Ex Parte Fujii et alDownload PDFPatent Trial and Appeal BoardApr 20, 201814232549 (P.T.A.B. Apr. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/232,549 01/13/2014 Yasuyuki Fujii 22850 7590 04/24/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 426837US41PCT 5382 EXAMINER KRUPICKA, ADAM C ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 04/24/2018 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 Y ASUYUKI FUJII, AK.IO OKAMOTO, YOSHIO ITSUMI. and AKIHISA FUJITA Appeal2016-007569 Application 14/232,549 Technology Center 1700 Before JEFFREY T. SMITH, GEORGE C. BEST, and JEFFREY R. SNAY, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 3, 5-7, and 9-14 of Application 14/232,549 under 35 U.S.C. § 103(a) as obvious. Final Act. (August 3, 2015). Appellants 1 seek reversal of this rejection pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. 1 Kabushiki Kaisha Kobe Seiko Sho is identified as the real party in interest. Appeal Br. 1. Appeal2016-007569 Application 14/232,549 BACKGROUND The '549 Application describes a plate material that may be formed into a heat-exchanging plate. Spec. 1. The plate material is made by forming fine recesses and projections on the surface of a flat metal plate. Id. The dimensions and spacing of the projections are defined such that shape parameters G 1 and G2-which are defined in claims 1 and 6 respectively- have particular values. Id. at 1 - 2. For example, according to claim 1: 4 µm :S G 1 :S 85 µm. Independent claims 1 and 6 are representative of the '549 Application's claims and are reproduced below from the Claims Appendix: 1. An original plate material for a heat-exchanging plate, the original plate material being subjected to press working so as to be used as a heat-exchanging plate, the original plate material being made by forming a fine recess and fine projections on a surface of a metal flat plate material as a raw material, wherein the recess and the projections are formed such that a shape parameter G 1 defined as a height of a projecting part in µm x [a width of a recessed part in µm/a pitch between the adjacent protecting parts in µm] is equal to or smaller than 85µm, wherein the projecting parts each have a circular shape in plan view and a diameter equal to or greater than 400 µm, wherein the projecting parts each have a height equal to or greater than 5 µm, expressed as a ten-point average roughness Rz, and also equal to or smaller than a 0.1 x a thickness of the flat plate material in µm, wherein a pitch between adjacent projections is equal to or greater than 600 µm, wherein the width of the recessed part is equal to or greater than 2 00 µm, and 2 Appeal2016-007569 Application 14/232,549 wherein G 1 is equal to or greater than 4 µm. Appeal Br. 10 (emphasis added). 6. An original plate material for a heat-exchanging plate, the original plate material being subjected to press working so as to be used as a heat-exchanging plate, the original plate material being made by forming a fine recess and fine projections on a surface of a metal flat plate material as a raw material, wherein the recess and the projections are formed such that the shape parameter G2 defined as a height of a projecting part in µm x [a width of a recessed part in µm/a pitch between adjacent projecting parts in µm/an angle of the projecting part in deg] is equal to or smaller than 0.94 µm/deg, wherein the projecting parts each have a circular shape in plan view and a diameter equal to or greater than 400 µm, wherein the projecting parts each have a height equal to or greater than 5 µm, expressed as a ten-point average roughness Rz, and also equal to or smaller than 0.1 x a thickness of the flat plate material in µm, where in a pitch between adjacent projections is equal to or greater than 600 µm, wherein the width of the recessed part is equal to or greater than 2 00 µm, and where in G2 is equal to or greater than 0.028 µm/deg. Id. at 11. REJECTION On appeal, the Examiner maintains the following rejection: Claims 1, 3, 5-7, and 9-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over King. 2 Final Act. 2. 2 US 2012/0052241 Al, published March 1, 2012. 3 Appeal2016-007569 Application 14/232,549 DISCUSSION Appellants argue for reversal of the rejection of claims 1, 3, 5-7, and 9-14 based upon limitations present in independent claims 1 and 6. See Appeal Br. 7-9. We, therefore, limit our discussion to these claims. Each of dependent claims 3, 5, 7, and 9-14 will stand or fall with its parent independent claim. 