Ex Parte SATO et al

Patent Trial and Appeal BoardAug 1, 2017

14138602 (P.T.A.B. Aug. 1, 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. 14/138,602 12/23/2013 Akinobu SATO P44988 7967 7055 7590 08/03/2017 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER AUER, LAURA A ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 08/03/2017 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKINOBU SATO, AKIKO SUZUKI, and TAKESHI KAWANO Appeal 2016-003214 Application 14/138,602 Technology Center 1700 Before GEORGE C. BEST, WESLEY B. DERRICK, and JEFFREY R. SNAY, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—9 of Application 14/138,6021 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 7, 2015). Appellant2 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. 1 The ’602 Application is related to Application 13/008,639, which was the subject of our decision in Ex parte Sato, Appeal 2015-003586, (October 19, 2016) (available at http://bit.ly/2eKFiVZ). 2 Appellant is the Applicant—Japan Aviation Electronics Industry, Ltd.— who also is identified as the real party in interest. Appeal Br. 3. Appeal 2016-003214 Application 14/138,602 For the reasons set forth below, we reverse. BACKGROUND The ’602 Application describes a surface structure for a slide part such as a mold. Spec. 11. A method for creating the surface structure is also described. Id. Claim 1—the ’602 Application’s sole independent claim—is representative of the claims on appeal and reproduced below from the Claims Appendix to the Appeal Brief: 1. A slide part comprising at least one surface structure among a first surface structure in which a first periodic structure with a period of 10 nm to 100 nm inclusive and a depth of 5 nm to 50 nm inclusive is formed on a second periodic structure with a period of 100 nm to 1000 nm inclusive and a depth of 20 nm to 500 nm inclusive, a second surface structure in which the first periodic structure is formed on a third periodic structure with a period of 1000 nm to 10000 nm inclusive and a depth of 100 nm to 3000 nm inclusive, and a third surface structure in which the first periodic structure is formed on the second periodic structure and the second periodic structure is formed on the third periodic structure. Appeal Br. 23 (paragraphing and indentation added). 2 Appeal 2016-003214 Application 14/138,602 REJECTION On appeal, the Examiner maintains the following rejection: 1. Claims 1—9 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Saruwatari3 and Ishida.4 5Final Act. 2. DISCUSSION Appellant only presents substantive arguments for reversal of this rejection with respect to claim 1. See Appeal Br. 10—20. Claims 2—9 are alleged to be patentable based upon their dependence from allegedly nonobvious independent claim 1. Id. at 20. Thus, we select claim 1 as representative of the claims on appeal and limit our discussion accordingly. Claims 2—9 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). In rejecting claim 1, the Examiner found that Saruwatari describes the third periodic structure, but neither describes nor suggests the second periodic structure. Final Act. 3. The Examiner further found that Ishida describes a sliding member comprising “extremely minute” concavities formed in “minute” concavities at the sliding face of the sliding member. Id. (citing Ishida Figures 25 and 27,1216). Based upon these findings, the Examiner concluded that [t]he references, however, do not disclose the claimed period and depth of the extremely minute concaves[5] (first periodic 3 US 2009/0317654 Al, published December 24, 2009. 4 US 2009/0092796 Al, published April 9, 2009. 5 We note that Ishida, the Examiner, and Appellants each use the adjective “concave” as a noun. This is an error. “Concave” is an adjective, and the corresponding noun is “concavity.” See Webster’s Ninth New Collegiate 3 Appeal 2016-003214 Application 14/138,602 structures). However, wherein the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, absent a showing of criticality. MPEP 2144.05 II. As such, it would have been obvious to one of ordinary skill in the art to adjust the number of minute concaves (i.e. period) and the depth of the concaves formed between the convexities of Saruwatari in order to improve the retention and the absorption of the lubricating oil stored between the convexities. Id. at 4—5. Appellant argues that “there is no evidence on record that it is common knowledge for one having ordinary skill in the art at the time of the present invention that the variables-to-be-optimized regarding the smaller concaves which are formed on the larger concaves are a ‘period’ and a ‘depth.’” Appeal Br. 18. In response, the Examiner argues that Ishida’s disclosure suggests optimization. Answer 5. The Examiner’s argument is unpersuasive. Ishida suggests optimizing the properties of the mixed projection particles 441 to optimize formation of a transfer layer primarily composed of calcium oxide left on the sliding member surface by the mixed projection particles. Ishida is silent regarding adjustment of the depth and periodicity of the extremely minute concavities. See Ishida 1239. In the alternative, the Examiner found [i]t is expected that the depth of the extremely minute concavities of Ishida overlap the claimed depth of the first periodic structures given the depth must be less than 1 pm (less than the diameter of the projection particle, which equals 1 pm or less). Although Ishida does not specifically disclose the claimed period of the Dictionary 271 (1989) (identifying concave as an adjective and defining concavity as “a concave line, surface, or space”). For the sake of clarity, we note this error here and will not identify each additional occurrence thereof. 4 Appeal 2016-003214 Application 14/138,602 first periodic structures, it would have been obvious to one of ordinary skill in the art to optimize the number of projection particles used and therefore the spacing/period of the extremely minute concaves in order to ensure improved oil retention and reduced wear. Answer 5—6. This alternative rationale also is unpersuasive. This rationale is based upon the Examiner’s assumption that the period of the extremely minute concavities described in Ishida is equal to or less than the diameter of the particles used to create them. See id. This argument is unpersuasive because a person of ordinary skill in the art would understand that the arrangement of minute and extremely minute concavities shown in Ishida’s Figure 27 is not idealized depiction and is not necessarily produced by the methods described in Ishida. As shown in Figure 26, Ishida forms the minute and extremely minute concavities by spraying mixed projection particles 441 at the surface of the sliding member. Thus, the carrier beads 440 will impact the surface in a random fashion. Projection particles 411—whether or not they are associated with a carrier bead 440 to form a mixed projection particle 441— also will strike the surface in a random distribution. Due to the random nature of the location of the minute and extremely minute concavities in Ishida, the Examiner erred by finding that a person having ordinary skill in the art would have understood Ishida to be suggesting an arrangement of extremely minute concavities directly adjacent to each other or having regular periodicity. We, therefore, reverse the rejection of claim 1 of the ’602 Application. Accordingly, we also reverse the rejection of dependent claims 2—9. 5 Appeal 2016-003214 Application 14/138,602 CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1—9 of the ’602 Application. REVERSED 6