Ex Parte Nakai et al

Patent Trial and Appeal Board

Mar 5, 2019

13509196 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/509, 196 05/10/2012 Junichi Nakai
22850 7590 03/07/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
398039US99PCT 2079
EXAMINER
RICKMAN, HOLLY C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
03/07/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI NAKAI and YUKI TAU CHI
Appeal2017-004987
Application 13/509,196
Technology Center 1700
Before DONNA M. PRAISS, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 7, 8, 11, 12, and 20-22. An oral hearing was held on February
5, 2019. 1 We have jurisdiction under 35 U.S.C. § 6(a).
We AFFIRM.
1 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2017-004987
Application 13/509,196
The claimed invention is directed to a film comprising an Ag alloy
comprising Ag and having a film thickness ranging from 150 to 270 nm with
a surface roughness Ra of 1.0 nm or less. App. Br. 2. The film is used to
rapidly cool a recording medium after heating in the recording process
(thermal diffusion). Spec. 3. Claim 1 is illustrative of the inventive subject
matter and is reproduced below:
1. A film, comprising a Ag alloy comprising Ag, and
having
a surface roughness Ra of 1. 0 nm or less,
a thermal conductivity of 100 W /(m· K) or more,
a thermal diffusivity of 4.0 x 10- 5 m 2/s or more, and
a film thickness ranging from 150 to 270 nm
wherein the Ag alloy comprises 0.05% to 0.8% by atom
of at least one of Nd and Y and 0.05% to 0.5% by atom of Bi.
Appellants2 (see generally Appeal Brief) request review of the
Examiner's decision to finally reject claims 1--4, 7, 8, 11, 12, and 20-22
under 35 U.S.C. § I03(a) as unpatentable over Tauchi (US 2006/0182991
Al, published August 17, 2006). Final Act. 4; App. Br. 3. 3
Appellants present arguments only for independent claim 1 and
dependent claims 2, 3, 20, and 21. See generally Appeal Brief. We select
2 Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.) is identified as the
real party in interest. App. Br. 1.
3 The Examiner's rejection statement has been modified to reflect the
cancellation of claim 10. App. Br. 3; Ans. 3. We also note that the
Examiner withdrew the provisional rejection of claims 1--4, 7, 8, 10-12, and
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Application 13/509,196
claim 1 as representative of the claims on appeal. Dependent claims 4, 7, 8,
11, 12, and 22 stand or fall with independent claim 1. App. Br. 4. We
address dependent claims 2, 3, 20, and 21 separately.
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejection of claims 1--4, 7, 8, 11,
12, and 20-22 for the reasons presented by the Examiner in the Final Office
Action and the Answer. We add the following for emphasis.
Claim 1
We refer to the Examiner's Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 4---6.
Tauchi is directed to an Ag alloy film that can function as a thermal
diffusion film. Tauchi ,r 8. Briefly, the Examiner finds that Tauchi discloses
an Ag alloy film having surface roughness within the claimed range for
surface roughness of 1.0 nm or less. Final Act. 5; Tauchi ,r 158, Tables 1, 2,
9, 10. The Examiner also finds that Tauchi discloses Ag alloy films having
thicknesses of 50-200 nm that also overlap the claimed range for thickness
of 150 to 270 nm. Final Act. 5---6; Tauchi ,r 65. The Examiner determined
that a prima facie case of obviousness exists because the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, absent a showing to the
contrary. Final Act. 5---6.
20 on the ground of nonstatutory double patenting in view of the submission
of a Terminal Disclaimer. Ans. 5.
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Application 13/509,196
There is no dispute by Appellants that Tauchi teaches an Ag alloy film
having a surface roughness within the claimed range for this property. App.
Br. 5. Appellants' principal argument is centered on whether Tauchi teaches
the claimed surface roughness for a film having a claimed thickness of 150
to 270 nm. Id. Appellants acknowledge that Tauchi teaches films having
thicknesses that overlap the claimed thickness range, but argue that Tauchi
only exemplifies the claimed roughness for films having a thickness no
greater than 100 nm, outside the claimed range. Id. Thus, Appellants argue
that, absent undue experimentation, there is no reasonable expectation that
Tauchi's thicker films will have the claimed surface roughness. Id.
Appellants also contend that Tauchi's disclosure teaches away from the
claimed invention. Id. at 28-29.
We are unpersuaded of Examiner error by these arguments. It is well
settled that a reference stands for all of the specific teachings thereof as well
as the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992). As noted above, the Examiner finds Tauchi discloses a surface
roughness of less than 1 nm for Ag alloy films is desirable as indicative of
high durability. Ans. 6-7; Tauchi ,r 158. There is no disclosure in Tauchi
that associates this surface roughness range to a film having a thickness of
only 100 nm. Thus, the Examiner has provided a reasonable basis for one
skilled in the art to infer that it would be desirable for Tauchi's films having
thicknesses of 50-200 nm to also have a surface roughness of less than 1
nm.
Appellants also argue that Tauchi only exemplifies Ag alloy films
having a thickness of no greater than 100 nm as having a surface roughness
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Application 13/509,196
of less than 1 nm. App. Br. 15-16. Appellants further assert that they
discovered that surface roughness increases at a rate of more than 50%
higher as the thickness of the deposited Ag alloy film increases from 50 to
100 nm than it does as the thickness of the deposited Ag alloy film increases
from 150 to 270 nm. Id. at 26. Thus, Appellant argues that Tauchi would
not have led and enabled persons having ordinary skill in the art to make and
use the claimed Ag alloy film without undue experimentation because
Tauchi does not recognize that difference. Id.
We are unpersuaded of Examiner error by these arguments. It is well
settled that a reference may be relied upon for all that it discloses and not
merely the preferred embodiments as suggested by Appellants. See Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("[ A ]11 disclosures of the prior art, including unpreferred embodiments, must
be considered." (Quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining
that a prior art reference's disclosure is not limited to its examples).
Tauchi' s exemplified embodiments are preferred embodiments. Tauchi
,r 99. Appellants have not directed us to any portion of Tauchi that limits the
desirable surface roughness of less than 1 nm to just the exemplified Ag
alloy films having a thickness of no more than 100 nm.
Even assuming arguendo that one skilled in the art would have
expected from Tauchi' s disclosure that surface roughness increases linearly
at the same fast rate over the full range of film thicknesses from 50-300 nm
as for film thicknesses of 100 nm or less, as allegedly shown in Appellants'
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Figure 6 (App. Br. 13)4, extrapolating the plotted line based on this
assumption suggests that there is an overlapping range above a thickness of
150 nm where the surface roughness Ra is 1.0 nm or less, as claimed. See
Figure 6 below.
FIG. 6
50 100 150 200 250 300
FILM THICKNESS (nm)
Figure 6 is a graph showing the relationship between surface
roughness and the thickness of a Ag alloy film.
Based on Appellants' contention, Tauchi enables one skilled in the art
to make and use the claimed invention over a limited overlapping range and,
thus, supports the Examiner's conclusion of obviousness. See In re
4 Appellants state that Tauchi' s Tables 9 and 10 have surface roughness Ra
values ranging from 0.50--0.58 nm that are consistent with the results
reported in Appellants' Figure 6 for Ag-Bi-Nd alloy films having
thicknesses ranging from 50 to 100 nm. App. Br. 5. However, Appellants
have not directed us to any evidence that adequately establishes that
Tauchi's data is in fact represented in that Figure. Given that the reference
to Tauchi and the instant application are owned by the same assignee
(Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.)) and share two
common inventors, the reference to Tauchi is Appellants' own prior art and
Appellants are in the best position to explain the reference.
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Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of obviousness.)
Therefore, Appellants' arguments do not point to error in the
Examiner's conclusion of obviousness.
Appellants also allege impermissible hindsight because the Examiner
noted that Appellants' Figure 6 essentially agrees with Tauchi for the
desirability of a surface roughness of less than 1 nm. App. Br. 16.
We are also unpersuaded by this argument. As discussed above, the
Examiner has provided a reasonable basis for one skilled in the art to infer
from Tauchi's disclosure that it would be desirable for Tauchi's films having
thicknesses of 50-200 nm to also have a surface roughness of less than 1
nm. The Examiner's reference to Appellants' Figure 6 (Final Act. 5-6)
merely notes that Tauchi is consistent with the Specification in recognizing
that a surface roughness of less than 1 nm is desirable for an Ag alloy film.
Appellants contend that Figure 6 unexpectedly shows that films
having a thickness ofup to 270 nm have a surface roughness of 1 nm or less.
App. Br. 13-14.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F .2d 1048,
1052 (CCP A 197 6). The burden of establishing unexpected results rests on
Appellants. Appellants may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
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Application 13/509,196
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After weighing Appellants' evidence in support of patentability, we
agree with the Examiner's determination that a preponderance of the
evidence weighs in favor of obviousness. Ans. 8-9.
We first note that there is no recognition in the Specification that the
data shown in Figure 6 describes anything unexpected. Spec. 25-26.
Instead, the discussion of Figure 6 points out the desirability of a film having
a surface roughness of 1 nm or less. Id. at 26.
Further, as both Appellants and the Examiner recognize, the data
shown in Figure 6 is for a single Ag alloy composition. Ans. 8; App. Br. 14.
Appellants contend that nonobviousness of a broader claimed range can be
supported by evidence from testing a narrower range if one of ordinary skill
in the art would be able to determine a trend in the exemplified data, which
would allow the artisan to reasonably extend the probative value thereof.
App. Br. 20. However, Appellants have not adequately explained why this
single composition is representative of the broad scope of Ag alloy
compositions claimed so as to provide an adequate basis to support a
conclusion that other embodiments falling within the claim will behave in
the same manner. Moreover, Appellants' Reply Brief dated January 25,
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201 7 does not address the deficiencies of the showing noted by the
Examiner.
Thus, on this record, Appellants have not adequately explained why
the evidence shows the claimed roughness would have been unexpected by
one of ordinary skill in the art and that the testing is reasonably
commensurate in scope with the claims.
Claims 2, 3, 20, and 21
We refer to the Examiner's Final Office Action for a complete
statement of the rejection of claims 2, 3, 20, and 21. Final Act. 4---6.
For these claims, Appellants also rely of the data shown in Figure 6 to
establish unexpected results. App. Br. 29-33.
After further consideration of the data shown in Figure 6 as
establishing unexpected results, we maintain our determination that
Appellants have not adequately explained why the evidence shows an
unexpected improvement or is reasonably commensurate in scope with the
claims for the reasons presented above and given by the Examiner.
Accordingly, we affirm the Examiner's prior art rejection of claims
1--4, 7, 8, 11, 12, and 20-22 under 35 U.S.C. § 103(a) for the reasons
presented by the Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 1--4, 7, 8, 11, 12, and
20-22 under 35 U.S.C. § 103(a) is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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