Ex Parte Oishi et al

Patent Trials and Appeals Board

Aug 29, 2018

14001646 - (D) (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/001,646 08/26/2013
30671 7590 08/31/2018
DITTHA VONG & STEINER, P.C.
Keth Ditthavong
44 Canal Center Plaza
Suite 305
Alexandria, VA 22314
FIRST NAMED INVENTOR
Yukihiro 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.
P7365USOO 2563
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
docket@dcpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKIHIRO OISHI, NOBUYUKI MORI, RYUICHI
INOUE, and NOZOMU KA WABE
Appeal2017-009619
Application 14/001,646 1
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and BRIAND.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 6 and 8-14. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is SUMITOMO
ELECTRIC INDUSTRIES, LTD. Appeal Br. 2.
Appeal2017-009619
Application 14/001,646
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a magnesium alloy
material that is suitable for parts of, for example, automobiles, bicycles, and
electronic devices. Spec. ,r 1. Appellants state that the present alloy has
good plastic formability and press formability. Id. Claim 6, reproduced
below, is illustrative of the claimed subject matter:
6. A magnesium alloy material composed of a magnesium
alloy, comprising a sheet-shaped portion,
wherein the magnesium alloy is AZ91,
wherein the sheet-shaped portion has a thickness of 1.5
mm or more, and
the sheet-shaped portion satisfies the following
orientation,
when a region having 1/4 the thickness of the sheet-shaped
portion in a thickness direction from a surface of the sheet-
shaped portion is defined as a surface region and a remaining
region is defined as an internal region,
X-ray diffraction peak intensities of a (002) plane, a (100)
plane, a (101) plane, a (102) plane, a (110) plane, and a (103)
plane in the surface region are respectively defined as lp(002),
lp(IOO), lp(lOl), lp(102), lp(l 10), and lp(103),
X-ray diffraction peak intensities of a (002) plane, a (100)
plane, a (101) plane, a (102) plane, a (110) plane, and a (103)
plane in the internal region are respectively defined as Ic(002),
Ic(IOO), Ic(lOl), Ic(102), Ic(l 10), and Ic(103),
a degree of orientation of the (002) plane in the surface
region, which is expressed as lp(002)/ {h(l 00) + lp(002) + lp(l O 1)
+ lp(102) + h(llO) + lp(103)}, is defined as a basal plane peak
ratio OF,
a degree of orientation of the (002) plane in the internal
region, which is expressed as Ic(002)/ {Ic(IOO) + Ic(002) +
2 In this Decision, we refer to the Final Office Action dated August 25, 2016
("Final Act."), the Appeal Brief filed December 28, 2016 ("Appeal Br."),
and the Examiner's Answer dated April 4, 2017 ("Ans.").
2
Appeal2017-009619
Application 14/001,646
Ie(l O 1) + Ie(l 02) + Ie(l 10) + Ie(l 03)}, is defined as a basal plane
peak ratio Oe,
a ratio Op/Oe of the basal plane peak ratio Op in the surface
region to the basal plane peak ratio Oe in the internal region
satisfies 0.95 :S Op/Oe :S 1.05, and
wherein, when an average crystal grain size in the surface
region is defined as Dp and an average crystal grain size in the internal
region is defined as De, a ratio De/Dp of the average crystal grain size
De in the internal region to the average crystal grain size Dp in the
surface region satisfies 2/3 :S De/Dp :S 3/2, Dp 2: 3.5 µm, and De 2: 3.5
µm.
Appeal Br. 13-14 (Claims App.)
REJECTIONS
On appeal, the Examiner maintains the rejection of claims 6 and 8-14
under 35 U.S.C. § 103 as unpatentable over Numano et al. (US 7,841,380
B2, issued Nov. 30, 2010 ("Numano")). Ans. 3. 3
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellants arguments, we are not
3 The Examiner has withdrawn the previous rejections based on obviousness
type double-patenting and based on 35 U.S.C. § 112. Ans. 2, 6-7.
Appellants do not dispute the merits of the 35 U.S.C. § 112 rejection and
intend to cancel claims 9, 11, and 13. Appeal Br. 6.
3
Appeal2017-009619
Application 14/001,646
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellants present separate arguments for claims 6 and 14. We
limit our discussion to those claims. Claims 8-13 will stand or fall with
