Ex Parte Baker et al

Patent Trial and Appeal Board

Oct 23, 2017

12089876 (P.T.A.B. Oct. 23, 2017)

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.
12/089,876 04/23/2010 Ian Baker 479964 7217
30955 7590 10/25/2017
T ATHROP ^ GAGV. T T P EXAMINER
4845 PEARL EAST CIRCLE LEE, REBECCA Y
SUITE 201
BOULDER, CO 80301 ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
patent @ lathropgage. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN BAKER and QI ZENG
Appeal 2017-003426
Application 12/089,8761
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 3, 5-7, 21, and 24-28, which
constitute all the claims pending in this application.2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is The Trustees of
Dartmouth College. (Appeal Br. 2).
2 Claims 15-20 have been withdrawn from consideration due to a lack of
unity of invention in this application filed under 35 U.S.C. § 371.
Appeal 2017-003426
Application 12/089,876
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. An intermetallic composition comprising a mechanically
milled nano structured manganese aluminum alloy comprising at
least 80% of a nanocrystalline magnetic x phase and having
permanent magnetic properties, wherein the alloy has a
macroscopic composition of MnxAly,
X ranges from 53-56 atomic %,
Y ranges from 44-47 atomic%,
and the alloy further comprises non-magnetic phases.
The Examiner maintains the following rejections:
(a) claims 24-28 under 35U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
(b) claims 1, 3, 5-7, 21, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Crew et al. (D.C. Crew et al., “MnAl and MnAlC
Permanent Magnets Produced by Mechanical Alloying,” 32 Scripta
Metallurgica et Materialla 315-318 (1995)) (“Crew”) in view of Ermakov
(A.E. Ermakov, et al., “Magnetization Reversal Processing in MnAl-Based
Permanent Magnets,” 2 IEEE Transactions on Magnetics 1924-1926
(1988)) (“Ermakov”) and Morisako (A. Morisako et al., “Synthesis of
ferromagnetic x phase of MnAl films by sputtering,” 61 J. Appl. Phys.4281-
4283 (1987)) (“Morisako”);
(c) claims 24-27 under 35 U.S.C. § 103(a) as unpatentable over
Yanagiya (JP 2002-356703 A, published Dec. 13, 2002) (“Yanagiya”) in
view of Crew, Ermakov, and Morisako; and
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Application 12/089,876
(d) claims 1, 3, 5-7, 21, and 24-28, provisionally, on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-5 of Application 13/164,495.
ANALYSIS
The §112 rejection
Claims 24-28 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
The Examiner finds a lack of written description support for the
saturation magnetization recited in claim 24 and the coercivity recited in
claim 27 (Ans. 2).
Claims 24 and 27
The rejections of claims 24 and 27 regard a similar issue because the
recitations rejected by the Examiner are directed to numerical ranges that are
greater than a minimum value (i.e., saturation magnetization greater than 65
emu/g in claim 24 and coercivity greater than 3.5 kOe in claim 27).
Therefore, we address these separately argued claims together.
Appellants argue that paragraph 38 of Appellants’ Specification and
Figures 13 and 14 of their disclosure support claims 24 and 27 (Appeal Br.
12). The Examiner finds Figure 13 discloses saturation magnetization of
60-80 emu/g and Figure 14 discloses coercivity of 3^1 kOe but not the
claimed ranges of greater than 65 emu/g and greater than 3.5 kOe, which
include an infinite value (Ans. 10).
Appellants respond by contending the Examiner has acknowledged
support for saturation magnetization greater than 65 emu/g (e.g., by finding
Figure 13 discloses 65-80 emu/g) and acknowledges support for coercivity
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Application 12/089,876
greater than 3.5 kOe (e.g., by finding Figure 14 discloses coercivity of 3—4
kOe) but argue one of ordinary skill in the art would understand that
saturation magnetization and coercivity cannot practically have values of
infinity (Reply Br. 3—4). In other words, Appellants assert claims 24 and 27
would be limited to practical values of saturation magnetization and
coercivity, not infinite values. These arguments are not persuasive because
Appellants have not directed us to any evidence of what these practical
values for saturation magnetization and coercivity would be. Moreover,
claims 24 and 27 do not recite upper limits and therefore encompass values
significantly beyond the ranges described and supported in the disclosure, as
the Examiner finds. In re Wertheim, 541 F.2d 257, 263-264 (CCPA 1976)
(solids contents ranging from 25-60% did not provide written description
for “at least 35%”).
