Ex Parte Gerster

Patent Trial and Appeal Board

Mar 7, 2016

11343558 (P.T.A.B. Mar. 7, 2016)

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. 11/343,558 01/31/2006 Joachim Gerster 707470-00043 5619 35161 7590 03/08/2016 DICKINSON WRIGHT PLLC 1875 Eye Street, NW Suite 1200 WASHINGTON, DC 20006 EXAMINER SU, XIAOWEI ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 03/08/2016 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 JOACHIM GERSTER ____________________ Appeal 2014-006798 Application 11/343,558 Technology Center 1700 ____________________ Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-006798 Application 11/343,558 2 Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s decision2 finally rejecting claims 1, 7-12, 14, 15, and 17-26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a magnetic component for a magnetically actuated fuel injection device (independent claims 1 and 24, and dependent claims 7-12, 14, 15, 17-23, and 26) and to a magnetic plunger (independent claim 25) for use in a solenoid valve of fuel injection systems. Claim 1 is illustrative: 1. A magnetic component for a magnetically actuated fuel injection device, adapted to operate in a corrosive fuel environment, comprising: in weight percent, 6% < Co < 20%, 6% < Cr < 15%, 0.005% ≤S ≤0.5%, 0% ≤Mo ≤3%, 0% ≤Si ≤3.5%, 0% ≤Al ≤4.5%, 0.01% ≤Mn ≤1%, 0% ≤Me ≤6%, where Me is one or more of the elements Sn, Zn, W, Ta, Nb, Zr and Ti, 0% ≤V ≤4.5%, 0% ≤Ni ≤5%, 0% ≤C < 0.05%, 0% ≤Cu < 1%, 0% ≤P < 0.1%, 0% ≤N < 0.5%, 0% ≤O < 0.05%, 0% ≤B < 0.01%, and the balance being essentially iron and the usual impurities; wherein the ratio Mn/S ≥l.7; and wherein the magnetic component is resistant to corrosion by corrosive fuel environments, such that no change, or only small corrosion spots are observed, after 150 hours exposure to a solution of gasoline, methanol, and corrosive water at 130 °C; wherein the resistivity of the magnetic component after annealing is greater than 0.4 μΩm; 1 Appellant identifies the real party in interest as Vacuumschmelze GmbH & Co. KG. Appeal Brief filed January 27, 2014 (“App. Br.”), 2. 2 Final Office Action mailed July 1, 2013 (“Final”). Appeal 2014-006798 Application 11/343,558 3 wherein the soft magnetic properties of the magnetic component are such that the magnetic component functions in a magnetically actuated fuel injection device; and wherein the magnetic component has been annealed at an annealing temperature at or below 800 °C. App. Br. 45 (Claims Appendix).3 Appellant seeks review of the following rejections: 1. Claims 1, 7-12, 14, 15, and 17-26 under 35 U.S.C. § 112, second paragraph as indefinite; 2. Claims 1, 8-12, 14, 15, and 17-23 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Shimao et al. (“Shimao”) (U.S. Patent Application Publication No. 2003/0034091 A1, published February 20, 2003); and 3. Claims 7 and 24-26 under 35 U.S.C. § 103(a) as obvious over Shimao. App. Br. 5-6. Rejection under 35 U.S.C. § 112 of Claims 1, 7-12, 14, 15, and 17-26 Each of independent claims 1, 24, and 25 recites that the magnetic component (claims 1 and 24) or magnetic plunger (claim 25) “is resistant to corrosion by corrosive fuel environments, such that no change[s], or only small corrosion spots are observed, after 150 hours exposure to a solution of gasoline, methanol, and corrosive water at 130 °C.” Appellant and the 3 Independent claims 24 and 25 differ from independent claim 1, inter alia, in that they recite a narrower range for the cobalt content of the claimed alloy of “10.5% < Co < 16%.” App. Br. 47-48 (Claims Appendix). Appeal 2014-006798 Application 11/343,558 4 Examiner disagree as to whether the term “small” is a relative term which renders the claims indefinite. See, e.g., App. Br. 6-8; see also, e.g., Examiner’s Answer mailed March 25, 2014 (“Ans.”), 2-3. “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the [applicant] regards as the invention.” 35 U.S.C. § 112 ¶ 2 (2011). In determining whether a claim is indefinite, “we employ a lower threshold of ambiguity when reviewing the pending claim for indefiniteness than th[at] used by post-issuance reviewing courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). We employ this standard “to guard the public against patents of ambiguous and vague scope” and “because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent.” Id. at 1211-12. Appellant refers to Table 6 in the Specification and contends “those of skill in the art, after reading [the] specification, would understand what a small corrosion spot resulting from a corrosion test looks like, particularly compared to a corrosion test result where corrosion pitting was observed.” App. Br. 7. Appellant further contends that “Table 6 provides a very good definition of what is meant by ‘small corrosion spots,’ and defines the term in a way that is easy for one of ordinary skill to comprehend.” Reply Brief filed May 26, 2014 (“Reply Br.”), 2. Table 6 is reproduced below. Appeal 2014-006798 Application 11/343,558 5 Table 6 depicts the results of corrosion testing performed in a gasoline/methanol/corrosive water solution on two commercially available alloys and five compositions comprising 13 wt% Cr, 0-20 wt% Co, and the balance Fe. Spec. ¶¶ 46, 48; Table 1. We do not find, and Appellant has not directed us to, any corresponding description in the Specification whereby it is possible to ascertain what is meant by the term “small” as used in the claims. Nor has Appellant provided persuasive evidence showing that one of ordinary skill in the art would have understood at what dimensions a corrosion spot is considered small. See App. Br. 8. Further, there is no indication as to how much the size of the spots vary from those obtained when testing the commercially available alloys. Because of this uncertainty, one of ordinary skill would be unable to determine the metes and bounds of claims 1, 7-12, 14, 15, and 17-26. Accordingly, we sustain the rejection of claims 1, 7-12, 14, 15, and 17-26 as indefinite under 35 U.S.C. § 112, second paragraph. Although we sustain the Examiner’s rejection of claims 1, 7-12, 14, 15, and 17-26 as indefinite, we need not speculate about the meaning of the indefinite language in order to consider the merits of the rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). Appeal 2014-006798 Application 11/343,558 6 Rejection under 35 U.S.C. § 102(b) of Claims 1, 8-12, 14, 15, 17-23 Claim 1 recites a magnetic component for a magnetically actuated fuel injection device. The Examiner finds, and Appellant does not dispute, that Shimao’s Example 27 teaches an alloy comprising the same components recited in claim 1, in amounts that fall within the ranges recited in independent claim 1. Final 4-5; see App. Br. 8-29. A table with the Examiner’s findings is reproduced below: Appeal 2014-006798 Application 11/343,558 7 Final 4-5. The Examiner recognizes that the alloy of Shimao’s Example 27 is annealed at 850-900 °C for recrystallization, and subsequently annealed for finishing at 850 °C, i.e., temperatures above the range of “at or below 800 °C” recited in the final wherein clause of claim 1, but determines that the difference in the annealing temperature recited in the claim and used by Shimao would not be expected to impart a difference in the claimed properties (e.g., corrosion resistance and resistivity). See, e.g., Final 5-6. The Examiner thus finds that the alloy of Shimao’s Example 27 would inherently possess the claimed properties. Id. at 6. The annealing temperature recitation in claim 1 is a product-by- process limitation. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.1985). Appellant contends it was unreasonable for the Examiner to find the annealing temperature used in Shimao’s Example 27, that is “at least 50 °C higher than the maximum recited in Appellant's claims” would result in an alloy possessing the same properties recited in the claims. App. Br. 12. Appellant provides detailed arguments (see id. 12-16), which include a discussion of evidence in the Specification, in support of its contention that the alloy produced using the higher annealing temperature used in Shimao’s Example 27 would not “necessarily have the same electrical resistivity properties, the same saturation polarization, or the same resistance to corrosion by fuel mixtures as the claimed alloys” (id. at 14). Appeal 2014-006798 Application 11/343,558 8 To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency, however, may not be established by probabilities or possibilities. Id. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. We are persuaded by Appellant’s arguments that the Examiner’s finding of inherency is not supported by a preponderance of the evidence. Accordingly, we do not sustain the Examiner’s anticipation rejection of claims 1, 8-12, 14, 15, and 17-23. Rejection under 35 U.S.C.§ 103(a) of Claims 1, 8-12, 14, 15, 17-23, and 26 As noted above, the Examiner acknowledges Shimao’s Example 27 is annealed at a temperature above the claimed range of “at or below 800 °C.” The Examiner contends it would have been obvious to have annealed the alloy of Shimao’s Example 27 at a temperature within the claimed range because Shimao teaches “annealing can be performed at 475 °C or 700 °C as long as the alloy has [a] Cr composition of 10% or less” (Final 5 (citing Shimao ¶ 19)), and the Cr content in Shimao’s Example 27 is 8% (see id. at 4). See also Ans. 9-10. The Examiner finds that Shimao’s Example 27, when modified to use an annealing temperature of 475 °C or 700 °C, necessarily would result in an alloy possessing all the properties recited in claim 1. See Ans. 34. Appellant argues “Shimao et al. does not render the claims obvious . . . because the allegedly inherent properties would not have been obvious to one having ordinary skill in this art.” App. Br. 29; see also id. at 31, Reply Appeal 2014-006798 Application 11/343,558 9 Br. 23-24 (“Even assuming that the Office was correct in asserting that Shimao et al. disclosed or suggested preparing an alloy having a composition within that recited in the claims, and then using an annealing temperature below what Shimao et al. discloses, and even assuming that the Office is correct that such an alloy would inherently possess the claimed corrosion resistance to a corrosive fuel environment (neither of which has been show by factual evidence to be correct), The Office has still not shown that such corrosion resistance would have been known to those of ordinary skill in the art, and therefore cannot properly rely upon its theory of inherency in support of its obviousness rejection.”). Appellant misstates the law on inherency. Inherency does not require recognition by a person of ordinary skill in the art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Furthermore, merely discovering and claiming a new benefit of an old process cannot render the process again patentable. See In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011). The teachings in Appellant’s Specification (e.g, ¶¶ 12, 29, 39, 40, 42, 43, 46, 52, 53; Tables 2, 3, 6; Figs. 2, 12, 13) provide a reasonable basis for concluding that when annealed at temperatures below 800 °C, the alloy of Example 27 would possess the claimed corrosion resistance and magnetic properties. See Kao, 639 F.3d at 1070 (“Substantial evidence supports the Board's finding, based upon the specification, which confirms that the claimed ‘food effect’ is an inherent property of oxymorphone itself”). Appellant argues Shimao discloses its iron alloy strip is used in a magnetic yoke in a VCM magnetic circuit and “there is no evidence whatsoever that one of ordinary skill in this art would reasonably expect to Appeal 2014-006798 Application 11/343,558 10 be able to use the iron alloy strip of Shimao et al. as a magnetic component of a magnetically actuated fuel injection device” as recited in the claims. See App. Br. 29-30. The Examiner contends the argued limitation is recited in the claim 1 preamble, which “only states a purpose or intended use for the invention, . . . [and] is not a claim limitation.” Ans. 33. As we understand it, the Examiner and Appellant disagree as to whether the phrase “for a magnetically actuated fuel injection device” in the preamble of claim 1 is a limitation of the claim. Whether to treat a preamble term as a claim limitation is “determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Storage Tech. Corp. v. Cisco Sys., Inc.,329 F.3d 823, 831 (Fed. Cir. 2003). The body of claim 1 completely describes the structure of the magnetic component; the disputed preamble phrase does not recite essential structure, but merely states a purpose or intended use of the structure. Accordingly, we do not treat the phrase “for a magnetically actuated fuel injection device,” in the preamble of claim 1 as limiting.4 Appellant separately argues the patentability of dependent claims 9- 12, 14, 15, 17-23, and 26. Appellant’s arguments with respect to those claims are limited to a contention that the Examiner failed to explain why one of ordinary skill in the art would have modified the alloys of Shimao to 4 We note that although Appellant argues one of ordinary skill in the art would not have used a lower annealing temperature in producing a component for use in a magnetically actuated fuel injector, Appellant does not dispute that, if the desired use was for a magnetic yoke, one of ordinary skill in the art would have been motivated to use an annealing temperature within the claimed range for Shimao’s Example 27 component. See App. Br. 30. Appeal 2014-006798 Application 11/343,558 11 produce a material having the claimed properties. See, e.g., App. Br. 31-37, and 42. Appellant’s arguments are not persuasive because they fail to identify error in the Examiner’s finding that Shimao’s Example 27, if modified to use an annealing temperature of 475 °C or 700 °C, necessarily would result in alloys having the recited properties. For the above reasons, Appellant has not persuaded us of reversible error in the Examiner’s obviousness rejection. Accordingly, we sustain the rejection of claims 1, 8-12, 14, 15, 17-23, and 26 under 35 U.S.C. § 103(a). Rejection under 35 U.S.C. § 103(a) of Claims 7, 24, and 25 Claim 7 depends directly from claim 1 and requires that the sum of Cr and Mo is 11% ≤Cr + Mo ≤19%. The Examiner finds, and Appellant does not dispute, that paragraphs 19, 21, and 22 of Shimao disclose “the alloy contains 0-10% Cr and at least one element selected from Ti, Zr, Nb, Mo etc in a total amount of 0.01-5%.” Ans. 51; see Reply Br. 29-31. Based on this finding, the Examiner concludes “a prima facie case of obviousness is established.” Id. The Examiner’s findings are sufficient to establish prima facie obviousness of claim 7 and shift the burden to Appellant to provide rebuttal evidence. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.”). Appellant attempts to rebut the Examiner's prima facie case of obviousness by arguing that Shimao fails to recognize the combined amount of chromium and molybdenum in the alloy is a result-effective variable. App. Br. 38-39; see also Reply Br. 30. It is normally expected that a change in concentration would be an unpatentable modification over the prior art. Appeal 2014-006798 Application 11/343,558 12 In re Aller, 220 F.2d 454, 456 (CCPA 1955). Therefore, when patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on Appellant to establish with objective evidence that the change is critical, i.e. it leads to a new unexpected result. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellant has not provided such evidence. Accordingly, we sustain the rejection of claim 7. Independent claim 24 is directed to a magnetic component and independent claim 25 is directed to a magnetic plunger, and both claims require a content of cobalt greater than 10.5% and less than 16%. The Examiner finds the Co content disclosed in Shimao “is close to the recited range of Co in instant claims 24 and 25,” and concludes “a prima facie case of obviousness” is established. Ans. 52. Shimao teaches Co ranges from 0 to 10%. Shimao ¶ 19. Shimao further teaches that “[t]he amount of Co added is 10% at the maximum [and] . . . [w]ith Co contents of more than 10%, the alloys . . . become too hard to work by rolling, and an economical disadvantage is brought about because cobalt is an expensive metal.” Id. ¶ 20. Appellant argues that “[t]he range for Co recited in claim 24 and that disclosed in Shimao et al. do not overlap.” App. Br. 40, 42; see also Reply Br. 31. Appellant further argues that “the Office does not explain why one of ordinary skill in this art would have been motivated to deviate from the express teachings . . . and use an amount of Co higher than the [10%] maximum disclosed by Shimao et al.” App. Br. 40. Appellant has persuasively argued that Shimao teaches away from a Co content of greater than 10%. Accordingly, we do not sustain the rejection of claims 24 and 25. Appeal 2014-006798 Application 11/343,558 13 CONCLUSION The rejection of claims 1, 7-12, 14, 15, and 17-26 under 35 U.S.C. § 112, second paragraph is sustained. The rejection of claims 1, 8-12, 14, 15, 17-23, and 26 under 35 U.S.C. §102(b) as anticipated Shimao is not sustained. The rejection of claims 1, 7-12, 14, 15, 17-23, and 26 under 35 U.S.C. §103(a) as obvious over Shimao is sustained. The rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as obvious over Shimao is not sustained. 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