Ex Parte Aruga et al

Patent Trial and Appeal Board

Aug 10, 2017

13078404 (P.T.A.B. Aug. 10, 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.
13/078,404 04/01/2011 Y asuhiro Aruga 378110US99DIV 7372
22850 7590 08/14/2017
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
08/14/2017 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
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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 2016-007405
Application 13/078,404
Technology Center 1700
Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
JULIA HEANEY, Administrative Patent Judges.
PRAISS, 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 5—7 and 10-16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is “Kabushiki Kaisha
Kobe Seiko Sho (Kobe Steel, Ltd.).” App. Br. 1.
Appeal 2016-007405
Application 13/078,404
BACKGROUND
The subject matter on appeal relates to copper alloys suitable for use
as automotive terminals, automotive connectors, “and the like.” E.g.,
Spec. 1:6—13. Claim 5 is reproduced below from page 10 (Claims
Appendix) of the Appeal Brief (disputed limitations italicized):
5. A copper alloy comprising:
Ni: 0.4 through 1.6 mass%;
Sn: 0.4 through 1.6 mass%;
P: 0.027 through 0.15 mass%;
Fe: 0.0005 through 0.15 mass%; and
the remainder part having Cu and impurities,
the ratio Ni/P of the Ni content to the P content being lower
than 15, wherein
Ni-P precipitates are dispersed in the copper alloy,
said Ni-P precipitates have diameters of 60 nm or smaller
and substantially no Ni-P precipitates have a diameter greater
than 60 nm, and
twenty or more Ni-P precipitates having the diameters of
5 nm to 60 nm are observed within a scope of500 nm x 500 nm.
REJECTIONS ON APPEAL
1. Claims 5—7 and 10-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bhargava (US 5,916,386, issued June 29, 1999). Ans. 3;
Final Act. 3.
2. Claims 5—7 and 10-16 stand provisionally rejected for
obviousness-type double patenting over claims 1^4 and 8 of copending
Application No. 11/916,730.2 Ans. 5; Final Act. 5.
2 The ’730 application is the subject of Appeal 2016-002060.
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ANALYSIS
Rejection 1
The Appellants argue claims 5—7 and 10 as a group. See App. Br. 3—
7. We select claim 5 as representative of the group and also address claims
11, 12, 13, and 14, which are separately argued by Appellants. See id. at 7—
8. 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 rejection for the reasons set forth below, in the
Final Action, and in the Examiner’s Answer. See generally Final Act. 2-4;
Ans. 3^4.
With respect to Rejection 1, the Examiner finds that Bhargava
teaches Cu based alloy compositions for connectors and the claimed
phosphide particle size, and that the calculated Ni/P ratio overlaps that
claimed. Ans. 3. Regarding precipitate density required by claims 5 and 14,
the Examiner finds that “Bhargava teaches effective amount of phosphide
particles to improve strength, conductivity, and stress relaxation (col. 3, lines
58 to 66)” {id. at 7) and that discovering the optimum or workable ranges
would involve only routine skill in the art. Id. at 3^4. Regarding claims 11—
13, the Examiner finds that Bhargava discloses Ni content that overlaps the
ranges required by claims 11 and 12 and also discloses phosphide particles
that include diameters less than 60 nm as required by claim 13. Id. at 4.
In the Appeal Brief, the Appellants argue that the Examiner erred in
finding that Bhargava discloses precipitates having diameters of 60 nm or
smaller “because every embodiment described in the reference contains the
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Application 13/078,404
finer component and the coarser component. . . the coarser component is not
optional in Bhargava.” App. Br. 5 (emphasis omitted). The Appellants
contend that Bhargava’s process includes “annealing at a temperature under
of 343 °C to 649°C.” Id. at 6. Appellants argue that regardless of whether
Bhargava’s annealing temperature is above or below 600°C, the precipitates
will be coarse. Id. According to Appellants, this is because below 600°C,
coarse precipitates are not decomposed and remain in the alloy, and above
600°C, precipitates become coarse with the passage of time. Id.
The Appellants further state that “precipitation and growth of Ni-P
compounds is governed by the diffusion distance of Ni in copper.” Id.
According to Appellants, “an annealing treatment of one hour at 599°C or
649°C for an hour X equals 209 nm or 394 nm, respectively” which means
“if the long high-temperature finishing continuous annealing specified in
Bhargava is applied, then the Ni-P precipitates as specified in Claim 5 of the
present application cannot be obtained.” Id. at 7.
