Ex Parte Aruga et al

Patent Trial and Appeal Board

Oct 18, 2016

12374154 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/374, 154 01/16/2009 Y asuhiro Aruga
22850 7590 10/20/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
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.
336476USOPCT 6180
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/20/2016 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
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUHIRO ARUGA, RYOICHI OZAKI,
and YOSUKE MIW A
Appeal2016-000985
Application 12/374,154
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 2-28 (Non-Final Action mailed September 10,
2014). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
Claims 2, 4, and 6 are illustrative of the subject matter on appeal
(emphasis added):
2. A copper alloy sheet comprising:
Cu;
inevitable impurities;
from more than 0.04 to 0.50 mass% of Fe;
1 The real party in interest is stated to be Kabushiki Kaisha Kobe Seiko Sho
(Kobe Steel, Ltd.) (App. Br. 2).
Appeal2016-000985
Application 12/374,154
at most 0.003 mass% Mg;
from 0.01to0.15 mass% of P;
wherein the copper alloy sheet has an improved
stampability which is provided by a microstructure in
which a value obtained by dividing the halfvalue-width of
the intensity of diffraction of {311} plane in a surface of
the sheet, by its peak height, is 0. 015 or more.
4. A copper alloy sheet, comprising:
Cu·
'
inevitable impurities;
from more than 0.04 to 0.50 mass% Fe;
at most 0.003 mass% Mg; and
from 0.01to0.15 mass% P,
wherein the copper alloy sheet has an improved
softening resistance which is provided by a
microstructure in which a ratio (1 (200)11 (220)) of the
intensity (1 (200)) of diffraction of the (200) plane in a
surface of the sheet, to the intensity (1 (220)) of
diffraction of the (220) plane, is 0.3 or less.
6. A copper alloy sheet, comprising:
Cu;
inevitable impurities;
from more than 0.04 to 0.50 mass% Fe;
at most 0.003 mass% Mg; and
from 0.01to0.15 mass% P,
wherein the copper alloy sheet has an improved
resistance of peel off of an oxidation film which is
provided by a texture in which two crystals adjacent
to each other having an orientation difference between
them of 15° or less are viewed that they are located in the
same crystal plane, an orientation distribution density
from Brass orientation measured by crystal orientation
analysis with an Electron Backscatter Diffraction Pattern
(EBSP) obtained by an Field Emission Scanning Electron
Microscope (FE-SEM), is 25% or more.
2
Appeal2016-000985
Application 12/374,154
The Examiner maintained the following rejections:
Claims 2-28 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogura (JP 2000-328157, published Nov. 28, 2000, as
translated) (Ans. 2, 3).
Claims 2-28 were provisionally rejected as unpatentable on the
grounds of obviousness-type double patenting over co-pending Application
13/585,076 (Non-Final Action 4, 5; Ans. 4).2
ANALYSIS
At the outset, we note that the provisional obviousness-type double
patenting rejection is not addressed by Appellants (generally App. Br.).
Accordingly, we summarily affirm this rejection.
With respect to the § 103 rejection, after consideration of the record
before us, a preponderance of the evidence supports Appellants' position
that the Examiner has not shown that Ogura teaches or would have
suggested the copper alloy sheet having specific microstructure properties as
recited in claims 2, 4, and 6. (App. Br. 21-31; Reply Br. 4--25). We add the
following for emphasis.
The Examiner has not refuted the Appellants' position that it was well
known in the field of metal alloys that the manner in which the composition
is processed affects the resultant characteristics/properties of the alloy (see
Ans. generally; App. Br. 9). Appellants aptly state the Examiner has not
adequately explained how one of ordinary skill in the art would have
2 Co-pending 13/585,076 is also on appeal (Appeal No. 2015-001617) (App.
Br. 2).
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Appeal2016-000985
Application 12/374,154
modified Ogura so as to arrive at the present microstructure properties (id.).
Appellants contend the Examiner "has also not articulated a basis for why
there would have been motivation to achieve the required structure claimed",
which is "the inventors' discovery" (App. Br. 10).
Appellants further state:
As explained previously, the specification makes clear
that different processing conditions, see Table 2 and
comparative examples 15-17 discussed further in paragraphs
[0171]-[0176] and Table 3 and comparative examples 15-
17 discussed further in paragraphs [0230]-[0234], yield
different structures. Because Ogura has no salient teachings in
this regard, it cannot be established as a matter of law or fact
that Ogura necessarily (which is the standard for inherency) has
the claimed properties and structure.
Thus, the evidence of record shows that absent some
teaching germane to controlling the intensity of diffraction
and/or the dislocation density issues that is addressed by the
processing of the composition, Ogura cannot legally nor factual
support the contention that the microstructure defined in the
present claims is ''expected'' as alleged in the rejection.
(App. Br. 10-11.)
On this record, the Examiner has not established why it would have
been obvious to optimize the process of Ogura so as to result in a copper
alloy sheet having the claimed microstructure (Ans. 2-3.) The Examiner's
position is premised on Ogura "indirectly teach[ing]" or "hint[ing]" that the
claimed parameters are all result effective variables (Ans. 4). However, this
falls short of Ogura recognizing that the parameters as claimed are result
effective variables, or why one would have expected these properties to be
present in Ogura, or had reason to modify Ogura's process in a particular
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Appeal2016-000985
Application 12/374,154
manner that would result in the claimed microstructure properties. A
variable must be art-recognized as result-effective before it can be deemed to
be subject of routine optimization. In re Antonie, 559 F.2d 618, 620 (CCPA
1977). On the record before us, the Examiner has not adequately explained
how Ogura establishes that the recited properties are properties which one
skilled in the art would have recognized as result-effective variables in the
context of the claimed invention (see generally Ans.).
For example, the Examiner has not shown that Ogura recognizes that
such microstructure parameters as recited in each of independent claims 2, 3,
and 6 are associated with any specific advantageous properties of a copper
alloy sheet (id.). The Examiner has also not explained how meeting the
required formula in Ogura which dictates a ratio of [1(220) + 1[311}] planes
to the 1(200) plane to be 0.4 or more would lead one of ordinary skill to a
ratio of the 1(220) plane to the (I)200 plane being 0.3 or less as recited in
claim 3 (id.; see also e.g., Reply Br. 2). Further, the Examiner has not
identified any teaching in the applied prior art that would direct one of
ordinary skill in the art to modify its process in a particular manner to
provide the microstructure properties recited in claims 2, 3, and 6 (see
generally Ans.).
In light of these circumstances, and for the reasons discussed by
Appellants, we are constrained to agree with Appellants that the Examiner
has not established a prima facie case of inherency or obviousness for the
claimed properties, nor provided any persuasive line of technical reasoning
that the prior art teaches or would have suggested the claimed copper alloy
with a microstructure as claimed in each of claims 2, 3, and 6 (see generally
Ans.; App. Br.; Reply Br.).
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Appeal2016-000985
Application 12/374,154
Under these circumstances, we reverse the § 103 rejection on appeal.
DECISION
The Examiner's provisional obviousness type double patenting
rejection is affirmed; however, the Examiner's 103 rejection is reversed.
The decision of the Examiner 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)(l).
AFFIRMED
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