Ex Parte Fujii et al

Patent Trial and Appeal Board

Apr 20, 2018

14232549 (P.T.A.B. Apr. 20, 2018)

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
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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.
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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
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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
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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
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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
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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
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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
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