Ex Parte Sagawa

Patent Trial and Appeal Board

May 31, 2017

12673937 (P.T.A.B. May. 31, 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.
12/673,937 02/17/2010 Masato Sagawa 144076 2521
759025944
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
06/02/2017 EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATO SAGAWA
Appeal 2015-007604
Application 12/673,9371
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—18 in the above-identified application.2 A
hearing was held on May 9, 2017. We have jurisdiction pursuant to 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Intermetallics Co., Ltd.
See Reply Br. 2, Aug. 17, 2015. This is a change from the real party in
interest identified in the Appeal Brief. See id.', Brief on Appeal 1, Mar. 13,
2015 [hereinafter Appeal Br.].
2 Office Action, Oct. 14, 2014 [hereinafter Non-Final] (non-final rejection of
previously rejected claims); Examiner’s Answer, June 25, 2015 [hereinafter
Answer],
Appeal 2015-007604
Application 12/673,937
BACKGROUND
Appellant’s invention “relates to a method for making a NdFeB
sintered magnet.” Spec. 1. Independent claim 1 is representative:
1. A method for making a NdFeB system sintered
magnet which includes a process of:
filling a powder filling/sintering container (which will
hereinafter be referred to as a “mold”) with an alloy powder;
orienting the alloy powder with a magnetic field;
charging the whole mold into a sintering furnace; and
heating the alloy powder in the mold without applying
any mechanical pressure to the alloy powder to obtain a sintered
compact, wherein:
a shape of an internal space of the mold is
designed by taking into account a shape of a final product of the
NdFeB system sintered magnet; and
at least a part of an inside of the mold in which a
friction occurs with the sintered compact when the sintered
compact shrinks by the heating is made of at least one of a
carbonaceous extruded material, a graphite material, and a
carbon fiber reinforced-carbon matrix composite.
Appeal Br. Claims App. A-l. Claim 7, also independent, is a mold for
making a NdFeB system by essentially the same process as claim 1. See id.
at A-2. Claims 2—6 and 8—18 depend directly or indirectly on claims 1 or 7.
See id. at A-l—A-4. Pending claim 19 does not stand rejected, and is not part
of this appeal. Non-Final 3; Appeal Br. 5.
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Application 12/673,937
The Examiner maintains the following grounds of rejection:
I. Claims 1, 3—7, and 9-14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sagawa3 in view of Katashi.4 See Non-Final 3—
7.
II. Claims 2, 8, 15, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sagawa in view of Katashi and ASM.5 See Non-
Final 7—8.
III. Claims 16 and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sagawa in view of Katashi, ASM, and Dalian
Thrive Metallurgy.6 See Non-Final 8—9.
In the Appeal Brief, Appellant argues the claims as a group. See
Appeal Br. 7—16. Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv)
(2016), we limit our discussion to independent claim 1. Claims 2—18 stand
or fall with claim 1.
3 Sagawa et al., WO 2006/004014 A1 (published Jan. 12, 2006). Citations to
Sagawa are to the patent that issued from the corresponding U.S. national
stage application, US 8,545,641 B2 (issued Oct. 1, 2013). Non-Final 3.
4 Katashi et al., JP 2006-265601 A (published May 10, 2006). Citations to
Katashi are to a computer-generated English translation submitted by
Appellant. See Non-Final 3; Information Disclosure Statement, Mar. 31,
2010.
5 ASM International, Crystallography and Engineering Properties of
Ceramics: Graphite, in Engineered Materials Handbook Desk Edition
(1995), http://
products. asmintemational. org/hbk/ do/highlight/ content/VEM/D09/ A09/S00
77561.htm [hereinafter ASM],
6 Dalian Thrive Metallurgy Imp. & Exp. Co., Special Type of Graphite
(archived Dec. 9, 2012), https://
web.archive.org/web/20121209042224/http:// www.graphite-
electrode.com/special-graphite.html.
