Board of Regents, The University of Texas System

Patent Trials and Appeals Board

Jan 31, 2022

2021001170 (P.T.A.B. Jan. 31, 2022)

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. 14/418,759 01/30/2015 J. Ping Liu 060060-00099 7843 153900 7590 01/31/2022 Nexsen Pruet, PLLC (Charlotte Office) 227 West Trade Street Suite 1550 Charlotte, NC 28202 EXAMINER SU, XIAOWEI ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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): SMurphy@NexsenPruet.com SWilliams@NexsenPruet.com USPatent@NexsenPruet.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte J. PING LIU Appeal 2021-001170 Application 14/418,759 Technology Center 1700 Before TERRY J. OWENS, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, 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 73-82. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Board of Regents, The University of Texas System as the real party in interest. Appeal Brief (“Appeal Br.”) filed May 13, 2020, at 3. Appeal 2021-001170 Application 14/418,759 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to a method for fabricating an anisotropic bonded magnet comprising surfactant-assisted ball milling Sm-Co and Nd-Fe-B materials in a first magnetic field to form anisotropic nanoparticle chips, mixing the chips with one or more binding agents, and compacting the chip and binding agent mixture in the presence of a second magnetic field. Specification (“Spec.”) filed January 30, 2015, at 2:1-13.2 Appellant discloses that surfactant-assisted ball milling has proven to be an effective technique for producing Sm-Co and Nd-Fe-B nanoparticles having strong magnetocrystalline anisotropy for alignment in a magnetic field. Id. at 1:24-30. Appellant discloses that the invention includes the application of a magnetic field during such ball milling to further strengthen chip anisotropy and improve alignment. Id. at 2:1-6. Claim 73, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 73. A method for fabricating an anisotropic bonded magnet comprising the steps of: producing magnetically anisotropic nanoparticulate chips by ball milling a SmCo5, Sm2Co7, or Nd2Fe14B material with a surfactant in presence of a first magnetic field, thereby forming a chain of oriented polynanocrystalline chips stacked with their major planar surfaces perpendicular to the direction of the first magnetic field and their c-axes aligned with a chain axis of the chain of oriented chips, wherein the polynanocrystalline chips have a grain size in any dimension of approximately 5-30 nm; 2 This Decision also cites to the Final Office Action (“Final Act.”) dated December 17, 2019, the Examiner’s Answer (“Ans.”) dated October 6, 2020, and the Reply Brief (“Reply Br.”) filed December 7, 2020. Appeal 2021-001170 Application 14/418,759 3 mixing the anisotropic chips with one or more binding agents; and forming the anisotropic bonded magnet by compacting the mixture of anisotropic chips and the binding agents in presence of a second magnetic field, wherein the fabricated anisotropic bonded magnet has an energy product of 13-26 MGOe with a density of at least 6.5 g/cm3. REFERENCES The Examiner relies on the following prior art: Name Reference Date Walmer et al. (“Walmer”) US 2002/0043301 A1 Apr. 18, 2002 Gabay et al. (“Gabay”) US 2012/0021219 A1 Jan. 26, 2012 Chuan-bing Rong, et al., Anisotropic Nanostructured Magnets by Magnetic- Field-Assisted Processing, J.APPLIED PHYS. 107, 09A717 (2010) (“Rong”). REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections:3 1. Claims 73-82 under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement;4 and 2. Claims 73-82 under 35 U.S.C. §103(a) as unpatentable over Rong in view of Gabay and Walmer. 3 The Examiner withdrew the rejection of claims 73-82 under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 4. 4 The Examiner withdrew the portion of this rejection directed to the energy product limitation in claim 73. Ans. 3. Appeal 2021-001170 Application 14/418,759 4 OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering Appellant’s arguments and the evidence of record, we are not persuaded of reversible error in the Examiner’s rejections for substantially findings, reasoning, and conclusions the reasons set forth in the Final Office Action and the Examiner’s Answer, which we adopt as our own. We offer the following for emphasis. Rejection 1: Written Description The Examiner rejects claims 73-82 under 35 U.S.C. § 112(a) or pre- AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3-4. Appellant argues all of the claims as a group. Appeal Br. 4-5. Therefore, for purposes of this appeal, we select claim 73 to decide the issue raised by this rejection; claims 74-82 stand or fall with claim 73. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that the claim 73 limitation that the polynanocrystalline chips have a grain size in any dimension of approximately 5-30 nm lacks adequate written description support. Ans. 3- 4. In particular, the Examiner finds that although the Specification supports a grain size range of 7.5-30 nm, there is no support for grain sizes less than 7.5 nm. Id. Appeal 2021-001170 Application 14/418,759 5 To the contrary, Appellant argues that the Specification does support the claimed grain size range of 5-30 nm. Appeal Br. 4. Appellant contends that the rejection relies on Specification page 7, lines 20-27, and Figures 4A-4F, which disclose qualitative calculated aver grain sizes using the Scherrer formula, but ignores empirical Scanning Electron Microscope (“SEM”) data shown in Figures 3A-3C and 6A-6D. Id. at 4-5. According to Appellant, these latter SEM figures show chips having a grain size of approximately 5-30 nm. Id. In response, the Examiner finds that the only written description of the chips’ grain size is set forth on Specification page 7, lines 14-33, page 8, lines 1-6, and Figures 4A-4F. Ans. 4. However, the Examiner finds that neither page 7 nor page 8 provide any numerical range (nor value) for the chips’ grain size. Id. With regard to Figures 4A-4F, the Examiner noted that none of the SEM data provided in these figures shows a chip grain size of 5 nm. Id. at 4-5. Instead, the Examiner finds that the SEM data, at best, appears to suggest a lower limit grain size of approximately 7 (or 7.5) nm since the lowest values shown in each figure are approximately half-way between 5 and 10 nm points on the grain size scale, and all remaining data are all for grain sizes greater than these minimum values. Id. (citing to annotated Figures 4A-4F). With regard to Figures 3A-3C and 6A-6D, the Examiner finds that these figures show SEM images of the chip-like particles prepared by surfactant-assisted ball milling for one hour. Ans. 5. The Examiner further finds that these figures show chips with 5-8 µm diameters and 20-120 nm thicknesses. Id. at 6 (citing Spec. 8:21-33 and 9:1-6). However, the Examiner notes that the Specification teaches that particle size is not equal Appeal 2021-001170 Application 14/418,759 6 to grain size and that Figures 3A-3C and 6A-6D fail to provide any information on grain size, much less grain sizes down to 5 nm. Id. Appellants’ arguments are unpersuasive of reversible error. The test for sufficiency of a written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Possession means “possession as shown in the disclosure” and “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. (“Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.”); Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). Although Appellant urges that the Examiner “does not take into account the range of grain sizes that can be produced by the claim method” (Reply Br. 3), merely providing a scale in a graph is, at best, speculative as to what the claimed method is capable of and is insufficient to support a claimed value where the data in the graph does not include that claimed value. None of Figures 4A-4F include any data showing a grain size of 5 nm. To the contrary, the Examiner correctly finds that the data in these Appeal 2021-001170 Application 14/418,759 7 figures merely shows values down to approximately 7-7.5 nm. Though Appellant is correct that there is nothing in the Specification that would indicate that grain size cannot be below 7 nm, neither is there any written description demonstrating that Appellant was in possession of grain sizes below 7 nm. Absence of a limiting description is not evidence of possession. In addition, the scale of Figures 6A and 6C has a value of 30 µm, whereas the scale of Figures 6B and 6D has a value of 5 µm. Also, these figures show the particle sizes, rather than the grain sizes. Further, although Figures 3A-3C show SEM images of the particles, the scale on this figures is illegible. Also, as noted previously, these figures show particle sizes, not grain sizes. Thus, these figures fail to provide any support for the claimed grain size range. Accordingly, we sustain the Examiner’s written description rejection of claim 73, and dependent claims 74-82. Rejection 2: Obviousness The Examiner rejects claims 73-82 under 35 U.S.C. §103(a) as unpatentable over Rong in view of Gabay and Walmer. Final Act. 5-7. The Examiner finds that Rong teaches a method of producing anisotropic nanoparticles substantially as recited in claim 73, except for explicitly teaching that the fabricated anisotropic bonded