Ex Parte Koyata et al

Patent Trial and Appeal BoardDec 11, 2012

11121937 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ATSUSHI KOYATA and TAKAAKI SORIN __________ Appeal 2011-001480 Application 11/121,937 Technology Center 1600 __________ Before LORA M. GREEN, ERICA A. FRANKLIN, and RAMA G. ELLURU, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner‟s rejection of claims 1, 2, and 19. 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 3-5, 9, 10, 13, and 15-18 are also pending, but stand withdrawn from consideration (Supplemental Appeal Brief filed September 30, 2009 (hereinafter, App. Br.) 2). Appeal 2011-001480 Application 11/121,937 2 STATEMENT OF THE CASE Claim 1 is representative of the claims on appeal, and reads as follows (emphasis added): 1. A magnetic material comprising a plurality of magnets that are arranged in contact one with another in parallel to a direction of magnetization in such a manner that south and north poles of adjacent magnets are reversed alternately, wherein the magnetic material has at least one peak of a magnetic force of 600 gausses or more in a magnetic pole surface. The following ground of rejection is before us for review: Claims 1, 2, and 19 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by Chen 2 or Somogyi 3 as combined with Li 4 (Ans. 3). We affirm. ANALYSIS According to the Specification, the “invention relates to a magnetic material for collecting magnetic particles, a method of collecting magnetic particles using the magnetic material, and an apparatus for using the magnetic material” (Spec. 1). The Specification thus teaches “a magnetic material for collecting magnetic particles, the magnetic material including a plurality of magnets that are arranged in contact one with another in parallel to a direction of magnetization in such a manner that south and north poles of adjacent magnets are reversed alternately” (id. at 3). 2 Chen et al., US 6,132,607, issued Oct. 17, 2000. 3 Somogyi et al., US 6,292,680 B1, issued Sep. 18, 2001. 4 Li et al., US 4,988,618, issued Jan. 29, 1991. Appeal 2011-001480 Application 11/121,937 3 According to the Specification: The magnetic material of the present invention can be produced by arranging a plurality of the above-mentioned magnets in contact with each other in parallel to the direction of magnetization in such a manner that the south and north poles of adjacent magnetic poles are reversed alternately. Even when a space is present between the magnets, the magnets are considered to substantially contact with each other as long as the magnetic material is constituted integrally and the desired magnetic force is sufficiently obtained. The term “in contact” in the present invention includes the case in which the magnets substantially contact each other in this manner. However, it is preferable that no space is present between the magnets. (Id. at 10 (emphasis added).) The Specification teaches further: In contrast, in the case of the magnetic material of the present invention, a plurality of magnets are arranged in parallel to the direction of magnetization in such a manner that the south and north poles of adjacent magnets are reversed alternately. Thus, it is found that strong magnetic force can be obtained at the sites where the magnets contact each other in the magnetic material (hereinafter, this being also referred to as “layered portion”) and the magnetic force is weak in the central portion of each magnet. That is, in the single magnet-magnetic material, a strong magnetic force can be obtained only at the end portion of the magnet in a pole surface having a certain fixed area. In contrast, the magnetic material of the present invention has such a feature that strong magnetic force is obtained at a plurality of sites of the pole surface of the magnetic material since a plurality of the magnets are layered to constitute the magnetic material. In other words, the magnetic material of the present invention has at least one peak of magnetic force in the pole surface. “Having a peak” means that the magnetic force at a point in the magnetic pole surface is greater than the magnetic forces at points on both sides of the Appeal 2011-001480 Application 11/121,937 4 above-mentioned point in the cross-sectional direction of the magnets, with this point being called a “peak”. (Id. at 8-9.) The Examiner‟s rejects claims 1, 2, and 19 as being rendered obvious by Chen or Somogyi as combined with Li (Ans. 3-4). Claims 2 and 19 stand or fall with claim 1 (App. Br. 4). As we agree with the Examiner‟s finding and conclusions, we adopt them as our own. Appellants argue that the combination based on Chen does not teach the claim 1 requirement that the “plural magnets be arranged „in contact one with another‟” (id. at 5). Appellants acknowledge that Chen states at columns 3 and 9 that the magnets “can be arranged „in contact with one another‟” (id. at 6). Appellants assert, however, that Figure 1 of Chen “unequivocally demonstrates that what Chen means by „in contact with one another‟ is, at best, that the magnetic fields of his individual magnets are „in contact with one another‟ as the individual magnets 27 themselves in Figure 1 of Chen are clearly physically separate from one another when arranged in channel 25” (id.). Appellants‟ arguments are not convincing. Claim 1 requires “a plurality of magnets that are arranged in contact one with another.” As defined by the Specification, “contact” as used in the claim does not require direct contact, but encompasses situations in which there may be space between the magnets, but the desired magnetic force is obtained (see Spec. 10). That definition of “contact” does not exclude Appellants‟ characterization of the Chen reference. Appeal 2011-001480 Application 11/121,937 5 Moreover, we disagree with Appellants‟ characterization that Chen does not teach magnets that are not in direct contact with one another. Figure 1 of Chen, relied upon by Appellants, is reproduced below. Figure 1 of Chen is a “perspective view of the magnetic system” taught by Chen (Chen, col. 8, ll. 48-49). As characterized by the Appellants, Figure 1 demonstrates that magnets 27 have a space between them in channel 25. Chen specifically teaches that the “magnets are arranged on one side of the channels and are in contact with one another to create a magnetic field” (id. at col. 3, ll. 38-40). Further, in describing Figure 1, Chen specifically states that “[t]he magnets 27 are in contact with one another” (id. at col. 9, ll. 20-21). “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson- Halberstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951, 956 (Fed. Cir. Appeal 2011-001480 Application 11/121,937 6 2000) (holding that the drawings could not be relied upon to construe whether the term “central longitudinal groove” required that the width of the groove be less than the combined width of the fins). “Ordinarily drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention claimed therein and do not define the precise proportions of elements relied upon to endow the claims with patentability.” In re Olson, 212 F.2d 590, 592 (CCPA 1954). In this case, given Chen‟s explicit teaching that the magnets are in touch with each other, the ordinary artisan would understand that Figure 1 is illustrative of the invention, but does not describe the precise proportions. Thus, the fact that some space can be seen between the representations of the magnets (element 27) in Figure 1 does not obviate the specific teaching of the disclosure of Chen that the magnets are in contact with one another. Similarly, as to the rejection as it is based on Somogyi, Appellants assert that “[w]hile the fields of the magnets interact, Somogyi is quite careful in describing the first and second magnets as being „in close proximity‟ to one another (see, for example, column 2, lines 24-26 and lines 46-54)” (App. Br. 7). That argument is not found to be convincing, because, as discussed above, “contact” as defined in the Specification does not exclude that there is space between the magnets. That definition of contact, therefore, does not exclude the configuration of Somogyi, wherein the magnets are in close proximity to one another. Appellants argue further that claim 1 describes “a magnet arrangement that is quite different from anything disclosed or suggested” by the prior art of record, as arranging the magnets in contact with one another Appeal 2011-001480 Application 11/121,937 7 “provides a unique distribution of strong magnetic forces” (id. at 7-8 (citing Spec. 9 and Fig. 8)). According to Appellants, the “magnetic materials according to the present invention having at least one peak of a magnetic force of 600 gausses or more in a magnetic pole surface are superior for collecting magnetic particles in, e.g[.], an immunoassay while similar materials not including at least one peak of 600 gausses or more are substantially inferior” (id. at 8-9). Appellants‟ arguments are not convincing. As argued by Appellants and as set forth at pages 8-9 of the Specification (set forth above), it is arranging the magnets in contact with one another that allows for the unique distribution of the magnetic forces. But as discussed above, both Chen and Somogyi teach the configuration of magnets required by claim 1. As to the limitation of “wherein the magnetic material has at least one peak of a magnetic force of 600 gausses or more in a magnetic pole surface,” the Examiner relies on Li for teaching a configuration of magnets that are arranged such that the poles of adjacent magnets are alternated, which results in an increase in the magnetic field from 500-600 Gauss to 1400- 1600 Gauss. We note further that Appellants have not pointed out how the Examiner‟s fact finding as to Li is in error. Appeal 2011-001480 Application 11/121,937 8 SUMMARY We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as being rendered obvious by Chen or Somogyi as combined with Li. Claims 2 and 19 fall with claim 1. TIME PERIOD FOR RESPONSE 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 cdc