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Application 12/673,937
DISCUSSION
The Examiner finds that Sagawa teaches a method for making a
NdFeB system according to claim 1, except that Sagawa “does not specify
that at least a part of an inside of the mold is . . . selected from [the] group
consisting of a carbonaceous extruded material, a graphite material, and a
carbon fiber reinforced-carbon matrix composite.” Non-Final 4. However,
the Examiner finds that Katashi “teaches applying a carbon-fiber-reinforced-
carbon composite for [the] main parts of [a] sintering container . . . which
reads on the claimed mold.” Id. (citing Katashi Abstract). Therefore, the
Examiner determines that it would have been obvious to apply a carbon fiber
reinforced-carbon matrix composite of Katashi inside the mold disclosed by
Sagawa, because Katashi “teaches that applying carbon-fiber-reinforced-
carbon composite during sintering in a method of making a NdFeB system
magnet so as to reduce deformation of the rare earth-iron-boron powder and
reduce the variation in the magnetic properties of the sintered finished
product.” Id. at 4—5 (citing Katashi 19, Abstract).
The Examiner also finds that friction between the sintered compact
and the mold was a recognized phenomenon, so that “[i]t would have been
obvious to one of ordinary skill in the art to expect the claimed features of ‘a
friction occurring during heating’ would . . . naturally flow from [Sagawa] in
view of [Katashi].” Id. at 5.
Appellant argues that the claimed invention is “based on the new
discovery by the inventor of the present application that carbon does not
react with an alloy powder to a significant degree in the ultralow-oxygen
atmosphere that is generally used in a sintering process for a NdFeB
magnet.” Appeal Br. 7. Appellant agrees that Katashi “may broadly disclose
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Application 12/673,937
that an inside of the mold can be made of a carbon fiber reinforced-carbon
composite material.” Id. at 8. However, Appellant argues that the references
do not teach using this material for part of a mold where shrinking-related
friction occurs, while at the same time. See id. at 8—9. Appellant argues that
neither prior reference teaches the problem of friction resulting from such
shrinking. See id. at 9; see also Reply Br. 4—5.
Moreover, Appellant argues that the mold geometries of Sagawa and
Katashi are substantially different. See Appeal Br. 9; Reply Br. 5—6.
According to Appellant, Sagawa teaches that most if not all of the sintering
compact contacts the mold surfaces, whereas Katashi only suggests the use
of a carbon fiber reinforced-carbon matrix composite material on the bottom
surface of a mold, on which may rest the sintered compacts in a spaced-apart
fashion. See Appeal Br. 9-10; Reply Br. 5—6. Thus, Appellant argues that
Katashi does not teach the use of the composite material in areas where
friction would occur. See id. at 9—10.
Appellant also argues that Sagawa and Katashi are contradictory. See
id. at 10-13. According to Appellant, Katashi “expressly teaches that the
carbon-fiber-reinforced-carbon composite material used to form the mode
adversely reacts with the formed magnets, and that magnetic-properties
deterioration cannot be avoided unless the surface reacted with the carbon
materials is removed.” Id. at 11. Appellant states that in Katashi, “each of
the plate-like compacts of the magnet raw material powder comprising rare
earth elements stands on the bottom of the mold. As a result, the surface that
is reacted with the carbon materials must be removed, which [Katashi]
indicates can easily be conducted.” Id. However, Appellant argues that if
the mold were instead configured as in Sagawa, where most if not all of the
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Application 12/673,937
sintering compact contacts the mold surfaces, “one of ordinary skill in the art
would have expected that it would be necessary to remove a layer of the
sintered material from the entire outer surface of the sintered products,
because all of those outer surfaces would have been in contact with the mold
surface.” Id. at 12. According to Appellant, this “would not have been
desired in the art, as it would have been expected to increase production cost
and complexity.” Id. Thus, Appellant argues that a person of ordinary skill
in the art would have sought to minimize contact between the vessel surface
and the objects to be sintered, and would have been led away from using the
carbon fiber reinforced-carbon composite material of Katashi in the mold
disclosed by Sagawa. Id.', Reply Br. 6.
Appellant further argues that the cited references alone do not provide
any motivation to perform the method defined by claim 1, and that the
Examiner’s combination of Sagawa and Katashi is based solely on improper
hindsight. See Appeal Br. 13—15; see also Reply Br. 2—\. According to
Appellant, neither Sagawa nor Katashi teaches the combination of the two
references, and the only reason for combining them comes from Appellant’s
Specification. See Appeal Br. 14—15.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s rejection. First, a rejection does not rely on impermissible
hindsight unless the Examiner takes into consideration knowledge gleaned
from Appellant’s disclosure. See In re McLaughlin, 443 F.2d 1392 (CCPA
1971). Appellant has not persuasively shown that any part of the
Examiner’s rationale for combining Sagawa with Katashi is based on the
Specification, rather than on what would have been suggested by the
combined teachings of the references themselves, see In re Keller, 642 F.2d
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413, 425 (CCPA 1981), or the reasonable inferences, creative steps, or
routine steps that a person of ordinary skill would have made at the time of
Appellant’s invention, see Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). In particular,
while Sagawa does not itself teach a need for carbon fiber reinforced-carbon
matrix composite, the Examiner has persuasively shown that Katashi teaches
a reason for using this composite material in a mold in order to avoid
deformation, see Non-Final 4—5, and this rationale does not rely on the
Specification. Thus, the Examiner has established a prima facie case of
obviousness without reliance on impermissible hindsight.
