Ex parte Soda et al.

Board of Patent Appeals and Interferences

Aug 10, 2000

08542399 (B.P.A.I. Aug. 10, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today is not binding precedent of the Board.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 YUJI SODA, YUKIO TOKUYAMA,
and HIROSHI USUI
__________
Appeal No. 1997-4198
Application 08/542,399
__________
ON BRIEF
__________
Before KIMLIN, OWENS, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s refusal to allow
claims 1
through 6 which are all the claims remaining in the application.
THE INVENTION
The invention is directed to a metal powder having a spherical shape, an average
particle size of 25 µm or less, and a tap density ratio of 50 - 60%. In one
embodiment, the powder is prepared by forming metal particles from non-spherical
molten metal by water atomization followed by subjecting the resulting particles to a
high speed gas stream in the presence of a collision target.
THE CLAIMS
Claims 1 and 2 are illustrative of appellants’ invention and are reproduced
below.
1. A water-atomized metal powder having a spherical particle shape, an average
particle size of 25 µm or less and a tap density ratio of 50 - 60%.
2. A method for producing water-atomized spherical metal powder, the method
comprising forming metal particles of non-spherical shapes from molten metal by
water-atomization, and subjecting the metal particles to a high speed gas stream to
cause high speed collisions to occur between said particles and between said
Appeal No. 1997-4198
Application No. 08/542,399
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particles and a collision target to form spherical particles having an average
particle size no greater than 25 µm and a tap density ratio of from 50 - 60%.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following
references.
Klein et al. (Klein) 4,209,326 Jun. 24, 1980
Kiyota 5,006,164 Apr. 9, 1991
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Kiyota.
Claims 2 through 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kiyota in view of the admitted prior art and Klein.
OPINION
We have carefully considered all of the arguments advanced by appellants and
the examiner and agree with the appellants that the aforementioned rejection under
35 U.S.C. § 103(a) of claims 2 and 4 through 6 is not well founded. Accordingly,
we will not sustain these rejections. We agree with the examiner that the rejection of
claim 1 under 35 U.S.C. § 102(b) and claim 3 under 35 U.S.C. § 103(a) is well
founded. Accordingly, we will sustain these rejections.
As an initial matter, appellants state that the claims do not all stand or fall
together. Appellants argue for the separate patentability of claims 1 and 3, 2 and 5,
and 4 and 6. See Brief, pages 2 and 3. Accordingly, we select claims 1 and 2, the
Appeal No. 1997-4198
Application No. 08/542,399
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independent composition and method claim respectively, and claim 4 as representative
of the claimed subject matter and limit our consideration thereto. 37 CFR § 1.192
(c)(7)(1995).
The Rejection under 35 U.S.C. § 102(b)
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all of
the elements of the claim must be found in one reference. Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
The claimed subject matter requires a composition having a spherical particle
shape, an average particle size of 25 µm or less and a tap density ratio of 50 - 60%.
We find that Kiyota discloses a spherical iron powder having an average particle size
from 2 to 6 µm. See Abstract, and column 2, lines 20-21. There is no disclosure in
Kiyota of the requisite tap density ratio of the claimed subject matter. Nonetheless, it
is the examiner’s position that appellants’ own Declaration, filed on March 26, 1997
teaches that water atomized particles of 7 microns or larger possess the requisite
tap density ratio of the claimed subject matter. See Answer, page 5.
In our view, we find that Kiyota prepares spherical iron powder having an average
particle size of 7.1 µm. See Table 1, column 5. The issue before us is whether this
iron powder having the requisite spherical shape and particle size, also possesses
the requisite tap density ratio. The Declaration submitted by appellants under 37 CFR
§ 1.132 discloses the preparation of iron particles prepared according to the
disclosure of Kiyota. See Declaration, page 1. Hence, it is reasonable to conclude
Appeal No. 1997-4198
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that their size and shape would be the same as those particles prepared by Kiyota.
Furthermore, we find that Sample 3 in Table 4, on page 2 of the Declaration
discloses spherical metal particles having almost the identical size, an average
particle size of 7.3 µm and a tap density ratio of 51.1%. We, accordingly, conclude
that the particles disclosed by Kiyota and taught in the Declaration, having the same
size and shape and prepared according to the disclosure of Kiyota, necessarily share
other physical characteristics. Hence, it is reasonable to conclude that Kiyota’s
particles having a particle size of 7.1 µm, also have a tap density ratio falling within
the scope of the claimed subject matter.
Based upon the above analysis and in accordance with our findings, supra, we
conclude that the properties of “tap density ratio" are inherently possessed by the
prior art composition to Kiyota. The mere recitation of a newly discovered function or
property inherently possessed by things in the prior art does not cause a claim drawn
to those things to distinguish over the prior art. Rather, the burden of proof shifts
to appellants to prove that the subject matter shown to be in the prior art does not
necessarily produce the identical or substantially identical characteristics. In re
Fitzgerald 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Hence, we will sustain
the rejection on the grounds of anticipation.
The Rejections under 35 U.S.C. § 103
Initially, we consider the rejection of claim 3 over Kiyota in view of the admitted
prior art and Klein. We sustain this rejection. Appellants stated, that claims 1 and 3
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forms a separate patentable group. See Brief, sentence bridging pages 2 and 3.
Accordingly, the above claims stand together on the issue of obviousness, and we
have affirmed the § 102 rejection of independent claim 1 as being anticipated by
Kiyota, supra. It is well settled that the ultimate obviousness is lack of novelty. The
claims cannot have been anticipated and not have been obvious. In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982). Accordingly, there is no
further need to inquire into the disclosure of the admitted prior art and the
secondary reference to Klein.
As to the balance of the claimed subject matter, in order to arrive at appellants’
invention, one of ordinary skill in the art would have to utilize the process for the
preparation of metal particles taught by Klein and apply it to the metal particles of
Kiyota having an average particle size of 7.1 µm, particularly as Klein is silent both as
to particle size and tap density ratios. However, we find neither motivation nor a
reasonable expectation of success exists to apply a prior art process as taught by
Klein to a comparative example of Kiyota.
The examiner must show reasons that the skilled artisan confronted with the same
problems as the inventor and with no knowledge of the claimed invention would select
the elements from the cited prior art references for combination in the manner
claimed. We determine that there is no reason, suggestion, or motivation to combine
the references in the manner proposed by the examiner. Accordingly, the examiner
has not established a prima facie case of obviousness and the examiner's rejection of
claims 2 and 4 through 6
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as unpatentable over Kiyota in view of the admitted prior art and Klein is not sustained.
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
DECISION
The rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Kiyota is
affirmed.
The rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Kiyota in view of the admitted prior art and Klein is affirmed.
The rejection of claims 2 and 4 through 6 under 35 U.S.C. § 103(a) as being
unpatentable over Kiyota in view of the admitted prior art and Klein is reversed.
The decision of the examiner is affirmed in part.
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Application No. 08/542,399
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
PL:tdl
Appeal No. 1997-4198
Application No. 08/542,399
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FLYNN, THIEL, BOUTELL
& TANIS, P.C.
2026 Rambling Road
Kalamazoo, MI 49008-1699