claim 6, from which they depend. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
The Examiner finds that Numano teaches an Mg-based AZ91 alloy
with a thickness that can be adjusted from 0.1-1 mm. Appeal Br. 3 (citing
Numano 11:36-61). The Examiner finds that example number 12 of
Numano has a thickness of 2 mm. Id. (citing Numano, Table 8, No. 12).
The Examiner finds that Numano teaches the same twin-roll casting method
as the present application with overlapping temperatures and overlapping
reduction rate. Id. at 4 (citing Numano Fig. 1, 3:44--4:21, 14:50-53, 15: 13-
31, 3 4: 5 8---6 7). The Examiner states that " [ o ]verlapping in the parameters of
rolling condition create prima facie case of obviousness." Id. ( citation
omitted). The Examiner concludes that "[i]t would have been obvious to
one of ordinary skill in the art ... to optimize the rolling conditions as
demonstrated by [Numano] since [Numano] teaches the same Mg based
alloy material with sheet form throughout the whole disclosed field." Id.
With respect to claim 6, Appellants argue that Numano does not teach
the recited thickness of 1.5 mm or more. Appeal Br. 9. Appellants
emphasize that Numano sample No. 4 has a 0.5 mm thickness after rolling.
Id. The Examiner, however, finds that Numano generally teaches that
thickness can be adjusted from O .1-10 mm and that Numano sample number
12 has a thickness of 2 mm. Ans. 7. The preponderance of the evidence
supports the Examiner's position. See Numano 11:36-61 ("the cast material
4
Appeal2017-009619
Application 14/001,646
obtained by the continuous casting above ... has a thickness of from 0.1 to
1 O.Omm"), Table 8 (indicating 2 mm thickness for sample No. 12). See also,
e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("Aprimafacie
case of obviousness typically exists when the ranges of [the] claimed
composition overlap the ranges disclosed in the prior art.").
Appellants also argue that "the processing steps used to produce
Sample No. 4 in Numano are different from the present claimed invention"
and that it is therefore speculation to conclude that the orientation and grain
size distribution properties would be the same. Appeal Br. 9--10.
Appellants' argument is unpersuasive because the Examiner does not only
rely upon the teachings of sample No. 4. Rather, the Examiner explains why
the teachings ofNumano, both with regarding to material and production
process, overlap with the present invention. Ans. 3-5, 7.
The Examiner's rejection is appropriate because the Examiner
established that the Numano and claimed products are identical or
substantially identical and produced by identical or substantially identical
processes, and Appellants do not present any proof to the contrary. In re
Best, 562 F.2d 1252, 1256 (CCPA 1977) (holding that where "the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product."); see also In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.").
5
Appeal2017-009619
Application 14/001,646
With respect to claim 14, Appellants again argue that Numano does
not teach the recited thickness, orientation, or grain distribution properties.
Appeal Br. 10-11. These arguments fail to identify reversible error for the
reasons explained above.
Appellants also argue that Numano fails to teach the recitation "in the
rolling step, at least one pass of the rolling is performed at a reduction ratio
of 30% or more per pass and the remaining passes of the rolling are
performed at a reduction ratio of 15% or more per pass." Appeal Br. 11.
The Examiner, however, finds that Numano teaches a plurality of rolling
with one-pass reduction rate from 1 to 50% and total reduction rate of 20%
or more. Ans. 8 (citing Numano 14:39---65, 34:58---67). This finding is
sufficient to establish overlapping reduction rates, and Appellants do not
persuasively explain why this finding is incorrect. We note that the
reduction ratio recitation of claim 14 is broad enough to overlap with, for
example, a process with multiple passes each having a reduction ratio of
30% or more per pass. Accordingly, Appellants' argument does not identify
reversible error.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 6
and 8-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
6