Ex Parte Oishi et alDownload PDFPatent Trial and Appeal BoardAug 29, 201814001646 (P.T.A.B. Aug. 29, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation