Ex Parte Oishi

Patent Trial and Appeal Board

Oct 18, 2018

12555990 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/555,990 09/09/2009
24203 7590 10/22/2018
GRIFFIN & SZIPL, PC
SUITE 112
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204
FIRST NAMED INVENTOR
Keiichiro Oishi
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.
MITSU0002 1688
EXAMINER
EDMONDSON, LYNNE RENEE
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/22/2018 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):
GandS@szipl.com
burke@szipl.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIICHIRO OISHI
Appeal2017-002444
Application 12/555,990
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
AVEL YN M. ROSS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 2, 4, 15, and 17-34. We have
jurisdiction under 35 U.S.C. § 6(b).
1 In explaining our Decision, we cite to the Specification of September 9,
2009 (Spec.), Final Office Action of December 17, 2015 (Final), Appeal
Brief of May 31, 2016 (Appeal Br.), Examiner's Answer of September 30,
2016 (Ans.), and Reply Brief of November 30, 2016 (Reply Br.).
2 Appellant identifies the real party in interest as Mitsubishi Shindoh Co.,
Ltd. Appeal Br. 4.
Appeal2017-002444
Application 12/555,990
We REVERSE.
The claims are directed to a copper alloy material in the form of a
pipe, plate, bar, wire or worked material thereof. See, e.g., claims 2 and 31.
The copper alloy material is formulated for heat resistance and
contains cobalt (Co), phosphorus (P), tin (Sn), zinc (Zn), and one or both of
nickel (Ni) and iron (Fe). Claims 2 and 31.
Heat resistance is required because the copper alloy is used in heat
exchanger components such as pipes and fins that are subject to brazing at
temperatures of about 800°C. Spec. 1-3. Brazing enlarges crystal grains in
the alloy and reduces the strength of the heat exchanger component. Id. The
elements Co, P, Sn, Zn, and Ni/Fe control grain growth, preserve or improve
mechanical properties, and affect other properties such as corrosion
resistance. Spec. 5-8.
The claims recite ranges of concentrations for the added elements and,
because the amounts are codependent on each other, the claims also recite
relationships (named Al-A6 by Appellant (Appeal Br. 4--5)) further limiting
the concentrations. Spec. 8-9. The claims further require the copper alloy
material have a 0.2% proof stress (the yield strength when a permanent set
becomes 0.2%) after brazing at about 800°C of higher than or equal to 55
N/mm2. Spec. 10-11.
Claim 2 is illustrative and we reproduce this claim with the Al to A6
relationship designations Appellant provides in the Appeal Brief:
2. A heat resistance copper alloy material, comprising:
0.11 to 0.31 mass percent of Co;
0.041 to 0.089 mass percent of P;
0.02 to 0.25 mass percent of Sn;
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Application 12/555,990
0. 01 to O .40 mass percent of Zn;
0.01 to 0.17 mass percent of Ni, or 0.01 to 0.15 mass
percent of Fe, or 0.01 to 0.17 mass percent of Ni and 0.01 to
0.15 mass percent of Fe; and
the remaining mass percent of Cu and inevitable
impurities,
wherein each content of Co, P, Sn, Zn, Ni and Fe satisfies
the relationships
[Al] 2.4 :S ([Co]+0.8[Ni]+0.8[Fe]-0.02)/[P] :S 5.2;
[A2] 0.20 :S [Co]+0.5[P]+0.9[Sn]+ 0.1 [Zn]+0.9[Ni]+
1.5 [Fe] :S 0.54;
[A3] 0.15 :S [Co]+0.8[Ni]+0.8[Fe] :S 0.35;
[A4] 1.2[Ni] <[Co];
[A5] l.5[Fe] <[Co]; and
[A6] [Ni]+[Fe] < [Co], wherein [Co], [P], [Sn], [Zn],
[Ni] and [Fe] are said mass percents of Co, P, Sn, Zn, Ni and Fe
content, respectively,
wherein said copper alloy material is a pipe, plate, bar,
wire or worked material obtained by working said pipe, plate,
bar or wire material into predetermined shapes, and
wherein 0.2% proof stress of said copper alloy material is
higher than or equal to 55 N/mm2 after a brazing treatment at
about 800°C.
Appeal Br. 41 ( claims appendix).
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Application 12/555,990
The Examiner maintains the following rejections: 3
A. The rejection of claims 2, 4, 15, 17-34 as provisionally
rejected on the ground of nonstatutory obviousness double
patenting over claims 1-5, 11, 13-17, 24--26, and 33-35 of
copending Application No. 12/808,564;4
B. The rejection of claims 2, 4, 15, 17-34 as provisionally
rejected on the ground of nonstatutory obviousness double
patenting over claims 2, 4, 22, 24, 25, 27, 28, 30, 31, 33, 34,
36, 43, and 45 of copending Application No. 12/514,680; 5
C. The rejection of claims 2, 4, 15, and 17-34 under 35 U.S.C.
§ 103(a) as obvious over Oishi; 6 and
D. The rejection of claims 2, 4, 15, and 17-20, 24--26, and 28-
34 under 35 U.S.C. § 103(a) as obvious over Guerlet. 7
3 The Examiner has withdrawn the provisional obviousness-type double
patenting rejection of claims 2, 4, 15, and 17-34 over claims in copending
Application No. 12/919,206. Ans. 4. The Examiner has clarified that all the
other rejections are maintained. Misc. Communication of October, 17, 2016.
4 Application No. 12/808,564, issued as US 9,163,300 on October 20, 2015.
Thus, the rejection is no longer provisional.
5 Application No. 12/514,680, issued as US 8,986,471 on March 24, 2015.
Thus, the rejection is no longer provisional.
6 Oishi et al., JP 10-130754 A, published May 19, 1998. The Examiner and
Appellant refer to this document as JP '754.
7 Guerlet et al., US 4,427,627, issued January 24, 1984.
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Application 12/555,990
OPINION
Obviousness-Type Double Patenting
The Examiner provisionally rejects all the claims on the ground of
nonstatutory obviousness double patenting over claims 1-5, 11, 13-17, 24--
26, and 33-35 of copending Application No. 12/808,564 and over claims 2,
4, 22, 24, 25, 27, 28, 30, 31, 33, 34, 36, 43, and 45 of copending Application
No. 12/514,680. Final 3. Both of these applications issued into patents
before the final rejection. Application 12/808,564 issued as U.S. Patent
9,163,300 on October 20, 2015. Application 12/514,680 issued as U.S.
Patent 8,986,471 on March 24, 2015. At the time of the final rejection, the
rejections should have been made over the patents rather than the
applications. In any case, the issued patents include claims of the same
scope as those relied on in the rejections. Thus, we are able to review the
issues on appeal.
The key question in any obviousness-type double patenting analysis
1s: "Does any claim in the application define merely an obvious variation of
an invention claimed in the patent asserted as supporting double patenting?"
General Foods Corp. v. Studiengesellschaft Kahle mbH, 972 F.2d 1272,
1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d438 (CCPA 1970)).
The analysis begins with a step of construing the claims in the application
and the asserted patent, or asserted application if the rejection is
provisional, 8 to determine the differences. Eli Lilly & Co. v. Barr Labs.,
Inc., 251 F.3d 955, 968 (Fed. Cir. 2001). After determining the differences,
8 Hereafter, we will refer to the "asserted patent" with the proviso that the
same law applies when the rejection is provisional and over claims in an
application.
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Application 12/555,990
one must determine whether the differences in subject matter render the
claims under review patentably distinct. Id.
In determining whether the differences between what the claim of the
asserted patent define and what the claim under review defines, it is critical
that no part of the asserted patent be used as "prior art" against the claims
under review. This includes the asserted claims themselves. See In re
Aldrich, 398 F.2d 855, 859 (CCPA 1968) ("double patenting rejection[s]
cannot be based on section 103, ... or on the disclosures of the patents
whose claims are relied on to demonstrate double patenting or on the
'disclosures' of their claims .... [P]atent claims are looked to only to see
what has been patented, the subject matter which has been protected, not for
something one may find to be disclosed by reading them." (Emphasis
added.)). In a double patenting rejection, the prior patent does not qualify as
prior art, and therefore, the patented disclosure may not be used as prior art.
Id.; Vogel, 422 F.2d at 441; see also In re Sarett, 327 F.2d 1005, 1013
( CCP A 1964) ("We are not here concerned with what one skilled in the art
would be aware [ ofJ from reading the claims but with what inventions the
claims define.").
For the "difference" between the subject matter of the application
claim and the asserted patent claim to be obvious, "there must be some clear
evidence to establish why the variation would have been obvious which can
properly qualify as 'prior art'." In re Kaplan, 789 F.2d 1574, 1580 (Fed.
Cir. 1986). Only with regard to this latter question is the analysis analogous
to an obviousness-type analysis under 35 U.S.C. § 103(a). See
Studiengesellschaft Kahle mbH v. N. Petrochemical Co., 784 F.2d 351, 355
(Fed. Cir. 1986) (refusing to consider the issue of obviousness-type double
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Application 12/555,990
patenting where the patent challenger "offered no evidence of the scope and
content of the pertinent art, ... the level of skill in the art, or what would
have been obvious to a person skilled in the art").
The Examiner's basis for rejection as to both grounds of rejection is as
follows:
Although the conflicting claims are not identical, they are not
patentably distinct from each other because Cu based alloy
composition in copending claims is encompassed by Cu based
alloy composition of instant claims. The processing steps in the
product claims are noted. But, the invention defined in a
product-by-process claim is a product, not a process. In re
Bridgeford, 357 F. 2d 679, 149 USPQ 55 (CCPA 1966) and
MPEP § 2113.
Final 3 ( emphasis added).
Although the Examiner determines the copper alloys of the asserted
claims are encompassed by the copper alloy genus of the claims under
review, a comparison of the claims does not support that determination. In
fact, as pointed out by Appellant in Charts # 3 and # 4, there are numerous
differences not accounted for by the Examiner in the rejection. Appeal Br.
16-18.
In the Answer, the Examiner acknowledges there are differences, but
does not provide an adequate rationale, based on knowledge within the prior
art, as to why those differences would have been obvious to one of ordinary
skill in the art. The Examiner does not address the relationships Al-A6
recited in Appellant's independent claims 2 and 31 except to say that "the
relationships are merely required to be satisfied" and "appellant failed to
point out what relationship is not satisfied by composition of said patent."
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Application 12/555,990
Ans. 11. Moreover, the Examiner's rationale with regard to the 0.2% proof
stress limitation of the claims is faulty.
With regard to the relationships, the Examiner has improperly shifted
the burden to Appellant. Indeed, as the Examiner says, the relationships of
Appellant's claim 2 must be satisfied and those relationships Al-A6 further
limit the scope of Appellant's claim 2. Thus, the relationships present a
potential difference in scope between Appellant's claim 2 and the asserted
copending/patented claims that is not accounted for by the Examiner. The
Examiner has not established that the asserted claims and claims under
review, in fact, overlap in element concentrations or that the concentration
differences would have been obvious to those of ordinary skill in the art
based on knowledge within the skill of the art.
With regard to the 0.2% proof stress after brazing at about 800°C,
Appellant's claims require a value of higher than or equal to 55 N/mm2.
Instead of pointing to a copending/patented claim that recites a limitation on
proof stress, the Examiner equates this 55 N/mm2 value of 0.2% proof stress
after brazing at about 800°C to a Vickers hardness (HV) value. Ans. 11-12.
In so doing, the Examiner relies on a conversion chart reproduced on page
10 of the Answer, pointing to a HV of 116 as equivalent to 56 100 lb./in2
(KSI) value for tensile strength. But, as pointed out by Appellant, this chart
is for carbon and low alloy steels, not copper alloys. Reply Br. 2. Also, 56
KSI is not the same as 56 N/mm2. 56 KSI converts to 386 N/mm2. Further,
we agree with Appellant that there is no basis for the Examiner's
determination that heating at 700°C is within the scope of heating at about
800°C. Reply Br. 12-13 ( explaining that those of ordinary skill in the art
would interpret about 800°C as a temperature at which brazing is possible,
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Application 12/555,990
e.g., a temperature from at least 790°C and "about" is only used because it is
impossible to limit the temperature to exactly 800°C).
Appellant has identified reversible errors in the Examiner's
determination that Appellant's claims are obvious variants of the claims in
the 12/808,564 application (now U.S. Patent 9,163,300) and 12/514,680
application (now U.S. Patent 8,986,471).
Obviousness over Oishi
The Examiner rejects claims 2, 4, 15, and 17-34 under 35 U.S.C.
§ 103(a) as obvious over Oishi, one of Appellant's previously published
Japanese applications. Final 4--6.
The Examiner finds that Oishi discloses a copper alloy composition
for heat exchanger tubes/plates with element concentrations overlapping the
ranges recited in claims 2 and 31. Final 4, 8; Ans. 14. In so doing, the
Examiner illustrates the relied on overlap in a table that compares the ranges
recited in the first part of claim 2 and the ranges Oishi discloses in the
English abstract of the Japanese document. Final 8; Ans. 14. The Examiner
further finds that the 0.2% proof stress of Appellant's claims would be
inherently possessed by the Oishi's alloy materials because heat exchanger
tubes/plates are joined by brazing/welding and examples 5-14 of Oishi were
heated to about 700°C without loss of tensile strength. Final 5.
First, the Examiner's analysis does not take into account the
relationships A 1-A6 recited in claims 2 and 31. As can be verified by
selecting various values for the element concentrations and calculating the
Al-A6 values, those relationships further narrow the concentration ranges
recited in the first portion of the claims. Thus, the Examiner's findings fall
short of showing overlapping ranges.
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Second, Appellant has submitted evidence of criticality that has not
been properly weighed by the Examiner. Appellant contends that the
Examiner has ignored evidence of the criticality of relationship A2 for
achieving, among other things, excellent thermal conductivity above 0.65
cal/cm·sec °C. Appeal Br. 23. According to Appellant, Exhibit G, as
supported by the Oishi Declaration, 9 shows that the upper range of 0.54 for
relationship A2 is critical because above 0.54 the extrusion characteristics
tail off dramatically. Appeal Br. 24. As pointed out by Appellant, and not
disputed by the Examiner, relationship A2 is not disclosed in Oishi. Appeal
Br. 23.
We agree that the Examiner failed to properly weigh the evidence of
criticality.
Oishi discloses two copper alloy embodiments (labeled 1st invention
and 2nd invention). Oishi ,r,r 10-11. The first embodiment does not contain
Ni or Fe. Oishi ,r 10. It is the second embodiment that is most relevant.
Oishi discloses a second embodiment that contains all the claimed elements
in ranges overlapping the ranges recited in Appellant's claim 2. Compare
Oishi ,r 11, with Appellant's claim 2:
Claim 2 Oishi
Co 0.11-0.31 Within Oishi' s range 0.05-0.7
p 0.041-0.089 Within 0.02-0.20
Sn 0.02-0.25 Overlap 0.10-1.0
Zn 0.01-0.40 Within 0.01-2.0
9 Oishi Declaration, and Exhibit G, filed March 16, 2015.
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Application 12/555,990
Ni 0.01-0.17
Fe 0.01-0.15
Cu bal
Overlap 0.05-0.7
Overlap 0.05-0.5
bal
Oishi also discloses some relationships between elements although not
in the mathematical and range-limited way recited in Appellant's claims.
See, e.g., Oishi ,r,r 12, 16 ( explaining that less Co need be used when adding
Ni, Fe, Mn, and/or Mg). Appellant's claims require a relationship A2 where
the amounts of Co, P, Sn, Zn, Ni, and Fe must be such that: 0.20 :S
[Co]+0.5[P]+0.9[Sn]+ 0.1 [Zn]+0.9[Ni]+ l.5[Fe] :S 0.54. No such
relationship between all these elements is disclosed by Oishi.
Oishi's working example alloys No. 5-No. 14 are the copper alloys of
Oishi's second embodiment. Oishi ,r 18. None of these alloys have a
composition within all the ranges of claim 2 and only No. 5-No. 11 include
either Ni or Fe or both. Oishi ,r 19. Appellant has demonstrated that Oishi' s
examples No. 5-11 do not have compositions meeting the A2 relationship.
Exhibit G, Table 1. Although we agree with the Examiner that Oishi is not
limited to its examples (Ans. 14--15), the absence of examples provides
some evidence that the alloy compositions of Appellant's claims were not
seen as critically different from the other compositions within the broad
ranges taught by Oishi.
Dr. Oishi declares that there is a critical relationship between A2 and
Sn content in the copper alloy. Oishi Deel. ,r,r 9, 14. Appellant's
Specification explains that A2 "has an effect on heat conductivity, hot
extrusion characteristics, bending characteristics, formability, brazing
characteristics and strength after brazing" and "in the case of A2 > 0.54, heat
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Application 12/555,990
conductivity, hot extrusion characteristics, bending characteristics and
formability become worse." Spec. 10, first full para. Further, according to
the Specification, "A2 :S 0.54 is necessary to assure heat conductivity, hot
extrusion characteristics, bending characteristics and formability," and A2 2:
0.20 is necessary to achieve satisfactory strength after brazing. Id.
Dr. Oishi provides data from experiments to show the effect of the A2
relationship and Sn on thermal conductivity and extrusion characteristics.
Oishi Deel. ,r,r 9--26. Table 2 and Figure 1 in Exhibit G show the
relationship between A2 and thermal conductivity for Appellant's example
Alloy Nos. 203,208, and 211, which have A2 values at the lower end of the
range (Alloy No. 203 with A2 of0.25), in the middle part of the range
(Alloy No. 208 with A2 of0.39), and at the high end of the range (Alloy No.
211 with A2 of 0.53). Oishi Deel. ,r 12; Exh. G, Table 2, Fig. 1. Figure 1
shows that thermal conductivity falls linearly as A2 rises with thermal
conductivity reaching 0.65 cal/cm·sec·°C at an A2 of 0.54. Exh. G, Fig. 1.
Table 3 and Figure 2 show that extrusion characteristics plummet at A2 >
0.54.
Dr. Oishi further provides comparative data based on Oishi's prior art
Alloys Nos. 5, 7, and 9, which do not have alloy compositions satisfying A2
or A4-A6 (see Exh. G, Table 1 ), do not have a thermal conductivity 2: 0.65
cal/cm·sec·°C and have poor extrusion characteristics. Oishi Deel. ,r 20; Exh.
G, Table 4, Figs. 3, 4.
The Examiner fails to adequately consider the declaratory evidence
and data. Instead, the Examiner concentrates on facts not particularly
relevant to the issue or misunderstands the relevancy of the data. For
instance, according to the Examiner, Exhibit G uses specific examples of
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Application 12/555,990
prior art, but the Oishi reference has a broader disclosure with ranges of
composition overlapping the ranges of claim 2. But this fact misses the
point: The purpose of Appellant's reporting of data on Oishi's Alloy Nos. 5,
7, and 9 was to show a comparison to the closest prior art. That data
supports the Appellant's showing of criticality because it provides evidence
that prior art A2 values were not within the A2 ranges required by claim 2
and those prior art examples did not have the properties Appellant declares
are critical. The data allows one to compare the values from the closest prior
art (Oishi) to Appellant's values.
