Neturen Co., LTD.

Patent Trials and Appeals Board

Mar 23, 2020

14380043 - (D) (P.T.A.B. Mar. 23, 2020)

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.
14/380,043 08/20/2014 Yoshimasa Tanaka 61994 4351
513 7590 03/23/2020
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIMASA TANAKA and YUTAKA SUGIYAMA
Appeal 2019-005104
Application 14/380,043
Technology Center 3700
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–6. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Neturen
Co., Ltd. Appeal Br. 3.
Appeal 2019-005104
Application 14/380,043

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CLAIMED SUBJECT MATTER
The claims relate to “a heating coil for heating a recessed lateral
surface of an elongated workpiece along a longitudinal direction of the
workpiece, and also to a heat treatment apparatus and a heat treatment
method for heat-treating the recessed lateral surface of the elongated
workpiece.” Spec. 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A heating coil configured to inductively heat an elongated
workpiece, the workpiece having a first lateral surface and a
second lateral surface adjoining each other along a corner
portion, wherein the first lateral surface has a recess at a location
spaced away from the corner portion, and the first lateral surface,
the second lateral surface and the recess extend continuously in
a longitudinal direction of the workpiece, the heating coil
comprising:
a base conductor configured to face the first lateral
surface; and
a projected conductor configured to face the recess,
wherein a width of the projected conductor is narrower
than a width of the base conductor in a first direction orthogonal
to the longitudinal direction,
wherein the projected conductor is arranged to project
toward the recess from a position of the base conductor in a
second direction orthogonal to both the longitudinal direction
and the first direction,
wherein the base conductor and the projected conductor
are arranged to extend in the longitudinal direction such that
electric current flows through the base conductor and the
projected conductor in the longitudinal direction, and
wherein the projected conductor is longer than the base
conductor in the longitudinal direction.

Appeal Br. 14 (Claims Appendix) (dispositive limitation emphasized).
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Application 14/380,043

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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Sano et al.
Lengauer et al.
JP2000204413(A)
US 2011/0011499 A1
July 25, 2000
Jan. 20, 2011
REJECTION
Claims 1, 2, and 4–6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Sano and Lengauer. Final Act. 2.
ISSUE
Has the Examiner erred in finding that a person of ordinary skill in the
art would have been motivated to combine the teachings of Sano and
Lengauer in such a way as to achieve the invention recited in claim 1?
ANALYSIS
The Examiner rejects claim 1 as being obvious over Sano and
Lengauer. The Examiner relies primarily on Sano, finding that it teaches all
limitations except for “wherein the projected conductor is longer than the
base conductor in the longitudinal direction.” Final Act. 2–3. The Examiner
turns to Lengauer, finding it teaches a device “wherein the projected
conductor is longer than the base conductor in the longitudinal direction.”
Final Act. 4 (citing Lengauer Fig. 27, and explaining part of 39 inside
groove 34 of workpiece 1 is longer than the part of 39 that is outside groove
34). The Examiner concludes “it would have been obvious to one of
ordinary skill in the art at the time of invention was made to have modified
the heating coil of Sano with Lengauer, by providing a projected conductor
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longer than the base conductor in the longitudinal direction of the
workpiece, for the advantages of having a larger heat treatment area.” Final
Act. 4, 6.
Appellant challenges the Examiner’s rationale for modifying Sano’s
heating coil with the teachings of Lengauer. Specifically, Appellant argues:
[T]he modification of the conductor section 20 of the Sano
reference based on the support portion of the inductor 39 of the
Lengauer reference in the rejection is without merit as the two
elements are different in function and position. Thus, it would
not have been obvious to one of ordinary skill in the art to modify
the conductor section 20 of the Sano reference based on the
support portion of the inductor 39 of the Lengauer reference.
Additionally, even if it is assumed that the Lengauer reference
properly discloses the feature of a projected conductor being
longer than a base conductor in the longitudinal direction of a
workpiece, it would not have been obvious to one of ordinary
skill in the art to modify the Sano reference as suggested in the
rejection.
Appeal Br. 11.
Appellant further contends:
[B]y modifying the protruding part 22c of Sano to be longer than
the conductor part 20 in the longitudinal direction, the extended
portion of the protruding part 22c would not allow for additional
current flow that would contribute in improving the heating of
the long material 60 (i.e., the workpiece). Therefore, it would not
have been obvious to a person of ordinary skill in the art to
modify the protruding part 22c to be longer than the conductor
part 20 in the longitudinal direction [for the advantage of having
a larger heat treatment area].
Appeal Br. 11–12 (bracketed material added to provide context).
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Appellant also argues:
In the present case, it is submitted that the Examiner's reliance
on the above-described reasoning of the advantages of having a
larger heat treatment area is not a clear articulation of the reason
why one of ordinary skill in the art would have modified Sano in
a manner to meet the feature in question recited in claim 1, and
is not an articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.
Reply Br. 4.
We are persuaded of Examiner error. At the outset, we note Appellant
has provided detailed arguments challenging the Examiner’s reasons for
combining the references, and although the Examiner acknowledges those
arguments in the Examiner’s Answer (Ans. 6–7), those arguments are not
substantively addressed. Ans. 7–8 (merely repeating the reasoning from the
Final Rejection). Moreover, we agree with Appellant that the Examiner’s
rationale for modifying Sano is not supported by a preponderance of
evidence.
The Examiner finds that it would have been obvious to modify Sano
with the teachings of Lengauer for the advantage of having a larger heat
treatment area. However, the Examiner does not identify any evidence, or
provide any explanation, for how or why having a larger heat treatment area
would be beneficial to Sano’s device. We particularly note the Examiner
does not address Appellant’s assertion that extending Sano’s protruding part
22c “would not allow for additional current flow that would contribute in
improving the heating of the . . . workpiece.” Appeal Br. 11.
Thus, we agree with Appellant because the Examiner has failed to
adequately explain why a person of ordinary skill in the art at the time of the
invention would have looked to Lengaur’s induction coil to modify Sano’s
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conducting parts. The Examiner’s stated motivation of “the advantage of
having a larger heat treatment area” amounts to little more than a
“conclusory statement []” insufficient to establish obviousness. See KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)). Without an adequate reasoning for why a
skilled artisan would have been motivated to modify Sano with Lengauer,
under § MPEP 2141.02, we are constrained by the record before us to
conclude the Examiner has erred in finding the cited references are properly
combinable.
We also determine the Examiner’s findings regarding the Sano
reference, which does not provide an adequate description of the numerical
components shown in the figures in the translated version, leave us to
speculate as to the support in the record in verifying the Examiner’s findings
on Sano. To the extent the Examiner makes findings regarding Part 22c in
Fig. 1 of Sano, we find that that to agree with the Examiner’s findings would
require some degree of speculation on our part. We decline to engage in
speculation because “[a] rejection . . . must rest on a factual basis . . . .” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) and “[t]he Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id.
Therefore, for essentially the same reasons argued by Appellant, as
discussed above, we are constrained on this record to reverse the Examiner’s
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obviousness rejection of claim 1. Because we have reversed independent
claim 1 we also reverse claims 2 and 4–6, which all depend from claim 1.
CONCLUSION
We reverse the Examiner’s decision to reject claims 1, 2, and 4–6
under 35 U.S.C. § 103.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6 103 Sano and Lengauer 1, 2, 4–6
REVERSED