Ex Parte Oishi

Patent Trial and Appeal Board

Jan 29, 2018

11573640 (P.T.A.B. Jan. 29, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/573,640 02/12/2007 Keiichiro Oishi MIKI0009 3909
24203 7590 01/:
GRIFFIN & SZIPL, PC
SUITE 112
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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
Appeal 2016-005830
Application 11/573,640
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 1—17, 20-23, 29, and 30 under
35 U.S.C. § 103(a) as unpatentable over Yamagishi et al.1 2 3in view of
Ruchel.2,3 Claims 18, 19, and 24—28 are also pending but have been
withdrawn from consideration. A hearing was held on January 11, 2018.
We have jurisdiction under 35 U.S.C. § 6(b).
1 US 2005/0039827 Al, published February 24, 2005 (“Yamagishi”).
2 US 4,238,249, issued December 9, 1980 (“Ruchel”).
3 The Examiner designated the rejection a new ground of rejection in the
Examiner’s Answer dated March 17, 2016 (“Ans.”), at 2.
Appeal 2016-005830
Application 11/573,640
We REVERSE.
The claimed subject matter is directed to a copper alloy casting
wherein the copper alloy casting has a mean grain size of 250 pm or less.
The Appellant discloses:
Zr and P are added together in order to refine the grains of the
copper alloy, particularly, to refine the grains during melt-
solidification. That is, a single addition of either Zr or P can
refine the grains of the copper alloy only slightly, same as the
other additive elements. However, if Zr and P are added
together, the grains of the copper alloy can be refined very
effectively.
Spec. 126.
Claims 1—8 are the independent claims on appeal. Representative
claim 1 is reproduced below from the Claims Appendix of the Appeal Brief
dated September 18, 2014 (“App. Br.”). The limitation at issue is italicized.
1. A copper alloy casting containing:
Cu: 58 to 72.5 mass%; Zr: 0.0008 to 0.045 mass%; P:
0.01 to 0.25 mass%; one or more elements selected from Pb:
0.01 to 4 mass%, Bi: 0.01 to 3 mass%, Se: 0.03 to 1 mass%,
and Te: 0.05 to 1.2 mass%; and Zn: a remainder,
wherein the copper alloy casting satisfies the following
equations, fl = [Cu] — 3[P] + 0.5([Pb] + [Bi] + [Se] + [Te]) =
60 to 90, f2 = [P] / [Zr] = 0.5 to 120, and f3 = 0.05[y] + ([Pb] +
[Bi] +[Se] + [Te]) = 0.45 to 4, wherein the content of each
element ‘a’ is denoted as [a] mass%, the content of y phase is
denoted as [y]% by area ratio, and each element ‘a’ that is not
contained in the copper alloy casting is denoted as [a] = 0;
wherein the copper alloy casting forms a phase structure
in which the total content of a phase and y phase is 85% or
more by area ratio and the content of the y phase is 25% or less
by area ratio; and
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Appeal 2016-005830
Application 11/573,640
wherein the copper alloy casting has a mean grain size of
250 pm or less in a macrostructure at melt-solidification, and
wherein the copper alloy casting has a shape determined by a
mold.
App. Br. 31.
B. DISCUSSION
The Examiner finds Yamagishi discloses a copper alloy article
comprising Cu, P, Pb, Bi, Sn, Si, Fe, and Zn in amounts that overlap the
claimed ranges. Ans. 2. The Examiner does not find that Yamagishi
discloses that the copper alloy comprises the claimed grain size at melt-
solidification as recited in the appealed claims. The Examiner, however,
finds Yamagishi discloses that smaller grain size is preferred in order to
increase the proportion of the alpha phase and stabilize mechanical
characteristics. Thus, the Examiner finds grain size is a result effective
variable. Ans. 3^4 (citing Yamagishi || 32—34). Paragraphs 32 and 34 of
Yamagishi, which are relied on by the Examiner, disclose that “[njickel (Ni)
has the function of decreasing the size of crystal grains, and also has the
function of increasing the proportion of the alpha phase” and “[i]ron (Fe) has
the functions of inhibiting the size of the alpha phase from being increased
and of stabilizing mechanical characteristics.” Yamagishi || 32, 34.
The Examiner also finds Yamagishi does not disclose that the copper
alloy comprises Zr. Ans. 4. Nonetheless, the Examiner finds Ruchel
discloses a similar copper alloy article comprising up to 0.1 wt% Zr, which
overlaps the Appellant’s claimed range. Ans. 4 (citing Ruchel, col. 3,11. 38—
54). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to:
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Appeal 2016-005830
Application 11/573,640
introduce up to 0.1 wt% Zr, as taught by Ruchel, into the
copper alloy of Yamagishi et al. since Ruchel teaches Zr has a
recrystallization inhibitive effect and herewith leads to the
formation of a particularly fine-grained structure as well as to a
further improvement in the processability and the strength of
the material.
Ans. 4 (citing Ruchel, col. 3,11. 38—54).
As for the claimed “copper alloy casting,” the Examiner finds the
“casting” limitation is considered a process limitation in product-by-process
claims. According to the Examiner, it is not readily apparent that the
