Ex Parte Takagi et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201712254345 (P.T.A.B. Feb. 7, 2017) Copy Citation 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. 12/254,345 10/20/2008 Toshiaki TAKAGI 333635US0X 1227 22850 7590 02/09/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER TAKEUCHI, YOSHITOSHI ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 02/09/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIAKI TAKAGI, YASUHIRO ARUGA, MAMORU NAGAO, TAKASHI SHIRAI, MASATO WATANABE, and AKIHIKO ISHIBASHI Appeal 2015-007541 Application 12/254,345 Technology Center 1700 Before: KAREN M. HASTINGS, JULIA HEANEY, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3, and 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In our Decision below we refer to the Specification filed October 10, 2008 (Spec.), the Final Office Action mailed August 21, 2014 (Final Act.), the Appeal Brief filed January 12, 2015 (Appeal Br.), the Examiner’s Answer mailed June 10, 2015 (Ans.), and the Reply Brief filed August 10, 2015 (Reply Br.). 2 Appellants identify the real parties in interest as Kobelco & Materials Copper Tube, Ltd. and Kabushiki Kaishi Kobe Seiko Sho (Kobe Steel, Ltd.) of Japan. Appeal Br. 2. Appeal 2015-007541 Application 12/254,345 STATEMENT OF CASE The claims are directed to copper alloy tube for a heat exchanger having excellent fracture strength. Spec. 7. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A copper alloy tube for a heat exchanger having a fracture strength of at least 42MPa, wherein the copper alloy tube comprises Sn: 0.1 to 3.0% by mass andP:0.005 to 0.1 % by mass, the remainder has a composition made from Cu and inevitable impurities, the average crystal grain size is 30 pm or less, and the longitudinal tensile strength of the tube is 250 MPa or more, and wherein the copper alloy tube comprises: a texture whose orientation distribution density in the Goss orientation is 4% or less, and wherein the proportion of the low-angle grain boundaries of the inclination angle 5 to 15° in the texture of the copper alloy tube is 1 % or more. Claims Appendix (Claims App’x) 2, at Corrected Appeal Brief filed March 9, 2015. REJECTIONS The Examiner maintains the following rejections: A. Claims 1 and 3^4 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with enablement requirement. Final Act. 2. B. Claims 1 and 3^4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shirai.3 Id. 3 Shirai et al., JP 3794971 B2, dated July 12, 2006, relying on use of its English language equivalent Patent abstracts of Japan publication no. 2003- 268467, published September 25, 2009 (“Shirai”), which use is not contested. 2 Appeal 2015-007541 Application 12/254,345 C. Claims 1 and 3^4 are subject to a new rejection under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Ans. 3. Appellants seek our review of rejections A—B.4 Because we reverse the Examiner’s rejections, our discussion below focuses on claim 1. OPINION Rejection A — Enablement (claims 1, 3, and 4) The Examiner rejects claims 1,3, and 4 as failing to comply with the enablement requirement of 35 U.S.C. § 112 first paragraph. Final Act. 2. Specifically, the Examiner concludes that the specification “does not reasonably provide enablement for ‘a fracture strength of at least 42 MPa’ (emphasis added), which could include—for example—100 MPa.” Id. In addition, the Examiner concludes that Appellants’ specification “does not reasonably provide enablement for a longitudinal tensile strength of ‘250 or more’ (emphasis added), which could include—for example—500 MPa.” Appellants argue that “[t]he one contesting enablement has the initial burden to explain why he doubts enablement,” and that the Examiner fails to provide any reason to doubt that the specification would have enabled one skilled in the art to practice the full scope of the claims. Appeal Br. 4—5. Appellants contend that the processing conditions taught by the 4 Appellants do not respond to the Examiner’s new ground rejection based on indefmiteness. 3 Appeal 2015-007541 Application 12/254,345 Specification are responsible for the improved fracture strength and longitudinal tensile strength. Id. at 6—10. On this record, we agree with Appellants. A specification complies with the enablement requirement of 35 U.S.C. § 112, first paragraph, if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Said another way, “[i]f, by following the steps set forth in the specification, one of ordinary skill in the art is not able to replicate the claimed invention without undue experimentation, the claim has not been enabled as required by § 112, paragraph 1.” National Recovery Technologies, Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999). When rejecting a claim under the enablement requirement of § 112, the Examiner bears the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by that claim is not adequately enabled by the specification; this includes providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. Wright, 999 F.2d at 1561—62. Enablement is a question of law based upon underlying factual determinations. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). Here, other than identifying an open-ended claim range, the Examiner does not articulate a reasonable explanation as to why the scope of protection is not enabled by Appellants’ Specification. The Examiner reasons that the Specification only enables the claims to the limits of the working examples. However, this is not the measure of enablement. While 4 Appeal 2015-007541 Application 12/254,345 working examples may be desirable, “examples are not required to satisfy section 112, first paragraph” so long as a person skilled in the art can practice the invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982); In re Borkowski, 422 F.2d 904, 950-51 (CCPA 1970). Thus, without more, we cannot sustain the Examiner’s lack of enablement rejection. Rejection B— Obviousness (claims 1, 3, and 4) The Examiner rejects claims 1, 3, and 4 as obvious in view of Shirai. Final Act. 2. The Examiner finds that Shirai teaches a copper tube alloy useful for a heat exchanger that comprises Sn, P and Cu in the claimed ranges. Id. 2—3. The Examiner also finds Shirai teaches an average crystal grain size of 30 pm or less. Id. at 3. The Examiner finds that “since the claimed composition ranges of the instant claim either overlap or are within the ranges disclosed by Shirai, a prima facie case of obviousness exists.” Id. The Examiner acknowledges that Shirai does not teach “a fracture strength of at least 42 MPa” or a “longitudinal tensile strength of the tube is 250 MPa or more, and wherein the copper alloy tube comprises: a texture whose orientation distribution density in the Goss orientation is 4% or less, and wherein the proportion of the low-angle grain boundaries of the inclination angle 5 to 15° in the texture of the copper alloy tube is 1 % or more,” but reasons that because “Shirai teaches substantially the same composition . . . made by substantially the same process . . . said characteristics would be expected.” Id. at 3-A. Appellants argue that the copper alloy tubes of Shirai, as illustrated by comparative examples 19 and 20, are not encompassed by the appealed 5 Appeal 2015-007541 Application 12/254,345 claims. Appeal Br. 12. Specifically, Appellants urge that Shirai is silent as to Goss orientation and longitudinal tensile strength and does not result in a Goss orientation or the longitudinal tensile strength as claimed. Id. at 13. Appellants contend that these properties are the result of certain manufacturing conditions—“(a) the time required from the heating furnace takeout to the hot extrusion completion was 5.0 minutes or less (page 42, lines 17—24); and (b) the cooling rates after final annealing were l°C/min or more (page 43, lines 13—16)”—that are not present in Shirai (like comparative examples 19 and 20). Id. at 14. Appellants also urge that (1) the 1.5° C/sec cooling rate identified by the Examiner could be up to 8 minutes which exceeds Appellants 5 minute cooling rate (Reply Br. 2—3) and (2) the cooling rate of Shirai occurs after hot extrusion and not after the annealing as in the instant invention (Id. at 4). Therefore, Appellants argue that the inventive copper alloy tube is not the same as described in Shirai. Appeal Br. 14. We find the preponderance of the evidence supports Appellants’ argument that the claimed copper alloy tube is different than that taught by Shirai. Here, Appellants show that the process of Shirai and that of the instant invention are sufficiently different that the prior art product cannot be presumed to necessarily possess the same properties as the claimed product. Appeal Br. 12. According to Appellants, these differences, i.e., the cooling rate after annealing and the time for take out to the hot extrusion—neither taught by Shirai—result in an alloy having different properties. Id. at 14; see also Spec. 36—37 and 39-40. The Examiner states that there is overlap in the cooling rate of Shirai and that of the instant invention, i.e., 1° C/min (instant invention) and 1.5° C/sec (Shirai). See e.g., Ans. 13—14 (Table). However, 6 Appeal 2015-007541 Application 12/254,345 as Appellants note (Appeal Br. 13—14; Ans. 4), the cooling rate identified by the Examiner in Shirai is following hot extrusion and not after annealing as recited in the claims. Compare Shirai 132 with Spec. 43. Thus, the Examiner does not establish the processes are sufficiently similar and we do not sustain the rejection. Rejection C—Indefiniteness (claims 1, 3, and 4) In the Answer, the Examiner issues a new ground of rejection for claims 1,3, and 4 as indefinite. Ans. 2. The Examiner reasons that “a fracture strength of at least 42 MPa” and a “longitudinal tensile strength of the tube is 250 MPa or more” fails to place a person of ordinary skill in the art on notice as to the “upper limit of the claimed invention.” Id. at 3. The second paragraph of 35 U.S.C. § 112 requires the specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112(b). This portion of the statute requires the claims “be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). In determining whether a particular claim is definite, the claim language must be analyzed in light of the content of the particular application, the teachings of the prior art, and the interpretation that would have been given to the claim language by a person of ordinary skill in the art at the time the invention was made. Id. Because the rejection does not identify an ambiguity as to the scope of claim 1, the Examiner has not stated a persuasive basis for rejecting the claim under 35 U.S.C. § 112. Accordingly, we must reverse the Examiner’s indefmiteness rejection. 7 Appeal 2015-007541 Application 12/254,345 CONCLUSION The Examiner reversibly erred in rejecting claims 1,3, and 4 as lacking in enablement. The Examiner reversibly erred in rejecting claims 1,3, and 4 as being unpatentable under 35 U.S.C. § 103(a) over Shirai. The Examiner reversibly erred in rejecting claims 1,3, and 4 as being indefinite. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3, and 4 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation