Ex Parte Akada et al

Patent Trial and Appeal Board

Oct 30, 2017

13161034 (P.T.A.B. Oct. 30, 2017)

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.
13/161,034 06/15/2011 Kazuhito Akada 110758 4566
38834 7590 11/01/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUHITO AKADA, KOJI SATO, and
NAOMICHI YOSHIMURA
Appeal 2015-004941
Application 13/161,034
Technology Center 3700
Before EDWARD A. BROWN, LYNNE H. BROWNE, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kazuhito Akada et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—5, which are all
the pending claims. See Appeal Br. 2. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). An oral hearing was held on July 6, 2017.
We AFFIRM.
1 According to Appellants, the real party in interest is SHIN-ETSU
CHEMICAL CO., LTD. Appeal Br. 1.
Appeal 2015-004941
Application 13/161,034
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to a method for cutoff
machining a magnet block into multiple pieces.” Spec., p. 1,11. 14—15.
Claim 1, reproduced below, is the sole independent claim appealed and is
representative of the subject matter on appeal.
1. A method for multiple cutoff machining a sintered rare
earth magnet block using a multiple blade assembly comprising
a plurality of cutoff abrasive blades coaxially mounted on a
rotating shaft at axially spaced apart positions, each said blade
comprising a core in the form of a thin disk or thin doughnut
disk and a peripheral cutting part on an outer peripheral rim of
the core, said method comprising the step of rotating the cutoff
abrasive blades to cutoff machine the magnet block into pieces,
said method further comprising the steps of:
starting the machining operation from the upper surface
of the magnet block downward to form cutoff grooves in the
magnet block,
interrupting the machining operation before the magnet
block is cut into pieces,
turning the magnet block upside down,
placing the magnet block such that the cutoff grooves
formed before and after the upside-down turning may be
vertically aligned with each other, and
restarting the machining operation from the upper surface
of the upside-down magnet block downward to form cutoff
grooves in the magnet block until the cutoff grooves formed
before and after the upside-down turning merge with each
other, thereby cutting the magnet block into pieces.
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Appeal 2015-004941
Application 13/161,034
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Matsuda US 2004/0166654 A1 Aug. 26,2004
Sato2 EP 2 189 245 A2 May 26, 2010
REJECTION
The following rejection is before us for review: Claims 1—5 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Sato and
Matsuda. Final Act. 2—3.
ANALYSIS
The Examiner determined that a combination of teachings from Sato
and Matsuda renders obvious the claimed method. See Final Act. 2—3.
Appellants argue that the Examiner has failed to make a sustainable case of
obviousness in rejecting the claims, based on a contention that Matsuda’s
teaching of flipping a glass plate during cutting is unrelated to the claimed
method of flipping a sintered rare earth magnet during cutting because the
materials do not exhibit the same problems when cutting with a multiple
blade assembly, and based on assertions of unexpected results over prior art
cutting methods. See Appeal Br. 3—9; Reply Br. 3—6.
2 Although the Examiner refers to this reference as “Minowa,” who is
one of the named inventors (see Final Act. 2—3; Ans. 2-4), Appellants refer
to the reference as “Sato,” who they correctly point out is the first named
inventor (see Appeal Br. 2 n.l; Reply Br. 3 n.l). By convention, and in
accord with Appellants’ usage, we refer to this reference herein as “Sato.”
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Appeal 2015-004941
Application 13/161,034
After careful consideration of the record before us, Appellants’
arguments do not apprise us of error in the Examiner’s factual findings from
Sato or Matsuda, which are supported by a preponderance of the evidence,
or the Examiner’s reasonable conclusion of obviousness, which is rationally
articulated based on prior art teachings. In short, we sustain the Examiner’s
rejection based on the reasoned positions set forth therein and in light of the
Examiner’s responses to Appellants’ arguments. See Final Act. 2—3;
Ans. 3^4. We address Appellants’ principal assertions below as a matter of
emphasis.
In particular, Appellants assert that it would not have been obvious to
combine the teachings of Sato and Matsuda because “a glass plate does not
have a sintered structure and is free from cracking as with a sintered
structure” (Appeal Br. 3), such that cutting a glass plate “does not have the
same problems as [cutting] a sintered rare earth magnet block” (Reply
Br. 3). See Appeal Br. 3—5; Reply Br. 3^4. This assertion is unpersuasive of
error. Although the materials being cut are not identical, Appellants do not
present persuasive factual evidence to demonstrate error in the Examiner’s
position that “the glass workpiece being cut in [Matsuda] is similar in
properties to the sintered ceramic material of [Sato] with respect to
brittleness and susceptibility to fracture during cutting,” such that at least
some “problems facing those of ordinary skill in the art with respect to
chipping and cracking in the cutting zone are the same as those faced with
any triable, brittle material, such as glass,” as evidenced by the fact that “the
same abrasive cutting disks are used in cutting through both glass and
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Appeal 2015-004941
Application 13/161,034
ceramics.” Ans. 4 (emphasis added).3 Thus, Appellants’ assertion does not
apprise us of error in the Examiner’s reasoned basis for combining the
teachings of Sato and Matsuda.
Additionally, Appellants assert that the claimed cutting method
provides “unexpected results” over the prior art cutting methods. See
Appeal Br. 5—9; Reply Br. 4—6. This assertion is also unpersuasive of error.
Although we appreciate Appellants’ position that results from the claimed
cutting method including flipping the workpiece (e.g., Appellants’
Example 1) are improved over the prior art cutting methods without flipping
the workpiece (e.g., Appellants’ Comparative Example 1, which is stated to
be similar to Sato’s Example 1), we are not convinced that such results
would be unexpected to one of ordinary skill in the art. See Appeal Br. 5—9;
Reply Br. 4—6.4 Rather, we agree with the Examiner’s reasoned conclusion
that “[tjhose of ordinary skill would have recognized from the teaching of
Matsuda . . . the benefit of finishing the severing of the workpiece blank
from a side opposite to that of the initial cut, to avoid such defects in the
ceramic blank cutting method disclosed in [Sato],” such that any “improved
3 Further, we note that the Examiner’s observation that Matsuda
addresses a similar problem regarding reducing chipping when cutting brittle
materials by flipping the workpiece and cutting from both sides (see Final
Act. 2) is supported by the evidence of record (see, e.g., Matsuda 7—8
(explaining that simply cutting through once, without flipping, contributes to
the problems of chipping and/or breaking of the material)).
4 Because the flipping step logically allows a smaller cutting blade
(reduced effective diameter and/or thickness) to be used, which appears to
lead to the improved results, and this step is not performed in Sato’s cutting
method, Appellants have not presented persuasive technical reasoning to
explain why such results—admittedly improved over the prior art—would
be somehow unexpected.
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Appeal 2015-004941
Application 13/161,034
dimensional accuracy would have been an obvious expected result of
utilizing a smaller diameter blade than in the prior art, made possible by not
having to cut completely through the work in one pass, as taught by the
method in [Sato],” because “[i]t is well established that the use of smaller
blade disks results in less blade deformation than larger blade disks, and thus
improved dimensional accuracy in the final severed product.” Ans. 4
(emphasis added). Appellants do not persuasively explain how using a
smaller cutting blade, in cooperation with Matsuda’s flipping technique,
would have yielded unpredictable results or somehow been beyond the level
of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
After careful consideration of all the evidence of record, Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the conclusion of obviousness. Accordingly, we sustain the
rejection.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—5 under
35 U.S.C. § 103(a) as being unpatentable over Sato and Matsuda.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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