Ex Parte UDA et al

Patent Trial and Appeal Board

Nov 27, 2017

14749745 (P.T.A.B. Nov. 27, 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.
947181 5688
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
14/749,745 06/25/2015
25191 7590 11/28/2017
BURR & BROWN, PLLC
PO BOX 7068
SYRACUSE, NY 13261-7068
Minoru UDA
11/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINORU UDA, TAKAHIRO ISHIKAWA,
TAIJI MIZUTA, YASUNARI MIZUTA,
and HIROYASU TANIGUCHI
Appeal 2017-004173
Application 14/749,745
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
SHELDON M. MCGEE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—8 and 11. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a copper alloy. Claim 1 is illustrative:
1. A copper alloy containing 5% by mass to 25% by
mass of Ni, 5% by mass to 10% by mass of Sn, 0.005% by
mass to 0.5% by mass of element A, said element A being at
least one element selected from the group consisting of Nb, Zr
and Ti, and 0.020% by mass or more of carbon, wherein the
mole ratio of the carbon to the element A is 10.0 or less.
Appeal 2017-004173
Application 14/749,745
Scorey
Ishida
The References
US 4,373,970 Feb. 15, 1983
US 2013/0333812 A1 Dec. 19, 2013
We reverse the rejections. We need address only the sole independent
claim, i.e., claim 1.
Rejection over Scorey
The Appellants’ claim 1 requires a copper alloy containing 0.020% by
mass or more of carbon.
Scorey discloses a copper alloy finished strip which especially
preferably contains about 5—25% Ni and about 8—11% Sn, and can contain
about 0.02-0.5% Nb and a small amount of Zr (col. 2,1. 56 — col. 3,1. 24).
Regarding impurities, Scorey discloses (col. 3,11. 29-40):
Conventional impurities may be tolerated in small amounts but
preferably are kept to a minimum. The oxygen and carbon
contents in the sintered strip of the process should be kept to
less than about 100 ppm each and preferably substantially zero;
the presence of larger amounts of oxygen and carbon results in
the formation of inclusions and other physical strip defects such
as blisters, all of which are detrimental to the mechanical
properties of the final strip product. Naturally, the oxygen and
carbon contents in the starting powder are therefore kept as low
as possible to implement the foregoing.
The Examiner states that “examiner does not try to increase carbon
content in alloy of Scorey” (Ans. 12) but, rather, “examiner merely said a
prima facie case of obviousness would exist where the claimed ranges and
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Application 14/749,745
prior art do not overlap but are close enough that one ordinary skilled in the
art would have expected them to have the same properties” (id.).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner does not establish that Scorey’s copper alloy’s 100 ppm
(0.01%) carbon is close enough to the Appellants’ copper alloy’s at least
0.02 mass% carbon that one of ordinary skill in the art would have expected
those alloys to have the same or substantially the same properties and,
therefore, would have had an apparent reason to include at least 0.02 mass%
carbon in Scorey’s copper alloy. Scorey, as pointed out above, indicates that
limiting the copper alloy strip’s carbon content to 0.01% avoids physical
strip defects such as inclusions and blisters.
Thus, the Examiner has not established a prima facie case of
obviousness of the claimed copper alloy over Scorey.
Rejection over Ishida
The Appellants’ claim 1 requires a copper alloy comprising 5—
10 mass % Sn, 0.005-0.5 mass% element A which is at least one of Nb, Zr
and Ti, and 0.020 mass% or more of carbon, wherein the mole ratio of
carbon to element A is 10.0 or less.
Ishida discloses a copper alloy comprising 3.0-29.5 mass% Ni, 0.5—
7.0 mass% A1 and 0.1—1.5 mass% Si, wherein “a total amount of 0.01 to
5.0 mass% of one or two or more elements selected from the group
consisting of Co, Ti, Sn, Cr, Fe, Zr, Mg and Zn can be contained as an
addition element” (|| 22, 86). “Since Co, Ti, Cr and Zr stabilize the f phase
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Application 14/749,745
and promote precipitation thereof, they contribute to improvement in the
strength, and since they also have the effect of decreasing a concentration of
a solute element in Cu, they also contribute to improvement in electrical
conductivity” (| 87). “Since Sn, Mg and Zn have the effect of improving
stress relaxation resistance property and, at the same time, dissolve in Cu,
they contribute to improvement in the strength” (| 88). “[W]hen a total
amount of addition elements exceeds 5.0 mass%, this contributes to
improvement in electrical conductivity and improvement in the strength, but
there is a problem that it becomes impossible to control electric property
such as electrical conductivity and the like, and mechanical property such as
a Vickers hardness and the like in a suitable range” (190). The copper alloy
“can further contain a total amount of 0.001 to 0.5 mass % of one or two or
more elements selected from the group consisting of C, P and B as an
addition element” (191). “C is thought to have the effect on miniaturization
of a crystal grain, and contributes to improvement in the strength. Further,
C reduces solid solubility of a solute element in Cu, and contributes to
improvement in electrical conductivity” (192).
The Examiner does not establish, either in the explanation of the
rejection (Ans. 6—8) or the response to arguments (Ans. 14), that one of
ordinary skill in the art, given Ishida’s disclosure that total amounts of Co,
Ti, Sn, Cr, Fe, Ar, Mg and Zn exceeding 5.0 mass% cause control of
electrical and mechanical properties in a suitable range to be impossible
(190), would have had an apparent reason, such as expecting the same
properties,1 to include in the copper alloy 5 mass% Sn (the minimum
1 As stated in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003), “[w]e
have also held that a prima facie case of obviousness exists when the
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Application 14/749,745
amount required to meet the Appellants’ claim 1 ’s Sn limitation) and 0.005—
0.5 mass% Ti and/or Zr (the amount required to meet the Appellants’
element A limitation), thereby raising the total addition element amount
above Ishida’s 5.0 mass% maximum. Moreover, the Examiner does not
establish that Ishida would have provided one of ordinary skill in the art with
an apparent reason to use a mole ratio of C to at least one of Zr and Ti of
10.0 or less.
The Examiner, therefore, has not established a prima facie case of
obviousness of the claimed copper alloy over Ishida.
DECISION/ORDER
The rejections of claims 1—8 and 11 under 35 U.S.C. § 103 over
Scorey and over Ishida are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
claimed range and the prior art range do not overlap but are close enough
such that one skilled in the art would have expected them to have the same
properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985).”
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