Ex Parte Kosaka et al

Board of Patent Appeals and Interferences

May 17, 2012

11516034 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/516,034 09/05/2006 Yoshiharu Kosaka 943_008 6971
25191 7590 05/17/2012
BURR & BROWN
PO BOX 7068
SYRACUSE, NY 13261-7068
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
05/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIHARU KOSAKA and MASANORI OKUYAMA
____________

Appeal 2010-012425
Application 11/516,034
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-4 directed
to a brass material. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Claim 1 is illustrative of the subject matter on appeal:
Appeal 2010-012425
Application 11/516,034

2
1. A brass material consisting essentially of 61.0 to 63.0 wt% of
Cu, 0.5 to 2.5 wt% of Bi, 1.93 to 3.0 wt% of Sn, 0.02 to 0.10 wt% of
Sb, and 0.04 to 0.15 wt% of P, with the balance being substantially
Zn, wherein said brass material has an average dezincification depth
in a range of 10 to 25 µm without having been subjected to a heat
treatment step after hot extrusion and forging.

THE PRIOR ART
The Examiner relies upon the following references in the rejection
(Ans. 4):1
Tan2 JP 2000-169919 June 20, 2000
Dong US 2003/0095887 A1 May 22, 2003

THE REJECTION
Claims 1-4 are pending in the application. Claims 5-7 are withdrawn.
App. Br. 3. The Appellants seek review of the following rejection: Claims
1-4 stand rejected under 35 U.S.C. § 103(a) as obvious over Tan or Dong.

ANALYSIS
Claim 1 is the only independent claim at issue. Claim 1 is directed to
a brass material that, among other limitations, “has an average
dezincification depth in a range of 10 to 25 µm without having been
subjected to a heat treatment step after hot extrusion and forging.” The
Examiner construes the term “without having been subjected to a heat

1 Our analysis makes reference to the Examiner’s Answer mailed May 11,
2010 (“Ans.”), the Appeal Brief filed February 19, 2010 (“App. Br.”), and
the Reply Brief (“Reply Br.”) filed July 9, 2010.
2 We refer to the machine-generated English translation of Tan that is of
record.
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Application 11/516,034

3
treatment step after hot extrusion and forging” as a non-limiting process step
in a product claim. Ans. 6, 9-10. The Appellants disagree and contend that
the “average dezincification depth” specified “without the need for a heat
treatment step” represents “a distinct structural characteristic of the brass
material according to the present invention – and is not merely a process
limitation.” App. Br. 12.
It is a well-known proposition that process steps in a product claim are
limiting to the extent that they further define the structure of the product. In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). When a claimed product
reasonably appears to be substantially the same as a product disclosed by the
prior art, the burden is on the applicant to prove that the prior art product
does not necessarily or inherently possess characteristics attributed to the
claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In the
instant case, the Examiner has not established that the brass material of the
applied art would have necessarily resulted in having an average
dezincification depth in a range of 10 to 25 µm without having been
subjected to a heat treatment step after hot extrusion and forging, for the
following reasons.
The appeal record makes abundantly clear that post-forging heat
treatment can materially affect the dezincification depth of a brass material.
For example, the written description in the Specification explains that prior
art brass material “suffers from insufficient forgeability,” therefore, “the
brass material must be subjected to a heat treatment or annealing in order to
ensure corrosion resistance.” Spec. 2 ll. 4-6; see Reply Br. 9. Thus, an
object of the present invention is to provide a brass material that “exhibits
excellent forgeability and excellent dezincification resistance without
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Application 11/516,034

4
subjecting the brass material to a heat treatment after forging.” Spec. 2 ll.
13-15.
Furthermore, Tan discloses brass materials that differ significantly in
terms of dezincification depths depending upon whether the materials
undergo a post-forging heat treatment. Compare Tan Table 9 (reporting
dezincification depths of 50 to 210 µm in brass material samples 1d-20d
produced without post-forging heat treatment), with Table 13 (reporting
dezincification depths of 1 to 60 µm in brass material samples 1g-20g
produced with post-forging heat treatment); see Tables 1-2 (showing that
samples 1d-20d and samples 1g-20g are composed of identical elements in
identical weight percentages); Reply Br. 9-10 (citing Tan Examples 1-5).
On this record, we agree with the Appellants that the dezincification
depth recited in claim 1 refers to a depth that is achieved without post-
forging heat treatment and represents “a structural characteristic” of the
claimed product. App. Br. 13. The language requiring a certain depth
without post-forging heat treatment is not a non-limiting process step in a
product claim. Ans. 6, 9-10. In considering whether Tan discloses or
suggests the average dezincification depth required by claim 1, the Examiner
improperly compared brass material in Tan that is produced with post-
forging heat treatment to the claimed brass material that is produced without
post-forging heat treatment. Ans. 7, 10 (relying on Tan Tables 6-8 and 13-
14); see App. Br. 14, 15; Tan ¶¶ 0047-48, Tables 6-8 (reporting
dezincification depths for brass material subjected to post-forging heat
treatment); ¶ 0067, Tables 13-14 (reporting dezincification depths for brass
material subjected to post-forging heat treatment).
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Application 11/516,034

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The relevant comparison, however, is between the brass material in
Tan that is produced without post-forging heat treatment and the claimed
brass material that is produced without post-forging heat treatment. The
relevant brass material in Tan has a dezincification depth ranging from 50-
210 µm, which is significantly greater than the average dezincification depth
of 10-25 µm of the claimed brass material. See App. Br. 13; Tan Table 4
(reporting dezincification depths of 50 to 190 µm for materials produced
without post-forging heat treatment); Tan ¶ 0041; Tan Table 9 (reporting
dezincification depths of 60 to 210 µm for materials produced without post-
forging heat treatment); Tan ¶ 0056. On this record, we agree with the
Appellants that Tan “fails to disclose or suggest the [] average
dezincification depth” that is specified in claim 1. App. Br. 15.
Similarly, Dong discloses brass material produced without post-
forging heat treatment having dezincification depths of less than 65 µm, but
no less than 41 µm. Dong, Table 2; see Ans. 7, 15 (relying on Table 2 of
Dong); App. Br. 17-19 (observing that “Dong’s Table 2 shows a maximum,
as-extruded dezincification depth for each of the samples”). We agree with
the Appellants that Dong discloses “as-extruded dezincification depths” that
“are all significantly greater than 25 µm.” App. Br. 18.
On this record, we agree with the Appellants that the Examiner fails
as a matter of fact to make out a prima facie case of obviousness of claims 1-
4 over Tan or Dong. The rejection, therefore, cannot be sustained.

REVERSED

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