Ex Parte Hanamachi

Patent Trial and Appeal Board

Dec 18, 2018

13808783 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/808,783
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
01/07/2013
12/20/2018
FIRST NAMED INVENTOR
Toshihiko Hanamachi
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.
1451345.322US9 8691
EXAMINER
ROJOHN III, CLAIRE E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIHIKO HANAMACHI
Appeal2018-004805
Application 13/808,783 1
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Toshihiko Hanamachi ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated May 19,
2017, hereinafter "Final Act.") rejecting claims 5-8. 2 We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 NHK Spring Co., LTD. is identified as the real party in interest in
Appellant's Appeal Brief (filed Oct. 20, 2017, hereinafter "Br."). Br. 2.
2 Claims 1--4 and 9-13 are withdrawn from consideration. Br. 2.
Appeal2018-004805
Application 13/808,783
INVENTION
Appellant's invention relates to a plate with a passage. Spec. para. 1.
Sole independent claim 5, reproduced below, is representative of the
claimed subject matter:
5. A plate comprising:
a passage provided inside the plate and causing a fluid to
circulate;
a body plate which is metal or an alloy, and in which a
groove serving as the passage is provided;
a cover plate covering the groove;
a support part that is a cut-off portion formed on a surface
of the body plate at an edge of the groove and to which the cover
plate is fitted; and
a deposition layer formed by accelerating metal or alloy
powder with a gas and spraying the powder on the body plate and
the cover plate in a solid phase such that the deposition layer eats
into a surface of the body plate and a surface of the cover plate
at an interface between the body plate and the deposition layer
and between the cover plate and the deposition layer, and
covering the cover plate,
wherein a depth of the support part is same as a thickness
of the cover plate, and the deposition layer is formed on the
surface of the cover plate which is an opposite side surface of a
surface facing the passage.
REJECTION
The Examiner rejects claims 5-8 under 35 U.S.C. § I03(a) as being
unpatentable over Ishida et al. (KR 100856592 Bl, pub. Sept. 3, 2008,
hereinafter "Ishida")3, Itoh et al. (US 5,579,534, iss. Nov. 26, 1996,
hereinafter "Itoh"), Okamoto et al. (US 7,480,992 B2, iss. Jan. 27, 2009,
3 We derive our understanding of this reference from the translation
contained in the image file wrapper of this application. All references to this
document are to portions of the translation.
2
Appeal2018-004805
Application 13/808,783
hereinafter "Okamoto"), and Miyamato et al. (US 2010/0073883 Al, pub.
Mar. 25, 2010, hereinafter "Miyamato").
ANALYSIS
Claim 5 requires, inter alia, a body plate having a groove serving as a
passage for circulating fluid, a cover plate covering the groove, and a
support part, formed on a surface of the body plate at an edge of the groove,
to which the cover plate is fitted. See Br. 18-19 (Claims App.).
The Examiner finds that Ishida discloses, inter alia, plate 80 including
body plate 8a having a groove 81 serving as passage 14 and cover plate 8b
that covers groove 81. Final Act. 2 ( citing Ishida, Figs. 2, 4, 9). The
Examiner further finds that "Ishida discloses a support part that is a cut-off
portion formed on a surface of the body plate at an edge of the groove (Fig.
7b, support part where the top of bottom plate 94a sits." Id. at 4. As
illustrated below, the Examiner annotates Ishida's Figure 7(b) to show a
support part formed in a surface of body plate 8a:
Figure 7 (b) of Ishida, as annotated by the Examiner, illustrates a
support part on a surface of body plate 8a at the edge of groove 81. Id.
However, as cover plate 8b of Ishida is not fitted to the support part of
body plate 8a at the edge of groove 81, as required by claim 5, the Examiner
modifies Ishida's cover plate 8b so as to be fitted within the support part
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Application 13/808,783
based on the teachings of Okamoto, where cover plate 2 is fitted onto
support part (overlapping width)4 5 at the edge of groove 4. Final Act. 4
( citing Okamoto, Fig. 10). The Examiner concludes that the modification
would have been obvious to a person having ordinary skill in the art because
it would "eliminate the need for a support part in the cover [plate] 8b which
reduces the cost of manufacturing and [also] reduces the amount of material
94a needed." Id.; see also Ishida, Fig. 7(b).
Appellant argues that the Examiner is "relying on impermissible
hindsight to piecemeal the invention of Claim 5." Br. 12. According to
Appellant, the Examiner's rationale "is based on conjecture" and "seeks to
completely redesign the cooling blocks of Ishida in a manner contrary to the
purpose for which the Ishida cooling blocks were designed in the first
place." Id.
The Examiner responds that the rejection is not based upon
impermissible hindsight reasoning because Ishida would benefit from a
cover plate "fitted within the support part as taught by Okamoto to eliminate
the need for a support part in the cover 8b which reduces the cost of
manufacturing and [also] reduces the amount of material 94a needed."
Examiner's Answer 10 (dated Feb. 6, 2018, hereinafter "Ans."). According
to the Examiner, the modification of Ishida "would not defeat the intended
purpose of the cooling designs of Ishida since reducing the material needed
for the cover plate [8b] would only enhance heat transfer since there would
be less thermal insulation from the cover." Id.
Appellant's arguments are persuasive for the following reasons. As
we understand the Examiner's rejection, the Examiner eliminates portions of
4 Parenthetical nomenclature refers to Okamoto.
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Application 13/808,783
material 94a to form a support part portion (shoulder) in a surface of body
plate 8a of Ishida and then provides a fitted cover plate, as taught by
Okamoto. That is, the Examiner first eliminates the circled portions of
material 94a shown below in the Board's annotated Figure 7(a) of Ishida to
form a support part in the body of plate 8a:
Figure 7(a) of Ishida, as annotated by the Board, illustrates our
understanding of the Examiner's rejection where portions of material 94a are
eliminated (reduced) to form a support part in body plate 8a. Secondly, the
Examiner's rejection provides a cover plate fitted within the support part, as
illustrated below in Ishida's Figure 7(a), as annotated by the Board:
94a
/
' Sa
Figure 7(a) of Ishida, as annotated by the Board, illustrates our
understanding of a cover plate fitted within the support part of body plate 8a.
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Application 13/808,783
As such, although we appreciate the Examiner's modification of
Ishida' s device, in light of Okamoto, nonetheless, the mere fact that known
elements can be combined is not, in itself, a reason to combine them.
Rather, an obviousness rejection further must explain the reasoning by
which those findings support the Examiner's conclusion of obviousness. See
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, the
rejection fails to meet this required standard.
In particular, Ishida's cooling block 90 includes plate 94a (of body
plate 8a) that together with plate 94b ( of cover plate 8b) form cooling
channels 81. See Ishida, Figs. 6( a), 6(b ), 7 (a), 7 (b ). As plate 94a is formed
by recesses 80a that result in cooling passages 81 when bonded to plate 94b
of cover plate 8b, the Examiner's modification to remove portions of
material 94a to form a support part in body plate 8a is not tenable as such a
modification would transform plate 94a into a plurality of unconnected U-
shaped plate portions at recesses 80a. The Examiner fails to adequately
explain how such unconnected U-shaped plate portions would eventually
result in body plate 8a of cooling block 90, such that manufacturing costs are
reduced. For example, as body plate 8a also includes an aluminum layer
covering plate 94a, the Examiner does not explain how such an aluminum
layer would be provided to each of the unconnected U-shaped plate portions.
See Ishida, p. 18 ( discloses providing an aluminum layer to the lower face of
plate 94a by immersion into molten aluminum), Fig. 7(a). Moreover, even
assuming arguendo that a skilled artisan would remove portions of material
94a from body plate 8a, as shown in Ishida's Figure 7(a), we agree with
Appellant that such a modification "would appear to . . . increase the
complexity of the manufacturing process in Ishida, which in tum would raise
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Application 13/808,783
additional technical and cost issues," as it would require additional
manufacturing steps for forming a plurality of support parts in body plate 8a.
Br. 8.
Furthermore, we note that the Examiner's modification would also
reduce the size of Ishida's cooling passage 81 by the thickness of the support
part, and, thus, it is not clear from the rejection whether the modified cooling
passage 81 would function adequately at its reduced size. Accordingly, we
agree with Appellant that the Examiner "seeks to ... redesign the cooling
blocks of Ishida in a manner contrary to the (cooling) purpose for which the
Ishida cooling blocks were designed in the first place." Br. 12.
In conclusion, for the foregoing reasons, we do not find that the
Examiner has established a factual basis to show that modifying Ishida's
cover plate 8b so as to be fitted within a support part of body plate 8a, as
taught by Okamoto, would "reduce[] the cost of manufacturing." See Final
Act. 4. Although we appreciate that the Examiner's modification would
"reduce[] the amount of material 94a needed" (see id.), we do not agree with
the Examiner that such a reduction would "enhance heat transfer" in the
absence of an adequate explanation how heat transfer would be enhanced.
See Ans. 10.
As such, the Examiner fails to articulate a sufficient reason, with
rational underpinnings, why, in the absence of hindsight gleaned improperly
from Appellant's underlying disclosure, a person having ordinary skill in the
art would modify Ishida, according to Okamata, to arrive at the subject
matter of independent claim 5. The Examiner's use of the Itoh and
Miyamoto disclosures does not remedy the deficiency of the Examiner's
combination of Ishida and Okamoto. See Final Act. 3-5. Therefore, we do
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not sustain the rejection under 35 U.S.C. § I03(a) of claims 5-8 as
unpatentable over Ishida, Itoh, Okamoto, and Miyamoto.
DECISION
The Examiner's decision to reject claims 5-8 is reversed.
REVERSED
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