We also agree with Appellant that the Examiner misinterpreted the
relevance of Tables 4 and 8 and comparative Alloys 512 and 515. Compare
Final 10-11, and Ans. 18, with Appeal Br. 27-29, and Reply Br. 16-17; see
also Spec. 14, 23, 27. As argued by Appellant, Tables 4 and 8 support rather
than retract from Appellant's showing of criticality.
Appellant has identified reversible errors in the Examiner's rejection
over the Oishi reference.
Obviousness over Guerlet
The Examiner also rejected claims 2, 4, 15, and 17-34 under 35
U.S.C. § 103(a) as obvious over Guerlet. Final 6-8. The Examiner finds
that "Guerlet discloses the features including Cu alloy worked material
composition (col. 2, lines 5-28), thermal conductivity (col. 1, lines 35--42),
and hardness after brazing ( col. 8, lines 17-30). The hardness after brazing
has shown the tensile strength would be higher than recited 55 N/mm2."
Final 6. The Examiner also finds that yield tensile strength after brazing
would have been inherently possessed and shifts the burden to Appellant to
prove otherwise. Final 7.
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We agree with Appellant that the evidence does not support the
Examiner's findings. Appeal Br. 36-38. Guerlet teaches a copper alloy that
contains Co, P, Ni+Fe and any or all of Cd, Ag, Zn, and Sn in particular
amounts to improve mechanical properties. Guerlet col. 2, 11. 5-30. The
ranges recited by Guerlet overlap the first recited ranges of claims 2 and 31,
but, again, the Examiner fails to take into account the limiting effect of
relationships A 1-A6 in claims 2 and 31.
Moreover, as pointed out by Appellant, Guerlet's disclosure at column
8, lines 17-30 does not support a finding that Guerlet's alloys would
inherently have a 0.2% proof stress higher than or equal to 55 N/mm2 after a
brazing treatment at about 800°C. Appeal Br. 36-38. The disclosure at
column 8, lines 17-30 of Guerlet reports hardness values for the shaped and
brazed alloy of example 11. Guerlet col. 7, 1. 25---col. 8, 1. 16. The Example
11 alloy does not have all the elements required by claims 2 and 31. Guerlet
col. 7, 11. 26-37. To accomplish brazing, Guerlet uses a metal brazing
material having a melting range of about 605---620°C. Guerlet col. 8, 11. 7-
16. Thus, one would only need to heat to 605---620°C to melt the brazing
material and perform brazing. Guerlet is not concerned with 0.2% proof
stress at about 800°C because Guerlet need not heat to brazing temperatures
of about 800°C.
The Examiner points to the teaching of annealing at 800°C and a
disclosure of an elastic limit of at least 9.9 daN/mm2 (99 N/mm2) for Alloy
A of Guerlet as supporting the finding with regard to the 0.2% proof stress.
Ans. 21, citing Guerlet column 5, example 3, and Table IV in column 9.
But, again, the annealing step is conducted on alloys outside the scope of
claims 2 and 31. See Guerlet Table I (indicating that none of the tested
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alloys contain Sn). Moreover, the annealing step is conducted at 700°C, not
about 800°C. And Appellant provided evidence showing that Alloy A of
Guerlet's Table I, when annealed and formed into plates in accordance with
Appellant's method, does not have at 0.2% proof stress in the range of the
claims. Oishi Deel. ,r 27. The 0.2% proof stress is 47 N/mm2, which is
lower than the required higher than or equal to 55 N/mm2 0.2% proof stress
of the claims. Id. Oishi declares that the lack of 0.2% proof stress arises
because Guerlet's Alloy A does not contain Sn and Exhibit G shows the
relationship between Sn concentration and 0.2% proof stress. Oishi Deel. ,r
28; Exh. G, Table 6, Fig. 6. The Examiner does not adequately address this
evidence. Ans. 22.
CONCLUSION
We do not sustain the Examiner's rejections.
DECISION
The Examiner's decision is reversed.
REVERSED
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