11042187 (B.P.A.I. Apr. 29, 2011)

Ex Parte Takayama et al

Board of Patent Appeals and InterferencesApr 29, 2011

11042187 (B.P.A.I. Apr. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/042,187 01/26/2005 Takemori Takayama KOM-140/INO/DIV2 7252 23353 7590 04/29/2011 RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON, DC 20036 EXAMINER SAVAGE, JASON L ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 04/29/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TAKEMORI TAKAYAMA, YOSHIKIYO TANAKA, and TETSUO ONISHI __________ Appeal 2009-014504 Application 11/042,187 Technology Center 1700 ____________ Before CHUNG K. PAK, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014504 Application 11/042,187 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 5-9, 11, 12, and 28-39.1 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is said to relate to composite sintered contact material having improved seizure resistance and/or wear resistance of bearings subject to high surface pressure (Spec. 1). Claim 1 is illustrative: 1. A contact material containing 10% by volume or more a Fe base alloy phase having a composition range which causes an order-disorder transition, wherein said Fe base alloy phase contains Fe as a chief component, 5 to 30 wt% Al, and the balance being a Cu base alloy phase, wherein the porosity of said contact material is adjusted to be 10 to 35% by volume, and wherein the contact layer contains pores which are air holes. Appellants appeal the following rejections: 1. Claims 29-39 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 5-9, 11, 12, 28-30, and 34-39 are rejected under 35 U.S.C. §§ 102(b)/103(a) as being unpatentable over Takayama (U.S. Patent 6,015,775 issued Jan. 18, 2000). With regard to rejection (1), Appellants argue the claims separately (App. Br. 8-13). We focus on claims 29, 30, 31, and 33 because the Examiner’s 1 A hearing was held in this appeal on April 12, 2011. Appeal 2009-014504 Application 11/042,187 3 rejection of claims 32, and 34-39 is based on their dependency on these claims (Supp. Ans. 4). With regard to rejection (2), Appellants focus their arguments on claims 1, 5, and 6 only. REJECTION (1): Written Description ISSUE 1. Did the Examiner err in determining that the Co or Ni ranges recited in claims 29, 30, and 33 and the claimed Al range of “10.5 to 25 wt.%” of claim 31 lack written descriptive support? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSIS Appellants argue that their broader range of 5 to 40 wt.% Co and Ni on page 9 and examples 10 and 11 in Table 2 and examples 30 and 32 in Tables 3 and 4 of the Specification provide written descriptive support for the narrower range in claims 29, 30 and 33 (App. Br. 11, 13; Reply Br. 10- 11). Appellants contend that the Examiner is merely rejecting these claims because the claimed range lacks literal support in the Specification (App. Br. 10, 12-13; Reply Br. 10). Appellants argued at the hearing that the narrower range of Co or Ni between 11.0 and 39.5 wt.% carved out of the broader range 5 to 40 wt.% Co or Ni showed unexpectedly superior hardness. Generally, Appellants are permitted to claim less than what they have support for in their Specification. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Therefore, Appellants claiming a narrower range than the range disclosed in the Specification does not usually violate the written Appeal 2009-014504 Application 11/042,187 4 description requirement. An exception to this general principle occurs where the broader range is directed to a different invention than a narrower claimed range such that the broader range does not describe the narrower range. Wertheim, 541 F.2d at 265. With regard to claims 29, 30, and 33, Appellants admitted during oral argument that the narrower range of Co or Ni produces unexpectedly superior hardness when compared to the hardness achieved using the broader range of Co or Ni. Under such circumstances, the narrower range with its alleged unexpected results is directed to an invention different than an invention described by the broader range such that the broader range cannot describe the more narrowly claimed range. Moreover, the examples pointed to by Appellants as evincing support for 15wt. % Co or 20 wt.% Co or Ni are insufficient to establish written descriptive support for the entire Co or Ni range from 11.0 to 39.5 wt.%. Accordingly, Appellants’ disclosure of the broader Co or Ni range cannot be said to describe the claimed invention with the narrower Co or Ni range. Regarding the Al range of claim 31, Appellants contend that the broader disclosed range coupled with examples from the Specification provide written descriptive support for the narrower claimed range of 10.5 to 25 wt.% Al (App. Br. 10; Reply Br. 6-7). Appellants admitted during oral argument that the more narrowly claimed Al range of claim 31 produced unexpected results. As explained above, Appellants’ broader Al range cannot describe the narrower range that produces unexpected results because the narrower range is a different invention than the broader claimed range. Moreover, though Appellants’ examples may include Al concentrations of 9%, 10%, 12% and Appeal 2009-014504 Application 11/042,187 5 15%, such examples do not demonstrate possession of the entire scope of the different and separate invention encompassed by the range of “10.5 to 25 wt.%” Al. For these reasons, we affirm the § 112, first paragraph, rejection of claims 29, 30 and 33 with regard to the lack of written description of the claimed Co or Ni range and claims 31-39 with regard to the lack of written descriptive support for the claimed range of 10.5 to 25 wt.% Al. REJECTIONS (2) ISSUES 1. Did the Examiner err in finding that Takayama’s disclosure of the Al and Ni or Co amounts of the contact material is sufficiently specific to anticipate the subject matter of claims 1, 5, and 6? We decide this issue in the affirmative. 2. Did the Examiner err in determining that Takayama’s disclosures regarding the degree of densification, amounts of Al, Co and/or Ni and the recesses would have rendered obvious the subject matter of claims 1, 5, and 6? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSIS Issue (1): Anticipation Appellants argue that Takayama’s disclosure regarding the amounts of Co, Ni or Al is not sufficiently specific to anticipate the claimed invention (App. Br. 18, 21, 22-23). We agree. Takayama discloses a preference for the contact material to have 2 to 20 wt.% Ni and “0.5 to 10 wt % of one or more elements selected from the Appeal 2009-014504 Application 11/042,187 6 group consisting of Ti, Si, Al, Fe, Co, Cr. Zr, and Sn” (Takayama, col. 4, ll. 41-44). Accordingly, one skilled in the art would have to select Al and/or Co from 8 other elements in amounts of 5% or greater, and use Ni in an amount from 5% or greater. In our view, this selection amounts to picking- and-choosing to arrive at the claimed invention, which is impermissible for an anticipation rejection. Accordingly, we reverse the § 102(b) rejection of claims 1, 5-9, 11, 12, 28-30, and 34-39. Issue (2): Obviousness Appellants argue that Takayama fails to teach or suggest: (1) the claimed porosity of the contact material being between 10 to 35% by volume; (2) the claimed weight percentages of Al (claim 1), Al and Si (claim 5), or Co or Ni (claim 6); and (3) the pores in the contact layer are air holes (App. Br. 13-23). With regard to the claimed porosity, Appellants contend that density is not the inverse of porosity as allegedly is the Examiner’s position such that Takayama’s disclosure of a degree of densification of 90% is not sufficiently specific to equate to a porosity of 10% by volume (id. at 14). Appellants further contend that Takayama’s teaching that a 90% degree of densification is critical teaches away from Appellants’ porosity range of 10 to 35% (id. at 18). The Examiner states that while density and porosity are not precisely correlated, it is not clear how the undensified portion of Takayama’s sintered contact would be something other than open porosity absent evidence to the contrary (Ans. 11). Based on this determination, the Examiner finds that Appeal 2009-014504 Application 11/042,187 7 Takayama’s teaching of a 90% degree of densification indicates a 10 vol.% porosity in the contact material. We agree with the Examiner. The Examiner’s position that a degree of densification of 90% indicates 10% porosity in the material appears to be reasonable because the 10% undensified portion must be more porous or less dense than the rest of the material. Appellants’ teaching away argument fails to appreciate that Takayama would have suggested a 10% porosity, which is included by the claimed porosity range. The Appellants are in the best position to demonstrate that Takayama’s contact material does not have a porosity falling within the claimed range. Appellants have not provided any evidence other than mere attorney argument. Appellants argue that Takayama’s recesses 5 in Figure 2(a) cannot be considered air holes because they are covered with an overlay 6 or lubricating oil (Figure 2(c)) (App. Br. 17, 21, 23; Reply Br. 16-18). The Examiner responds, and we agree, that Appellants have not defined “air hole” in their Specification so as to exclude recesses that are filled with oil or a lubricating overlay. Indeed, the Specification states that the air holes are provided for “oil retaining” (Spec. 10). Therefore, we, like the Examiner, perceive no patentable distinction between Appellants’ claimed “air holes” and Takayama’s recesses 5. Appellants further argue that Takayama’s disclosure is not sufficiently specific to have rendered obvious the Al (claim 1), Al and Si (claim 5), and the Co or Ni (claim 6) ranges (App. Br. 18; 21-23). Appellants contend that the claimed ranges produce unexpectedly superior results such as hardness of the material (id. at 19, 21, 23). Appeal 2009-014504 Application 11/042,187 8 The Examiner determines that Takayama’s teaching of nine preferred elements that include Ni, Si, Al, and Co in amounts that overlap the claimed ranges would have rendered obvious the subject matter of claims 1, 5, and 6 (Ans. 14-15, 17, 18). Indeed, Takayama discloses that it is preferred to use 2 to 20 wt.% of Ni and 0.5 to 10 wt.% of one or more elements selected from the group consisting of Ti, Si, Al, Fe, Co, Cr, Zr, and Sn (Takayama, col. 4, ll. 41-44). We agree that Takayama’s disclosure of an overlapping range of limited grouping of suitable elements that include the claimed Al, Si, Co and Ni would have rendered obvious the claimed subject matter. Appellants allege that the claimed compositional ranges of Al, Al and Si, and Co or Ni impart unexpected superior hardness to the sintered product and thus rebut any prima facie case of obviousness (App. Br. 19, 21, 23). Appellants allege adding Al alone to the alloy at 13.87 wt.% imparts unexpectedly superior results (id. at 19, 21). Appellants allege that adding 24 wt.% Co produces an unexpectedly high hardness (id. at 23). We agree with the Examiner’s findings that the data presented fails to show unexpected results over the entire claimed range of Al, Al and Si, and Co or Ni. The data focuses on a single embodiment of Al or Co and does not show that the unexpected results occur over the entire claimed ranges of Al (claim 1), Al and Si (claim 5), and Co or Ni (claim 6). Weighing the evidence of nonobviousness and obviousness, we agree with the Examiner that the preponderance of the evidence weighs in favor of the obviousness of the subject matter of claims 1, 5, and 6. We affirm the § 103 rejection of claims 1, 5-9, 11, 12, 28-30, and 34-39 over Takayama.2 2 In any further prosecution of this application, the obviousness of the subject matter of claim 31 which includes an Al concentration of from 10.5 Appeal 2009-014504 Application 11/042,187 9 DECISION The Examiner’s decision 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 bar to 25 wt.%, should be assessed with regard to Takayama’s teaching to use 0.5 to 10 wt.% of elements that include Al under Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). We note the Examiner used the Titanium Metals approach with regard to another feature of the claims (Ans. 6-7).