Ex Parte Oishi et al

Board of Patent Appeals and Interferences

Feb 15, 2011

10561536 (B.P.A.I. Feb. 15, 2011)

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.
10/561,536 12/19/2005 Yukihiro Oishi 052363-0029 9363
20277 7590 02/16/2011
MCDERMOTT WILL & EMERY LLP
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096
EXAMINER
VELASQUEZ, VANESSA T
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
02/16/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YUKIHIRO OISHI, NOZOMU KAWABE,
KENZABURO HASHIMOTO, and KENJI FUKUDA
________________

Appeal 2010-000889
Application 10/561,536
Technology Center 1700
________________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000889
Application 10/561,536

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-5, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Thum2 in view of Housh3 and Hawley’s 4, and further in
view of Higgins5 and Callister6, with evidence from Webster’s7. (App. Br.8
4-6; Ans.9 2-3.) We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ arguments in support of patentability are limited to claim
1, the sole independent claim. (See App. Br. 12.) As such, dependent
claims 2-5, 22, and 23 stand or fall with claim 1 (see 37 C.F.R.
§ 41.37(c)(1)(vii)), which is reproduced below from the Claims Appendix to
the Appeal Brief:
1. A magnesium-based alloy screw having a head
portion and a thread portion,
wherein the screw is formed from a drawn wire made of
a magnesium-based alloy, and the wire has an average crystal
grain diameter of 10 µm or less, and a maximum crystal grain
diameter of 15 µm or less; wherein

2 A. Thum & H. Lorenz, Tests on Magnesium Alloy Threaded Fasteners, 84
Centre of Darmstadt C. of Higher Educ. 667 (1940). (English translation
pages 1-4.)
3 Susan Housh et al., Selection and Application of Magnesium and
Magnesium Alloys, 2 ASM HANDBOOKS ONLINE 1 (2002),
http://products.asminternational.org/hbk/index.jsp.
4 HAWLEY’S CONDENSED CHEMICAL DICTIONARY (14th ed. 2002).
5 RAYMOND A. HIGGINS, ENGINEERING METALLURGY, PART 1: APPLIED
PHYSICAL METALLURGY 90 (Arnold 1993) (1957).
6 WILLIAM D. CALLISTER, JR., MATERIALS SCIENCE AND ENGINEERING, AN
INTRODUCTION 174 (6th ed. 2003).
7 WEBSTER’S NEW WORLD DICTIONARY 157 (3d ed. 1988).
8 Appeal Brief filed Apr. 16, 2009.
9 Examiner’s Answer mailed Jun. 8, 2009.
Appeal 2010-000889
Application 10/561,536

3
the tensile strength of the screw is 220 MPa or higher.
As an initial matter, we observe that claim 1 is drafted in product-by-
process format. Thus, while claim 1 is “limited by and defined by the
process, determination of patentability is based on the product itself.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
According to Appellants’ Specification, conventional prior art
processes for making a magnesium-based alloy screw involved heat treating
extruded material to at least 250 ºC. (Spec. [0007]; [0012].) A drawback of
these methods was that the lifetimes of the tools used for forming the screw
were reduced, thereby increasing production costs. (Spec. [0007].)
Appellants are said to have discovered that it is possible to produce a
magnesium-based alloy screw using a working temperature lower than 250
ºC (Spec. [0013].) Specifically, Appellants form the screw from a drawn
wire having a specific crystal grain diameter. (Id.; see claim 1, first wherein
clause.)
The Examiner finds that Thum discloses threaded fasteners (screws)
made from magnesium-based alloys having tensile strengths of
approximately 235 MPa to 343 MPa, which is within Appellants’ claimed
range of “220 MPa or higher.” (See Ans. 4-5.) The Examiner concedes
Thum does not disclose forming the screws from a drawn wire. (Ans. 5.)
However, the Examiner contends it would have been obvious to have
formed Thum’s screws from drawn wire based on Housh’s teaching that
drawing processes reduce the required number of manufacturing steps and
lower fabrication costs. (Ans. 5 (citing Housh “Formability” 1).) The
Examiner also concedes the references do not explicitly disclose drawn wire
having the claimed crystal grain size. (Ans. 5-6.) However, the Examiner
Appeal 2010-000889
Application 10/561,536

4
maintains the ordinary artisan would have been motivated to achieve a small
grain size, since smaller grained materials have enhanced mechanical
properties. (Ans. 6 (citing Callister 175).) The Examiner further finds it
would have been within the level of skill of the ordinary artisan to achieve a
desired grain size by optimizing degree of deformation and temperature.
(Ans. 9 (citing Higgins 94 and Callister 183).)
The applied prior art discloses the following:
At the time of Appellants’ invention, it was known in the
metalworking art that “[a] fine-grained material (one that has small grains) is
harder and stronger than one that is coarse grained.” (Callister 175.) One of
ordinary skill in the art was also aware that grain size is a result of the
degree of deformation imparted to an alloy and that as working temperature
and time increase, grain size also increases. (Higgins 94.)
One method of deforming metal (e.g., to form a wire) is by a drawing
technique, which is a process of “gradually reduc[ing] the diameter of a
metal rod or plastic cylinder by pulling it through perforations of
successively diminishing size in a series of plates.” (Hawley’s.) “An
analogous method is used in sheet-metal forming.” (Id.) “The technique for
hot drawing of magnesium alloy sheet has been developed largely so that
drawing can be completed in a single operation.” (Housh “Formability” 5.)
“AZ31B-H24 [(a magnesium alloy)] sheet is commonly hot formed at
temperatures below 160 ºC” (Housh “Formability” 4) and it has been found
that “[t]he amount of possible reduction [during hot drawing] increases as
temperature increases up to about 230 ºC (450 ºF) for [Mg] alloy AZ31B”
(Housh “Formability” 5). According to Housh, in order to maintain the
properties of AZ31B-H24, single exposures in normal forming operations
Appeal 2010-000889
Application 10/561,536

5
should not exceed the maximum times and temperatures listed in Table 18. ”
(Housh “Formability” 4). The listed times and temperatures for AZ31B-H24
range from 0.3 to 60 minutes and 163 to 260 ºC. (Id.) The properties of
AZ31B-H24 include a room temperature tensile strength of 290 MPa.
(Housh “Introduction” Table 3.)
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed process appears to be identical to a
process disclosed by the prior art and/or that the products claimed by the
applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977). Cf. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
(“[W]hen the prior art evidence reasonably allows the PTO to conclude that
a claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’”
(quoting In re Spada, 911 F.2d at 708 n.3)).
Appellants do not dispute that, at the time of the invention, it was
known in the art that degree of deformation and high temperature are the
factors which affect grain diameter. (Cf. Rep. Br.10 3.) Rather, Appellants
assert that, even if degree of deformation is controlled, it is difficult to
control grain growth when forming a magnesium-based alloy at a
temperature over 200 ºC11. (Id.) Appellants dispute the Examiner’s

10 Reply Brief filed Aug. 10, 2009.
11 We note Appellants argue, for the first time in the Reply Brief, that a
temperature of 200 ºC or less is critical to control grain growth. While the
Examiner explicitly found that Housh discloses temperatures below 250 ºC,
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Application 10/561,536

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contention that Housh suggests using temperatures below 250 ºC to form a
drawn wire, and argue that because the applied prior art fails to suggest
forming a drawn wire at the temperatures used in Appellants’ drawing
method, the Examiner’s proposed combination would not result in a wire
having the claimed crystal grain diameter. (Rep. Br. 2.)
Appellants’ argument is not persuasive. The evidence of record
supports a finding that one of ordinary skill in the art would have reasonably
expected the temperatures used in a sheet metal drawing procedure to be
applicable in an analogous wire-drawing method. (See Hawley’s supra p.
4.) Housh discloses deep drawing at temperatures which overlap those used
in Appellants’ drawing method. (See Housh “Formability” Table 18.)
Appellants have not produced evidence to support their contention that one
of ordinary skill in the art would not have looked to Housh’s exemplary deep
drawing technique in considering a method of making a screw, because the
technique is used for hot drawing of magnesium alloy sheet, rather than
wire. (See Rep. Br. 3.) Moreover, because Appellants have not shown any
criticality in the other drawing conditions used in their method (e.g.
speeds)12, it was reasonable for the Examiner to conclude that a wire formed

Housh also discloses temperatures below 200 ºC. (See Ans. 8-9, bridging
para.)
12 We have considered the comparison testing in the Specification, but
determine it is not commensurate in scope with claim 1. Testing was
conducted on a single alloy (“material corresponding to ASTM AZ31”
(Spec. [0039])), although claim 1 is not limited to a particular magnesium-
based alloy. Moreover, a comparison was only made with extruded material
and not with other types of materials used to form magnesium-based alloy
screws. In this regard, we note Appellants have not produced evidence to
support their contention that the ordinary artisan would not have used the
material in Housh’s deep drawing process to make screws. (See Rep. Br. 3.)
Appeal 2010-000889
Application 10/561,536

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by conventional drawing techniques at a temperature within the range used
by Appellants would have resulted in a wire having the claimed crystal grain
diameter (cf. Ans. 9-10, bridging para.). See In re Thorpe, 777 F.2d at 697
(“If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.”).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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MCDERMOTT WILL & EMERY LLP
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096