Ex Parte Aruga et al

Patent Trial and Appeal Board

Aug 7, 2017

11916730 (P.T.A.B. Aug. 7, 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.
11/916,730 12/06/2007 Y asuhiro Aruga 318005US0PCT 8785
22850 7590 08/09/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUHIRO ARUGA, KOYA NOMURA,
KATSURA KAJIHARA, YUKIO SUGISHITA, and
HIROSHI SAKAMOTO1
Appeal 2016-002060
Application 11/916,730
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—4, 8, and 12—16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to copper alloys suitable for use
as automotive terminals, automotive connectors, “and the like.” E.g.,
1 According to the Appellants, the real party in interest is “Kabushiki Kaisha
Kobe Seiko Sho (Kobe Steel, Ltd.).” App. Br. 1.
Appeal 2016-002060
Application 11/916,730
Spec. 1:6—13; Claim 1. Claim 1 is reproduced below from page 7 (Claims
Appendix) of the Appeal Brief (some indentation added):
1. A copper alloy with an excellent stress relaxation resistance
comprising:
Ni: 0.1 through 3.0 mass%;
Sn: 0.01 through 3.0 mass%;
P: 0.01 through 0.3 mass%; and
remainder copper and inevitable impurities, and the Ni content
in extracted residues separated and left on a filter having filter
mesh size of 0.1 pm by using an extracted residues method
accounting for 40 mass% or less of the Ni content in the copper
alloy, wherein
said extracted residues method requires that 10 g of the copper
alloy is immersed in 300 ml of a methanol solution which
contains 10 mass% of ammonium acetate, and using the
copper alloy as the anode and platinum as the cathode,
constant-current electrolysis is performed at the current
density of 10 mA/cm2, and the solution in which the copper
alloy is thus dissolved is subjected to suction filtration using
a membrane filter of polycarbonate whose filter mesh size is
0.1 pm, thereby separating and extracting undissolved
residues on said filter, and
the Ni content in said extracted residues is identified through
analysis by ICP after dissolving said undissolved residues
separated and left on said filter into a solution prepared by
mixing aqua regia and water at the ratio of 1 : 1,
wherein the copper alloy has a high stress relaxation resistance
represented by a stress relaxation ratio of 15% or lower along the
perpendicular direction to the rolling direction of the alloy.
REJECTIONS ON APPEAL
1. Claims 1—4, 8, and 12—16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over JP04-154942 (published May 27, 1992) (“JP ’942”),
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Appeal 2016-002060
Application 11/916,730
JP2844120B (dated Oct. 30, 1998) (“JP ’120”), JP2001-262255 (published
Sept. 26, 2001) (“JP ’255”), JP2002-294368 (published Oct. 9, 2002)
(“JP ’368”), JP 2000-129377 (published May 9, 2000) (“JP ’377”), or
JP2001-262297 (published Sept. 26, 2001) (“JP ’297”) (collectively, “the JP
references”) in view of Applicants’ Admitted Prior Art (AAPA). Ans. 3.
2. Claims 1—4, 8, and 12—16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bhargava (US 5,916,386, issued June 29, 1999) in view
of JP ’942, JP ’255, JP ’368, JP ’377, JP ’942 or JP ’297. Ans. 6.
3. Claims 1^4 and 8 stand provisionally rejected for obviousness-type
double patenting over claims 1—14 of copending Application No.
12/811,339. Ans. 8.
ANALYSIS
Rejections 1 and 2
The Appellants argue the claims as a group and do not distinguish
between the Examiner’s separate grounds of rejection. See App. Br. 3—5.
We select claim 1 as representative of the rejected claims. After review of
the cited evidence in the appeal record and the opposing positions of the
Appellants and the Examiner, we determine that the Appellants have not
identified reversible error in the Examiner’s rejections. Accordingly, we
affirm the rejections for reasons set forth below, in the Final Action, and in
the Examiner’s Answer. See generally Final Act. 2—9; Ans. 3—11.
With respect to Rejection 1, the Examiner finds that each of the JP
references teaches copper alloys possessing quantities of Ni, Sn, and P that
overlap or fall within the claimed ranges. See Ans. 9. The Examiner further
finds that each of the JP references teaches that the described copper alloys
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Application 11/916,730
have properties, including stress relaxation ratio, electrical conductivity, and
proof stress, that overlap or fall within the claimed ranges. Id. The
Examiner acknowledges that the JP references are “silent about the stress
relaxation direction” (i.e., “along the perpendicular direction to the rolling
direction of the alloy,” as recited by claim 1), but finds that the AAPA
“discloses that The Society of Automotive Engineers of Japan requires
automotive connect with stress relaxation ratio be 15% or lower in all
directions.” Id. at 4 (internal citations omitted). The Examiner finds that
“the Cu-based alloy connectors of [the JP references] would comply [with]
the standard of The Society of Automotive Engineers of Japan.” Id.
Concerning the “Ni content in extracted residues” and the method for
extracting residues recited by claim 1, the Examiner finds that, because the
alloys of the JP references are identical or substantially identical to the
claimed alloys, a person of ordinary skill in the art would have expected
them to possess the recited Ni content if subjected to the recited residue
extraction method. Id. at 4—5 (citing In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990); In re Fitzgerald, 619 F.2d 67 (CCPA 1980); In re Best, 562 F.2d
1252, 1255-56 (CCPA 1977)).
Concerning Rejection 2, the Examiner finds that Bhargava teaches Cu
alloys for automotive applications that have properties (yield strength and
precipitate size) the same as or similar to properties possessed by the
claimed alloys, and that “Bhargava discloses thermal treatment and
controlled alloying elements in order to improve strength, conductivity, and
stress relaxation.” Ans. 6 (internal citations omitted). The Examiner finds
that Bhargava does not teach the claimed stress relaxation ratio and electrical
conductivity. Id. The Examiner, however, finds that the JP references teach
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Application 11/916,730
that alloys the same or similar to those of Bhargava possess those properties,
and the Examiner concludes that “it would have been obvious ... to
recognize the Cu based alloy of Bhargava would have the conventional
stress relaxation ratio and electrical conductivity known in the art of cited
references.” Id. at 6—7. Similar to Rejection 1, the Examiner finds that,
because the claimed alloys are the same or essentially the same as the prior
art alloys, “the properties as recited in the instant claims such as Ni content
in the extracted residues due to the precipitates would have [been] inherently
possessed by the teachings of [Bhargava].” Id. at 7—8.
In the Appeal Brief, the Appellants state that “[a]n important feature
[of the claimed alloy] is that Ni compounds in the claimed copper alloy have
been suppressed from becoming bulky. This is embodied in the limitations
relating to the Ni content of the claimed alloy.” App. Br. 4. The Appellants
further state that “[a]nother important feature of the present invention is that
the claimed alloy . . . has a high stress relaxation resistance represented by a
stress relaxation ratio of 15% or lower along the perpendicular direction of
the rolling direction of the alloy.” Id. With no citations to the 64-page
Specification, and without specifically explaining how their argument is tied
to any particular claim limitation, the Appellants assert that the process used
to make the claimed alloy is responsible for the suppression of Ni bulkiness,
and that, “in the cited references, it cannot be said that the Ni compounds are
suppressed from becoming bulky by the copper alloy of this invention.” Id.
at 5. We understand this argument to be an assertion that the alloys of the
prior art do not meet the “Ni content in extracted residues” limitation of
claim 1.
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In the Reply Brief, the Appellants cite various portions of the
Specification suggesting that suppression of Ni bulkiness results in the
claimed stress relaxation ratio of 15% or lower. See Reply Br. 1 (“[T]he
inventors found that suppression of coarse oxides, crystalloids and
precipitates of Ni having a certain size or larger would realize a high stress
relaxation resistance which manifests itself as a stress relaxation ratio of
15% or lower along the perpendicular direction to the rolling direction.”
(quoting Spec. 11—12)).
The Appellants’ arguments are not persuasive of reversible error in
the rejections. “Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” Best, 562 F.2d at 1255; see also
Spada, 911 F.2d at 708 (“[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”).
In this case, the Examiner finds not only that the copper alloy
compositions of the prior art are the same as the claimed composition in
terms of their Ni, Sn, and P contents, but also that various properties—
including yield strength, precipitate size, and stress relaxation ratio—are the
same. See Ans. 5, 8, 9. The Appellants do not dispute those findings. As
noted above, in the Reply Brief, the Appellants cite portions of their
Specification indicating that the claimed stress relaxation ratio is related to
suppression of Ni bulkiness. See, e.g., Reply Br. 1; Spec. 11—12. Moreover,
and as noted above, the Examiner finds that the “precipitate size” of the
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alloys of the JP references and Bhargava are the same as or similar to the
claimed alloys. See Ans. 5—6. The portions of the Specification that the
Appellants cite in the Reply Brief indicate that precipitate size is related to
suppression of Ni bulkiness. See, e.g., Reply Br. 1; Spec. 11—12. Thus,
contrary to the Appellants’ position that “it cannot be said that the Ni
compounds [of the prior art] are suppressed from becoming bulky,” App. Br.
5, at least the stress relaxation ratios and precipitate sizes of the alloys of the
prior art are consistent with the Examiner’s determination that the alloys of
the prior art teach or otherwise render obvious the subject matter of claim 1,
including the “Ni content in extracted residues” limitation.
The evidentiary record is sufficient to shift the burden to the
Appellants to show that the alloys of the prior art are not the same as the
claimed alloys. See Best, 562 F.2d at 1255; Spada, 911 F.2d at 708. Merely
identifying potential differences between the process described in the
Specification and the process used to make the alloys of the prior art (i.e.,
time intervals in certain process steps, see App. Br. 5), without persuasively
explaining why or providing evidence that those differences would cause the
alloys of the prior to fall beyond the scope of the claims, see id., is not
persuasive. The Appellants provide no basis to find, for example, that the
time intervals that would have been selected by a person of ordinary skill in
the art producing the alloys of the JP references would have caused the
alloys of the JP references to fall beyond the scope of claim 1, nor do the
Appellants argue or provide evidence that selection of appropriate time
intervals would have been beyond the ordinary level of skill in the art. See
id. Given that it is undisputed that the alloys of the prior art possess the
claimed stress relaxation ratio and precipitate sizes that are the same as or
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similar to the claimed alloys, and the Appellants fail to meaningfully address
those similarities, we conclude that the Appellants have not carried their
burden. See Best, 562 F.2d at 1255; Spada, 911 F.2d at 708.
On this record, because the Appellants have not identified reversible
error in the Examiner’s rejections, we affirm the Examiner’s rejection of
claim 1 under both stated grounds of rejection. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”).
Rejection 3
In the Appeal Brief, the Appellants state that they “have requested that
the obviousness-type double patenting rejection ... be held in abeyance until
an indication of allowable subject matter in the present application. A
Terminal Disclaimer will be filed if necessary.” App. Br. 6.
Because the Appellants assert no error in the provisional obviousness-
type double patenting rejection, we summarily affirm it.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—4, 8, and 12—16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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