The Appellants contend that “a copper alloy meeting the conditions
specified in Claim 5 has outstanding conductivity, strength, tensile strength,
yield stress and elongation, spring elastic bending limit, stress relaxation
resistance, bending formability and shear stamping workability.” Id. at 4
(citing Spec. Table 4).
Regarding dependent claims 11—14, Appellants contend that Bhargava
discloses Ni in the alloy only up to 0.5% and that the coarse precipitate is
not optional. Id. at 7—8.
The Examiner responds with a chart that compares Appellants’ alloy
composition to that disclosed in Bhargava to show an overlap in each of the
ranges required by claim 5. Ans. 5. The Examiner also finds that Bhargava
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“discloses his Cu alloy also improves strength, conductivity, and stress
relaxation (col. 2, lines 16—21)” and that “appellants failed to show any of
[the] recited conditions is critical and possesses unexpected result by 132
declaration.” Id. at 6. The Examiner also notes that processing steps are not
recited in the appealed claims. Id. The Examiner further finds that
Bhargava’s disclosure of a finer particulate component includes the claimed
particle size and discovering an optimum or workable range involves only
routine skill in the art. Id. at 7. In addition, the Examiner finds that because
Bhargava teaches an effective amount of phosphide particles improves
strength, conductivity, and stress relaxation, discovering an optimum value
for the Ni-P density also involves routine skill in the art. Id. (citing
Bhargava 3:58—66).
Regarding Bhargava’s annealing step, the Examiner finds that “[t]here
is no way a single step can produce instant recited precipitates size and
density without combination of other steps” and that Bhargava evinces that
precipitates about 50 Angstroms to about 0.5 pm can be produced by
different methods. Id. at 8. The Examiner also finds that Table 4 in
Appellants’ Specification does not show criticality of the annealing step and
cooling rate to the recited precipitate size and density. Id. The Examiner
also notes that Appellants’ comparative examples are not conducted under
identical conditions except for the novel features of the invention. Id. at 9.
Regarding diffusion distance of Ni, the Examiner notes that the diffusion is
done with a single-crystalline copper which has a different composition from
the poly-crystalline copper alloy of the cited art and claimed alloy and no P
information or data for comparison has been provided. Id.
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Regarding dependent claims 11 and 12, the Examiner notes that
Bhargava discloses “up to about 0.5%” Ni in the alloy and that a prima facie
case of obviousness exists even without an overlap in the ranges if a skilled
artisan would have expected them to have the same properties. Id. at 9—10.
The Examiner provides the same response discussed above in connection
with the precipitate size required by claim 5 to Appellants’ arguments
directed to dependent claims 13 and 14. Id. at 7.
In the Reply Brief, only pages 5 and 6 are responsive to the
Examiner’s Answer concerning the obviousness rejection over Bhargava and
not duplicated from the Appeal Brief. There, Appellants assert that
Bhargava “is completely silent with respect to the density of Ni-P
precipitates” as Bhargava only discusses that the precipitates are uniformly
distributed. Reply Br. 6.
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.” In re Best, 562 F.2d 1252, 1255
(Fed. Cir. 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[Wjhen 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, P, Fe, and Cu contents, but also that various
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properties—including strength, conductivity, stress relaxation, and
precipitate size—are also disclosed by the prior art. See Ans. 5—6. The
Appellants do not dispute that Bhargava discloses improved strength,
conductivity, and stress relaxation. Nor do Appellants dispute that Bhargava
discloses precipitates that are less than 60 nm. Appellants also do not
dispute that Bhargava teaches “[t]he phosphide particles increase the
strength, conductivity, and stress relaxation characteristics of the alloys.”
Bhargava 3:62—64. As pointed out by the Examiner, Appellants’ argument
that Bhargava’s process produces coarser components than the claims
require does not adequately explain why a skilled artisan would understand
Bhargava’s disclosure of a particulate range that includes finer precipitates
of about 50 to 150 Angstroms (Bhargava 3:64^4:1) means coarser
particulates are present in an amount that is expressly excluded by claim 5,
namely “substantially no Ni-P precipitates having a diameter greater than 60
nm.” Appellants do not dispute the Examiner’s finding that ‘“substantially
no Ni-P precipitates having diameters greater than 60 nm’” . . . allows some
Ni-P precipitates having diameters greater than 60 nm.” Ans. 6.