Second, Appellant has not shown that Katashi teaches away from the
combination of a carbon fiber reinforced-carbon matrix composite with the
use of a mold as taught by Sagawa. While Sagawa teaches molds that
conform to at least the majority of the sintered compact during the sintering
process, claim 1 only requires that “a shape of an internal space of the mold
is designed by taking into account a shape of a final product of the NdFeB
system sintered magnet.” Appeal Br. A-l.
We apply to claim language “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification.” In re Morris, YU F.3d 1048,
1054 (Fed. Cir. 1997). The ordinary meaning of claim 1 does not limit the
size or specific shape of the internal part of the mold that is designed by
taking into account a shape of a final product, nor does the language of claim
1 limit what part of the shape of the final product the design takes into
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Application 12/673,937
account. In addition, claim 1 uses the term mold to refer to “a powder
filling/sintering container.” Appeal Br. A-l. Thus, the ordinary meaning of
claim 1 does not require a mold that conforms to any more than a single
portion or side of the sintered magnet, and we find nothing in the
Specification that would lead to a different interpretation. Therefore, the
broadest reasonable interpretation of the term mold may include a sintering
container, such as that disclosed by Katashi, in which there is less than full
contact on all sides between the mold and the sintered compact, including
where contact is limited to a single side. Further, claim 1 does not recite any
particular level of performance for the NdFeB system sintered magnet.
In light of this interpretation of claim 1, the preponderance of the
evidence on this record does not support Appellant’s argument that the prior
art teaches away from the combination of Sagawa and Katashi. Katashi
teaches that contact between a sintered compact and a carbon fiber
reinforced-carbon matrix composite mold may have an adverse effect on the
molded body surface. See Katashi 127. However, on this record, there is no
persuasive evidence of a teaching away grounded on contaminating carbide
on the molded body surface because the claim does not require a particular
level of performance or that carbon contamination be kept below a certain
specified level. Cf. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(“[T]he name of the game is the claim.”). Katashi merely identifies and
describes understood disadvantages of using carbon fiber reinforced-carbon
matrix composite as a mold material, but does not “criticize, discredit, or
otherwise discourage” the use of that material. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Further, Katashi also teaches that the resulting
“carbide generated [on] the molded body surface is easily removable,” at
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Application 12/673,937
least when using “container 1” (Fig. 1) in which the mold contacts the
sintered compact on one side. See Katashi 127. Moreover, to the extent
that removing carbide from multiple sides of a sintered material may be
more difficult than removing carbide from just one surface, Appellant has
not persuasively shown that this additional difficulty, if it was necessary to
remove surface carbide, would have outweighed the advantages of using
carbon fiber reinforced-carbon matrix composite as taught by Katashi. See
In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (finding that “one of
ordinary skill would have been motivated to pursue the desirable properties
taught by Wong, even if that meant foregoing the benefit taught by Gross.”).
In addition, Appellant has not pointed to any persuasive evidence
rebutting the Examiner’s determination, see Non-Final 5; Answer 4—5, that
the combination of Sagawa and Katashi would inherently result in heating-
related friction. We note that according to the Specification, friction
between the bottom of a sintered compact and the upper surface of a bottom
plate is the result of a slight reaction between the liquid phase of the NdFeB
alloy and the carbon of the mold during sintering. See Spec. 14. Thus, the
preponderance of the evidence on this record indicates that heating-related
friction would occur even in a configuration where the sintered compact
contacts the carbon fiber reinforced-carbon matrix material only at the
bottom surface of a mold.
For the above reasons, Appellant has not persuaded us that the
Examiner reversibly erred in rejecting claim 1. For the same reasons,
Appellant has not persuaded us of reversible error in the rejections of claims
2-18.
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DECISION
The Examiner’s decision rejecting claims 1—18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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