Ex Parte SAGAWA

Patent Trial and Appeal Board

Oct 31, 2018

13791376 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/791,376 03/08/2013
25944 7590 11/02/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Masato SAGA WA
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.
140136.01 4298
EXAMINER
CHAU,LISAN
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATO SAGA WA
Appeal 2018-001685
Application 13/791,3 7 6
Technology Center 1700
Before N. WHITNEY WILSON, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
November 4, 2016 decision finally rejecting claims 16-18, 20, and 24. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant is the Applicant Intermetallics Co., Ltd., which is also identified
as the real party in interest (Br. 1 ).
Appeal 2018-001685
Application 13/791,376
CLAIMED SUBJECT MATTER
Appellant's disclosure is directed to a sintered NdFeB magnet which
is said to have high coercivity and be capable of being brought into
applications without lowering its residual magnetic flux density or maximum
energy product and without reprocessing (Abstract). The claimed magnet
includes a surface region, the surface region being richer in Dy ( dysprosium)
and/or Tb (terbium). Details of the claimed invention are set forth in
independent claim 16, which is reproduced below from the Claims Appendix
of the Appeal Brief:
16. A sintered NdFeB magnet, comprising:
a base body comprised of a sintered compact having a
grain boundary on a surface region of a main-phase particle of a
NdFeB magnet, the surface region of the main-phase particle
being richer in Dy and/or Tb than the main-phase particle
except the surface region, an oxygen content of the base body
being 5000 ppm or lower; and
a surface layer adhered to an entire surface of the base
body, the surface layer being composed of a rare-earth element
R and an iron-group transition element T, or composed of the
elements R, T and another element X, the element X being
capable of forming an alloy or intermetallic compound with the
element R and/ or T.
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Application 13/791,376
REJECTIONS
I. Claims 16-18 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Machida '2992 in view of Sekino 3 and Machida '517. 4
II. Claim 24 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Machida '299 in view of Sekino and Machida '517, and further in view
of Hirozawa. 5
DISCUSSION
Appellant limits its arguments to the rejection of independent claim 16
over Machida '299 in view of Sekino and Machida '517 (see Br. 4--8).
Accordingly, we limit our analysis to the rejection of claim 16.
The Examiner finds that Machida '299 teaches each element of the
claimed invention, except that it does not disclose that the oxygen content of
the main body is 5000 pm or lower (Final Act. 3--4, citing Machida '299
Abstract, FIG. 1, ,r,r 24, 25, 28-34, 37 41, 42, 48, 49, 53). The Examiner
also finds that while Machida '299 does not explicitly teach an oxygen
content of no more than 5000 ppm, it does teach minimizing oxygen
contamination and uses a process substantially similar to that used by
2 Machida et al., WO 2004/114333 Al, published December 29, 2004. We
will refer to the corresponding U.S. publication US 2007/0034299 Al,
published February 15, 2007, which both the Examiner and Appellant also
rely upon (Final Act. 3).
3 Sekino et al., US 2004/0050454 Al, published March 18, 2004.
4 Machida et al., WO 2004/088683, published October 14, 2004. We will
refer to the corresponding U.S. publication US 2006/0278517 Al, published
December 14, 2006, which both the Examiner and Appellant also rely upon
(Final Act. 3).
5 Hirozawa, JP 62192566, published August 24, 1987.
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Application 13/791,376
Appellant to avoid oxygen contamination. Additionally, the Examiner finds
that while Machida '299 recognizes the presence of an outermost layer on
the surface of the magnet, it "does not specifically teach that the surface
layer is adhered to an entire surface of the base body" (Final Act. 4,
emphasis in original).
The Examiner further finds that Sekino
teaches a base body comprised of a sintered compact having a
grain boundary on a surface region of a main-phase particle of a
NdFeB magnet, the surface region of the main-phase particle
being richer in Dy and/or Tb than the main-phase particle
except the surface region, and having an oxygen content of the
base body being 8000 ppm or less by weight
(Final Act. 4, citing Sekino Abstract, FIG. 1, ,r,r 24, 28, 30, 33, 35, and 44).
The Examiner finds that it would have been obvious to make the base body
of Machida '299 with an oxygen content of no more than 5000 ppm "in
order to not generate undesirable magnetic properties" (Final Act. 4--5,
citing Sekino ,r,r 12 and 32). Finally, the Examiner relies on Machida '517
as suggesting having the entire surface layer of Machida '299 adhere to the
base body to form a uniform film to obtain satisfactory magnetic properties
(Final Act. 5, citing Machida '517, ,r 29).
Appellant argues that claim 16 requires the surface layer of the
sintered NdFeB magnet to be "strongly adhered" to the base body (Br. 4).
According to Appellant, this prevents the base body from being oxidized and
increases the mechanical strength of the sintered NdFeB magnet (Br. 4--5).
Appellant also contends that Machida '299 teaches that, ideally, there
is no surface coating on its magnet and at most only a portion of its film
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Application 13/791,376
remains on the surface because most of its film is diffused into the base body
(Br. 5---6). Therefore, according to Appellant:
[Machida '299] neither discloses nor suggests that the entire
surface of their magnet be covered with the film. Indeed, such a
result would be considered to be a failed experiment in
[Machida '299].
(Br. 6). Appellant argues that Machida '51 7, which is relied on by the
Examiner as suggesting adhering Machida '299's surface layer to an entire
surface of its base body in order to form a uniform film to obtain satisfactory
magnetic properties, was misconstrued by the Examiner. Appellant notes
that Machida '517 specifically discloses that its film, like that in Machida
'299, is actually designed to be diffused into the main body of the magnet:
The above-mentioned rare earth metals for deposition do not
restore magnetic properties simply by covering the magnet
surface. That is, it is necessary that at least part of the deposited
rare earth metal component diffuses within the magnet and
reacts with the phase rich in a rare earth metal such as Nd.
Accordingly, it is usual to heat the magnet, after the deposition,
at a temperature from 500 to 1000 degree centigrade for a short
time to diffuse the deposited metal.
(Br. 6-7, quoting Machida '517, ,r 4 7). Therefore, according to Appellant,
Machida '517 does not support the Examiner's finding that Machida '51 7
suggests adhering Machida '299's surface layer to an entire surface of its
base body (Br. 7).
The Examiner responds to the foregoing by arguing that Machida
'517 's disclosure that "at least part of the deposited rare earth metal
component diffuses within the magnet" means that "[Machida '517] is open
to having a rare earth metal component present on the surface of its magnet
(i.e. a part of the deposited rare earth metal component not diffused with the
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Application 13/791,376
magnet corresponds to the claimed surface layer" because "[ a ]bsence of
evidence or explicit teaching of [Machida '517 's] surface layer being
removed, [the] Examiner deems that [Machida '51 7] teaches a surface layer
present on an entire surface of a magnet" (Ans. 6) ( emphasis omitted).
Thus, the dispositive issue is whether the phrase in Machida '517 that
"at least part of the deposited rare earth metal component diffuses within the
magnet" means that ( 1) in some parts of the magnet the deposited rare earth
metal component is entirely diffused into the magnet, so that there is not a
surface layer over the entire surface of the underlying magnet, or (2) that
some of the deposited rare earth metal component in particular spots is
diffused, so that there is a surface layer over the entire surface of the
underlying magnet.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 83 7 F .2d 1071,
1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007). In the absence of a proper prima facie case of obviousness, an
applicant who complies with the other statutory requirements is entitled to a
patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In this instance, we determine that a preponderance of the evidence
supports the Examiner's determination that Machida '517 teaches a surface
layer present on an entire surface of a magnet. As noted above the phrase
"at least part of the deposited rare earth metal component diffuses within the
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magnet" could have two possible meanings, one of which supports the
Examiner's conclusion of obviousness. Based on the record before us, we
find that a preponderance of the evidence supports the Examiner's position.
In particular, Machida '517 discloses that the deposited rare earth metals "do
not restore magnetic properties simply by covering the magnet surface"
(Machida '517, ,r 4 7). Instead, "it is necessary that at least part of the
deposited rare earth metal component diffuses within the magnet" (id.).
Thus, Machida '51 7 is clear in stating that not all of the rare earth metal
need be diffused into the magnet. The Examiner finds that this means that
some of the rare earth metal need not be diffused into the magnet.
As Machida '51 7 teaches that the entire surface of the magnet has the
rare earth metal deposited on it, the Examiner fairly finds that a person of
skill in the art would understand that Machida '51 7, therefore, suggests that
magnets in which the entire surface of the magnet is covered by the rare
earth metal coating, which would satisfy the claim requirements. 6 That is,
the language in Machida '51 7 cited by Appellant ("that at least part of the
deposited rare earth metal component diffuses within the magnet"), contrary
to Appellants' argument, does not exclude a surface layer formed of
deposited rare earth metal component that remains on the surface after a
portion diffuses within the magnet, but rather reasonably suggests such a
surface layer, as relied on by the Examiner in making the obviousness
rejection.
6 We note that the claim requires that the surface layer have both the rare
earth metal and a transition metal. As found by the Examiner (Ans. 7), both
Machida '299 and Machida '517 teach the use of a Dy-Co alloy, which
would meet the claim requirements.
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Accordingly, we do not find that Appellant has demonstrated
reversible error in the rejection.
CONCLUSION
We AFFIRM the rejection of claims 16-18 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Machida '299 in view of Sekino and Machida '517.
We AFFIRM the rejection of claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Machida '299 in view of Sekino and Machida '517, and
further in view of Hirozawa.
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 )(iv).
AFFIRMED
8