Therefore, for these reasons and those set forth in the Examiner’s
Answer, we sustain the Examiner § 112, first paragraph, rejections of claims
24 and 27.
Claims 26 and 28
The rejections of claims 26 and 28 regard a similar issue. Therefore,
we address these separately argued claims together.
The Examiner finds a lack of written description support for the
atomic % of carbon recited in claim 26 (i.e., greater than 0 to 1.0 atomic %
carbon) and the annealing temperature recited in claim 28 (i.e., between
350°C to less than 400°C for 10 min) (Ans. 2). Specifically, the Examiner
finds the cited passages disclose carbon compositions of 0-3 atomic % and
1-3 atomic % but not the recited range of 0-1 atomic % in claim 26 {id. at
10). The Examiner further finds the cited passages disclose annealing
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Application 12/089,876
temperatures of 350-600°C and 400°C but not the upper limit of less than
400°C recited in claim 28 {id.).
A Specification need not disclose the exact range recited in a claim in
order to satisfy the written description requirement. See Wertheim, 541 F.2d
at 265 (“The PTO has done nothing more than to argue lack of literal
support, which is not enough.”); Ralston Purina Co. v. Far-Mar-Co., Inc.,
772 F.2d 1570, 1575 (Fed. Cir. 1985) (rejecting the notion that ranges found
in the applicant’s claim language must correspond exactly to ranges
disclosed in the specification). Rather, a disclosure is sufficient when, as a
factual matter, persons skilled in the art would consider the claimed range as
part of the appellant’s invention. See Wertheim, 541 F.2d at 265 (“we are of
the opinion that, as a factual matter, persons skilled in the art would consider
processes employing a 35-60% solids content range to be part of appellants’
invention and would be led by the Swiss disclosure so to conclude.”
(specification disclosed range of 25-60% and specific embodiments of 36%
and 50% solids content)).
Here, the Examiner appears to find a lack of literal support for the
ranges recited in claims 26 and 28. The Examiner does not find or explain
that one of ordinary skill in the art would not consider the ranges recited in
claims 26 and 28 to be part of Appellants’ invention.
Appellants argue claim 26 is supported by paragraphs 8, 24, 38, and
original claims 2, 4, and 11 because they disclose ranges of 0-3 atomic %
carbon and a compositional boundary of 1 atomic % carbon (Appeal Br. 12;
Reply Br. 4). Paragraph 8 of Appellants’ Specification and original claims
2, 4, and 11 disclose a carbon composition of 0 to 3 atomic % and paragraph
38 of Appellants’ Specification discusses an atomic % of 1-3 for carbon and
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Application 12/089,876
its effect upon magnetic properties. Therefore, there is a basis for one of
ordinary skill in the art to understand that a carbon atomic % of greater than
0 to 1.0 % was part of Appellants’ invention.
With regard to claim 28, Appellants contend paragraph 33 supports
the claimed range of between 350°C to less than 400°C for 10 minutes (id. ).
Paragraph 33 discloses a range of 350°C to 450°C for annealing and an
anneal at 400°C.3 Similar to the disclosures relevant to claim 26, this
disclosure provides a basis for one of ordinary skill in the art to understand
that the range recited in claim 28 was part of Appellants’ invention.
In view of the above, we do not sustain the Examiner’s § 112, first
paragraph, rejections of claims 26 and 28.
The §103 rejection over Crew in view of Ermakov and Morisako
Claims 1, 3, 5-7, 21, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Crew in view of Ermakov and Morisako.
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims 1, 3, 5-7, 21, and 28 are unpatentable over the applied prior art. We
sustain the Examiner’s rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following primarily for emphasis.
3 Paragraphs 25 and 35 of Appellants’ Specification discloses an anneal at
400°C for 10 minutes.
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Appellants argue claims 1, 5-7, and 21 as a group and claims 3 and 28
as a group (Appeal Br. 4-10). We select claims 1 and 3 as representative
claims for these groups.
Claims 1, 5-7, and 21
Appellants’ principal argument on appeal is there would not have
been a reasonable expectation of success with some degree of predictability
to combine Crew, Ermakow, and Morisako, as in the Examiner’s rejection
(Appeal Br. 6-8; Reply Br. 6-9). Specifically, Appellants contend the
applied references do not disclose a composition comprising 43-56 atomic
% Mn and 45—47 atomic % aluminum and at least 80% nanocrystalline x
phase, as recited in claim 1, because Crew and Ermakov do not disclose a
nanocrystalline phase size, Morisako discloses nanocrystalline x phase for a
composition of 60 atomic % Mn and 40 atomic % Al, and it would not have
been predictable to apply the sputtering technique of Morisako to the
teachings of Crew (Appeal Br. 6-7; Reply Br. 6-8). Appellants further
assert the Examiner has not supported a conclusion of obviousness in view
of these deficiencies (Appeal Br. 8; Reply Br. 8-9).
Appellants’ arguments are unpersuasive. The Examiner finds Crew
discloses a nanostructured manganese aluminum alloy having a magnetic x
phase (Ans. 3). Crew is directed to MnAl alloys including the ferromagnetic
x phase (Crew 315:§ 1 Introduction). For microstructure size, Crew
discloses the annealed alloy includes x phase having a grain size similar to
that of the e phase prior to annealing, which was 300-500 nm (Crew 3 lb-
317:3.1 Structure).
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Appellants state in Table 1 at pages 6 and 11 of the Appeal Brief that
the composition of Crew is “Non-nanocrystalline (400 nm)” and state in
footnote 2 at page 11 of the Appeal Brief that “[t]he Office has
acknowledged that Crew, et al. do not expressly teach claimed
nanocrystalline grain size.” Appellants’ arguments are not persuasive. First,
Appellants have not limited “nanocrystalline” in claim 1 to exclude the x
phase grain sizes of 300-500 nm disclosed by Crew or otherwise defined
nanocrystalline to exclude such grain sizes. Thus, Crew alone may be
viewed as disclosing a MnAl alloy including nanocrystalline magnetic x
phase as recited in claim 1.
Second, the Examiner finds Crew discloses a nanocrystalline x phase
for its MnAl alloy (e.g., 400 nm) but not “the claimed nanocrystalline grain
size” (Ans. 3). As discussed above, claim 1 does not recite a grain size. It
appears the Examiner finds Crew does not disclose the grain size of
approximately 30 nm recited in dependent claim 21. To address this, the
Examiner finds Ermakov discloses that coercivity depends upon grain size,
with smaller grain sizes being preferred (Ans. 3). Ermakov studies the
ferromagnetic x phase in MnAl alloys and states coercivity for such alloys
strongly depends on its grain size (Ermakov 1924-26). Therefore, the
disclosure of Ermakov supports the Examiner’s findings.
Moreover, one of ordinary skill in the art would have understood that
Ermakov demonstrates the grain size of a MnAl alloy to be a result-effective
variable for coercivity of the alloy (see In re Applied Materials, Inc., 692
F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.”)). As a result, discovery of the optimum or workable ranges for
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Application 12/089,876
grain sizes that produce desirable coercivity values would have been obvious
via routine experimentation. Where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation {In re Aller, 220 F.2d 454, 456
(CCPA 1955)).
In view of the above, the grain size recited in claim 21 would have
been obvious over Crew and Ermakov alone. Nonetheless, Morisako further
demonstrates the obviousness of the grain size recited in claim 21 by
disclosing a MnAl alloy including the x phase can possess a grain size of
about 300 angstroms (30 nm) (Morisako 4281 introduction, 4283:Results
and Discussion). As noted above, Appellants argue it would not have been
predictable to apply the sputtering technique of Morisako to the teachings of
Crew (Appeal Br. 6-7). This argument is unpersuasive because the
Examiner does not rely upon the incorporation of Morisako’s sputtering
technique to achieve the grain size recited in claim 21. Moreover, Morisako
is not necessary to demonstrate the obviousness of claim 21 because the
combination of Crew and Ermakov is sufficient, as discussed above.
With regard to the atomic % ranges recited in claim 1, the Examiner
finds Crew discloses a composition of 70 wt% Mn and 30 wt% A1 (Ans. 3).
Alloy A in Table 1 at page 316 of Crew discloses this composition. The
Examiner finds this composition would convert to an atomic % of
approximately 54 atomic % Mn and 46 atomic % A1 (id.). Appellants do not
dispute the Examiner’s finding (Appeal Br. 6).
For the recitation of the composition “comprising at least 80% of a
nanocrystalline magnetic x phase,” as recited in claim 1, the Examiner finds
the composition of Crew comprises substantially the x phase (Ans. 3). The
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Application 12/089,876
disclosure of Crew supports this finding because Crew discloses that when
its Mn-Al alloy was milled, annealed, heat treated at 1050°C, quenched, and
then aged at 600°C for 10 minutes, which “caused the remaining c phase to
transform to the x phase” and x-ray diffraction showed “a small amount of (3
phase was also formed during ageing” (Crew 316-317:3.1 Structure). As
shown in Figure 1, curve (d), which corresponds to the aged sample, the
alloy is almost entirely the x phase.
In view of the above, Appellants’ arguments that the applied
references do not disclose or suggest a nanostructured Mn-Al alloy
comprising at least 80% of a nanocrystalline magnetic x phase, as recited in
claim 1, are unpersuasive. As a result, Appellants have not identified a
reversible error in the Examiner’s § 103(a) rejection of claim 1.
Claims 3 and 28
For claims 3 and 28, Appellants refer to the arguments set forth for
claim 1 above (Appeal Br. 9-10). As discussed above with regard to claim
1, these arguments do not identify a reversible error in the Examiner’s
rejection.
Appellants further contend claims 3 and 28 recite a combination of
features not disclosed or suggested by the applied references, specifically
“forming at least 80% of a nanocrystalline magnetic x phase in the specified
composition range by annealing a solid which has been milled to form a
nanocrystalline e phase” (Appeal Br. 10; Reply Br. 9). For the reasons
discussed above and in the Examiner’s Answer, the applied references
disclose a Mn-Al alloy that is milled and annealed so it has at least 80%
nanocrystalline magnetic x phase in the claimed compositional range, as
recited in claim 1 (which claim 3 depends from). We further note claim 3
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recites “milling the crushed solid to form a nanocrystalline c phase” and
“annealing the milled solid to form the nanocrystalline magnetic x phase.”
Therefore, claim 3 does not require the composition to include the c phase
with the x phase after annealing. As discussed above, Crew discloses
annealing a MnAl alloy to provide a nanocrystalline x phase.
In addition, the Examiner finds the process limitations set forth in
claims 3 and 28 are product-by-process limitations and Appellants have not
demonstrated that applied references would result in a different product
(Ans. 4). The prior art and claimed products appear to be the same, and we
agree that Appellants’ arguments do not demonstrate that the applied
references would produce a different product than that recited in claims 3
and 28.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claims 1,3, 5-7,
21, and 28 over Crew in view of Ermakov and Morisako.
The §103 rejection over Yanagiya in view of Crew, Ermakov, and Morisako
Claims 24-27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yanagiya in view of Crew, Ermakov, and Morisako.
For the rejection of claims 24-27, Appellants contend the combination
of the applied references fails to provide a reasonable expectation that would
successfully and predictably arrive at the claimed composition (Appeal Br.
11-12; Reply Br. 10-11). In particular, Appellants argue the references do
not disclose nanocrystalline x phase for the Mn-Al-C composition recited in
claim 24 {id.).
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Application 12/089,876
These arguments are unpersuasive. As discussed above, Crew
discloses a magnetic composition that includes nanocrystalline x phase.
Crew further discloses “[t]he addition of carbon to the alloy stabilizes the x
phase against decomposition [3] and improves both the magnetic properties
and ductility” (Crew 315:§ 1 Introduction). Thus, Crew discloses carbon
addition to be a result-effective variable for the stabilization of the x phase,
magnetic properties, and ductility. As a result, it would have been obvious
to modify the 70 wt% Mn, 30 wt% A1 alloy of Crew (which the Examiner
converts to approximately 54 atomic % Mn and 46 atomic % A1 (Ans. 3)) to
include carbon in some amount greater than 0, as recited in claim 24, to
determine the optimal or workable ranges for a composition that includes
stabilized x phase as well as excellent magnetic properties and ductility.
Nonetheless, the Examiner finds Yanagiya discloses a magnetic alloy
composition including 68-73 wt% Mn, 0.2-2.1 wt% C, and balance
aluminum, which overlaps the claimed composition for atomic % (Ans. 5).
Yanagiya discloses this composition in its abstract and thus supports the
Examiner’s finding. The Examiner finds Yanagiya does not disclose that the
composition is nanostructured, includes the x phase, and a non-magnetic
phase (e.g., P phase) {id.). However, Crew discloses these recitations, as
discussed above with regard to the rejection of claim 1, and the Examiner
provides a rationale to modify Yanagiya in view of Crew {id.). Like claim 1,
claim 24 also does not specify a grain size value. As a result, the
combination of Yanagiya and Crew also demonstrates the obviousness of the
composition of claim 24 and Appellants’ arguments do not identify a
reversible error in the Examiner’s rejection.
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In the Reply Brief, Appellants argue the proposed modification of
Yanagiya in view of Crew, Ermakov, and Morisako would have changed the
principle of operation of Yanagiya’s anisotropic magnet or rendered it
unsuitable for its intended purpose (Reply Br. 12-13). Appellants have not
shown good cause why these arguments could not have been presented in
the Appeal Brief.4 Therefore, we will not consider these arguments that
were newly raised in the Reply Brief. 37 C.F.R. § 41.41(b)(2). Nonetheless,
even if these arguments had been timely submitted, our analysis would have
remained the same because Appellants merely submit attorney arguments
that the material of Yanagiya would lose anisotropy after the modification.
Appellants do not direct us to any evidence demonstrating that the material
of Yanagiya would no longer be anisotropic after such a modification.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claims 24-27 over
Yanagiya in view of Crew, Ermakov, and Morisako.
Provisional Obviousness-Type Double Patenting Rejection
Claims 1,3, 5-7, 21, and 24-28 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-5 of Application 13/164,495.
Appellants do not submit arguments regarding the propriety of the
rejection, other than to state the rejection “will be addressed upon resolution
of the rejections under appeal” and that the claims cited in Application
4 To the extent Appellants would assert this argument is in response to the
Examiner’s finding that Appellants have not shown that the modification
“would have upset the composition of Crew” (Ans. 9), the Examiner
previously made this finding at page 12 of the Final Office Action.
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13/164,495 are withdrawn from consideration (Appeal Br. 13). We
therefore summarily affirm the Examiner’s non-statutory obviousness-type
double patenting rejection of claims 1,3, 5-7, 21, and 24-28.
DECISION
On the record before us, we:
A. sustain the Examiner’s decision to reject claims 24 and 27
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement;
B. do not sustain the Examiner’s decision to reject claims 26 and
28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement;
C. sustain the Examiner’s decision to reject claims 1, 3, 5-7, 21,
and 28 under 35 U.S.C. § 103(a) as unpatentable over Crew in view of
Ermakov and Morisako;
D. sustain the Examiner’s decision to reject claims 24-27 under
35 U.S.C. § 103(a) as unpatentable over Yanagiya in view of Crew,
Ermakov, and Morisako; and
E. sustain the Examiner’s decision to provisionally reject claims 1,
3, 5-7, 21, and 24-28 on the ground of nonstatutory obviousness-type
double patenting over claims 1-5 of Application 13/164,495.
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)(iv).
AFFIRMED
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