process of making the claimed product imparts any structural or functional
characteristics that are distinct from Yamagishi’s product, which may also
be obtained from casting. Final 3.
The Appellant argues that “a ‘casting’ is a term of art.” App. Br. 14
(citing Declaration of Keiichiro Oishi dated June 30, 2011 (“Oishi Decl.”),
at 14). In particular, Dr. Oishi states:
[A] casting is a manufacturing process that includes the steps of
(1) mixing constituent materials to obtain a desired
composition; (2) melting the constituent materials in a melting
furnace; (3) pouring the resulting melt into a mold made of
various materials such as metal, sand, resin and carbon; and (4)
solidifying the resulting melt to have a shape determined by the
mold. . . . [A] casting is a solidified part (or cast part) that is
ejected or broken out of the mold to complete the
manufacturing process.
Oishi 14.
The Appellant argues that Yamagishi and Ruchel are not directed to
copper alloy castings but rather “are directed to ‘hot worked material, ’ a
material that is obtained by carrying out several steps after casting, including
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Appeal 2016-005830
Application 11/573,640
hot working and recrystallization.” App. Br. 13 (citing Yamagishi 117;
Ruchel Abstract (emphasis added)).
Indeed, Yamagishi discloses:
[AJfter the mixture [of raw materials] is cast to form an ingot, it
is extruded in a temperature range of from 600 to 850° C. . . .
After the hot forging or cold reduction of a bar thus obtained is
carried out, the bar is heat-treated at a temperature of 300 to
600° C. for two minutes to five hours, and then cooled at a
cooling rate of 0.2 to 10° C./sec to control the structure.
Yamagishi 138 (emphasis added); see also App. Br. 15 (citing Yamagishi ||
38-39).
Similarly, Ruchel discloses a process for preparing a copper alloy
comprising the steps of initially casting a copper alloy and thereafter
annealing, cold working, heat treating, and recrystallizing the material.4
Ruchel, col. 1,1. 64—col. 2,11. 19; see also App. Br. 15 (citing Ruchel, col. 1,
1. 6Akx)1. 2,1. 63).
The Appellant argues that “hot working and recrystallization, if
applied to a casting, change the crystal (or grain) structure.” App. Br. 16
(citing Oishi Decl. ^fl[ 4—11). The Appellant’s argument is supported by the
record. See Oishi Decl. 19 (citing Exhibits I5 and J6 to support the statement
that “recrystallization, if applied to a casting, changes crystal (or grain)
structure and size from one to another”).7 Thus, a preponderance of the
4 Ruchel discloses that after recrystallization, the alloy is present as a
superfine two-phase structure having a uniform grain size of 1 to 2 pm.
Ruchel, col. 4,11. 37-41; see App. Br. 16—17.
5 Metals Handbook 15 (Kathleen Mills et al. eds., 9th ed.).
6 Materials and Processes in Manufacturing 374 (E. Paul DeGarmo et al.
eds., 9th ed. 2003).
7 Dr. Oishi’s statement stands unrebutted on this record.
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Appeal 2016-005830
Application 11/573,640
evidence supports a finding that the grain size of a casting and the grain size
of a recrystallized material are not necessarily the same in both Yamagishi
and Ruchel.
Claims 1—8 recite that the copper alloy casting has a mean grain size
of 250 pm or less in a macrostracture at melt-solidification, which is a
property of the claimed alloy casting. See App. Br. 14 (“the copper alloy of
the present invention, when melted and solidified during casting, forms the
macro structure having a mean grain size of 250 pm or less”). Although the
Examiner does not find that Yamagishi discloses the claimed grain size, the
Examiner finds grain size is a result-effective variable in Yamagishi’s
process. Ans. 3^4.
The Appellant argues that “[e]ven if, as the Examiner claims, the
mean grain size is a mere result effective variable, which Applicants deny,
the fact is that. . . Yamagishi. . . [does not] disclose[] that it is possible to
achieve such a grain sizes in a macrostructure at melt-solidification in a
cast.” Reply Br. 5.8
The Appellant’s argument is persuasive of reversible error. On this
record, the Examiner has failed to show, in the first instance, that optimizing
the amounts of Ni and Fe in Yamagishi would have been expected to result
in the claimed grain size in a macro structure at melt-solidification under the
conditions disclosed in Yamagishi. In that regard, we note that Yamagishi’s
copper alloy does not include Zr, which the Appellant uses in combination
with P to achieve the claimed grain size. See Spec. 126; App. Br. 18—19
(contending that “Zr and P, if added together into the alloy composition of
Reply Brief dated May 17, 2016.
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Application 11/573,640
the present invention, refine grains in a macrostructure at melt-solidification
during casting (to obtain a mean grain size of 250 pm or less)”).
For the reasons set forth above, the § 103(a) rejection is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
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