 649, 651(CCPA1972). Rather,
all disclosures therein must be evaluated for what they would have fairly
suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961,
965 ( CCP A 1966). Isaka broadly discloses roughening the surface of a
sleeve formed of a non-magnetic material, including aluminum (11: 11-14)
using a blasting treatment with abrasive particle sizes of #300 to #8006
(8:45-53), and blasting pressures of 3 Kg/cm2 and 4 Kg/cm2 (0.294 MPa and
0.392 MPa, respectively) (8:20-24, 11 :46--49). Moreover, Isaka specifically
teaches roughening an aluminum sleeve using a sand blast treatment with
6 The Examiner finds, and Appellants do not dispute, that particle sizes of
#300 to #800 correspond to an average particle size of 15 µm to about
45 µm, as evidenced by de Lloyd. Non-Final Act. 5.
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silicon carbide abrasive particles of #600 and an air pressure of 4 Kg/cm2
(13:67-14:8).
Finally, Appellant again argues that the secondary evidence of
unexpected results points to patentability (App. Br. 24), but as discussed
above, the evidence of unexpected results relied upon by Appellant is not
reasonably commensurate in scope with the claim. In addition, the evidence
does not provide a comparison with the closest prior art. In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art."). The Oguri Declaration
compares the claimed method (Ref. Ex. 1 and Ex.) using a shot peening
treatment with shot material (ceramic particles) having an average particle
size of 40 µm (,-i,-i 27, 40, Tables 3--4) with a method (Ref. Ex. 3 and Comp.
Ex. 1) that uses a conventional shot peening treatment with shot material
(cast steel particles) having an average particle size of 300 µm c,-i,-i 29, 34,
Tables 1-2). Isaka, however, does not use a conventional shot peening
treatment, but instead discloses surface roughening (e.g., via sand blast
treatment) using a mean particle diameter in a range of 5µ to 30µ, preferably
5µ to 15µ (7:37-50).
Accordingly, based on the totality of the appeal record, including due
consideration of Appellant's arguments, we determine that the
preponderance of the evidence weighs most heavily in favor of obviousness
of the subject matter recited in claims 9 and 11-15 within the meaning of
35 U.S.C. § 103(a).
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Application 11/794,261
DECISION
For the above reasons, the Examiner's rejections of claims 9 and 11-
15 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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