Ex parte SATO et al.

Board of Patent Appeals and Interferences

Sep 26, 2000

08151808 (B.P.A.I. Sep. 26, 2000)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KOJI SATO, RIKIZO WATANABE,
TAKEHIRO OHNO, YOSHIKI MASUGATA,
MINORU TAKUMA, SHIGEAKI SATO and
YOSHIMI SENDA
______________
Appeal No. 1997-0377
Application 08/151,808
_______________
HEARD: SEPTEMBER 14, 2000
_______________
Before JOHN D. SMITH, PAK, and LIEBERMAN, Administrative Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the final rejection of claims 20
through 31, all of the claims in this application.
Claim 20 is representative and is reproduced below:
20. An alloy wire of high strength and low thermal expansion, wherein:
the wire is made of an alloy which has a chemical composition of, by weight, 0.06% to
0.5% C, 65% or less Co, and less than 30% Ni in total amount of 25% to 65% of Co + Ni, and
the balance being Fe as a main component, other optional elements and unavoidable
Appeal No. 1997-0377
Application 08/151,808
2
impurities, and which has a primary phase of austenite phase and martensite phase induced
by working, and wherein the wire has 150 kgf/mm or more of tensile 2
strength at normal temperature and an average thermal expansion coefficient of
6 x 10 /EC or less at from normal temperature to 230E C.-6
The references of record relied upon by the examiner are:
Decker et al. (Decker) 3,093,519 June 11, 1963
Yamada et al. (Yamada) 4,203,782 May 20, 1980
Enomoto 4-354848 Dec. 9, 1992
(Japanese Patent Application)
The appealed claims stand rejected under 35 U.S.C. § 103 as unpatentable over either
Decker or Enomoto combined with Yamada.
We do not sustain the examiner's stated rejections.
The subject matter on appeal is directed to an alloy wire of high-strength and low-
thermal expansion. According to the claimed invention, the wire has 150 kgf/mm or more of2
tensile strength at normal temperature and an average thermal expansion coefficient of
6 x 10 /EC or less at from normal temperature to 230EC. Appellants' claimed alloy wire is-6
characterized as having desirable combination of properties which provides a significant
technical advance in wire products. As evident from appealed claim 20 reproduced above, the
claimed alloy wire is made of an alloy of specific chemical composition and micro structure.
In their brief at pages 5 and 6, appellants acknowledge that conventionally, steel wires
have been used for a core wire in power transmission lines which require high tensile strength
and torsional strength. Appellants admit that conventional steel wires
Appeal No. 1997-0377
Application 08/151,808
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provide the requisite tensile strength and torsional property, but fail to provide a satisfactory
thermal expansion coefficient. Thus, according to appellants, a typical value for conventional
steel core wires is around 10 x 10 /EC to 12 x 10 /EC. The conventional iron/nickel-type alloy-6 -6
wires are said to have a low thermal expansion coefficient and acceptable torsional strength.
However, the tensile strength of such wires is inadequate generally being in the range of 100-
130 kgf/mm , values which are considerably lower than the presently claimed alloy wire which2
has a tensile strength of at least 150 kgf/mm . Appellants further explain that a low thermal2
expansion is required because increased power transmission results in high temperatures
causing the wire to thermally expand and sag. Appellants' claimed alloy wire is said to be
unique in the sense that it provides both the high strength and low thermal expansion properties
required for this utility.
As evidence of obviousness of the herein claimed subject matter, the examiner relies on
the combined teachings of Decker and Yamamoto and alternatively the combined teachings of
Enomoto and Yamamoto. Respecting the claimed requirements of high strength and low
thermal expansion specifically set forth in appellants' appealed claims, the examiner indicates
that neither of his “primary references” disclose the combination of both properties. However,
the examiner argues that since the claimed alloy compositions and microstructures “are
overlapped by the cited references,” the recited tensile strength property of greater than 150
kgf/mm and the recited low thermal expansion coefficient of 10 x 10 /EC or less “would have2 -6
Appeal No. 1997-0377
Application 08/151,808
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been inherently possessed” by the alloys described in either of Decker or Enomoto. See the
answer at page 5.
Respecting the examiner's finding of inherency, appellants point out that to the extent the
prior art references disclose the claimed properties, Decker discloses an alloy having a
thermal expansion of 10.08 x 10 /EC which is a value substantially higher than the thermal-6
expansion coefficient of appellants' claimed alloy. Similarly, with respect to the examiner's
alternatively relied upon “primary reference” to Enomoto, appellants point out that the alloys
disclosed in this reference possess a tensile strength of no more than
100 kgf/mm , values which are significantly lower than the tensile strength recited in the instant2
claims. See the brief at page 11. Thus, the objective evidence in the record before us does
not support the examiner's contention that the herein claimed properties would have been
inherently possessed by the prior art alloys.
Respecting the examiner's “overlapping” alloy composition arguments, the examiner
has simply not come to grips with the specific teachings in the relied upon prior art references
that, when logically combined, would lead one away from, inter alia, the use of carbon in an
alloy in the herein claimed range. Compare the brief at pages 9 and 14.
For the above reasons as well as the additional reasons set forth in appellants' briefs,
we agree with appellants that the examiner has failed to meet his burden of establishing a
prima facie case of obviousness for the subject matter defined by the appealed claims.
Appeal No. 1997-0377
Application 08/151,808
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The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )

JDS/cam
Appeal No. 1997-0377
Application 08/151,808
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