Ex Parte Yasuoka et al

Board of Patent Appeals and Interferences

Sep 14, 2011

10743745 (B.P.A.I. Sep. 14, 2011)

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.
10/743,745 12/24/2003 Shigekazu Yasuoka SNY-048 9090
20374 7590 09/15/2011
KUBOVCIK & KUBOVCIK
SUITE 1105
1215 SOUTH CLARK STREET
ARLINGTON, VA 22202
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
09/15/2011 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 SHIGEKAZU YASUOKA, JUN ISHIDA,
TETSUYUKI MURATA, and HIROSHI NAKAMURA
______________

Appeal 2010-004873
Application 10/743,745
Technology Center 1700
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-4, 9-16, and 21-25 in the Office Action
mailed August 20, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2008).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a hydrogen absorbing
alloy, and is representative of the claims on appeal:
1. A hydrogen absorbing alloy represented by the formula
Appeal 2010-004873
Application 10/743,745
2
Ln1-xMgxNiy-a-bAlaMb
(where Ln is at least one element selected from rare earth elements, M is at
least one element selected from V, Nb, Ta, Cr, Mo, Mn, Fe, Co, Ga, Zn, Sn,
In, Cu, Si, P and B, 0.05 ≤ x < 0.20, 2.8 ≤ y ≤3.9, 0.10 ≤ a ≤ 0.25 and 0 ≤ b),
wherein, when said at least one element selected from rare earth elements
includes La, a mole ratio of La in said at least one element selected from rare
earth elements is not greater than 0.5.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-4, 9-16, and 21-24
over Kaneko (US 5,964,968); and claim 25 over Kaneko in view of Newman
(US 5,283,139). Br. 4;1 Ans. 3 and 4.
Opinion
We agree with Appellants’ contention that the Examiner erred in not
adequately explaining how the claimed hydrogen absorbing alloy
encompassed by representative claim 1 falls within the hydrogen absorbing
alloys described by Kaneko to one of ordinary skill in the art.
We find that Kaneko would have disclosed to one of ordinary skill in
the art a rare-earth metal-nickel hydrogen storage alloy represented by the
formula (R1-xLx)(Ni1-yMy)z wherein R is a rare earth element, L can be Mg,
and M can be Al, and with respect to the (Ni1-yMy)z component, wherein
0 ≤ y ≤ 0.5, and 4.5 ≤ z ≤ 5.0. Kaneko abstract and col. 3, ll. 28-48. Br. 6-7.
We find that in the statement of the ground of rejection over Kaneko

1 We considered the Appeal Brief filed April 20, 2009, with the exception
of the arguments that rely in whole or in part on the document “Fig. 6.2.6,
which illustrates the different crystalline structures of ABx’” which was not
considered by the Examiner as set forth in the Office Communication mailed
November 20, 2009. See Br. 5. See 37 C.F.R. §§ 41.37(c)(1)(ix)
(“Reference to unentered evidence is not permitted in the brief.”), and
41.37(c)(2)(“A brief shall not include any . . . non-admitted . . . evidence.”).
Appeal 2010-004873
Application 10/743,745
3
alone, the Examiner merely recites the teachings of Kaneko, and on this
basis determines that the “selection of the portions of elements would appear
to require no more than routine investigation by those of ordinary skill in the
art.” Ans. 3-4. In response to Appellants’ arguments, the Examiner again
recites the teachings of Kaneko, and then states that “the Examiner notes that
the range of the subscript of Ni [sic] would be from 2.5 to 5 and would
therefore encompass the range of 2.8 to 3.8 for Ni as argued by the
Appellant.” Ans. 6. Appellants point out that “in the Advisory Action dated
January 29, 2009, [the Examiner] notes that in the alloy of Kaneko, ‘z’
modifies both ‘1-y’ and ‘y’ such that ‘the range for the Ni subscript , (1-y) x
z, is 2.5 to 5 and the range for the M subscript, yxz, is 0 to 2.5.’” Br. 6-7.
Thus, from the Advisory Action, we determine that the Examiner
apparently focused on the relationship “Niy-a-bAlaMb” in the claimed alloys
encompassed by claim 1 and on the same relationship “(Ni1-yMy)z” in
Kaneko’s alloys in arriving at the grounds of rejection. Indeed, from a
cursory review of these respective formulae, it is apparent that the “subscript
of Ni” referred to by the Examiner in response to Appellants’ arguments in
the Answer is only that appearing in claim 1 because there is no explanation
in the statement of either ground of rejection in the Answer with respect to
subscripts in Kaneko’s formula as there was in the Advisory Action, as
Appellants point out in the Brief. Br. 7.
Accordingly, the Examiner’s basis for the grounds of rejection
advanced on appeal is not specified in the statement of either ground of
rejection or in argument in the Answer, and therefore, in the absence of an
adequate explanation of the grounds of rejection, the Examiner failed to
carry the burden of presenting a prima facie case of obviousness in either
Appeal 2010-004873
Application 10/743,745
4
ground, which alone is reversible error. See, e.g., In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011), and cases cited therein.
Furthermore, on this record, we determine that it is not apparent that
the claimed alloys encompassed by claim 1 fall within and thus would have
been prima facie obvious over Kaneko’s alloys. We find from both claim 1
and Kaneko that the subscripts for Ni and Al must be considered together in
determining the scope of the alloys encompassed by claim 1 and by Kaneko.
And, in Kaneko, the subscript “z” must be considered with respect to both of
the Ni subscript “1-y” and the Al subscript “y.” We determine that when the
respective formulas are considered in this manner, there is no overlap in the
ranges of the amounts of each of Ni and Al considered together in the
respective claimed and Kaneko alloys, and thus, the claimed alloys do not
fall within Kaneko’s alloys. In this respect, the Examiner has not explained
why one of ordinary skill in the art would have adjusted the amounts of Ni
and Al in Kaneko’s alloys in order to arrive at the claimed alloys
encompassed by claim 1. See generally Ans. See, e.g., In re Sebek, 465
F.2d 904, 907, (CCPA 1972) (“Where, as here, the prior art disclosure
suggests the outer limits of the range of suitable values, and that the
optimum resides within that range, and where there are indications
elsewhere that in fact the optimum should be sought within that range, the
determination of optimum values outside that range may not be obvious.”).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection advanced on appeal.
The Primary Examiner’s decision is reversed.
REVERSED
tc/sld