37 C.F.R. § 41.37(c)(l)(iv). First, Appellants argue that the rejection of independent claims 1 and 6 should be reversed because the Examiner has not established a prima facie case of obviousness. Appeal Br. 7 - 8. In particular, Appellants argue: King does not actually calculate G 1 or G2, or disclose any examples of G 1 or G2. Instead, it is only alleged in the rejection that G 1 and G2 could be calculated from the broadly disclosed ranges of the pitch, height and a diameter of the micro features in King. However, such a description of broad ranges in the prior art, without specific examples, is "analogous to the obviousness of a species when the prior art broadly disclose a genus." MPEP 2144.05(I). In such a case of the disclosure of a genus, "fact-findings [which] specifically articulate what teachings or suggestions in the prior art would have motivated one of ordinary skill in the art to select the claimed species or subgenus" must be established and set forth in the rejection. See MPEP 2144.08 (II) (A) (5). It is not sufficient to simply state without more, as was done in the final rejection, that the specific claimed values (species) would have been obvious from the disclosed broad ranges (genus) of the prior art. Id. at 7. Appellants' argument is not persuasive. The case law is clear: overlapping ranges are sufficient to establish the prima facie obviousness of the claim limitation. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("A prima facie case of obviousness typically exists when the ranges of the claimed composition overlap the ranges disclosed in the prior art."); In re 4 Appeal2016-007569 Application 14/232,549 Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed invention was rendered prima facie obvious by a prior art whose disclosed range (0.020 - 0.035% sign carbon) overlapped the claimed range (0.030 - 0.70% carbon)); see also In re Harris, 49 F.3d 1339, 1341 (Fed. Cir. 2005). In this case, the claimed ranges for the height of the circular projections, their diameter, and the pitch overlap the ranges described in King: Claimed range King i-f 21 In a specific embodiment, the microfeatures have dimensions 5 µm :Sh Height selected over the range of 10 nm to h :S 0.1 x plate thick. 1000 µm. In an embodiment, for example, the microfeatures have a length, height, diameter, and/or width selected over the range of 10 nm to Diameter D 2: 400 µm claim 1 1000 µm, preferably for some embodiments selected over the range of 10 nm to 100 µm. In an embodiment, for example, a pitch between microfeatures is selected over the range of 10 nm to 1000 µm, Pitch p 2: 600 µm for some applications selected over the range of 1 µm to 1000 µm, and for some applications selected over the range of 10 µm to 1000 µm. Furthermore, Appellants' analogy between their claims and the prior art's disclosure to a genus-species relationship is not persuasive. To begin with, the MPEP section cited by Appellants makes this analogy in its discussion of the situation in which the claimed ranges are completely encompassed by the range described in the prior art: [A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facia case of obviousness .... However, if the reference's disclosed range is so broad as to encompass a 5 Appeal2016-007569 Application 14/232,549 very large number of possible distinct compositions, this [may] present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. MPEP § 2144.05(I) (citations omitted). In this case, however, is not clear that the prior art disclosure, which set an upper size limit of 1000 µm for the dimensions of the micro features, completely encompass the claimed ranges. Appellants' claims only set an upper limit for the height of the microfeatures, and that upper limit is 1/10 of the thickness of the plate. Thus, if the plate is more than 10 mm thick, the upper limit of the height of the claimed microfeatures falls outside the scope of King's disclosure. Appellants' claims set no upper limit for the diameter and the pitch of the claimed microfeatures. Even assuming, arguendo, that King's disclosed ranges completely encompassed the size ranges set forth in claims 1 and 6, we conclude that the ranges described in King are not so broad as to make the genus-species analogy apt. Although the Examiner cited the broadest range described in King ( 10 nm - 1000 µm), paragraph 21 of King states that in some embodiments, the size range for a particular surface feature might be several orders of magnitude smaller, e.g., 10 µm - 1000 µm. See also King i-f 22. Finally, Appellants place undue and unwarranted weight on the failure of the prior art to disclose the parameters GI and G2. According to the '549 Application's Specification, Appellants developed their definition of G 1 and G2 based upon the effects of changing the various dimensions upon the stress distribution in the metal plates. Spec. 6. In other words, Appellants have simply defined a parameter based upon the physical properties of a solid material and then the correlation between that parameter and other physical properties of the material. See, e.g, Figs. 4, 6, 10-12. While such 6 Appeal2016-007569 Application 14/232,549 work may be interesting and potentially revealing, it does not confer patentability. See, e.g., In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) ("[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art."). As the Federal Circuit has explained: This court ... reaffirms that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case. In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (in bane). Second, in the alternative, Appellants argue that they have presented sufficient evidence of unexpected results to rebut any prima facie case that the Examiner may have established. Appeal Br. 8 - 9. For the following reasons, we are not persuaded that Appellants have presented sufficient evidence of an unexpected result to rebut the Examiner's prima facie case of obviousness. We begin by noting that claims 1 and 6 embrace a plate made of any metal. See claim 1 (specifying "a metal flat plate material"); claim 6 (specifying "a metal flat plate material"). The data described in the '549 Application's Specification, however, is based upon experiments "with an example in which a titanium material is used as a flat plate material 1." Spec. 2-3. Moreover, Figure 6--the figure used to establish the upper limit of the claimed range for G 1-is based upon a series of experiments in which only the formation height is varied. See id. at 7. Thus, there is no evidence 7 Appeal2016-007569 Application 14/232,549 that changes in G 1 due to variation in the recess width or the pitch would have the same effect on the press formability score. Appellants' evidence of allegedly unexpected results is also insufficient because Appellants have not presented sufficient evidence that the results they have observed would have been considered unexpected by a person of ordinary skill in the art at the time of the invention. For example, as shown in Figure 6, the press formability score decreases in a linear fashion as the value of G 1 increases. There is no discontinuity in this linear decrease when G 1 is equal to 85 µm, which Appellants choose as the upper limit for the claimed range of G 1 values. According to the Specification 85 µm is selected as the upper limit because this is the point when the press formability score equals 1. Spec. 7. This, however, is an artifact of the way the press formability score is determined. According to the Specification, the press formability score is defined as the normalized maximum depth of an indentation that can be made before necking occurs. Id. The Specification states that "[t]he inventors have confirmed that, when the press formability score is equal to or greater than 1, press-forming can be reliably performed while the occurrence of necking is prevented." Id. The Specification goes on to state: As illustrated in Fig. 6, as the shape parameter G 1 increases, the press formability score decreases. However, when the shape parameter G 1 is equal to or smaller than 85 µm, the press formability score can be equal to or greater than 1. Thus, the occurrence of necking can be prevented. That is, when the shape parameter G 1 is equal to or smaller than 85 µm, the current of necking can be prevented, and accordingly, a decrease in press formability can be avoided. Id. The Specification, however, provides no guidance, explanation, or reasoning as to why the amount of indentation that can be made without 8 Appeal2016-007569 Application 14/232,549 necking when G 1 is in excess of 85 µm is too small to be useful. The disclosure in Appellants' Specification provides no reasoned basis for determining that, for example, the amount of indentation possible without necking when G 1 equals 100 µm is too small. Thus, the Specification provides no reason for a person of ordinary skill in the art not to pick the amount of indentation that occurs at G 1 equals 100 µm as the basis for normalization and to set 100 µm as the upper limit of the claimed range of GI. In sum, Appellants' evidence of unexpected results is insufficient to rebut the prima facie case of obviousness. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1, 3, 5-7, and 9-14. 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 9 Copy with citationCopy as parenthetical citation