Toyota Motor Engineering & Manufacturing North America, Inc.

Patent Trials and Appeals Board

Jun 18, 2020

2019000923 (P.T.A.B. Jun. 18, 2020)

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.
13/921,878 06/19/2013 Michael Paul ROWE 415393US71 5767
22850 7590 06/18/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL PAUL ROWE
____________

Appeal 2019-000923
Application 13/921,878
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 2, 3, 7–12, and 15–17.3 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on June 11, 2020.4

1 This Decision refers to the Specification filed June 19, 2013 (“Spec.”);
Final Office Action dated Feb. 23, 2018 (“Final Act.”); Appeal Brief filed
July 23, 2018 (“Appeal Br.”); Examiner’s Answer dated Sept. 14, 2018
(“Ans.”); and Reply Brief filed Nov. 14, 2018 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies is Toyota Motor Engineering &
Manufacturing NA, as the real party in interest. Appeal Br. 1.
3 Claims 1, 4–6, 18, and 19 are cancelled and claims 13 and 14 are
withdrawn. Appeal Br. 15, 17, 18.
4 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to superparamagnetic core shell nanoparticles
having an iron cobalt ternary alloy core and a silica shell, and a magnetic
core produced with these nanoparticles. Spec. 1:10–13; Abstract.
Independent claim 7 illustrates the subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
7. A magnetic core, comprising:
superparamagnetic grains of an iron cobalt ternary
alloy; and
a matrix of silicon dioxide;
wherein
a diameter of the iron cobalt ternary alloy grain is
from 3 to 35 nm,
the third component of the ternary alloy is a
transition metal selected from the group consisting of
scandium, titanium, vanadium, chromium, manganese,
nickel, copper and zinc,
the magnetic core is superparamagnetic, and
the magnetic core is a monolithic structure having
a length dimension and a thickness dimension greater
than 1 mm obtained by a process comprising:
wet chemical precipitation of the iron cobalt alloy
grain;
coating of the grain with a silicon dioxide shell to
obtain a thermally untreated core shell nanoparticle having
a magnetic saturation (Ms); and
thermal annealing of the untreated core shell
nanoparticle to obtain the thermally annealed
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superparamagnetic core shell nanoparticle having a
magnetic saturation (TAMs);
wherein TAMs is equal to or greater than 1.25Ms and
sintering the thermally annealed core shell
nanoparticles under pressure to form the monolithic
structure of thermally annealed superparamagnetic core
grains of an iron cobalt ternary alloy directly bonded by
the silicon dioxide shells, which form a matrix.
Appeal Br. 15–16 (key disputed claim language italicized and bolded).
REJECTION
On appeal, the Examiner maintains (Ans. 3) the following rejection:
Claims 2, 3, 7–12, and 15–17 are rejected under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Ans. 3–4.
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejection based on the fact-finding and reasoning set forth in the Answer and
Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
The Examiner rejects claims 2, 3, 7–12, and 15–17 under
35 U.S.C. § 112 for lack of written description. Ans. 3–4. In response to the
Examiner’s rejection, Appellant presents argument for the patentability of
claims 2, 3, 7–12 and 17 as a group and claims 15 and 16 as a group.
Appeal Br. 4, 13. However, Appellant’s argument for the patentability of
claims 15 and 16 are substantially the same as raised for the patentability of
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claim 7. Therefore, we select claim 7 as representative and claims 2, 3,
8–12, and 15–17 stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(iv).
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
The Examiner determines that adequate written descriptive support is
not provided in the originally-filed Specification for “a monolithic structure
having a length dimension and a thickness dimension greater than 1 mm”
recitation of claim 7. Ans. 3–4. The Examiner finds that although the
Specification discloses “discs were produced that were 9 mm in diameter
and 2.5 mm thick” (Spec. 15:2–4), without more, such disclosure does not
reasonably convey to one skilled in the art that the inventor had possession
of the claimed subject matter at the time the application was filed. Id. at
3–5; see also id. at 7 (explaining “with the exception of one example
(example 9) that discloses one specific diameter and one specific thickness,
it cannot be concluded that appellant is in possession of the claimed
monolithic structure having any length and any thickness of greater than 1
mm”).
Appellant argues the Examiner’s rejection of claim 7 should be
reversed because the originally-filed Specification provides written
