10596849 (P.T.A.B. May. 14, 2018)

Ex Parte Oishi

Patent Trial and Appeal BoardMay 14, 2018

10596849 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/596,849 11/27/2006 24203 7590 05/16/2018 GRIFFIN & SZIPL, PC SUITE 112 2300 NINTH STREET, SOUTH ARLINGTON, VA 22204 FIRST NAMED INVENTOR Keiichiro Oishi 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. MIKI0004 1327 EXAMINER KOSLOW, CAROL M ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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): GandS@szipl.com burke@szipl.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEIICHIRO OISHI Appeal2016-007433 Application 10/596,849 Technology Center 1700 Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 5-7, 9, 10, 16, 21, 22, 26, 29, 30, and 35-39. An oral hearing was held on May 2, 2018. 1 We have jurisdiction under 35 U.S.C. Â§ 6(a). We AFFIRM. 1 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2016-007433 Application 10/596,849 Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A copper-based alloy casting comprising: 69 to 88% of Cu by mass; 2 to 5% of Si by mass; 0.0005 to 0.04% of Zr by mass; 0.01 to 0.25% of P by mass; and a remainder including Zn and inevitable impurities, and the copper-based alloy casting satisfying 60 :S Cu - 3.5 x Si - 3 x P :S 71, and having refined casted grains, wherein the grains as cast are refined during melt- solidification of a casting process, and a mean grain size of the refined casted grains is 100 Âµm or less, and wherein a, Kandy-phases of the copper-based alloy casting occupy more than 80% of phase structure of the copper- based alloy casting. 2 Appeal 2016-007433 Application 10/596,849 Appellant2 (see generally Appeal Brief) requests review of the following rejections3 from the Examiner's Final Office Action: I. Claims 1, 5, 7, 9, 10, 21, 26, 29, and 35-39 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Parikh (US 4,110,132, issued August 29, 1978). II. Claims 6, 16, 22, and 30 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Parikh, Nakamura (US 4,826,736, issued May 2, 1989), and Oishi (US 6,413,330 Bl, issued July 2, 2002). III. Claims 37 and 38 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Parikh and Caron (US 5,565,045, issued October 15, 1996). Appellant relies on the same or similar line of argument in addressing the separately rejected independent claims 1, 6, and 3 8. See generally App. Br. Appellant presents additional arguments for dependent claim 3 7 and independent claim 38. Id. at 26-27. Accordingly, we select independent claim 1 as representative of the subject matter before us for review on appeal. Claims 5-7, 9, 10, 16, 21, 22, 26, 29, 30, 35, 36, and 39 stand or fall with claim 1. Claims 3 7 and 3 8 will be addressed separately with respect to the additional arguments. 2 Sanbo Shindo Kogyo Kabushiki Kaisha is identified as the real party in interest. Appeal Br. 3. 3 This application was filed before March 16, 2013, the effective date of the America Invents Act. Accordingly, we refer to the pre-AIA version of the statute. 3 Appeal 2016-007433 Application 10/596,849 OPINION The Prior Art Rejections Claim 1 After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner's rejections of claims 1, 5-7, 9, 10, 16, 21, 22, 26, 29, 30, 35, 36, and 39 for the reasons presented by the Examiner in the Final Action and the Answer. We add the following for emphasis. Claim 1 is directed to a copper-based alloy casting of a specific composition. The Examiner finds Parikh discloses a copper alloy that compares to the subject matter of claim 1 as follows: [, ~'~~:;l<:,:,,,~""""""""""JÂ·,~~~~~::, ~ .:""'l' : $.;q3}S~. ~";i .""""""""""""""""[Â· :~~ ,,,,,.' iz, I:~' \.Â·""""""""""""""""""""""""""""""""""""""{Â·-"""""""""""""" ~ r I ;;;; ... ~ : ! Pti, ,,).fKt:\Y r ... ] ft~ ~lf~CUt}t T v.v Lst., ttndinr _______________ tÂ·Â·Â· _________ __ [-~~: ~~i~~i(~l~ L ] Zn i f3'u3 ] {cat.)~if~ltt~n i H) ... -2~1 ! {'.,:,,:,:~;, Â· S5x:\:; .. ';,"$':;71 r 0 :;-- .,,,,,,,,, .. ,/'''''''''--: ....................... ;- .............. ___ .................... '::"' ..... -Â·-__ ... ,.,., ................ .... ~ gra~n s:z.e tPfH} i $ ... ;l~ t. ........................................................................................................................ , ............................................. ... I ~-:~~t;nfl phm)t~s I ::-:wtt : "Â·Â·'<,~ : ] . i \,-.-. ................................. -..{ ............... . l Grain,s!mp~ ________ j, Â· __________ __ 4 . Â·?;;:~~tj-~-~~{ . "[. ear I """""""""""''" Hi I ~,:,.-)1.,; ""'""I ~~(S::~--~\4 ~ l """""""""""""""""""""""Â» """""""""""'t ~~: l -,w,-r :::~::~::':t~ ... i~}, t :;~Â· t.Â·~={~ [ _-- J Appeal 2016-007433 Application 10/596,849 Ans. 3, 6; Parikh col. 2, 11. 26-44, 60-68, col. 3, 11. 1-25, 41-50. The table lists how the components of the copper alloys of the claimed invention and Parikh compare with each other in terms of the amounts of the components forming the alloy. The Examiner finds Parikh discloses a copper alloy composition having the same components as the claimed alloy composition in overlapping amounts. Ans. 3, 7. The Examiner finds Parikh does not teach the recited phases and ratios of alloying elements. Id. However, the Examiner determines that, given the similarity of the alloys of Parikh and of the claimed invention and that both alloys are casted, one skilled in the art would expect Parikh's cast copper alloy to have the claimed grain size, phases, and to meet the element ratio exemplified by the claimed mathematical expression absent a showing to the contrary. Id. at 3--4, 7-8. In further support of the rejection, the Examiner points to evidentiary reference JP61133357 as showing that copper alloy castings are known to have grain sizes of 80 microns or less. Id. at 11. In addressing the rejection, Appellant argues that there are differences in ( 1) the grain size and (2) the alloy phases between the copper alloys of Parikh and the claimed invention. See generally App. Br. 9-16. Difference (1): Alloy grain size Appellant argues that Parikh does not disclose a copper-based alloy casting having the refined casted grains of a mean grain size of 100 um or less, as claimed. Id. at 9. According to Appellant, Parikh is directed to a hot worked alloy that undergoes a number of treatments after casting to achieve a grain size of less than 15 microns. Id. at 10-12. Recognizing that Parikh 5 Appeal 2016-007433 Application 10/596,849 does not disclose the grain size of its copper alloy casting prior to additional treatments, Appellant asserts that one skilled in the art would have expected the grain size of Parikh's copper alloy casting to exceed 100 microns. Id. at 15-16. In support of this assertion, Appellant directs attention to Metals Handbook4 as evidence that "[i]t is well known in the art of copper-based alloy castings that grains are coarsened or made to be as large as over several millimeters in size if the alloy is not subjected to any mechanical action for grain refinement after a casting process" (emphasis original). Id. at 15. We are unpersuaded by these arguments for the reasons given by the Examiner. Ans. 9-11. As noted above, the Examiner relies on evidentiary reference JP61133357 to show that copper alloy castings can have grain sizes of 80 microns or less. Id. at 11. While Appellant argues that the copper alloy casting of JP61133357 is different from Parikh's copper alloy casting because of the zirconium content (App. Br. 13), this does not detract from the teachings of JP61133357 that copper alloys can be cast with grain sizes within the claimed range of 100 microns or less. Appellant's reliance on Metals Handbook is also unavailing because, as Appellant recognizes, the exemplary composition C36000 of the source is not the same as Parikh's because of the lead content. App. Br. 15. Appellant does not explain why the difference in the lead content is not significant when comparing the copper alloys castings of Metals Handbook and Parikh. 4 Metals Handbook, Ninth Edition, Volume 9, Metallography and Microstructures (American Society for Metals), pp. 641-642. 6 Appeal 2016-007433 Application 10/596,849 Difference (2): Alloy phases Appellant argues that the phases in an alloy are not dependent on the composition of the alloy alone. App. Br. 16. In support of this position, Appellant directs attention to the Declaration by the inventor, Keiichiro Oishi (Declaration)5 as showing that subjecting the same copper alloy composition to different treatments does not yield the same phase structure. App. Br. 16-17; Declaration ,r,r 4--12. However, this evidence is not persuasive because, as acknowledged by Declarant and Appellant, the composition tested was one that satisfied the requirements of the claimed invention. App. Br. 16; Declaration ,r 7. There is no testing of Parikh's copper alloy composition or how the test conducted by Declarant on a specific inventive composition is related to Parikh's cast alloy composition. Appellant's reliance on Pops (US 4,055,445, issued October 25, 1977) (App. Br. 16-1 7; Deel. ,r,r 13-15) fails for similar reasons. Thus, the evidence provided by Appellant does not distinguish Parikh's copper alloy casting prior to subsequent treatments from the copper alloy of the claimed invention. Appellant has not adequately explained why Parikh's cast copper alloy would not necessarily possess the grain size and phases of the claimed cast copper alloy. 5 The Declaration under 37 C.F.R. Â§ 1.132 by Dr. Keiishiro Oishi was filed September 26, 2014 and entered into the record by the Examiner in the Final Office Action dated July 2, 2015. 7 Appeal 2016-007433 Application 10/596,849 Unexpected results We have also considered Appellant's arguments and evidence of superior and unexpected results and agree with the Examiner's determination that it is insufficient to overcome a prima facie case of obviousness. Ans. 14. Appellant argues that a showing in the Specification establishes a superior and unexpected shrink property in the claimed alloy. App. Br. 17- 19; Spec. ,r,r 43, 110, 111. Appellant has limited the discussion of the showing to inventive Specimens 6 and 9, both of which are directed to a copper alloy. App. Br. 18. The compositional details of Specimens 6 and 9 are presented on page 3 0 of the Specification (Table 1 ). Both specimens have similar compositions except for a significant difference in the amount of zirconium and both have a phase structure of 100% of alpha, kappa, and gamma phases. Both also have a grain size of less than 100 microns. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCP A 197 6). The burden of establishing unexpected results rests on the Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably 8 Appeal 2016-007433 Application 10/596,849 commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We first note that Appellant's superior and unexpected property is designated as "good." App. Br. 18; Spec. 43 (Table 4). Appellant does not explain in the Specification or Briefs why a performance result of "good" is to be interpreted as a superior and unexpected result. Moreover, the showing is not commensurate in scope with the claim. Appellant has not adequately explained why Specimens 6 and 9 are representative of the broad scope of copper alloy compositions claimed, including given the fact that they only represent compositions having 100% of the desired phase structure. On this record, Appellant has not adequately explained why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Claims 37 and 386 In addressing independent claim 38, Appellant principally relies on substantially the same arguments presented when discussing independent claim 1. App. Br. 23-25. We refer to our prior discussion of those arguments. In addition, independent claim 3 8 requires the refined casted grains to be of a specific shape. 6 We focus our discussion on independent claim 3 8. 9 Appeal 2016-007433 Application 10/596,849 The Examiner recognizes that Parikh lacks a teaching on the shape of the grain, but finds that Caron provides the missing feature. Ans. 5; Caron col. 10, 11. 5 8---63. Appellant argues that the cited art does not teach the claimed shape of the refined casted grains resulting from resolidification of the alloy, which is a primary crystal/grain. App. Br. 9, 26. According to Appellant, Caron is directed to the shape of a grain subsequent to the generation of a primary crystal/grain through recrystallization. App. Br. 26-27; Deel. ,r,r 18-20. We are unpersuaded. As noted by the Examiner, Appellant has not adequately explained why one skilled in the art would not have expected the grains in Parikh's cast copper alloy to have the claimed shape given that Parikh discloses the features of the claimed copper alloy composition and the conventional casting. Ans. 9-10, 15. Appellant has not provided objective evidence showing that the copper alloy castings of Parikh and the claimed invention have grains that differ in shape. Accordingly, we affirm the Examiner's prior art rejections of claims 1, 5-7, 9, 10, 16, 21, 22, 26, 29, 30, and 35-39 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejections of claims 1, 5-7, 9, 10, 16, 21, 22, 26, 29, 30, and 35-39 under 35 U.S.C. Â§ 103(a) are affirmed. TIME PERIOD 10 Appeal 2016-007433 Application 10/596,849 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.I36(a)(l). AFFIRMED 11