Ex Parte Fujita et al

Patent Trial and Appeal Board

Oct 19, 2016

12728450 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121728,450 03/22/2010
20792 7590
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
10/19/2016
FIRST NAMED INVENTOR
Masahiro Fujita
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.
5576-220 5414
EXAMINER
COHEN, BRIAN W
ART UNIT PAPER NUMBER
1754
MAILDATE DELIVERY MODE
10/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO FUJITA, TOMOHARU YAMAMOTO,
and HIROOMI TANAKA
Appeal2015-002452
Application 12/728,450
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
BRIAND. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 1, 5, and 9 under 35 § U.S.C. 103(a)
1 According to the Appellants, the real party in interest is Suzuki Motor
Corporation (App. Br. 3).
Appeal2015-002452
Application 12/728,450
,.. -t • -t • , £""11"T , "11""\//')"ll"T , "IA/,..,1. over tne conrnmea pnor an or Yamamoto , ~bb, ~ Y amamoto , 4b 1, J
Wehrmann4 and Usami.5
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter (emphasis added):
1. An anodic oxidation method of an aluminum or aluminum
alloy member by applying a voltage to a process component immersed
in a processing bath, the process component made of an aluminum
die-cast material containing at least one of an impurity and an
additive, the method comprising:
disposing a pair of negative plates so that the negative plates
face the process component; and
repeatedly performing a process of applying a positive voltage
to the process component and a process of removing charges by using
a power supply apparatus including
an anodizing direct-current power source,
a discharge direct-current power source,
a switch configured to connect the process component
and the pair of negative plates to any one of terminals of the anodizing
direct-current power source and the discharge direct-current power
source, the terminals having polarities opposite to each other, and
capacitors and regeneration circuits connected to the
respective power sources in parallel to the process component and the
pair of negative plates,
2 Yamamoto et al., US 2006/0037866 Al (hereinafter "Yamamoto '866"),
published Feb. 23, 2006.
3 Yamamoto et al., JP 2006-083467 (hereinafter "Yamamoto '467"),
published March 3, 2006.
4 Wehrmann, US 3,824,159, issued Jul. 16, 1974.
5 Usami et al., JP 08-100290, published Apr. 16, 1996.
2
Appeal2015-002452
Application 12/728,450
wherein a voltage to be applied to the process component made
of an aluminum diecast material in the step of removing the charges is
regulated to be in a range of-22 to -11 V, and wherein the value of the
positive voltage is in a range of 80 to l50V.
ANALYSIS
Upon consideration of the appeal record including the Appellants'
position in this appeal as set forth on pages 5-10 of the Appeal Brief, 6 we
affirm the Examiner's rejection for the reasons stated by the Examiner (Final
Office Action mailed Mar. 11, 2014, 2-5; Examiner's Answer mailed
October 20, 2014, 3-14). We add the following for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
6 The Reply Brief reiterates these arguments, and discusses for the first time
Examples 2, 3 and Figs. 6, 7 in the Specification as evidence of unexpected
results. Any new arguments and new facts relied upon in the Reply Brief
which were not raised or relied upon in the Appeal Brief will not be
considered by the Board unless good cause is shown. 37 C.F.R.
§ 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal."). In any
event, it is well settled that the burden of establishing unexpected results
rests on the party asserting them. In re Klosak, 455 F.2d 1077, 1088 (CCPA
1972).
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Appeal2015-002452
Application 12/728,450
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellants' main arguments focus on a lack motivation to select the
positive voltage range of Wehrmann, or the negative voltage range of
Usami, in the method of Yamamoto '866/Yamamoto '467 (App. Br. 6-10).
We disagree for reasons well stated by the Examiner (Ans. 9-14).
As aptly pointed out by the Examiner, Yamamoto '866 teaches the
application of positive and negative voltage ranges that "may be preferably"
ranges with endpoints very close to the claimed ranges (Yamamoto '866,
i-f 71; Ans. 13). Thus, Yamamoto '866 suggests other voltages are
permissible. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (all disclosures of the prior art, including unpreferred
embodiments, must be considered).
Furthermore, a "recognition in the prior art that a property is affected
by the variable is sufficient to find the variable result-effective." In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As indicated
by the applied prior art, the voltage applied for the positive and negative
steps is a result-effective variable, and the prior art exemplifies overlapping
ranges for both the positive and negative voltages (Ans. generally).
Moreover, it is well settled that it would have been obvious for an artisan
with ordinary skill to develop workable or even optimum ranges for result-
effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results). Thus, the use of -11 V for the
4
Appeal2015-002452
Application 12/728,450
,• ... ,• , .. l""\ATTr'" , .. •,• ... ,• , '7• negauve app11cauon step ana ~u v ror me posn1ve app11cauon step, 1s
deemed within the level of ordinary skill in the art over the Yamamoto '866
teaching of "may be preferably from -1 OV to OV" and "may be preferably
from 12V to 70V" (Yamamoto '866, i-f 71) and is even further buttressed by
the teachings of Wehrmann for positive voltages from 100 to 150V and
Usami for negative voltages in the range of -10 to -30V for reasons
explained by the Examiner.
Thus, Appellants have not shown reversible error in the Examiner's
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have used the voltage ranges claimed and as
explicitly exemplified in Usami and Wehrmann in the negative/positive
application steps of Yamamoto '866/Yamamoto '467. In re Keller, 642 F.2d
413, 425-26 (CCPA 1981) ("The test for obviousness ... is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art."); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.").
To the extent that the Appellants are arguing unexpected results for
the first time in the Reply Brief, these remarks are untimely (see previous
footnote 6). Furthermore, Appellants have not provided the required side-
by-side comparison of the claimed invention with the closest prior art which
is commensurate in scope with the claims, and explained why the results
7 While claim 1 recites more narrow ranges, Appellants' Specification states
that the positive voltage applied may be from 20 to 150V, and the negative
voltage applied may be from -22 to -7V (Spec. 8: 10-18).
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Appeal2015-002452
Application 12/728,450
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); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed.
Cir. 1983). Notably, Specification Examples 2 and 3 use positive voltages
that are outside the claimed range.
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
6