Ex Parte Shimizu et al

Patent Trial and Appeal Board

Mar 29, 2017

12717594 (P.T.A.B. Mar. 29, 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.
12/717,594 03/04/2010 Takafumi Shimizu Q117822 3121
65565 7590
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
EXAMINER
MACCHIAROLO, PETER J
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAFUMI SHIMIZU, TOSHIO OHIKE, and
TOSHIAKI FUKUHARA
Appeal 2015-005687
Application 12/717,5941
Technology Center 2800
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—3, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments on
March 16,2017.
We affirm.
1 Appellants identify Yazaki Corporation as the real party in interest. App.
Br. 2.
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Application 12/717,594
THE INVENTION
The disclosed and claimed invention is directed to a “fluid level
detection device adapted to detect a fluid level of a bio fuel.” Spec. 11.
Claim 1, reproduced below with the disputed limitation emphasized,
is illustrative of the claimed subject matter:
1. A fluid level detection device comprising:
a float which floats in a bio fuel and changes its position
in accordance with a change in height of a surface of the bio fuel;
a float arm coupled to the float at one end thereof; and
a sensor which detects a rotating amount of the float arm
that rotates in accordance with a change in position of the float,
wherein the sensor includes:
a circuit board on which a resistor is disposed; and
a sliding contact coupled to the other end of the float arm
so as to rotate in accordance with a rotation of the float arm, and
that has a contact portion, an electrical connecting position of the
contact portion with respect to the resistor on the circuit board
being changed in accordance with a rotation of the sliding contact
to detect the rotation amount of the float arm based on an
electrical potential difference between voltages applied to the
resistor and the contact portion;
wherein the float arm is made of a stainless steel based
material;
wherein the contact portion of the sliding contact and a
metallic piece extended from the contact portion are made of
nickel silver, and a Ni plating layer is applied to surfaces of the
contact portion and the metallic piece; and
wherein a current of 10 ms to 15 ms per cycle is supplied
to the resistor and the contact portion.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Kawaguchi’592 US 2008/0295592 A1 Dec. 4, 2008
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Kawaguchi ’3762 US 2009/0000376 A1 Jan. 1, 2009
Harper, Charles, Electronic Materials and processing Handbook (3d ed.
2004) (hereinafter “Harper”)
REJECTIONS
Claims 1—3 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Applicant Admitted Prior Art (hereinafter “AAPA”)3 in
view of Kawaguchi ’376, Kawaguchi ’592, and Harper. Final Act. 4—9.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We do not consider arguments that Appellants could have made but chose
not to make in the Briefs so that we deem any such arguments as waived.
See 37 C.F.R. § 41.37(c)(l)(iv); see also 37 C.F.R. § 41.47(e)(1) (“At the
oral hearing, appellant may only . . . present argument that has been relied
upon in the brief or reply brief. . . .”); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). We are not persuaded by Appellants’
arguments regarding claims 1—3, and we incorporate herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 4—9), and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellants’
2 In the Final Action, the Examiner refers to Kawaguchi ’376 as Kawaguchi.
3 The Examiner identifies Figures 5 and 6 and Paragraphs 7, 10-12, and 38
as AAPA. Final Act. 4—5.
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arguments (Ans. 2—8). We incorporate such findings, reasons, and rebuttals
herein by reference unless otherwise noted. However, we highlight and
address specific findings and arguments for emphasis as follows.
Appellants argue because “the record is completely devoid of
anything that would lead one to believe that Ni plating is useful for
improving corrosion performance in a biofuel environment,” the Examiner
erred in relying on Haprer for teaching the use of Ni plating. App. Br. 4—6.
According to Appellants, Harper’s teaching of the general ability of nickel
plating to improve corrosion performance in general is not a teaching or
suggestion to use it in a biofuel environment. App. Br. 4—5.
The Examiner finds “Harper teaches that nickel plating improves
corrosion performance.” Final Act. 6 (citing Harper 6.12—6.14); see also
Ans. 4 (“As discussed above, the use of nickel plating to improve corrosion
performance in general has been taken to be admitted prior art and is
disclosed in Harper.”). The Examiner further finds Kawaguchi ’376
“discloses nickel plating providing corrosion resistance in a biofuel, or
ethanol, environment.” Ans. 4; see also Ans. 3 (“Furthermore, Kawaguchi
[’376] discloses nickel plating in such a biofuel environment to prevent
corrosion (see [0019] and [0048] disclosing nickel plating preventing the
dissolution of an underlying layer in an environment containing the biofuel
ethanol).”).
We are not persuaded by Appellants’ argument that there is something
special about the biofuel environment that would require a specific teaching.
Attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
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1405 (CCPA 1974) (attorney argument is not evidence). Because
Appellants have not presented any evidence that a person of ordinary skill in
the art would not consider a general teaching about corrosion resistance
when considering a biofuel environment, the unsupported attorney argument
is not sufficient to persuade us the Examiner erred.
Instead, we find the Examiner’s findings are supported by the
evidence of record. Specifically, Harper teaches that nickel plating is “most
often applied to improve corrosion performance of industrial equipment.”
Harper 6.12. Additionally, Kawaguchi ’376 expressly teaches using nickel
plating in a biofuel environment:
Here, it is preferable that, the copper alloy is nickel silver
for a spring or phosphor bronze for the spring. The nickel silver
for the spring or the phosphor bronze for the spring is prevented
from a dissolving of copper by the plated nickel or the plated
gold. . . .
In a further modified example, the contact spring 26 can
be made of copper alloy such as nickel silver for a spring and
phosphor bronze for a spring, in which case nickel or gold
having a low reactivity with an electrolyte is plated on the
surface of the contact spring 26 so as to prevent the dissolving
of copper and copper alloy.
Kawaguchi ’376 19, 48 (emphases added).
In this regard, we are guided by the Supreme Court’s decision in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Supreme Court
held that “if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” 550 U.S. at 417. Additionally, “[t]he
combination of familiar elements according to known methods is likely to be
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obvious when it does no more than yield predictable results.” Id. at 416; see
also id. at 417 (“If a person of ordinary skill [in the art] can implement a
predictable variation, § 103 likely bars its patentability.”). Appellants have
not offered any evidence demonstrating that it would have been “uniquely
challenging or difficult for one of ordinary skill in the art” to use the nickel
plating used to prevent corrosion of some components in a biofuel
environment to prevent other components in the same environment from
corrosion. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Accordingly, we
determine the Examiner’s findings are supported by a preponderance of the
evidence.
Appellants also argue the “rejection is based impermissible
hindsight.” App. Br. 6—7. Appellants argue, because Kawaguchi ’592
already provides a solution to the corrosion problem by using stainless steel,
a person of ordinary skill in the art would not have modified Kawaguchi
’592 to provide a Ni plating layer as taught by Harper. App. Br. 6.
The Examiner finds the person of ordinary skill in the art would have
combined the various teachings of the prior art. Final Act. 4—7; Ans. 6.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citations omitted), cited with approval in KSR, 550 U.S. at 418. The
requirement for a reason to combine the reference acts as a check on the
potential for the improper use of hindsight. See Plantronics, Inc. v. Aliph,
Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated
reasoning “is especially important to guard against the dangers of hindsight
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bias”). Although Appellants contend that the Examiner has engaged in
hindsight reconstruction, Appellants do not persuasively address the
reasoning provided by the Examiner. See Final Act. 4—7; Ans. 6. Instead,
we agree with the Examiner’s reasons for the combination of the teachings
and, accordingly, are not persuaded by Appellants’ argument that the
Examiner impermissibly used hindsight.
We are also not persuaded by Appellants’ argument directed to
Kawaguchi ’592 teaching a different solution to the corrosion problem. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421. Such a person of ordinary skill would
not stop at a single solution but would also consider whether the prior art
contains alternate solutions to the problem that might, in some manner, be
superior. See KSR, 550 U.S. at 417 (“When a work is available in one field
of endeavor, design incentives and other market forces can prompt variations
of it, either in the same field or a different one.”). Accordingly, based on the
record in this case, Appellants’ argument does not persuade us the Examiner
erred.
Finally, Appellants argue “that the art of record simply fails to teach
or suggest anything about the contact portion of the sliding contact and the
metallic piece extended from the contact portion being susceptible to
corrosion in a biofuel environment.” App. Br. 7. Accordingly, Appellants
argue, the Examiner erred in finding a person of ordinary skill in the art
would have applied nickel plating to the contact portion and the metallic
piece. App. Br. 7—9; Reply Br. 4—8.
The Examiner finds “a person having ordinary skill in the art at the
time the invention was made would be motivated to utilize nickel plating to
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improve the corrosion performance of components, such as those listed
above, that are susceptible to corrosion.” Final Act. 7. The Examiner
further finds the prior art teaches of the potential for corrosion in a biofuel
environment. Ans. 7 (citing Kawaguchi ’376 15; Kawaguchi ’592 | 6).
Our reviewing court guides that “the question under 35 [U.S.C. §] 103
is not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807-08 (Fed. Cir. 1989). Moreover, “[e]very patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that [which is] disclosed. . . .” In re Bode, 550 F.2d 656, 660
(CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)).
Those persons “must be presumed to know something” about the art “apart
from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Additionally, the skilled artisan is “[a] person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421. Furthermore, there is no
requirement in an obviousness analysis for the prior art to “contain a
description of the subject matter of the appealed claim in ipsissimis verbis.'”
In re May, 574 F.2d 1082, 1090 (CCPA 1978) (emphasis added).
The prior art teaches of the potential to corrosion in a fuel
environment. For example, Kawaguchi ’376 teaches that “[w]hen such a
liquid level detecting apparatus is immersed in an electrolyte or gasoline
containing an electrolyte, there has been encountered a problem that the
sliding body made of the copper alloy reacts with the electrolyte, and is
corroded.” Kawaguchi ’376 1 5. The prior art also teaches the potential for
corrosion when using a biofuel:
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Alcohol-based fuel such as bio-ethanol is an electrolytic liquid,
and when the sliding contact surfaces of the resistor and the
contact element 114 of the sensor 102 are exposed to the
electrolytic liquid, an electrochemical reaction such as
electrolytic corrosion is produced on the sliding contact surfaces
as the voltage is applied thereto, as a result of which the sliding
contact surfaces are deteriorated, and this raises the contact
resistance at the contact portion, interrupting an accurate
measurement.
Kawaguchi ’592 | 6.
Because of this general teaching of the potential for corrosion in a
biofuel environment, we agree with the Examiner that a person of ordinary
skill in the art would have sought to prevent the corrosion of all parts,
including the contact portion and the metallic piece. No specific express
teaching or suggestion in the prior art to modify the contact portion and the
metallic piece is required. See KSR, 550 U.S. at 415 (rejecting strict
application of the TSM test). Instead, as the Supreme Court stated, we “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.” Id. at 418. Therefore, we are not persuaded
by Appellants’ argument that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of dependent claims 2 and 3, which are not separately
argued.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—3.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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