Ex Parte Rajan

Patent Trial and Appeal Board

Sep 26, 2016

13328362 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/328,362 12/16/2011
92899 7590 09/28/2016
Lewis Roca Rothgerber Christie LLP
P.O.Box 29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Sunder S. Rajan
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.
67246/R691-10-1123-US-NP 1087
EXAMINER
POLYANSKY,ALEXANDER
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
pto@lrrc.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNDERS. RAJAN
Appeal2015-004194
Application 13/328,362 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-5 and 7-10.2
We have jurisdiction under 35 U.S.C. § 6(b). 3
We REVERSE.
1 According to Appellant, the real party in interest is Raytheon Company. Appeal
Br. 1.
2 Claims 11-20 have been withdrawn from consideration.
3 Our decision refers to the Appellant's Specification filed Dec. 16, 2011 (Spec.),
the Final Office Action mailed Jan. 29, 2014 (Final Act.), the Appeal Brief filed
Sept. 9, 2014 (Appeal Br.), the Examiner's Answer mailed Dec. 22, 2014 (Ans.),
and the Reply Brief filed Feb. 24, 2015 (Reply Br.).
Appeal2015-004194
Application 13/328,362
STATEMENT OF THE CASE
The subject matter on appeal relates to shape memory alloys (see, e.g., claim
1 ). Appellant discloses that shape memory alloys often have superelastic
properties but such properties are generally present over a narrow temperature
range. Spec. i-f 2. Appellant discloses a need for superelastic wires that exhibit
superelasticity over a wide temperature range, are able to retain superelasticity
despite a severe bend, and exhibit good strength, stress limits, and lower residual
strain after superelastic deformation. Id.
Independent claim 1 is illustrative and is reproduced below from the Claims
Appendix of the Appeal Brief. 4
1. A shape memory alloy comprising:
a Ni-Ti based alloy, wherein the Ni-Ti based alloy is superelastic
at temperatures of -40 °C to about 60 °C after being exposed to
temperatures of about -55 °C to about 85 °C.
The claims on appeal stand rejected as follows:
(1) claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as unpatentable over
Kamei· 5
'
(2) claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as unpatentable over
Kamei in view of Sawada; 6 and
(3) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Kamei and
Sawada and further in view ofFujiwara.7
4 Appeal Br. 11.
5 Kamei et al., US 6,225,953 Bl, issued May 1, 2001 ("Kamei").
6 Sawada et al., JP 59-104459 A, published June 16, 1984 ("Sawada").
7 Fujiwara et al., JP 61-015995 A, published Jan. 24, 1986 ("Fujiwara"). We note
the first named inventor for JP 61-015995 A is Yamamoto. However, JP 61-
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Application 13/328,362
B. DISCUSSION
1. Rejection of claims 1-3 and 5-10 over Kamei
Claims 1-3 and 5-10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kamei. We select claim 1 as representative for discussing the issues on
appeal.
The Examiner finds Kamei discloses a method of manufacturing a stowable
antenna device including an antenna made of a superelastic alloy wire. Final Act.
2. The Examiner finds the superelastic alloy wire is a Ni-Ti shape memory alloy
and therefore meets the limitations of "shape memory alloy comprising: a Ni-Ti
based alloy, wherein the Ni-Ti based alloy is superelastic" recited in claim 1. Final
Act. 2-3.
The Examiner finds that because Kamei discloses substantially the same
superelastic Ni-Ti shape memory alloy recited in claim 1, "it would be reasonable
to conclude that the stowable antenna of Kamei is functionally equivalent to that
the instant invention" and would be expected to be superelastic at temperatures
of -40 °C to about 60 °C after being exposed to temperatures of about -55 °C to
about 85 °C, as recited in claim 1. Final Act. 3.
In the rejection on appeal, the Examiner makes no determination of the
differences between the claimed subject matter and the prior art as required in a
proper analysis under 35 U.S.C. § 103(a). Rather, the Examiner finds Kamei
discloses substantially the same superelastic Ni-Ti shape memory alloy recited in
claim 1. Thus, we understand the rejection of claim 1 over Kamei alone to be an
anticipation rejection.
015995 A is referred to as "Fujiwara" in the Final Office Action. For consistency,
"Fujiwara" will be used in further references to JP 61-015995 A.
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Appeal2015-004194
Application 13/328,362
Appellant contends Kamei does not disclose any temperatures over which its
Ni-Ti alloy would be superelastic. Appeal Br. 2, 5. In view of this, Appellant
argues Kamei does not inherently disclose the alloy of claim 1 and one of ordinary
skill in the art would not have expected the alloy of Kamei to exhibit
superelasticity over the temperature range recited in claim 1 after exposure to the
second temperature range of claim 1. Appeal Br. 4--5.
Appellant's arguments are persuasive. The alloy of claim 1 is defined by its
superelasticity over the entire temperature range of -40°C to about 60°C after
exposure to temperatures of about -55°C to about 85°C. "To anticipate a claim, a
prior art reference must disclose every limitation of the claimed invention, either
explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
see also In re Schaumann, 572 F .2d 312, 315 (CCP A 1978) (prior art reference
must identify each and every element in the claim "'with sufficient specificity to
constitute a description thereof within the purview of 3 5 USC 102(b) "').
Here, the Examiner has not demonstrated that Kamei describes each and
every element of claim 1 with sufficient specificity to constitute a description of
the alloy of claim 1, including the temperature range over which the alloy is
superelastic (i.e., "-40 °C to about 60 °C") after exposure to "temperatures of about
-55 °C to about 85 °C." In this regard, we agree with Appellant that Kamei is
silent with regard to any temperature range over which the alloy of Kamei is
superelastic or what temperature range the alloy may be exposed to and still
maintain superelasticity.
Nor has the Examiner established that the alloy of Kamei would inherently
possess superelasticity over the temperature range recited in claim 1 after exposure
to the second temperature range of claim 1. The Examiner finds the alloy of
Kamei is substantially the same as the alloy of claim 1 merely because the alloy is
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Appeal2015-004194
Application 13/328,362
a Ni-Ti superelastic shape memory alloy. However, as discussed above, the
disclosure of Kamei provides no details regarding the superelasticity of the alloy,
such as what temperature range over which the alloy is superelastic. Thus, an
inherent disclosure of the alloy of claim 1 by Kamei would rely upon possibilities
or probabilities, which are not sufficient bases for inherency. "Inherency,
however, may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
For the reasons discussed above, the rejection of claims 1-3 and 5-10 over
Kamei is not sustained.
2. Rejection of claims 1-3 and 5-10 over Kamei and Sawada
Claims 1-3 and 5-10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kamei in view of Sawada. We select claim 1 as representative for discussing
the issues on appeal.
As an alternative to the rejection of claims 1-3 and 5-10 over Kamei, in the
event the alloy of Kamei does not possess superelasticity as recited in claim 1, the
Examiner finds Sawada discloses a shape memory Ni-Ti alloy that is heat treated at
300-600°C, which overlaps the heat treatment of 500-550°C disclosed in
paragraph 24 of Appellant's Specification. Final Act. 3. The Examiner concludes
it would have been obvious to modify the alloy of Kamei in view of Sawada and
this would provide the alloy of claim 1 because the alloy of Kamei in view of
Sawada is manufactured by substantially the same process as Appellant's. Final
Act. 3--4.
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Application 13/328,362
Appellant argues the process disclosed by Sawada is not substantially the
same as Appellant's process because the process disclosed in paragraph 24 of
Appellant's Specification includes heat treating at 500-550°C for about less than a
minute and then rapidly quenching the alloy. Appeal Br. 6-7. Appellant contends
Sawada does not disclose a length of time for its heat treatment of 300-600°C or a
speed at which the alloy is moved through a heat treatment oven. Appeal Br. 7.
Appellant's arguments are persuasive. Although Sawada discloses a heat
treatment temperature of 300-600°C, Sawada does not disclose the heat treatment
is performed for "about less than a minute," as disclosed in paragraph 24 of
Appellant's Specification. Nor does Sawada disclose the alloy is rapidly quenched
after the heat treatment, as disclosed in paragraph 24 of Appellant's Specification.
As a result, the Examiner has not established that the alloy of Kamei, as modified
by Sawada, is produced by an identical or substantially identical process as
Appellant's process. Cf Jn re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the
claimed and prior art products "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").
In response to Appellant's arguments, the Examiner finds Appellant has not
established criticality for the heat treatment disclosed in paragraph 24 of
Appellant's Specification or that the heat treatment would result in a different
microstructure or different properties. Ans. 7-8. However, the Examiner, not
Appellant, bears the initial burden of setting forth a prima facie case of
unpatentability. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(Examiner "bears the initial burden ... of presenting a prima facie case of
unpatentability"). Thus, the Examiner cannot require Appellant to prove the alloy
of Kamei, as modified by Sawada, would not necessarily or inherently possess the
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Application 13/328,362
characteristics of the claimed alloy because the Examiner has not first established a
prima facie case of obviousness for claim 1 over Kamei and Sawada.
For the reasons discussed above, the rejection of claims 1-3 and 5-10 under
35 U.S.C. § 103(a) over Kamei and Sawada is not sustained.
3. Rejection of claim 4 over Kamei, Sawada, and Fujiwara
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kamei
and Sawada and further in view of Fujiwara.
The § 103 rejection of claim 4 includes Kamei and Sawada and therefore has
the same deficiencies as the rejections of claim 1 over Kamei and over Kamei in
view of Sawada. Although the § 103 rejection of claim 4 relies on Fujiwara as an
additional prior art reference, the Examiner does not rely on Fujiwara to remedy
the deficiencies of Kamei or the combination of Kamei and Sawada. Therefore,
we do not sustain the § 103 rejection of claim 4 over Kamei and Sawada in view of
Fujiwara.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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