Ex Parte Tanaka

Board of Patent Appeals and Interferences

Mar 9, 2010

10654099 (B.P.A.I. Mar. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YOSHIAKI TANAKA
____________

Appeal 2009-004296
Application 10/654,099
Technology Center 1700
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Decided: March 9, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 3-18 and 23-38. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM for the reasons set forth in the Answer and below.

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STATEMENT OF THE CASE
Appellant claims an alloy type thermal fuse comprising Sn, Bi, and In
wherein "Sn is greater than 46 weight %" (independent claims 3, 4).
Representative independent claim 3 reads as follows:
3. An alloy type thermal fuse comprising a thermal fuse element
having an alloy composition in which Sn is greater than 46 weight % and
less than or equal to 70 weight %, Bi is at least 1 weight % and less than or
equal to 12 weight %, and In is at least 18 weight % and less than 48 weight
%, and wherein the composition does not intentionally contain an element
whose use is prohibited due to its harmful effects on a living body.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Cole GB 2 028 608 A Mar. 5, 1980
Ishioka (as translated) JP 403110732 A May 10, 1991
Tanaka (as translated) JP 13-266724 Sep. 28, 2001
Under 35 U.S.C. § 103 (a), the Examiner rejects claims 3-10 as being
unpatentable over Tanaka, rejects claims 11-18 as being unpatentable over
Tanaka in view of Ishioka, and rejects claims 23-38 as being unpatentable
over Tanaka or Tanaka in view of Ishioka and further in view of Cole.
In rejecting representative independent claim 3, the Examiner
acknowledges that the claim differs from Tanaka by requiring a tin content
"greater than 46 weight %" whereas Tanaka's tin content is up to 46 weight
% but concludes that "[i]t would have been obvious to one of ordinary skill
in the art to select an amount of tin [for the alloy of Tanaka's fuse] slightly
greater than 46 weight percent because one skilled in the art would have
expected the same properties as an alloy having 46 weight percent tin" (Ans.
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4). This obviousness conclusion is supported by well established legal
principle. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed.
Cir. 1985) ("The proportions are so close that prima facie one skilled in the
art would have expected them to have the same properties.")
Appellant argues that, "since the alloy compositions themselves do
not overlap, the claimed and prior art alloys would not have been expected
to have these same properties" (Br. ¶ bridging 8-9). No legal authority has
been cited in support of this argument, and the argument is contrary to the
well established legal principle cited above. Therefore, we find Appellant's
argument unpersuasive.
Appellant further argues that Tanaka teaches away from increasing Sn
content since this increase would necessitate a concentration reduction of the
other Bi or In elements of the alloy, and Tanaka "teaches away from
reducing the Bi concentration" (Br. 9). However, as correctly pointed out by
the Examiner (Ans. ¶ bridging pages 6-7), the proposed increase of Tanaka's
Sn concentration would be accomplished by decreasing the In concentration,
and a decrease of In would not conflict with either the rejected claims or
Tanaka. In this regard, we emphasize that Appellant does not contend that
Tanaka teaches away from the In concentration decrease which would be
necessitated by a slight increase in Tanaka's Sn concentration from 46
weight % to slightly above 46 weight % as proposed by the Examiner.
Additionally, Appellant argues that the claimed concentrations have
been shown to be critical and to exhibit unexpected results thereby rebutting
any prima facie case of obviousness (Br. 11-13). This argument is
unconvincing. As properly indicated by the Examiner (Ans. 7-8), Appellant
has provided this record with no comparison of a fuse as defined by
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representative independent claim 3 and a fuse of the closest prior art (i.e.,
Tanaka) in order to thereby establish criticality and unexpected results which
are commensurate in scope with the independent claim. See In re Peterson,
315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (showing of unexpected results
sufficient to overcome prima facie case must be commensurate in scope with
claim range). As a consequence, Appellant's discussions of criticality and
unexpected results are merely attorney arguments unsupported by evidence.
See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (mere lawyers'
arguments unsupported by factual evidence are insufficient to establish
unexpected results).
For the reasons stated above and in the Answer, Appellant's
arguments fail to reveal harmful error in the Examiner's § 103 rejection of
representative claim 3 over Tanaka. Appellant has not separately argued
with any reasonable specificity the corresponding rejection of claims 4-10.
Therefore, we sustain the Examiner's § 103 rejection of claims 3-10 as being
unpatentable over Tanaka.
Concerning the § 103 rejection of claims 11-18 over Tanaka in view
of Ishioka, Appellant's sole argument is that "the proposed combination with
JP '732 [i.e., Ishioka] would not cure the deficiencies with JP '724 [i.e.,
Tanaka]" (Br. 14). As explained above, we do not consider Tanaka to be
deficient in the manner argued by Appellant. As a consequence, we also
sustain the Examiner's § 103 rejection of claims 11-18 as being unpatentable
over Tanaka in view of Ishioka.
As for the § 103 rejection of claims 23-38, the only separate argument
advanced by Appellant is that "[t]here would have been no motivation to
modify the proposed JP '724/JP '732 [i.e., Tanaka/Ishioka] thermal fuse by
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providing a resistor which is taught to terminate heating in a heating circuit
for an electric blanket as taught by GB '608 [i.e., Cole]" (Br. 15). However,
this argument fails to specifically address the Examiner's position that "it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to modify the aforementioned references [i.e.,
Tanaka/Ishioka] by providing a resistor to blow a thermal fuse in order to
terminate heating in a heating circuit for an electric blanket, as disclosed by
Cole" (Ans. ¶ bridging 5-6; emphasis added). In particular, Appellant's
argument fails to explain why the Examiner's proposed modification would
not have been motivated "in order to terminate heating in a heating circuit
for an electric blanket" (id.) as urged by the Examiner. It follows that the
argument under consideration fails to reveal harmful error in the rejection
of claims 23-38.
Accordingly, we sustain the Examiner's § 103 rejection of claims
23-28 as being unpatentable over Tanaka or Tanaka in view of Ishioka and
further in view of Cole.
In summary, we have sustained each of the § 103 rejections advanced
by the Examiner in this appeal for the reasons set forth above and in the
Answer.
The decision of the Examiner 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)(iv).
AFFIRMED

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