Appellants’ argument that the annealing conditions of Bhargava’s
process produces a precipitate size and density outside of the claimed ranges
is not supported by data or other evidence such as Table 4 in Appellants’
Specification for the reasons explained by the Examiner (Ans. 8—9) and not
rebutted by Appellants (Reply Br. generally). Appellants’ Specification
states that “it is not possible to directly measure fine Ni compounds of 0.1
pm or smaller” (Spec. 12), that “suppression of coarse oxides, crystalloids
and precipitates of Ni having a certain size or larger would realize a high
stress relation resistance which manifests itself as a stress relaxation ratio of
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15% or lower” (id. at 11), and that “[t]o secure the amount of fine Ni
compounds of 0.1 pm or smaller . . . different manufacturing conditions than
those for an ordinary method are necessary” (id. at 13). Absent evidence of
criticality of the process conditions on the claimed precipitate size and
density, Appellants’ argument that Bhargava’s process produces a different
alloy from that claimed is based only on attorney argument. It is well settled
that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
The evidentiary record in this case 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. 6), without persuasively
explaining why or providing evidence that those differences would cause the
alloys of the prior art 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 Bhargava would have caused the alloys to fall
beyond the scope of claim 5 and dependent claims 13 and 14, nor do the
Appellants argue or provide evidence that selection of appropriate annealing
conditions and density of precipitates 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 elemental composition, a Ni-P ratio
encompassed by the claimed range, and a uniform Ni-P precipitate
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dispersion that includes precipitate sizes that are the same as or 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.
In addition, Appellants have not adequately rebutted the Examiner’s
finding that Bhargava’s disclosure of about 0.5% Ni in the alloy is close to
the 0.7% Ni recited in dependent claims 11 and 12 such that one having
ordinary skill in the art would have expected them to have the same
properties.
On this record, because the Appellants have not identified reversible
error in the Examiner’s rejection, we affirm the Examiner’s rejection of
claims 5—7 and 10-14 over Bhargava. 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 2
In the Appeal Brief, the Appellants contend that the Examiner erred in
rejecting the claims on the grounds of obviousness-type double patenting
over the claims of US Application No. 11/916,730 because the claims of the
’730 application fail to disclose or suggest (1) precipitates having the
diameters 60 nm or smaller and (2) twenty or more precipitates having
diameters in the range of 5 nm to 60 nm within a scope of 500 nm x 500 nm
as required by Appellants’ claim 5. App. Br. 8.
The Examiner responds that “the composition and Ni-P precipitates
size of co-pending claimed alloys are overlapped by instant appealed claims’
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composition and Ni-P precipitates size” and that Appellants’ argument is
directed to a two-way double patenting rejection.3 Ans. 10.
In the Reply Brief, Appellants contend that the composition and
precipitate size of the ’730 application claims cannot overlap if the ’730
application claims fail to disclose the precipitate size and density. Reply Br.
8-9.
The issue to consider when determining whether a nonstatutory basis
exists for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent. The analysis employed in an obviousness-type
double patenting determination parallels the guidelines for an obviousness
determination under 35 U.S.C. § 103(a). In re Braat, 937 F.2d 589, 593—94
(Fed. Cir. 1991); see also In reLongi, 759 F.2d 887, 892 n. 4 (Fed. Cir.
1985).
Appellants’ argument is not persuasive of reversible error by the
Examiner because Appellants do not adequately explain why the ’730
application claims do not overlap the particulate size and density required by
the claims on appeal. As the Examiner finds, the ’730 application claims
disclose or suggest a copper based alloy composition that encompasses
Appellants’ claimed composition (Final Act. 5) and also has Ni-P
precipitates (Ans. 10). Moreover, considering claim 1 of the ’730
application, which recites “residues . . . left on a filter having filter mesh size
of 0.1 pm,” particulates having diameters smaller than the mesh size suggest
3 A two-way test is to be applied when the applicant could not have filed the
claims in a single application and there is administrative delay. In re Berg,
140 F.3d 1428 (Fed. Cir. 1998).
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an overlap with the claimed particulate size and density. Appeal 2016-
002060, Appeal Brief 10 (Claims Appendix). Indeed, Appellants’
Specification states that “it is not possible to directly measure fine Ni
compounds of 0.1 pm or smaller” (Spec. 12) and indicates that the undesired
particulate sizes are eliminated with a filter having a 0.1 pm filter mesh size
{id. at 11). Accordingly, in the absence of error having been shown by
Appellants on the cited record on appeal, we affirm the Examiner’s
provisional obviousness-type double patenting rejection of claims 5—7 and
10-16.
CONCLUSION
We AFFIRM the Examiner’s rejection of claims 5—7 and 10—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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