Ex Parte SagawaDownload PDFPatent Trial and Appeal BoardMay 31, 201712673937 (P.T.A.B. May. 31, 2017) Copy Citation 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. 2 Appeal 2015-007604 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. 3 Appeal 2015-007604 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 4 Appeal 2015-007604 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 5 Appeal 2015-007604 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 6 Appeal 2015-007604 Application 12/673,937 413, 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 7 Appeal 2015-007604 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 8 Appeal 2015-007604 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. 9 Appeal 2015-007604 Application 12/673,937 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 10 Copy with citationCopy as parenthetical citation