Ex Parte Sagawa et al

Patent Trial and Appeal Board

Sep 7, 2017

13778324 (P.T.A.B. Sep. 7, 2017)

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.
13/778,324 02/27/2013 Masato SAGAWA 145380.01 8496
759025944
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
09/11/2017 EXAMINER
SU, XIAO WEI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
09/11/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATO SAGAWA and NAOKI FUJIMOTO
(Applicant: INTERMETALLICS CO., LTD.)
Appeal 2016-002913
Application 13/778,3241 2 3
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 2,
and 4—7.2,3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as “Intermetallics Co., Ltd.” (Appeal
Brief filed August 7, 2015, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 3—8; Reply Brief filed January 19, 2016, hereinafter “Reply
Br.,” 2—5;); Examiner’s Answer entered November 16, 2015, hereinafter
“Ans.,”2; Final Office Action entered February 11, 2015, hereinafter “Final
Act.,” 3—5 (referring to Non-Final Office Action entered September 16,
2014, hereinafter “Non-Final Act.,” 3—6, 11—14).
3 We heard oral arguments from the Appellant’s representative on August
29, 2017.
Appeal 2016-002913
Application 13/778,324
I. BACKGROUND
The subject matter on appeal relates to an NdFeB sintered magnet and
to a method for its production (Specification filed February 27, 2013,
hereinafter “Spec.,” 11). Representative claims 1 and 4 are reproduced from
the Claims Appendix of the Appeal Brief, with key limitations highlighted in
bold italics, as follows:
1. A method for producing an NdFeB sintered magnet,
comprising:
forming a layer containing Dy and/or Tb on a surface of
an NdFeB sintered magnet base material; and then
performing a grain boundary diffusion process for
diffusing Dy and/or Tb from the layer through crystal grain
boundaries of the magnet base material into the magnet base
material by heating the magnet base material to a temperature
equal to or lower than a sintering temperature of the magnet base
material;
wherein:
a) a content of a rare earth in a metallic state in the magnet
base material is equal to or higher than 12.7 at%;
b) the layer is a powder layer formed by depositing a
powder;
c) the powder layer contains 50 mass% or more Dy and/or
Tb in a metallic state;
d) the magnet base material has a thickness of 3.5 mm or
greater; and
e) the powder layer is melted during the grain boundary
diffusion process.
4. An NdFeB sintered magnet with Dy and/or Tb
diffused through grain boundaries by a grain boundary diffusion
method, wherein:
a magnet base material is a plate-shaped magnet base
material having a thickness of 3.5 mm or greater;
an amount of a rare earth in a metallic state contained in
the plate-shaped magnet base material is 12.7 at% or greater; and
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Application 13/778,324
a squareness valued is 90 % or greater.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections listed as
follows:
A. Claims 1,2, and 4—6 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Yoshimura;* * * * 5
B. Claim 7 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Yoshimura in view of Nakamura et al.6 (hereinafter “Nakamura
’583”);
C. Claims 1, 2, and 4—6 under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over claims
1—6 of US 8,562,756 B2, issued October 22, 2013 to Sagawa et
al.;
D. Claim 7 under the judicially-created doctrine of obviousness-
type double patenting as unpatentable over claims 1—6 of US
8,562,756 B2 in view of Nakamura et al.7 (hereinafter
“Nakamura ’789”) and Nakamura ’583; and
E. Claims 4—6 under the judicially-created doctrine of
[4] The “squareness value” (SQ) is defined in the Specification (| 34) as
“Hk/Hcj, where Hk is the absolute value of the magnetic field at the point
where the magnetization is 10 % lower than the maximum point of the
magnetization curve, and HcJ is the coercivity.” According to the
Specification {id.), “[a]n SQ value equal to or higher than 90 % means that
the Dy and/or Tb has been diffused through the grain boundaries to the
regions close to the center of the magnet base material.”
5 JP 2007-258455 A, published October 4, 2007.
6 US 2006/0213583 Al, published September 28, 2006.
7 US 2007/0240789 Al, published October 18, 2007.
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Appeal 2016-002913
Application 13/778,324
obviousness-type double patenting as unpatentable over
claims 1—5 of Application 13/383,034 filed March 23,
2012 (now US 9,589,714 B2, issued March 7, 2017 to
Sagawa) in view of Nakamura ’789.
(Ans. 2; Final Act. 3—5; Non-Final Act. 3—6, 11—14.)
III. DISCUSSION
Rejections A & B. The Appellant provides separate arguments under
two sub-headings for claims 1 and 4, respectively, but otherwise relies on
these same arguments for all other claims rejected on these grounds (Appeal
Br. 3—8). Therefore, we confine our discussion to claims 1 and 4, which we
select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided
by this rule, all other claims stand or fall with either claim 1 or claim 4.
The Examiner finds that Yoshimura describes a method for producing
a sintered magnet including Nd, Fe, and B in which the same or similar
metal components are used in amounts that are within or overlapping with
those specified or described for the Appellant’s claim method under the
same or similar process conditions (Non-Final Act. 3—5). The Examiner
finds that although Yoshimura is silent regarding powder layer melting
during the grain boundary diffusion process (claim 1) or SQ value (claim 4),
one of ordinary skill in the art would expect that Yoshimura inherently
discloses these limitations “in view of the fact that Yoshimura teaches a
diffusion alloy that meet[s] the recited compositional limitations] of
Claim 1 and a method of diffusion that is very similar to [the inventors’]
disclosed method” (id. at 5) (quoting In re Best, 562 F.2d 1252, 1255
(CCPA 1977)).
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Application 13/778,324
The Appellant contends that Yoshimura does not support the
Examiner’s inherency findings (Appeal Br. 3). Specifically, with respect to
claim 1, the Appellant argues that Yoshimura discloses a 99.9% Dy foil—
not a powder—and that, therefore, “a skilled artisan would have been
motivated to use pure Dy if the artisan were to apply a powder to the
magnet” {id. at 4). The Appellant argues that because Dy has a melting
point of 1407-C and Yoshimura’s grain diffusion process is performed at
900-C, “there is no indication in Yoshimura that the Dy would be melted
during the grain boundary diffusion process” {id.). According to the
Appellant {id. at 4—5), “[i]n the embodiments of the present invention, the
melting point of Dy/Tb powder is lower than 1407°C because other elements
were added or Dy/Tb hydride was used.”
The Appellant’s arguments fail to identify a reversible error in the
Examiner’s rejection of claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Yoshimura describes a rare earth metal-Fe-B sintered magnet in
which a heavy rare earth element RH (at least one of Dy, Ho, and Tb), which
may be in the form of a foil or powder, is condensed on a rare earth-Fe-B
magnet body at a preferred diffusion temperature of 700-1,000°C
(Yoshimura Abst.; 171). As the Examiner finds (Ans. 4), Yoshimura’s
disclosed diffusion temperature “is within the [inventors’] disclosed
temperature of lower than 1000-C” (Spec. ^fl[ 31—32). According to
Yoshimura (| 60), the magnet thickness may be, e.g., not less than 3 mm.
As the Examiner finds (Non-Final Act. 3—4), Yoshimura describes a
working example in which the metallic composition has the following
composition (mass%): 31.8% Nd; 0.97% B; 0.92% Co; 0.1% Cu; 0.24% Al;
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Application 13/778,324
and the remainder (65.97%) Fe (Yoshimura 172).8 Significantly, the
Examiner correctly finds (Ans. 3 4) that Yoshimura’s foil or powder may
further contain elements such as Zn and Sn, which are described as “low
melting point metals” (Yoshimura 171). Yoshimura’s addition of such “low
melting point metals” is consistent with the inventors’ disclosure (Spec.
131) that “other elements” may be added increasingly to decrease the
powder layer’s melting point up to the eutectic point.
Under these circumstances, we discern no error in the Examiner’s
inherency findings as to the disputed limitations. Because Yoshimura
discloses the same or similar magnet produced by the same or similar
diffusion process, the burden of production was properly shifted to the
Appellant to show that powder melting would not occur during Yoshimura’s
diffusion process, as in claim 1, or that the magnet would not possess the SQ
value recited in claim 4. The burden is the same whether the rejection is
based on inherent anticipation under 35 U.S.C. § 102 or on prima facie
obviousness under 35 U.S.C. § 103(a), and the fairness in shifting this
burden to the Appellant is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products against the claimed
product. Best, 562 F.2d at 1255.
Regarding claim 4, the Appellant argues that Yoshimura’s teachings
suggest that Yoshimura’s magnet would not possess an SQ value within the
range (“90% or greater”) recited in the claim in view of the coercivity/SQ
data reported in Figure 4 of the current application and the coercivity data
8 The Examiner calculates the atomic percentages for the metallic
components to be: 14.53% Nd; 5.91% B; 1.03% Co; 0.10% Cu; 0.59% Al;
and 77.84% (Non-Final Act. 4).
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Application 13/778,324
reported in Yoshimura’s Table 2 (Appeal Br. 5—6). Yoshimura’s Table 2
(Yoshimura 1 80), however, relates to a magnet produced from a relatively
pure (99.9%) Dy foil. As the Examiner points out (Ans. 6), Yoshimura
discloses an alternative embodiment in which a low melting point metal such
as Zn or Sn is added to Dy powder (Yoshimura 171) in a manner consistent
with the inventors’ description regarding lowering the melting point of the
powder layer (Spec. 131—32). Although Yoshimura does not explicitly
teach that the amount of added Zn or Sn is increased below the eutectic
point, a person having ordinary skill in the art would have drawn a
reasonable inference that Yoshimura teaches adding these low melting point
metals to lower the powder layer’s melting point. Here, the Appellant does
not direct us to a fair comparison between the claimed subject matter and
Yoshimura’s disclosed alternative embodiment in which Zn or Sn is added.9
Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is taught
to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’”) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
For these reasons, we sustain the Examiner’s rejections.
Rejections C—E. With respect to Rejection E, the Appellant requests
that the rejection be held in abeyance until either the current application or
9 In any event, Yoshimura’s Table 2 includes a sample (Sample 2) with a
coercivity of 1520 kA/m, which is only slightly less than those reported in
Figure 4 of the current application. Thus, we find the evidence in Figure 4
of the current application is insufficient to establish that Yoshimura’s
Sample 2 has an SQ value below or significantly below 90%.
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Appeal 2016-002913
Application 13/778,324
Application 13/383,034 issues (Appeal Br. 8).10 Because the Appellant does
not contest the substantive merits of the rejection, we summarily affirm
Rejection E.
With respect to Rejections C and D, the Appellant does not dispute
the substantive merits but instead relies on a Terminal Disclaimer filed April
30, 2015. The Examiner notes, however, that this Terminal Disclaimer is
“disapproved” (Ans. 10). In response, the Appellant refers to another
Terminal Disclaimer filed January 19, 2016 (Reply Br. 5). Although the
submission of the second Terminal Disclaimer was “automatically approved
by EFS-Web” on January 19, 2016, the record lacks an indication that the
Examiner considers the later-filed Terminal Disclaimer to be timely and
effective to obviate the rejections. Therefore, we also sustain rejections C
and D.
IV. SUMMARY
Rejections A through E are affirmed. Therefore, the Examiner’s final
decision to reject claims 1, 2, and 4—7 is affirmed.
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
10 Application 13/383,034 issued as United States Patent 9,589,714 B2 on
March 7, 2017.
8