description that fully supports the claimed subject matter, including each
element recited in the claim. See Appeal Br. 4–13; Reply Br. 4 (“[I]t is clear
that the specification as originally filed does notify one of ordinary skill in
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the art of all the elements now claimed and therefore, the requirement under
35 U.S.C. 112, first paragraph is fulfilled.”).
Appellant contends
an artisan of magnetic core technology readily recognizes
that the subject matter and elements of Claim 7 as now
recited are fully supported by the description of the
specification as originally filed.
Appeal Br. 11; Reply Br. 3 (same). In particular, based principally on the
disclosures at pages 1 and 13–15 of the Specification (see Spec. 1:13–17,
1:25–29, 13:13–28, 13:20–31, 13:33–14:3, 14:32–15:6), Appellant contends
one of ordinary skill would have recognized Appellant was in possession of
a magnetic core structure, which adequately supports the “monolithic
structure having a length dimension and a thickness dimension greater than 1
mm” element of the claim. Appeal Br. 7 (arguing “that one of ordinary skill,
based on the descriptions provided above recognizes that the toroid obtained
in the example was obtained from a monolithic structure disc which was
machined to a toroid structure”).
Relying on the Declaration under 37 C.F.R. § 1.132 of Inventor, Dr.
Michael Paul Rowe filed Dec. 29, 2017 (“Rowe Decl.”), Appellant further
contends
it is entirely obvious and common knowledge to anyone of
ordinary skill in the art that these electronic devices are
typically a few millimeters to several inches in size, with
large examples of the technology measuring several feet
in diameter.
Id. at 9 (quoting Rowe Decl. 2); see also Reply Br. 3 (same).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and for the reasons the
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Examiner provides at pages 3–8 of the Answer and pages 2–4 of the Final
Office Action, which a preponderance of the evidence supports.
Rather, on the record before us, we determine that the “monolithic
structure having a length dimension and a thickness dimension greater than 1
mm” recitation of claim 7 is not adequately supported by the originally-filed
Specification. We have reviewed the portions of the Specification Appellant
relies upon, but find that the written description does not adequately describe
and is not commensurate in scope with that element of the claim. In
particular, as the Examiner finds and explains (Ans. 3–5), although page 15
of the Specification describes an example of a structure having a diameter of
9 mm and a thickness of 2.5 mm (Spec. 15:1–4), we do not find that
disclosure, without more, sufficient to reasonably convey to one of ordinary
skill in the art that the inventor had possession of a magnetic core structure
encompassing a monolithic structure having a length dimension and a
thickness dimension greater than 1 mm, as claimed. Likewise, none of the
other portions of the originally-filed Specification Appellant cites and relies
upon provide adequate written descriptive support for that element of the
claim. See, e.g., Spec. 1:13–17, 1:25–29, 13:13–28, 13:20–31, 13:33–14:3,
14:32–15:6.
We do not find the Rowe Declaration and Appellant’s arguments
regarding the Rowe Declaration (Appeal Br. 9; Reply Br. 3) persuasive
because that fact that it may have been “entirely obvious” and “common
knowledge” to one of ordinary skill that devices, such as the device of claim
7, are typically a few millimeters to several inches in size, without more,
does not establish reversible error in the Examiner’s rejection. Contrary to
what Appellant’s argument seems to suggest, as discussed above, the test for
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compliance with the written description requirement is not whether the
claimed subject matter would have been obvious to one of ordinary skill, but
whether the disclosure of the application relied upon reasonably conveys to
one of ordinary skill in the art that the inventor had possession of the
claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.
Indeed, it is well-settled
[t]he question is not whether a claimed invention is an
obvious variant of that which is disclosed in the
specification. Rather, a prior application itself must
describe an invention, and do so in sufficient detail that
one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing
date sought.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(citations omitted).
Accordingly, we affirm the Examiner’s rejection of claims 2, 3, 7–12,
and 15–17 under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3, 7–12,
15–17
112 written description

2, 3, 7–12,
15–17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED