Ford Global Technologies, LLC

Patent Trials and Appeals BoardMay 10, 2021

2020002032 (P.T.A.B. May. 10, 2021)

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. 14/867,065 09/28/2015 Wanfeng LI 83575085 1015 28395 7590 05/10/2021 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER LIANG, ANTHONY M ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 05/10/2021 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WANFENG LI Appeal 2020-002032 Application 14/867,065 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON REHEARING Appellant1 requests rehearing of a Decision on Appeal mailed March 2, 2021,2 affirming the Examiner’s decision rejecting claims 1, 2, 7–10, 18, 20, and 23–25. A Request for Rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. 1 We use the word “Appellant” to refer to “applicant” as defined in 3 7 C.F.R. § 1.42. Appellant identifies Ford Global Technologies, LLC as the real party in interest. Supplemental Appeal Brief filed July 30, 2019, 1. 2 Hereinafter, “Decision.” In re Li, Appeal No. 2020-002032 (Mar. 02, 2021). Appeal 2020-002032 Application 14/867,065 2 Arguments not raised and evidence not previously relied upon in the briefs before the Board are not permitted in a Request except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See 37 C.F.R. § 41.52(a)(1) (2018). We have reconsidered the Decision in light of Appellant’s comments in the Request for Rehearing filed April 30, 2021,3 and find no points misapprehended or overlooked in the disposition of the affirmed rejections, and in particular, the obviousness rejection. We remain of the opinion that the subject matter of the claims listed in the affirmed rejections is unpatentable. I. The Board’s Decision affirmed the Examiner’s rejection of claim 18 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement (Decision 3–7); affirmed the Examiner’s rejection of claims 7, 8, 18, and 23 under 35 U.S.C. § 112(b) as indefinite (id. at 7–8); and affirmed the Examiner’s rejection of claims 1, 2, 7–10, 18, 20, and 23–25 under 35 U.S.C. § 103 as unpatentable over Marinescu in view of Endo and Komuro (id. at 8–17). In the Request, Appellant submits that the Board erred in the flawed application of equivalency. Request 1. Appellant asserts that although no reference discloses a combination of AlF3 and CaF2 in the claimed proportions, the Decision concludes that such would have been obvious based on a flawed rationale for equivalence. Id. Appellant contends that the cited references never recognize that AlF3 is suitable for mixtures, let alone an equivalent for specific components of the binary mixtures of Marinescu 3 Hereinafter, “Request.” Appeal 2020-002032 Application 14/867,065 3 and Endo. Id. at 2. Appellant further contends that even if CaF2 and AlF3 are known equivalents in the prior art, this fact does not justify combining these compounds in a mixture. Id. According to Appellant, “[c]ompounds known to be substitutes for a specific purpose on a unitary basis are not thus substitutes or equivalents in a binary system.” Id. Appellant explains that merely because silica may be an adequate substitute for carbon in steel does not make ferrosilicon an adequate substitute or equivalent for steel. Id. II. We are not persuaded that our Decision misapprehended the teachings of the applied prior art with regard to equivalence, nor that the Decision misapplied the prior art teachings to arrive at the conclusion of obviousness. The Decision notes that the Examiner found that Endo teaches a high resistance magnet including a mixture of fluorides of Li, Na, Mg, and Ca for increasing the electrical resistance of a rare earth magnet and that Komuro teaches a magnet with a high resistance layer comprising a fluorine compound and one or more alkali metals, including LiF, MgF2, CaF2, and AlF3. Decision 9. The Decision further notes that the Examiner concluded that it would have been obvious to use a mixture of CaF2 and AlF3, as one possible combination of fluoride compounds, for increasing electrical resistance of Marinescu’s insulating layer because both Endo and Komuro teach that these compounds are known equivalents for this purpose. Id. Moreover, the Decision finds that, although neither Endo nor Marinescu express a preference for mixtures of fluoride compounds in an insulating layer, both references nonetheless contemplate the possibility of mixtures within the scope of their disclosures. Id. at 12. The Decision also finds that Appeal 2020-002032 Application 14/867,065 4 Marinescu, Endo, and Komuro all disclose that fluorides, including CaF2, provide high resistance to layers on magnets, that Marinescu and Endo disclose that mixtures of fluorides also would provide this function, and Endo and Komuro teach a variety of other specific fluorides, including AlF[3], that also would provide this function, sufficiently establishes that these fluorides, including CaF2 and AlF3, are known equivalents in the prior art. Id. at 13. The Request fails to meaningfully address these findings, or otherwise identify reversible error in the Examiner’s findings and reasoning. The Request also fails to identify any support for the assertion that “[c]ompounds known to be substitutes for a specific purpose on a unitary basis are not thus substitutes or equivalents in a binary system.” Request 2. The Request proffers an example purporting to support this assertion, i.e., that ferrosilicon is not an adequate substitute or equivalent for carbon steel, but this example is based on the unsupported assumption that silica is an adequate substitute for carbon in steel. Further, if silica were an adequate substitute for carbon in steel, in the same way that the various fluorides listed by Endo and Komuro are known equivalent fluorides for use in insulating layers for magnets, then the resulting materials would still achieve a common function, although not necessarily with the same performance. The Request’s assertion does not explain whether silica and carbon have a known common function, nor identify this function, such that ferrosilicon would retain this function when silica is substituted for carbon. Absent such, the Request is not persuasive that the Decision misapplied equivalence between disclosed fluorides, including CaF2 and AlF3, or their appropriateness in mixtures thereof. Appeal 2020-002032 Application 14/867,065 5 III. The status of the rejections and claims remains as follows. Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 18 112(a) Enablement 18 7, 8, 18, 23 112(b) Indefiniteness 7, 8, 18, 23 1, 2, 7–10, 18, 20, 23–25 103 Marinescu, Endo, Komuro 1, 2, 7–10, 18, 20, 23–25 Overall Outcome 1, 2, 7–10, 18, 20, 23–25 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18 112(a) Enablement 18 7, 8, 18, 23 112(b) Indefiniteness 7, 8, 18, 23 1, 2, 7–10, 18, 20, 23–25 103 Marinescu, Endo, Komuro 1, 2, 7–10, 18, 20, 23–25 Overall Outcome 1, 2, 7–10, 18, 20, 23–25 IV. The Decision has been reconsidered in light of Appellant’s arguments set forth in the Request. However, the Request is denied, and the Decision is not modified in any respect. This Decision on the Request incorporates our Decision, mailed March 2, 2021, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). Appeal 2020-002032 Application 14/867,065 6 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED