HITACHI METALS, LTD.

Patent Trials and Appeals Board

Jun 30, 2020

14780860 - (D) (P.T.A.B. Jun. 30, 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.
14/780,860 09/28/2015 Futoshi KUNIYOSHI Q222509 9418
23373 7590 06/30/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
SU, XIAOWEI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FUTOSHI KUNIYOSHI, RINTARO ISHII,
TAKESHI NISHIUCHI, and TSUNEHIRO KAWATA

Appeal 2019-004860
Application 14/780,860
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 7, 10, 11, and 13–15. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hitachi
Metals, Ltd. See Appeal Brief dated Aug. 28, 2018 (“Appeal Br.”) 2.
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CLAIMED SUBJECT MATTER

The present application generally relates to certain sintered magnets
that contain a rare-earth metal, a transition metal, and boron (often referred
to as “R-T-B-based” sintered magnets). Specification filed Sept. 28, 2015
(“Spec.”) ¶ 2. The Specification teaches that R-T-B-based sintered magnets
have been known for high performance and have been used in motors for
hybrid vehicles, electric vehicles, and home appliances. Id.
The Specification further indicates that, conventionally, dysprosium
(often referred to by its symbol “Dy”) has been used to increase coercivity
(“HcJ”) in R-T-B sintered magnets. Id. ¶ 4. Dysprosium, however, “has
problems such as unstable supply and price fluctuations.” Id. ¶ 5.
Additionally, it may cause the residual magnetic flux density (“Br”) of the
magnet to decline. Id. Accordingly, “there is a need to develop technology
for improving HcJ of the R-T-B-based sintered magnet without using heavy
rare-earth elements such as Dy.” Id. The Specification describes a magnet
that “has been made so as to solve the above problems and an object thereof
is to provide an R-T-B-based sintered magnet having high Br and high HcJ
without using Dy.” Id. ¶ 9. This is done “by optimizing the contents of R,
B, and Ga.” Id. ¶ 18.
Claim 7 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:

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7. An R-T-B based sintered magnet including an Nd2Fe14B
compound as a main phase comprising:
the main phase,
a first grain boundary phase located between two main
phases, and
a second grain boundary phase located between three or
more main phases,
wherein the composition of the R-T-B based sintered
magnet comprises:
R: 29.0% by mass or more and 31.5% by mass or less,
wherein R is Nd and/or Pr,
B: 0.86% by mass or more and 0.90% by mass or
less,
Ga: 0.4% by mass or more and 0.6% by mass or
less,
Al: 0.5% by mass or less, including 0% by mass,
balance being T, wherein T is Fe or transition metal
elements comprising Fe, and inevitable impurities,
wherein an R-Ga phase including R: 70% by mass or
more and 95% by mass or less, Ga: 5% by mass or
more and 30% by mass or less, and Fe: 20% by mass
or less, including 0% by mass, is present in the first
grain boundary phase,
wherein the R-T-B based sintered magnet does not
contain Dy, and
wherein the R-T-B based sintered magnet has a Br value
in a range of 1.35-1.40 T.
Appeal Br. 22 (Claims App.) (emphasis added; reformatted for clarity).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 7, 10, 11, and 13–15 are rejected under 35 U.S.C. §
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103 as being unpatentable over Kato et al. (US 2014/0290803
A1, published Oct. 2, 2014 (“Kato”)). Final Action dated
Mar. 30, 2018 (“Final Act.”) 3–5.
2. Claims 7, 10, 11, and 13–15 are rejected under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventors
regard as the invention. Examiner’s Answer dated April 2,
2019 (“Answer”) 3.
DISCUSSION
Rejection 1. The Examiner rejects claims 7, 10, 11, and 13–15 as
obvious over Kato. Final Action 3–5. In support of the rejection, the
Examiner finds that Kato teaches an R-T-B magnet that “contains 29.5-33
mass% R, 0.7-0.95 mass% B, 0.03-1.5 mass% M (M is at least one selected
from the group consisting of Al, Ga, Si, Ge and Sn), Fe accounts for
balance.” Id. at 3. The Examiner determines that “[s]ince M can be Ga in
the magnet of Kato et al., the magnet composition disclosed by Kato et al.
overlap the recited composition in claim 7 and 10 and therefore is a prima
facie case of obviousness.” Id. at 4. The Examiner further refers to Sample
13 of Kato which teaches a magnet “that contains 31.5 mass% Nd, 0.87
mass% B, 0.3 mass% Ga, 0.2 mass% Al and the balance is Fe.” Id. (citing
Kato, Table 1).
The Examiner further finds that, because Kato teaches a magnet
having an overlapping composition made by the same sequence of
processing steps, “one of ordinary skill in the art would [expect] the R-rich
grain boundary phase in the magnet of Kato et al. to meet the composition
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limitations of the first grain boundary phases recited in claims 7 and 13.” Id.
at 5.
Appellant alleges error on several bases. We first address Appellant’s
arguments regarding the Examiner’s prima facie case and next consider its
arguments regarding criticality.

Prima Facie Case
Appellant argues that the Examiner has not established a prima facie
case of obviousness because the Examiner has not adequately shown the
composition of the first grain boundary phase. Appeal Br. 20.
Claim 7 requires
[a]n R-T-B based sintered magnet . . . wherein an R-Ga phase
including R: 70% by mass or more and 95% by mass or less,
Ga: 5% by mass or more and 30% by mass or less, and Fe: 20%
by mass or less, including 0% by mass, is present in the first
grain boundary phase.

Id. at 22 (Claims App.). The Examiner finds that one of ordinary skill in the
art would expect this limitation to be met because the magnet of Kato has
the same composition as the claimed magnet and is made by the same
process steps. Final Act. 5.
Appellant argues that such finding is in error because not all process
conditions overlap. Appeal Br. 20. Appellant contends that the heat
treatment times and molding pressure taught by Kato differ from those
taught by the Specification. Id.
In the Answer, the Examiner determines as follows:
Kato discloses that the grain boundary in Example 13 contains
an Nd-Ga phase that contains 90 at% or more Nd (Paragraph
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[0079]). Assuming the grain boundary phase contains 90 at%
Nd and 10at% Ga, the Nd-Ga phase composition by mass% is
94.9 mass% Nd and 5.1 mass% Ga. Thus, the Nd-Ga grain
boundary phase in Example 13 of Kato contains the amount of
Nd and Ga overlaps the recited grain boundary composition in
claim 7 and therefore is a prima facie case of obviousness.

Answer 10–11. Appellant does not address such finding in its Reply Brief.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. Absent legal error or contrary factual evidence, those
findings can establish a prima facie case of obviousness. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003). Here, the Examiner finds that the
methods and materials taught by Kato would yield a first grain boundary
phase having the claimed composition. Final Act. 5. This is supported by
Kato’s teaching of a specific embodiment found to have a grain boundary
phase having the claimed composition. Answer 10–11 (citing Kato ¶ 79).
Appellant does not address this embodiment in its Reply Brief.
Given the foregoing, we determine that Appellant has not shown error
in the Examiner’s finding that Kato teaches a first grain boundary phase
having the claimed composition. Accordingly, we further determine that
Appellant has not shown error in the Examiner’s prima facie case of
obviousness.

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Criticality
Appellant argues that, even if the Examiner had established a prima
facie case of obviousness, such showing is overcome by evidence of “the
criticality of the claimed invention.” Appeal Br. 19; see id. 8–19.
Appellant argues that coercivity and residual magnetic flux density
are conventionally known to have an inverse relationship. Id. at 8.
Appellant further argues that the “present inventors found that by limiting
the R amount to 29.0% to 31.5% by mass, relatively high Hcj and Br can be
achieved.” Id. Appellant further asserts that “the present inventors also
found that, when the amount of B is limited to an extremely narrow range as
well as the amount of Ga being limited to 0.4% to 0.6% by mass, the R-T-B
based sintered magnet having the R amount of 29.0% to 31.5% by mass can
achieve an almost highest-spec of the magnetic properties such as Hcj and
Br.” Id. at 8–9.
Appellant argues that “there is a critical significance to the upper limit
(0.90% by mass) and lower limit (0.86% by mass) of the B amount.” Id. at
14; see id. at 10–14. In support of this contention, Appellant cites to data
from the Specification showing the coercivity and residual magnetic flux
density of certain magnets having fixed amounts of components other than
boron (B). Id. at 10–14. Appellant groups the data into Table A (Nd
29.00% by mass), Table B (Nd 30.00% by mass), and Table C (Nd 31.50%
by mass). Each table shows results for tests conducted on samples having
the neodymium content constant while varying the concentration of boron.
Appellant asserts that the data shows that “at least one of Br and Hcj
significantly deteriorate when the B amount is less than 0.86% by mass or
when the B amount is more than 0.90% by mass.” Id. at 13. Appellant
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contends that as a result “there is a critical significance to the upper limit
(0.90% by mass) and lower limit (0.86% by mass) of the B amount.” Id. at
14.
Appellant cites to similar information in support of its contention that
“there is a critical significance to upper limit (0.4% by mass) and lower limit
(0.6% by mass) of the Ga amount.” Id. at 14–15.
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 Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997)
(alteration in original) (citation omitted). “Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA
1981). Moreover, “[i]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984), quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995).
“It is the established rule that ‘objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.”’ Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed.
Cir. 2014) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). This is as
true for evidence of unexpected results as it is for any other type of objective
evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
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Cir. 2003) (“the applicant’s showing of unexpected results must be
commensurate in scope with the claimed range”).
Establishing unexpected results requires providing a comparison of
the claimed invention with the closest prior art which is commensurate in
scope with the claims, and showing that the result would have been
unexpected by one of ordinary skill in the art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (“When an article is said to achieve
unexpected (i.e. superior) results, those results must logically be shown as
superior compared to the results achieved with other articles.”).
In the Answer, the Examiner finds that “even though Example 13 and
Example 14 of Kato do not have the claimed amount of Ga and B, the
magnetic properties of Br and Hcj in Kato’s Examples are within the ranges
defined by the Appellants’ Examples 3-5, 8-10 and 13-15.” Answer 5.
The Examiner further finds that “the effects of B and Ga contents on
coercivity (Hcj) and residual flux density (Br) of a sintered R-T-B magnet
are well-known to one of ordinary skill in the art.” Id. The Examiner relies
upon U.S. Application No. 2015/0170810 A1, titled “Sintered Magnet,” to
Miwa et al. (hereafter “Miwa”) (of record). Id. at 5–6. The Examiner finds
that Miwa teaches an R-T-B magnet having a boron concentration of 0.7 to
0.95 mass %. Id. at 5. The Examiner quotes Miwa’s teaching that “[w]hen
the content of B is less than the above-described range . . . Hcj is likely to
decrease. On the other hand, when the content of B is more than the above-
described range, Hcj is also likely to decrease.” Id. at 6 (quoting Miwa ¶
28). In the same paragraph, Miwa teaches that “[t]he content of B may be
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0.75 to 0.93 mass%. With this range, further better Br and HcJ can be
obtained.” Id.
The Examiner further relies on Miwa as teaching that “[i]n order to
obtain HcJ and Br more successfully, the content of Ga may be 0.13 to 0.8
mass%.” Id. at 6 (quoting Miwa ¶ 31).
In view of these teachings of Miwa, the Examiner concludes that “it
would be obvious to one of ordinary skill in the art to optimize the amount
of B and Ga in a sintered R-T-B magnet in order to make a magnet having
desired Hcj and Br.” Id. at 6.
Appellant does not address such findings in its Reply Brief.
Considering the foregoing, including the coercivity and residual
magnetic flux density characteristics of the claimed sintered magnets relative
to those of Kato, we determine that Appellant has not established that its
result would have been unexpected by one of ordinary skill in the art.
In view of all of the above, considered collectively, we determine that
Appellant has not shown error in the Examiner’s determination that claims
7, 10, 11, and 13–15 would have been obvious over Kato.

Rejection 2. Pursuant to 37 C.F.R. § 41.39(a)(2), the Examiner
issued a new ground of rejection in the Answer determining claims 7, 10, 11,
and 13–15 to be indefinite. Answer 3. Rather than reopen prosecution,
Appellant elects to continue its appeal. Reply Br. 3–5; 37 C.F.R. § 41.39(b).
Claim 7 requires, in part, as follows:
An R-T-B based sintered magnet including an Nd2Fe14B
compound as a main phase comprising:
the main phase,
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a first grain boundary phase located between two main phases,
and
a second grain boundary phase located between three or more
main phases.
Appeal Br. 22 (Claims App.) (emphasis added). In the Answer, the
Examiner determines as follows:
It is unclear whether there is only one main phase or if there is
more than one main phase. During the examination for the
purposes of applying prior art, the examiner interpreted “between
two main phases” as “between two main phase grains” and
interpreted “between three or more main phases” as “between
three or more main phase grains.” However, it is now appreciated
that this is not what is recited in the claims.

Answer 3.
In its Reply Brief, Appellant asserts that one of skill in the art would
understand that “a first grain boundary phase located between two main
phases” as used in claim 7 “refers to a boundary phase between two grains
each comprising the main phase, such that there are two main phases in total
in that case.” Reply Br. 4 (emphasis in original). In support, Appellant
refers to the Specification which provides, in part, that “the inventors have
found that an R-Ga phase is present in a first grain boundary phase located
between two main phases (hereinafter sometimes referred to as a ‘two-grain
boundary phase’).” Spec. ¶ 18. In a similar vein, Appellant argues that the
claim limitation “a second grain boundary phase located between three or
more main phases” “refers to a boundary phase between three or more grains
each comprising the main phase, such that there are three or more main
phases in total in that case.” Reply Br. 4−5.
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During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, ¶ 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (B.P.A.I. 2008); In re
Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (“There are good reasons
why unnecessary incoherence and ambiguity in claim constructions should
be disapproved”).
Here, Appellant asserts that “main phases” as used in lines 4 and 5 of
claim 7 should be construed to mean grains comprising the main phase.
This, however, is not consistent with the plain language of the claim. As
drafted, claim 7 requires “a main phase comprising: the main phase [and]
two main phases, and . . . three or more main phases.” Accordingly, there is
ambiguity as to the meaning of the limitations “main phase” and “main
phases” as used in claim 7. All other claims at issue depend from claim 7.
Accordingly, they are subject to the same defect.

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CONCLUSION

For the reasons set forth in the Final Action, the Examiner’s Answer,
and above, the Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 10, 11,
13–15
103 Kato 7, 10, 11,
13–15

7, 10, 11,
13–15
112(b) Indefiniteness 7, 10, 11,
13–15

Overall
Outcome
7, 10, 11,
13–15

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

AFFIRMED