10479433 (B.P.A.I. Aug. 31, 2012)

Ex Parte Oishi et al

Board of Patent Appeals and InterferencesAug 31, 2012

10479433 (B.P.A.I. Aug. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/479,433 11/29/2003 Yukihiro Oishi 039.0021 6195 29453 7590 09/04/2012 Judge Patent Associates Vert Nakanoshima Kita, Suite 503 6-3 Nishitemma 4-Chome, Kita-ku Osaka-Shi, 530-0047 JAPAN EXAMINER IP, SIKYIN ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 09/04/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YUKIHIRO OISHI and NOZOMU KAWABE ____________ Appeal 2011-003107 Application 10/479,433 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and CATHERINE Q. TIMM, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003107 Application 10/479,433 2 This is a decision on an appeal under 35 U.S.C. § 134 from “the last decision of the examiner”; that is, the Examiner’s final rejection of claims 1- 29, 53-56, and 67-71.1 We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants have limited the appeal to “claim 1, alone” (Br. 5). Accordingly, the appeal stands withdrawn as to the remaining finally rejected claims 2-29, 53-56, and 67-71, the rejection of which has been maintained by the Examiner (FOA 2-4; Ans. 4).2 Appellants’ claimed invention is directed to a magnesium based alloy wire having a specified composition and certain properties, including a specified surface roughness (claim 1). According to Appellants, the surface roughness of the magnesium alloy wire is influenced by the wire drawing conditions, including the working temperature employed in the drawing process for forming the wire (Spec. 11, ll. 3-8). Claim 1, the sole claim on appeal, is reproduced below: 1. Magnesium-based alloy wire of composition containing, in mass %, 0.1 to 12.0% A1, and 0.1 to 1.0% Mn; the magnesium-based alloy wire being manufactured by a procedure including a drawing process of drawing a parent material of said composition at a controlled temperature to work the parent material into wire form so as to impart the following properties to the magnesium-based alloy wire: a length L of 1000d or more, where d is its diameter; a tensile strength of 250 MPa or more; a necking-down rate of 15% or more; a elongation of 6% or more; 1 Notice of Appeal filed March 17, 2009 (see Final Office action (FOA) mailed November 17, 2008). 2 Upon return of the Application to the Examiner, the Examiner should consider cancelling the non-appealed claims pursuant to MPEP §§ 1215.03 and 1214.05. Appeal 2011-003107 Application 10/479,433 3 a crystal grain size of said composition of between 3.5 um and 10 um inclusive; and a surface roughness of Rz ≤ 10 um. The Examiner relies on the following prior art references as evidence in rejecting the appealed claim: Masumoto US 4,990,198 Feb. 5, 1991 Regazzoni US 4,997,622 Mar. 5, 1991 Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Regazzoni in view of Masumoto.3 We reverse the stated rejection of claim 1. Our reasoning follows. The Examiner relies on Regazzoni for allegedly teaching the formation of a ribbon product formed from Mg alloy having a composition corresponding to the claimed alloy composition (Ans. 4 and 5; Regazzoni, abstract, col. 1, ll. 5-25). In this regard, Regazzoni teaches, for example, that a ribbon product formed in a first step can be subsequently extruded (col. 4, ll. 34- col. 5, l. 13). The Examiner turns to Masumoto for teaching a Mg alloy that is employed in forming a wire or ribbon, etc. (Ans. 5; Masumoto, col. 4, ll. 46-56). In this regard, Masumoto teaches that the wire or ribbons 3 The additional references referred to by the Examiner (Ans. 7-9) are not identified in the statement of rejection and they are not considered as evidence before us in considering this appeal. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“[W]here a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including that reference in the statement of the rejection."). Appeal 2011-003107 Application 10/479,433 4 of Mg alloy can be subsequently processed into bulk material via extrusion or other working techniques (col. 4, ll. 48-53). The Examiner appears to argue that given the teachings of Masumoto, it would have been obvious to one of ordinary skill in the art to make the Mg alloy of Regazzoni into any structure known in the cited references, including, presumably, a wire, as made by Masumoto as an intermediate alloy product (Ans. 5). The Examiner maintains, inter alia, that the claimed surface roughness values for Appellants’ wire reads on a smooth surface, which is asserted to be desirable for improved fracture strength - it being alleged by the Examiner that it is generally known in the art that rough surfaces provide more fracture sites (Ans. 4). The Examiner further notes that the claim 1 is a product-by-process claim and that the burden is on Appellants to establish a product difference based thereon (Ans. 6). Appellants argue that the Examiner has not established that the applied prior art suggests formation of a Mg-based alloy wire with a surface roughness, as required by claim 1, in part, because the applied prior art has not been shown by the Examiner to evince that the formation of a Mg- based alloy wire with a surface roughness as claimed would be predictable or expected based on the technology/ teachings of Regazzoni and Masumoto (Br. 9-11). We agree. Neither of the applied references are directed to forming a wire product having a specified surface smoothness. The Examiner has not established that either of the applied references suggests that a particular surface roughness for the ribbon or wire intermediate products thereof has any significance to the subsequent working contemplated therein. Appeal 2011-003107 Application 10/479,433 5 As further pointed out by Appellants, the evidence presented in Tables V, IX and X of the Specification and other locations of the subject Specification (page 11, for instance) indicates that the particular wire product formation technique used, such as drawing at a controlled working temperature, yields different wire properties, including surface smoothness as compared to other processes, such as extrusion (Spec.; Table X). In this regard, we agree with Appellants that the Examiner has not established that either of the applied references suggest forming a wire product by drawing and/or has established that the alloy working techniques taught by Regazzoni and/or Masumoto, such as extrusion would have, led one of ordinary skill in the art to forming Mg alloy based wire products, as an intermediate or final product, with properties as claimed, including a surface roughness corresponding to the claim1 surface roughness. On this record, Appellants’ arguments indicate that the Examiner has not carried the burden to establish that the applied prior art would have led one of ordinary skill in the art to the claimed subject matter. Accordingly, we reverse the Examiner’s obviousness rejection of claim 1. CONCLUSION/ORDER The Examiner’s decision to reject claim 1 is reversed. REVERSED kmm