magnet has an energy product of 13-26 MGOe with a density of at least 6.5 g/cm3. Final Act. 5-6. The Examiner further finds that Gabay teaches a method for surfactant-assisted ball milling Sm-Co magnet material, with or without an externally applied magnetic field, in the presence of heptane and oleic acid to form a chain of well-separated, well-defined nanoflakes. Final Act. 6. The Examiner also finds that Gabay teaches that increasing oleic acid content Appeal 2021-001170 Application 14/418,759 8 provides better separation of the nanoflakes. Id. The Examiner concludes that it would have been obvious to optimize the amount of oleic acid surfactant in Rong’s process to obtain a chain of well-separated nanoflakes as Gabay suggests. Id. Next, the Examiner finds that Walmer teaches a method for making a bonded magnet containing Sm-Co material by dynamic-magnetic- compaction (“DMC”), wherein the bonded magnet has an energy product of 10-15 MGOe and a density approaching the theoretical density of the magnetic material. Final Act. 6-7. More specifically, the Examiner finds that Walmer teaches applying a magnetic field to a mixture of permanent magnet and binder particulate for alignment and performing DMC to obtain a bonded magnet having up to 99% of the theoretical maximum energy product and a density approaching 100% of theoretical density. Ans. 11-12. The Examiner concludes that it would have been obvious to modify Rong’s process for DMC production of bonded magnets having energy products of up to 99% of theoretical maximum energy product or 18-23 MGOe and densities approaching 100% of the theoretical density of the magnetic material. Id. at 6-7; Ans. 12. Appellant argues that nothing in Walmer indicates whether compositions described in Rong and Gabay would result in bonded magnets having an energy product of 13-26 MGOe with a density of at least 6.5 g/cm3 as recited in claim 73. Appeal Br. 9. Appellant contends that nothing in Walmer teaches that DMC is compatible with Rong’s method and Rong’s and Gabay’s compositions. Id. In this regard, Appellant asserts that Walmer’s examples clearly show that the magnetic properties of the bonded magnets are highly dependent upon the exact composition used. Id. Appeal 2021-001170 Application 14/418,759 9 Appellant also asserts that Walmer fails to teach whether an external magnetic field would be compatible with Rong’s method. Id. at 10. Appellant further argues that the rejection of claim 73 is based on the assumption that a skilled artisan can predictably combine Rong’s and Gabay’s teachings without undue experimentation. Appeal Br. 9. Appellant contends, to the contrary, that a skilled artisan cannot do so because Gabay teaches that grain size is significantly dependent on the combination of solvent, surfactant, and binders, but does not teach which combinations will give a desired grain size. Id. Appellant also contends that the rejection of claim 73 relies on the incorrect assumption that Gabay teaches ball milling in the presence of an external magnetic field. Id. at 10. Appellant’s arguments as to the rejection of claim 73 are not persuasive of reversible error. There is no dispute that Rong teaches a method of making bonded magnets by ball milling a SmCo5 material in the presence of a magnetic field using three different combinations of solvents, surfactants, and binders. Compare id. with Appeal Br. 7. Rong’s three different combinations include: 1) heptane; 2) heptane, oleic acid, and oleyl amine; and 3) phenylene sulfide (“PPS”) and xylene. Rong 107, col. 2. On the other hand, claim 73 broadly recites ball milling a SmCo5, Sm2Co7, or Nd2Fe14B material with a surfactant, without specifying any particular surfactant and without requiring a solvent. Although Appellant contends that nothing in Walmer suggests that DMC would be compatible with Rong’s method and material, we disagree. As the Examiner finds, Walmer discloses the same type of permanent magnetic particles (e.g., Sm-Co) and binder (e.g., PPS) as Rong, and applies a magnetic field to align and compact the mixture of magnetic particles and Appeal 2021-001170 Application 14/418,759 10 binder similarly to Rong. Ans. 12; Walmer ¶¶ 126, 139, 152-153, 170, 173. Moreover, Walmer teaches that DMC, which involves application of magnetic pressure pulses, is able to achieve greater energy product with minimum void ratio than traditional mechanical compaction. Walmer ¶¶ 99, 125. Therefore, an ordinary artisan would have been motivated to use DMC in place of Rong’s mechanical compaction in order to achieve greater energy products of up to 23 MGOe and densities approaching theoretical density, as Walmer teaches, with a reasonable expectation of success. In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.” (citations omitted)); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Appellant fails to provide either persuasive technical reasoning or evidentiary showing demonstrating any incompatibility between Rong’s method and materials and the use of DMC as Walmer discloses. In addition, contrary to Appellant’s argument, the rejection of claim 73 does not rely on an assumption that a skilled artisan can predictably combine Rong’s and Gabay’s teachings without undue experimentation, nor an assumption that Gabay teaches ball milling in the presence of an external magnetic field. The Examiner’s reliance on Gabay is primarily related to Gabay’s teaching of a specific surfactant. As claim 73 broadly recites “surfactant” without limitation, Gabay is not needed for this feature. Nor is Appeal 2021-001170 Application 14/418,759 11 Gabay relied on for the application of an external magnetic field, as Rong’s method recites application of both first and second magnetic fields as recited in claim 73. Instead, the Examiner’s reliance on Gabay merely supports the Examiner’s finding that Rong’s ball milled magnetic particles would necessarily form a chain. See Final Act. 6 (“chain is formed in the ball milling process of Rong et al. as evidenced by Gabay”). Appellant fails to dispute or otherwise address the Examiner’s reliance on Gabay as evidencing formation of a chain of particulate in Rong’s process. In the Reply Brief, Appellant presents new arguments not raised in the Appeal Brief concerning the size of Walmer’s particles used to form bonded magents and that Walmer is nonanalogous prior art. Reply Br. 6. Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI 2010) (informative). Appellants have provided this record with no such showing. Accordingly, we will not consider this new argument in the Reply Brief. Accordingly, we sustain the Examiner’s obviousness rejection of claim 73. With regard to dependent claims 74-82, Appellant argues that Gabay does not teach ball milling in the presence of an externally applied magnetic field. Appeal Br. 8; Reply Br. 4-5. Instead, Appellant asserts that Gabay teaches applying a magnetic field after ball milling for XRD analysis. Id. As such, Appellant contends that Gabay fails to teach Rong’s critical step of applying an external magnetic field during ball milling such that a skilled Appeal 2021-001170 Application 14/418,759 12 artisan would not be able to predict whether Gabay’s teachings would apply to Rong’s method. Id. In addition, Appellant contends that a skilled artisan would not look to improve Rong’s method by using Gabay’s surfactant and solvent because Rong teaches different combinations of solvent, surfactant, and binders will have a significant effect on grain size. Id. Appellant’s arguments regarding the Examiner’s obviousness rejection of claims 74-82 are not persuasive of reversible error. As the Examiner finds, both Rong and Gabay teach similar ball milling methods for making SmCo5 particles for bonded magnets. Ans. 7. Further, both Rong and Gabay teach that use of oleic acid as surfactant and heptane as solvent in wet, high energy ball milling of these magnetic particles. Rong 107, col. 2; Gabay ¶ 36. Although Appellant characterizes the magnetic field applied during ball milling as critical and missing from Gabay, this fact is immaterial to the rejection because Rong teaches processes including and excluding an external magnetic field during ball milling. Rong 107, col. 2. Moreover, though Rong teaches that grain size is dependent on the surfactant, solvent, and binder used, we note that Rong also teaches that grain sizes in each of the three compositions tested are all generally less than 30 nm. Rong 108, Figs. 1(b) and 1(c). Therefore, an ordinary artisan, using Gabay’s surfactant and solvent in Rong’s ball milling process, would have reasonably expected to successfully produce grain sizes less than 30 nm. O’Farrell, 853 F.2d at 903-04. Accordingly, we sustain the Examiner’s obviousness rejection of claims 74-82. Appeal 2021-001170 Application 14/418,759 13 CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Final Office Action and the Examiner’s Answer, the Examiner’s decision to reject claims 73-82 under 35 U.S.C. § 112(a) (or pre-AIA § 112, 1st ¶), for failing to comply with the written description requirement, and under § 103(a) as unpatentable over Rong in view of Gabay and Walmer is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 73-82 112(a)/112 ¶ 1 Written Description 73-82 73-82 103(a) Rong, Gabay, Walmer 73-82 Overall Outcome 73-82 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED