Ex Parte Murofushi et al

Board of Patent Appeals and Interferences

Jul 13, 2007

10095112 (B.P.A.I. Jul. 13, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the board

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte EIJI MUROFUSHI and TAKAYUKI KATO
_____________

Appeal No. 2007-15301
Application 10/095,112
Technology Center 2800
______________

Decided: July 13, 2007
_______________

Before JOHN C. MARTIN, JEAN R. HOMERE, and JOHN A. JEFFERY,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s Final Rejection of claims 1-5, all of
the pending claims. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We affirm.

1 Oral argument was heard on June 6, 2007.
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Appellants’ invention is a shield connector having a conductive connector
housing made of a composite material comprising a lightweight metal (e.g.,
aluminum) and hollow ceramics grains (Specification 12:11-16).
The only independent claim on appeal is claim 1:
1. A shield connector for connecting a braid of a shielded wire to a metal
casing of an equipment, the shield connector comprising:
a connector housing including,
a mounting portion for mounting directly on the metal casing, and
a tubular body capable of covering an end portion of the shielded wire so as
to be electrically connected to the braid of shielded wire,
wherein the connector housing is made of a metal composite material
comprising lightweight metal and hollow ceramics grains.

Claim 2, the only dependent claim separately argued in the Briefs, reads:

2. The shield connector according to claim 1, wherein the volume content of
the hollow ceramics grains relative to the total volume of the connector housing is
30% to 60%.

Claims 1-5 stand rejected under 35 U.S.C. § 103(a) for obviousness over the
Admitted Prior Art in view of the following patent document:
Pyzik US 5,780,164 July 14, 1998
(Answer 3.)

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THE ISSUES2
1. Is Pyzik analogous prior art? Issues 2 and 3 are contingent on answering
this question in the affirmative.
2. Did motivation exist to replace the aluminum material of the connector
housing of the Admitted Prior Art with Pyzik’s ceramic-metal composite material,
thereby satisfying claim 1?
3. Would the artisan have concluded that the volume content of the hollow
ceramics grains relative to the total volume of the connector housing can have a
value in the range of 30 to 60 volume percent, as recited in claim 2?
APPELLANTS’ DISCLOSURE
Appellants’ invention is an improvement of the prior-art shield connector 1
shown in Appellants’ Figure 3 (“Admitted Prior Art”). This shield connector
includes a conductive connector housing 3 that is designed to make electrical
contact with metal braid 37C of shielded wire 37 though an intermediate metal
short-circuiting member 5 (Specification 2:20-3:1). The connector housing 3
includes a tubular body 17 and a bracket portion 15 that permits a bolt to be used to
mount the connector housing on the metal casing of a piece of equipment (not

2 The issues as stated herein represent the contentions of Appellants, who
have the burden on appeal to the Board to point out any errors in the Examiner’s
position. See In re Rouffet, 149 F.3d 1350, 1355 47 USPQ2d 1453, 1455 (Fed. Cir.
1998) (“On appeal to the Board, an applicant can overcome a rejection [for
obviousness] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”).
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shown) (id. at 2:9-12). The connector housing of the prior art “is made of
lightweight metal, such as aluminum, so that it can have good electrical
conductivity, sufficient strength and so on” (id. at 1:24-2:3). In order to enhance
the electrical conductivity and provide more positive shielding, copper plating is
applied as an undercoat to the entire surface of the connector housing and then tin
plating is applied to the undercoat (id. at 2:3-7). The Specification does not
explain how much of the shielding function is attributable to these plating layers
coatings and how much to the aluminum material of the connector housing.
The Specification mentions the desirability of improving the prior-art
connector housing by reducing its weight and cost:
In the case of using the above shield connector 1 on a shielded
wire for an electric vehicle, it has been desired to achieve a more
lightweight design of the shield connector so as to reduce the weight
of the vehicle to thereby enhance the running performance thereof,
and it has also been desired to reduce the cost of the shield connector.

(Id. at 3:23-4:3.) Furthermore, these goals are to be achieved while retaining
sufficient mechanical strength (id. at 5:22-6:3). Appellants achieve the foregoing
goals by making the connector housing (49 in Fig. 1) from a “metal composite
material comprising lightweight metal 51 and hollow ceramics grains 53 of which
[the] cost is low” (id. at 7:9-11). These hollow ceramics grains are also
characterized as being lightweight (id. at 13:19).
Appellants’ connector housing, like the connector housing of the Admitted
Prior Art, is plated with of copper and tin in order to enhance the electrical
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conductivity and provide more positive shielding (id. at 7:12-17). Appellant’s
housing connector is further described as having “sufficient strength” (id. at 7:15).

The lightweight metal 51 can be aluminum, an aluminum alloy, or a
magnesium alloy (id. at 12:14-15). The hollow ceramics grains 53 can be
“[m]ullite balloons, alumina balloons, carbon balloons, SiO2 balloons, or the like”
(id. at 12:16-18). Appellants explain that “[i]n view of the lightweight design of
the connector housing 49 and its practical strength enough [sic – being enough?] to
perform its function, it has been confirmed through experiments that the proper
content of the hollow ceramics grains is about 30 to about 60 vol. %” (id. at 13:8-
11).

APPELLANTS’ EVIDENCE APPENDIX
The Brief is accompanied by an Evidence Appendix consisting of five
figures described as “comparing the properties of the composite material of the
embodiment described in the specification with the properties of an aluminum
alloy" (Br. 10). The Brief states that these figures were submitted with the
Response filed August 23, 2004 (Br. 10.). The captions to the figures indicate that
the composite has (a) a “specific gravity” (sic -- density) 49% lighter than that of
the aluminum alloy, (b) a coefficient of linear expansion 42% that is lower than
that of the aluminum alloy, (c) an oscillation loss that is 4860% higher than that of
the aluminum alloy (indicating a higher vibration damping effect), (d) the same
shielding effects as the aluminum alloy, and (e) a thermal conductivity that is 20%
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lower than that of the aluminum alloy but 100 times higher than that of resin.
However, none of the August 23, 2004, Response, Brief, and Reply Brief describe
the aluminum alloy or give any of the following details about the composite(s)
whose test results are represented by the figures: (1) the type of metal used; (2) the
type of hollow ceramics grains used; and (3) the amounts of metal or ceramics
grains on a per volume basis.

THE PYZIK DISCLOSURE
The title of the Pyzik patent is “Computer Disk Substrate, the Process for
Making Same, and the Material Made Therefrom.”
Pyzik explains that conventional hard disks have typically been made of
aluminum substrates that are polished, plated with a nickel-phosphorus coating,
often texturized by one of several means, and then sputtered to place a magnetic
media layer thereon (col. 1, ll. 21-25). Pyzik proposes to make computers smaller-
--or to make them the same size but with more memory---by making the substrates
of the hard disks thinner (col. 1, ll. 28-30). Pyzik also explains making the disk
substrates lighter will reduce battery consumption of hard drives used in portable
computers:
Furthermore, for portable computers, it would be an advantage to have
a more lightweight substrate because the spinning action to which the
disk is subjected requires a great deal of energy. A lighter substrate
would require fewer or smaller batteries. Alternatively, the same
batteries could be utilized, but those batteries would not be discharged
as quickly as they are now.
(Col. 1, ll. 41-47.)
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Pyzik explains that it is not feasible to make thinner disk substrates from
aluminum:
Aluminum disks (the current technology) begin to warp, sag, flutter,
or resonate during handling and use when the thickness of a 95 mm
O.D. substrate is less than 800 pm [sic, µm] or when the thickness of a
65 mm O.D. substrate is less than 635 µm. A goal of computer
companies to produce substrates having a 65 mm O.D. that are about
381 µm thick and 95 mm O.D. substrates that are about 508 µm thick.
(Col. 1, ll. 34-36).
A hard-disk substrate should have high electrical conductivity in order to
prevent write-through, which occurs when the information being written on one
side of the disk potentially harms or destroys data on the opposite side of the disk
(col. 2, ll. 55-58).
Various alternatives to aluminum have been proposed, including glass and
ceramic materials (col. 1, ll. 57-60). While some of these materials have low
material density, high stiffness, high thermal conductivity, high electrical
conductivity (or, low electrical resistivity, which is the inverse of high
conductivity), and good surface texture for receiving a plated layer or sputtered
magnetic media layer, they are unsuitable because they can break when dropped
(col. 1, l. 60 to col. 2, l. 2). Other materials, including silicon carbide, Canasite (a
partially-crystallized glass or ceramic/glass, available from Corning, Inc., under the
trade name MEMCOR), and alumina ceramic also have been found to be
unsatisfactory in various respects (col. 2, l. 66 to col. 3, l. 19).

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Based on the foregoing considerations, Pyzik states that
it would be most advantageous to the industry to have a lightweight,
stiff, electrically conductive substrate material, which may be a
sputter-ready textured substrate, that is easy to manufacture and low in
cost.
It would also be most advantageous to have a disk substrate,
and a process for making same, in which the substrate has excellent
physical properties and is easily texturized either in situ or following a
plating process.
(Col. 3, ll. 20-27.)3
Pyzik achieves the foregoing goals by making the disk substrate of either a
ceramic-ceramic composite material or a ceramic-metal composite material (col. 5,
ll. 8-10). The preferred ceramic-metal composite material is an aluminum-boron-
carbon (Al—B—C) composite material (col. 7, ll. 25-27). Aluminum is the
preferred metal because it is lightweight, thermally conductive, and highly reactive
with the boron carbide ceramic (col. 7, ll. 27-29). The aluminum component
preferably takes the form of an aluminum alloy that provides improved stiffness
relative to pure aluminum (col. 7, ll. 29-31).
Pyzik’s Figure 3 is a chart listing the values for the following properties of
aluminum, Al2O3, SiC, Canasite (glass ceramic), and an Al—B—C composite:
(a) density; (b) elastic modulus (GPa); (c) specific modulus; (d) electrical
resistivity (ohm-cm); (e) flexure strength (MPa); (f) fracture toughness (MPa-m1/2);
and (g) hardness (Kg/mm2). Arrows indicate whether a higher or lower value is

3 Pyzik also recites improvements in preparation methods that are not
relevant to the issues before us (col. 3, ll. 27-46).
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desirable in a disk substrate (col. 8, ll. 20-22). For density (having a downwardly
pointing arrow), the chart gives the value for aluminum as 2.7 and the value for
Al—B—C as “<3.” However, the Specification explains that “the Al—B—C
composite material can have a density of less than about 3 g/cc, preferably from
about 2.58 to 2.7 g/cc” (col. 7, ll. 45-46). We calculate that a composite material
having a density of 2.58 g/cc is about 4 per cent less dense than aluminum.4
The chart gives the electrical resistivity (which has a downward pointing
arrow) for aluminum as 10-5 ohm-cm and for Al—B—C as <10-3 ohm-cm,
respectively, which means that aluminum less resistive (and thus more conductive)
than Al—B—C by more than an order of magnitude.
After explaining that “specific stiffness” is a property of a material that
represents the resistance of a component to deflection by inertial loads generated
by accelerations and decelerations, Pyzik notes that the specific stiffness of the
Al—B—C composite material can be greater than about 8.3x106 m, preferably,
greater than about 14.3x106 m, wherein the specific stiffness has been normalized
by the acceleration due to gravity (9.8 m/s2) (col. 7, l. 66 to col. 8, l. 8). Pyzik does
not give the specific stiffness value for pure aluminum.
Pyzik summarizes the properties of the Al—B—C composite material as
follows:

4 In contrast, Appellant’s Evidence Appendix states that the “specific
gravity” (sic, density) of the composite material is 49% of the value for the
aluminum alloy represented in the Evidence Appendix.
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While attempting to produce a substrate that is lower in weight, higher
in electrical conductivity, tougher and harder than its aluminum
predecessors, the Al—B—C ceramic is excellent. Its density is lower
than the others, its electrical conductivity nearly rivals pure metallic
aluminum, its stiffness is excellent, its fracture toughness is very
good, and its hardness is more than satisfactory. As one can see, all
the properties needed for a substrate are easily met or exceeded by the
Al—B—C composite material.
(Col. 8, ll. 22-29.) Thus, the electrical conductivity of the Al—B—C ceramic is
described as “nearly rival[ling] pure metallic aluminum” (id.) even though
aluminum’s conductivity exceeds that of the Al—B—C ceramic by more than an
order of magnitude. High electrical conductivity and low density are also among
the properties mentioned in the following summary of the properties of Pyzik’s
composites:
Accordingly, the present invention provides hard drive disk
substrates, methods of making same, and materials made therefrom,
wherein the material has a high hardness, a high wear resistance, a
high fracture toughness, a high damping capability, a low density, and
a high specific stiffness and is electrically conductive. In addition, the
material forming the disk substrates exhibits unique combinations of
properties, such as high stiffness and high toughness, high hardness
and high strength, and high stiffness and high damping capability.
Col. 13, ll. 3-12 (emphasis added).
Pyzik’s composite material is also capable of being coated with a layer of
metal, such as copper: “If a sub-surface (below the magnetic media layer) coating
is desirable, the sub-surface material may be metal (e.g., chromium, nickel, cobalt,
silicon, aluminum, copper, titanium, or magnesium), metal alloy, metal oxide,
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metal nitride, metal carbide, glass, ceramic, polymeric materials, and combinations
thereof” (col. 11, ll. 49-54).
We find that a person having ordinary skill in the art would have understood
that using Pyzik’s ceramic-metal composite material to make a disk substrate saves
weight in two ways in comparison conventional aluminum substrates. First, using
a ceramic-metal composite material that has a higher specific stiffness than does
aluminum permits the substrate to be made thinner, thereby reducing the weight of
the substrate even if the composite material has the same density as aluminum (i.e.,
2.7 g/cc). Second, an additional weight reduction of up to 4% can be achieved by
using a composite material that is less dense than aluminum, e.g., a composite
having a density at the low end of the preferred density range of about 2.58 to
about 2.7 g/cc (col. 7, ll. 44-45).
Pyzik does not elaborate on the cost savings that are allegedly achieved
using the composite material instead of pure aluminum (col. 3, ll. 20-23). We are
therefore unable to determine whether the cost savings represent a lower materials
costs, cost savings realized by using the disclosed process to form the disk
substrates, or both.
The Pyzik patent was issued by the Examiner in 428/539.5 (i.e., Class 428,
Subclass 539.5).5 Class 428, which is entitled “Stock Material or Miscellaneous
Articles,”

(Continued on next page.)
5 As will appear, it is not necessary to address the locations in which the
patent was cross-referenced, namely, 428/548; 428/551; 428/551; 428/552;
428/553; 428/554; 501/87; 501/93; and 501/96. Class 501 is entitled “Composites:
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accommodates certain products of manufacture which are not
provided for in classes devoted primarily to manufacturing methods
and apparatus. The bulk of the documents are directed to stock
material composites, that is, materials having two or more distinct
components which are more ordered than a mere random mixture of
ingredients.
See PTO Classification Definitions, Class 428, http://ptoweb:8081/uspc428/
defs428.htm (last visited July 6, 2007). Subclass 539.5, entitled “Metal
Continuous Phase Interengaged With Nonmetal Continuous Phase,” is defined as
follows:
This subclass is indented under the class definition. Products in which
a continuum (matrix or continuous phase) of elemental metal is
interengaged with a continuum of nonmetal material. (1) Note. These
products are most usually obtained by the impregnation of a metal or
nonmetal composition, having an interconnected void structure, with a
nonmetal or metal composition, respectively, in a fluent form.
Id.
PRINCIPLES OF LAW RELEVANT TO ISSUES 1 AND 2
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.” In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection under
35 U.S.C. § 103(a) must be based on the factual determinations required by the,
namely, (1) the scope and content of the prior art, (2) the level of ordinary skill in
the art, (3) the differences between the claimed invention and the prior art, and

Ceramic.” PTO Classification Definitions, Class 501,
http://ptoweb:8081/uspc501/defs501.htm (last visited July 6, 2007).
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(4) objective indicia of non-obviousness. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641,
1645 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966)).
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.”). Leapfrog
Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691
(Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41,
82 USPQ2d 1385, 1395 (2007)). )). “One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution encompassed
by the patent's claims.” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
Discussing the obviousness of claimed combinations of elements of prior art,
KSR explains:
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. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability. For the same
reason, 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.
Sakraida [v. AG Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57,
163 USPQ 673 (1969)] are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art elements
according to their established functions.
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KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. Where the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one known
element for another or the mere application of a known technique to a piece of
prior art ready for the improvement, a holding of obviousness can be based on a
showing that there was “an apparent reason to combine the known elements in the
fashion claimed.” KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. Such a
showing requires “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d
at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006)).6
The reasoning given as support for the conclusion of obviousness can be
based on interrelated teachings of multiple patents, the effects of demands known
to the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR, 127 S. Ct.
at 1740-41, 82 USPQ2d at 1396. See also Dystar, 464 F.3d at 1368, 80 USPQ2d at
1651 (“[A]n implicit motivation to combine exists not only when a suggestion may
be gleaned from the prior art as a whole, but when the “improvement” is
technology-independent and the combination of references results in a product or

6 Although KSR also held that this reasoning is not limited to the problem
the patentee was trying to solve, 127 S. Ct. at 1742, 82 USPQ2d at 1397(“any need
or problem known in the field of endeavor at the time of invention and addressed
by the patent can provide a reason for combining the elements in the manner
claimed”), the rejection before us is based on solving the same problems that faced
Appellants.
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process that is more desirable, for example because it is stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process is
universal—and even common-sensical—we have held that there exists in these
situations a motivation to combine prior art references even absent any hint of
suggestion in the references themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills rendering him capable
of combining the prior art references.”); Leapfrog, 485 F.3d at 1162, 82 USPQ2d
at 1691 (holding it “obvious to combine the Bevan device with the SSR to update it
using modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability, simplified
operation, and reduced cost”).
Also, a reference may suggest a solution to a problem it was not designed to
solve and thus does not discuss. KSR, 137 S. Ct. at 1742, 82 USPQ2d at 1397
(“Common sense teaches . . . that familiar items may have obvious uses beyond
their primary purposes, and in many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like pieces of a puzzle. . . . A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
The prior art relied on to prove obviousness must be analogous art. As
explained in Kahn,
the “analogous-art” test . . . has long been part of the primary Graham
analysis articulated by the Supreme Court. See Dann [v. Johnston,]
425 U.S. [219,] 227-29 [189 USPQ 257] (1976), Graham, 383 U.S.
at 35. The analogous-art test requires that the Board show that a
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reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for rejection. In
re Oetiker, 977 F.2d 1443, 1447 [24 USPQ2d 1443] (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the problem
based on the judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the circumstances,’—in
other words, common sense—in deciding in which fields a person of
ordinary skill would reasonably be expected to look for a solution to
the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032,
1036 [202 USPQ 171] (C.C.P.A. 1979))).
Kahn, 441 F.3d at 986-87, 78 USPQ2d at 1335-36. See also In re Clay, 966 F.2d
656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992) (“[a] reference is reasonably
pertinent if, even though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem.”).
In view of KSR’s holding that “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed,” 127 S. Ct. at 1742,
82 USPQ2d at 1397 (emphasis added), it is clear that the second part of the
analogous-art test as stated in Clay, supra, must be expanded to require a
determination of whether the reference, even though it may be in a different field
from that of the inventor's endeavor, is one which, because of the matter with
which it deals, logically would have commended itself to an artisan’s (not
necessarily the inventor’s) attention in considering any need or problem known in
the field of endeavor. Furthermore, although under KSR it is not always necessary
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to identify a known need or problem as a motivation for modifying or combining
the prior art, it is nevertheless always necessary that the prior art relied on to prove
obviousness be analogous. See KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395 (“The
Court [in United States v. Adams, 383 U.S. 39, 40 (1966)] recognized that when a
patent claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination must do
more than yield a predictable result.”) (emphasis added). See also Sakraida, 425
U.S. at 280, 189 USPQ at 452 (“Our independent examination of that evidence
persuades us of its sufficiency to support the District Court's finding ‘as a fact that
each and all of the component parts of this patent . . . were old and well-known
throughout the dairy industry long prior to the date of the filing of the application
for the Gribble patent.’”).

ANALYSIS OF ISSUE 1 (IS PYZIK ANALOGOUS ART?)
Claim 1 is directed to a “shield connector for connecting a braid of shielded
wire to a metal casing of an equipment.” We find that the relevant field of
endeavor is the design of shield (i.e., electrically conductive) connectors for
electrically connecting the shielding layers (e.g., braids) of shielded wires to the
metal casings (i.e., housings) of electrical equipment. Pyzik discloses no housing
at all and thus clearly fails to qualify as analogous art under the first, i.e., “field of
endeavor,” part of the analogous-art test.
Pyzik is nevertheless analogous art under the second part of the analogous-
art test if it reasonably would have been expected to address any known need or
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problem with the connector housing of the Admitted Prior Art. Appellants’
Specification admits recognition of two such needs, weight reduction and cost
reduction (Specification 2:23 to 3:3). In any case, we would have assumed that
these were generally recognized objectives even in the absence of an admission.
Dystar, 464 F.3d at 1368, 80 USPQ2d at 1651; Leapfrog, 485 F.3d at 1161,
82 USPQ2d at 1691.
The question remains whether a person having ordinary skill in the relevant
field of endeavor, attempting to address either or both of these needs, would
reasonably have expected to find a solution in the art area that includes Pyzik. We
find that this question must be answered in the affirmative. An artisan seeking to
reduce the weight and/or cost of the Admitted Prior Art would have focused on
connector housing 3, which is formed from aluminum and appears to be largest and
heaviest component of the shield connector. Presumably, the aluminum housing in
the Admitted Prior Art is already as thin as it can be made and still provide
sufficient shielding and mechanical strength. The artisan therefore would have
looked for a substitute material that can be used to make a connector housing that
(1) is lighter in weight than the aluminum connector housing of the Admitted Prior
Art, (2) provides a sufficient amount of shielding either in unplated form or after
being plated with layers of conductive metal, such as the copper and tin coatings
applied to the connector housing of the Admitted Prior Art, and (3) provides
sufficient mechanical strength. While the search for a suitable material clearly
would have included electrically conductive housings for various types of
electrical and magnetic devices, the search would not have been limited to
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housings. The reason is that the problem facing the artisan is, broadly, one of
materials science and thus would have led the artisan to additionally consider art
areas such as Class 458 (“Stock Material or Miscellaneous Articles”), which, as
noted above,
accommodates certain products of manufacture which are not
provided for in classes devoted primarily to manufacturing methods
and apparatus. The bulk of the documents are directed to stock
material composites, that is, materials having two or more distinct
components which are more ordered than a mere random mixture of
ingredients.

PTO Classification Definitions, Class 428, http://ptoweb:8081/uspc428/
defs428.htm (accessed July 7, 2007). More particularly, because metals typically
have high conductivity and high mechanical strength, the artisan would have
considered at least Subclass 539.5 (“Metal Continuous Phase Interengaged With
Nonmetal Continuous Phase”) thereof, in which Pyzik was issued, to be reasonably
pertinent to the problems at hand. For the foregoing reasons, we find that Pyzik is
analogous art. In so holding, we are mindful of In re Ellis, 476 F.2d 1370,
177 USPQ 526 (CCPA 1973), which held:
While we find the diverse Patent Office classification of the
references to be some evidence of “non-analogy,” and likewise find
the cross-reference in the official search notes to be some evidence of
“analogy,” we consider the similarities and differences in structure
and function of the inventions disclosed in the references to carry far
greater weight.
476 F.2d at 1372, 177 USPQ at 527 (cited with approval in In re Deminski,
796 F.2d 436, 442 n.3, 230 USPQ 313, 315 n.3 (Fed. Cir. 1986); and in In re Mlot-
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20
Fijalkowski, 676 F.2d 666, 670 n.5, 213 USPQ 713, 715 n.5 (CCPA 1982)).
However, because the artisan’s reason for consulting Class 428 would have been to
find a material having properties that would permit it to be used as an electrically
conductive housing, the fact that Pyzik’s ceramic-metal composite material is used
to make a disk substrate rather than a housing would not have dissuaded the artisan
from considering its suitability for making an electrically conductive housing.
For the foregoing reasons, we find that Pyzik is analogous prior art.

ISSUE 2: DID MOTIVATION EXIST TO REPLACE THE ALUMINUM
MATERIAL OF THE CONNECTOR HOUSING OF THE
ADMITTED PRIOR ART WITH PYZIK’S CERAMIC-METAL
COMPOSITE MATERIAL, THEREBY SATISFYING CLAIM 1?
Appellants do not deny that making the connector housing of the Admitted
Prior Art with Pyzik’s Al-B-C ceramic-metal composite material instead of pure
aluminum will result in a shielding connector that satisfies claim 1. That is,
Appellants do not deny that Pyzik’s disclosed Al—B—C composite includes the
claimed “metal composite comprising lightweight metal and hollow ceramics
grains.”
Because Pyzik’s decision to replace aluminum hard disk substrates with
substrates made of ceramic-metal composite material is primarily based on a
property (namely, specific stiffness) that is of no concern to the designer of shield
connectors, Appellant’s invention cannot be fairly characterized as involving the
simple substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement. KSR, 127 S.
Ct. at 1740-41, 82 USPQ2d at 1396. However, we agree with the Examiner that
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21

the desire to reduce the weight of the connector housing of the Admitted Prior Art
would have motivated the artisan, having knowledge of Pyzik, to make the
connector housing with one of Pyzik’s ceramic-metal composite materials.7
The Examiner initially relied on Pyzik for its teachings regarding the
stiffness provided by the ceramic-metal composite materials. Specifically, in the
(non-final) Office Action from which this appeal is taken, the Examiner held that
“it would have been obvious to one of ordinary skill . . . to modify the connector
housing of Applicant’s admitted prior art by making it of metal composite material
comprising lightweight metal and hollow ceramics grains as taught in Pyzik et al.
to increase the stiffness of the housing” (Office Action 3). This reasoning is
unpersuasive because the “stiffness” property of concern to Pyzik, i.e., “specific
stiffness,” represents the resistance of a component to deflection by inertial loads
generated by accelerations and decelerations (col. 7, l. 66 to col. 8, l. 1), a property
having no relevance to the connector housing of the Admitted Prior Art.
However, in the Answer the Examiner additionally relies on Pyzik’s
disclosure that the disclosed ceramic-metal disk substrates are light in weight:
[T]he use of metal-ceramic composite [in Pyzik] is specifically for
improving the stiffness and because of its lightweight [sic – light
weight] (Column 2, Lines 11-13; Column 3, Lines 20-24; and
Column 7, Lines 22-34). Appellant’s reason for using the same
material is in fact because of its lightweight. Therefore, the use of this
material is reasonably pertinent to the particular problem with which
the applicant was concerned. Furthermore, it has been held to be
within the general ordinary skill of a worker in the art to select a

7 The Examiner does not argue cost savings as a motivation.
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22
known material on the basis of its suitability for the intended use as a
matter of obvious design choice. In re Leshin, 125 USPQ 416. Any
one [sic -- anyone] with ordinary skill in the art would use the claimed
material because of its lightweight characteristics as clearly shown in
Pyzik et al.
Answer 5. We agree that the artisan would have considered Pyzik’s Al—B—C
ceramic-metal composite materials to be a suitable material from which to make a
lighter version of the connector housing of the Admitted Prior Art. The reason is
that those materials are disclosed as being electrically conductive, less dense than
aluminum, and capable of being coated with layers of copper and tin, which are the
material used to improve the shielding characteristics of the connector housing of
the Admitted Prior Art. The fact that the purpose of such coatings in the Admitted
Prior Art is to improve the shielding reduces the significance of the fact that
Pyzik’s Figure 3 chart gives the electrical resistivity values for Al—B—C and
aluminum that indicate aluminum is more electrically conductive than Al—B—C
by at least an order of magnitude.
Of the various properties listed in Pyzik’s Figure 3 chart, the properties most
relevant to mechanical suitability for a connector housing appear to be fracture
toughness (23 for aluminum; 4-8 for Al—B—C) and hardness (30 for aluminum;
700-1700 for Al—B—C). Appellants have not asserted, and it is not otherwise
apparent, that the lower fracture toughness value for Al—B—C would have
discouraged its use as a housing material.
For the foregoing reasons, we conclude that the artisan would have been
motivated to reduce the weight of the aluminum connector housing of the Admitted
Prior Art by making it from one of Pyzik’s Al—B—C ceramic-metal composite
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materials. Specifically, the artisan would have recognized that using such a
composite instead of pure aluminum would permit weight reduction to be achieved
by (a) using a composite that has a density (e.g., 2.58 g/cc) less than that of
aluminum (2.7 g/cc), or (b) reducing the thickness of the housing wall, (c) using
both techniques.
The Examiner was therefore correct to hold that the subject matter recited in
claim 1 would have been prima facie obvious over the admitted prior art in view of
Pyzik.
Although Appellants cite their Evidence Appendix as support for the
assertion that “[t]he present invention provides advantages over the prior art shield
connector in weight, thermal expansion, damping effect, and thermal conductivity”
(Br. 4 & n.3), they do not characterize these advantages as being unexpected or as
sufficient to rebut the prima facie case for obviousness.
The rejection is therefore affirmed with respect to claim 1 and also with
respect to dependent claims 3-5, which are not separately argued. In re Young,
927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).

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ISSUE 3: WOULD THE ARTISAN HAVE CONCLUDED THAT THE
VOLUME CONTENT OF THE HOLLOW CERAMICS GRAINS
RELATIVE TO THE TOTAL VOLUME OF THE CONNECTOR
HOUSING CAN HAVE A VALUE IN THE RANGE OF 30 TO
60 VOLUME PERCENT, AS RECITED IN CLAIM 2?

Claim 2 specifies that “the volume content of the hollow ceramics grains
relative to the total volume of the connector housing is 30% to 60%.” Pyzik’s
ceramic-metal composite material
preferably has from about 4 to about 30 volume %, more preferably,
from about 4 to about 15 volume %, residual free metal. Desirably,
less than about 50% of the free metal is present in the ceramic-ceramic
interfaces, and, more desirably, most of the free metal is present only
in the interstices.
Col. 6, ll. 44-55. We agree with the Examiner and Appellants that this passage
means the ceramic material preferably has a value from about 70 to about 96
volume percent, and more preferably has a value from about 85 to 96 volume
percent. Neither of these ranges overlaps or includes the claimed range of 30 to 60
volume percent for the ceramic material.
The Examiner’s position is that
[i]t would have been obvious to one having ordinary skill in the art at
the time the invention was made to have the volume content of the
hollow ceramics grains relative to the total volume of the connector
housing [be] 30% to 60%, since it has been held that discovering an
optimum value of a result effective variable involves only routine skill
in the art. In re Boesch, 617[] F.2d 272, 205 USPQ 215 (CCPA
1980).
Answer 4. For the following reasons, the Examiner was correct to hold that the
subject matter of claim 2 would have been obvious over Pyzik.
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“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1368, 82 USPQ2d 1321, 1336 (Fed. Cir. 2007) (quoting Boesch,
617 F.2d at 276, 205 USPQ at 219). “[I]t is not inventive to discover the optimum
or workable ranges by routine experimentation.” Pfizer, 480 F.3d at 1368,
82 USPQ2d at 1336 (quoting In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d
1362, 1365 (Fed. Cir. 1997) and In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955)). See also In re Luck, 476 F.2d 650, 652-53, 177 USPQ 523,
525 (CCPA 1973) (holding that the use of routine testing to identify optimum
amounts of silane to be employed in a lamp coating, without establishing a critical
upper limit or demonstrating any unexpected result, lies within the ambit of the
ordinary skill in the art). This principle is applicable even where, as here, the
claim recites a range that does not embrace the value or range of values given in
the reference disclosure. See Aller, 220 F.2d at 455, 459, 105 USPQ at 234, 237
(holding the claimed process, which requires a temperature between 40°C and
80°C and an acid concentration between 25% and 70%, obvious over a reference
process that differed from the claimed process only in that the reference process
was performed at a temperature of 100°C and with an acid concentration of 10%).

The upper end point (i.e., 60 volume percent of ceramic material) of
Appellants’ claimed range is relatively close to the lower end point of Pyzik’s
preferred range of 70 to 96 volume percent for the ceramic material. Furthermore,
the fact that Pyzik describes this range as preferred suggests that it is possible,
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albeit less desirable, to employ a lower volume percentage of ceramic material
when using the composite material to make a disk substrate. That is, it would have
been reasonable for the artisan to assume that Pyzik’s choice of 70 volume percent
as the lower end of the preferred range was based in part on the properties, such as
specific stiffness, that determine the suitability of the composite material for
making a disk substrate. Also, Pyzik’s disclosure of (1) a range of volume
percentages for the ceramic material, (2) a range of densities for the Al—B—C
composite material (i.e., preferably from about 2.58 to about 2.7 -- col. 7, ll. 44-
47), and (3) ranges for the other properties listed in Figure 3 suggests that the
volume percentage of the ceramic material is a result effective variable. Thus, an
artisan desiring to replacing the pure aluminum in the connector housing of the
Admitted Prior Art with one of Pyzik’s less dense Al—B—C composite materials
would have varied the relative volume percentages of ceramic and metal
constituents in order to experimentally determine which percentages yield Al—
B—C composite materials suitable for use in making an electrically conductive
connector housing. These experiments prima facie would have included reducing
the volume percentage of ceramic to 60 percent, which is sufficient to satisfy claim
2, or to some other value between 30 percent and 60 percent, which is also
sufficient to satisfy the claim. As a result, Appellants’ use of experimentation to
determine that the ceramics grains preferably should be present in a volume
percentage from 30 to 60 (Specification 13:8-13) is consistent with rather than
contrary to a conclusion of obviousness.
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Appellants argue that the Examiner’s reliance on Boesch is misplaced
because “Pyzik merely discloses a composite material that is 70 to 96 volume %,
and preferably 85 to 96 volume % ceramic. Pyzik provides no motivation or
suggestion to lower this amount” (Br. 6). This argument is not responsive to the
Examiner’s position, which is that it would have been prima facie obvious to
experimentally determine which volume percentages of ceramic yield a composite
material that is suitable for use as an electrically conductive connector housing.
In general, an applicant may overcome a prima facie case of obviousness by
establishing that the claimed range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range. In re
Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1383 (Fed. Cir. 2003) (citing
Geisler, 116 F.3d at 1469-70, 43 USPQ2d at 1365). A showing of unexpected
results must be commensurate in scope with the claimed range. Peterson, 315 F.3d
at 1330-31, 65 USPQ2d at 1383 (citing In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978)). Moreover, when unexpected results are
offered as evidence of nonobviousness, the results must be shown to have been
unexpected in comparison with the results obtained when using the closest prior
art. Abbott Labs. v. Andrx Pharms., Inc., 452 F.3d 1331, 1345, 79 USPQ2d 1321,
1332 (Fed. Cir. 2006). Appellants have provided no such evidence. As already
noted, they do not characterize the test results in the Evidence Appendix as being
unexpected. Nor have they established that those test results are commensurate in
scope with the range recited in claim 2. Also, those test results compare the
properties of Appellant’s composite material to the properties of an unidentified
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“aluminum alloy” rather than to the properties of pure aluminum, the only material
that is specifically identified in the Specification for making the connector housing
of the Admitted Prior Art. Specification 1:24 to 2:3.
For the foregoing reasons, the rejection of claim 2 is affirmed.
We are alternatively affirming the rejection based on an “obvious to try”
rationale in light of KSR’s holding that such a rationale can form the basis for a
holding of obviousness:
When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person
of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common
sense. In that instance the fact that a combination was obvious to try
might show that it was obvious under §103.
KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. The facts in support of this rationale
are the same as those given above. Based on those facts, we hold that it would
have been prima facie obvious for an artisan desirous of replacing the pure
aluminum in the connector housing of the Admitted Prior Art with Pyzik’s Al—
B—C composite material to try different volume percentages of the ceramic
material, including percentages at and less than 60 percent, in order to determine
which volume percentages yield a composite material that is suitable for making an
electrically conductive housing. This prima facie case for obviousness, like the
Examiner’s prima facie case, has not been rebutted by evidence of unexpected
results.

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DECISION
The 35 U.S.C. § 103(a) rejection of claims 1-5 for obviousness over the
Admitted Prior Art in view of Pyzik is affirmed.
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. §§ 41.50(f) and
41.52(b).
AFFIRMED

pgc

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