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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/264,626 11/08/2011 Takenobu Sakai Q127188 1385
23373 7590 04/26/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
MCMAHON, MARGUERITE J
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
04/26/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKENOBU SAKAI
Appeal 2015-005041
Application 13/264,626
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Takenobu Sakai (Appellant)1 seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Action dated
June 12, 2014, rejecting claims 7-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellant identifies TOYOTA JIDOSHA KABUSHIKI KAISHA as the
real party in interest. Appeal Brief dated November 24, 2014, at 2 (“Appeal
Br.”).
Appeal 2015-005041
Application 13/264,626
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a structure for a
combustion chamber of an engine, such as a reciprocating engine and a
manufacturing method thereof.” Spec. para. 1. Independent claim 7 is
illustrative of the subject matter on appeal and is reproduced below.
7. An engine combustion chamber structure, wherein
an anodic oxide film having a thickness of from more than 20 pm
to 500 pm and a porosity of 20% or more and a pore diameter in
the nanometer order is formed on the inner surface of the engine
combustion chamber.
REJECTION
The Final Action contains a rejection of claims 7-13 under 35 U.S.C.
§ 103(a) as unpatentable over Ogawa (US 2007/0218303 Al, published
September 20, 2007), Nakada (JP 2005-349692 A, published December 22,
2005), and Kobayashi (JP 2003-013801 A, published January 15, 2003).* 2
ANALYSIS
The Examiner finds that “Ogawa . . . describes the anodic oxide film
as including a porous layer 5 but does not define the porosity in terms of
percentages and does not discuss pore diameter.” Final Act. 2. The
Examiner finds that “Nakada . . . teach[es] that the term non-porous applies
2 The Examiner further references Yamaguchi (JP 2003-003296 A,
published January 8, 2003). Final Act. 6 (cited as evidence that “a non-
porous anodic oxide film over an aluminum base is considered to be 30% or
less”); see also Examiner’s Answer dated February 5, 2015, at 8 (“Ans.”)
(explaining that “[t]he examiner has not relied upon Yamaguchi in the Final
Rejection and has only cited Yamaguchi as of interest”).
2
Appeal 2015-005041
Application 13/264,626
to an anodic oxide film having a porosity of 20% or less.” Id. (citing
Nakada, Abst.); see also Ans. 6 (explaining that the Examiner is relying on
Nakada for the definition of “porous” in the art). The Examiner further
references Yamaguchi as evidence that “a non-porous anodic oxide film
over an aluminum base is considered to be 30% or less.” Final Act. 6.
Thus, the Examiner infers that the “porous” layer disclosed in Ogawa must
have a porosity of greater than 20%. Id. at 2-3. Appellant argues that “it is
unreasonable for the Examiner to arbitrarily substitute a porosity from
different technical fields, such as those of Nakada and Yamaguchi, for
Ogawa.” Appeal Br. 6; id. at 7 (arguing that “Nakada relates to an
aluminum plate for a beverage can cap”); id. at 8 (arguing that “Yamaguchi
teaches that the invention can be used for electronic component outer
housings, air conditioning fin materials, structures and panels of automotive
vehicles and aircraft, aluminum two-piece cans, etc.”).
Ogawa relates to “an aluminum alloy-made part which includes an
anodic oxide coating on a predetermined region and is suitably used for a
valve, a piston, a cylinder block, or the like in an internal combustion engine
such as an automotive engine.” Ogawa, para. 2. Specifically, Ogawa
discloses “an aluminum alloy-made part capable of enhancing the heat
conduction performance in the interface between the anodic oxide coating
and the base material and the heat radiation performance on the surface of
the part concerned.” Id. at para. 15. Thus, Ogawa discloses a “porous” layer
in the environment of an internal combustion engine as it pertains to
enhancing heat conductivity and heat radiation.
3
Appeal 2015-005041
Application 13/264,626
Nakada relates to “the thermoplastic resin coated aluminum sheet for
a beverage can cap.” Nakada Translation, para. I.3 Nakada discloses that,
in making beverage can caps, 20% or less porosity is preferable to create a
larger adhesion area of the anodic oxide film to improve adhesion to the
resin layer. Id. at para. 14. Thus, Nakada is defining a nonporous film with
respect to the adhesion properties of the film to a resin sheet in the context of
a beverage can cap.
Yamaguchi relates to “a surface treatment aluminum material” for use
in making a case of a machinery part, an air conditioner fin, an automobile,
the structure of an airplane, or a building material panel. Yamaguchi
Translation, para. 1-2.4 Yamaguchi teaches that, to provide a surface treated
aluminum material which has excellent corrosion resistance, a nonporous
anodic oxide coating has a porosity of less than or equal to 30%. Id. at para.
21. Thus, Yamaguchi is defining a nonporous film with respect to the
corrosion resistance properties of a film used for a structural panel of an
automobile.
We agree with Appellant that it was not reasonable for the Examiner
to rely on the discussion of “nonporous” anodic oxide films in Nakada and
Yamaguchi as a means to discern a definition in the art for the degree of
3 We were not able to locate an English language translation of Nakada of
record in the Image File Wrapper. We attach a copy of the machine
translation on which we relied in Appendix A to this Decision.
4 We were not able to locate an English language translation of Yamaguchi
of record in the Image File Wrapper. We attach a copy of the machine
translation on which we relied in Appendix B to this Decision.
4
Appeal 2015-005041
Application 13/264,626
porosity of the “porous” layer disclosed in Ogawa. The environment in
which the coated part of Ogawa operates, e.g., under high heat conditions of
an internal combustion engine, and the purpose of the coating in Ogawa,
e.g., to enhance heat conductivity and heat radiation, differ significantly
from the environment in which the prior art coatings of Nakada and
Yamaguchi are used and the purposes of those prior art coatings. Thus, we
decline to adopt the Examiner’s inference that the nonporous coatings
discussed in Nakada (used to enhance adhesion in beverage can caps) and
Yamaguchi (used to improve corrosion resistance in structural panels)
inform one as to the meaning of “porous” as that term is employed in the
context of Ogawa, in which the anodic oxide film is used to enhance heat
conductivity and heat radiation in an internal combustion engine.
Alternatively, the Examiner determines that “even without a
supporting reference . . . one of ordinary skill in the art could readily surmise
that a porosity of somewhere in the range of 20% could be considered to be
porous, since the range is so broad.” Ans. 7. Although we acknowledge that
the claimed porosity of “20% or more” is broad, we decline to speculate that
the “porous” anodic oxide film of Ogawa necessarily has a porosity within
the claimed range.
The Examiner further finds that “Kobayashi. . . teach[es] that it is old
in the art to provide a pore diameter in the nanometer order.” Final Act. at
3; see also Ans. 9 (finding that “pore diameters in the nanometer order are
conventional”). The Examiner determines that “[i]t would have been
obvious to one having ordinary skill in the art to provide a pore diameter in
5
Appeal 2015-005041
Application 13/264,626
the nanometer order, as this is customary, and probably inherent, based on
the size of most pores.” Id. Appellant challenges the Examiner’s stated
reason to modify Ogawa with Kobayashi. Appeal Br. 10. We need not, and
do not reach this assertion of error, because we find that the Examiner’s
findings as to Ogawa’s porosity, as evidenced by Nakada and/or Yamaguchi,
are insufficient to support the determination of obviousness.
For these reasons, we do not sustain the rejection of independent
claim 7 and its dependent claims 8-10 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Ogawa, Nakada, and Kobayashi.
Claim 11 recites:
A method for manufacturing the engine combustion
chamber structure claimed in claim 7 comprising:
preparing an aqueous solution containing at least one of
phosphoric acid, oxalic acid, sulfuric acid and chromic acid, as
an electrolytic solution used for anodic oxidation, in which the
concentration of said electrolytic solution is from 0.2 to 1.0 mol/1
and the temperature of said electrolytic solution is from 20 to
30°C,and
performing an anodic oxidation treatment by using said
electrolytic solution.
Appeal Br. 12-13 (Claims App.). Claim 12 depends from claim 11. Id. We
treat claim 11 as a dependent claim, depending from claim 7. See Manual of
Patent Examining Procedure, 9th Ed., Rev. 07.2015 (Nov. 2015),
§ 608.01(n)(II).5 As such, claims 11 and 12 contain all of the structural
5 Section 608.0l(n)(II) provides, in pertinent part:
The fact that the independent and dependent claims are in
different statutory classes does not, in itself, render the latter
6
Appeal 2015-005041
Application 13/264,626
limitations of claim 7, from which they depend. For the same reasons as
discussed above in our analysis of claim 7, we find the Examiner’s
determination of obviousness of claims 11 and 12 is not supported by
adequate evidence as to the porosity of the structure. Accordingly, we do
not sustain the rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ogawa, Nakada, and Kobayashi.
DECISION
The decision of the Examiner to reject claims 7-13 under 35 U.S.C.
§ 103(a) as unpatentable over Ogawa, Nakada, and Kobayashi is reversed.
REVERSED
improper. Thus, if claim 1 recites a specific product, [then] a
claim for the method of making the product of claim 1 in a
particular manner would be a proper dependent claim since it
could not be infringed without infringing claim 1.
7
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
Appeal 2015-005041
Application 13/264,626
APPENDIX A
8
THERMOPLASTIC RESIN-COATED ALUMINUM SHEET FOR BEVERAGE CAN CAP
NAKADA HAJIME; YAMAGUCHI KEITARO (In\.
2005349692 A, (Published 22 Dec 2005).
Patent Family (1 members)
Bibliographic information j Legal status
3!-s). MITSUBISHI ALUMINIUM (Assignee). JP
Highlighting: Off j Single j Multi
Abstract (summary) Translate
PROBLEM TO BE SOLVED: To provide a thermoplastic resin-coated aluminum sheet for a beverage can cap not
lowered In the adhesion of a resin coating layer even If subjected to retort treatment and excellent In corrosion
resistance and flavor properties.
SOLUTION: The thermoplastic resin-coated aluminum sheet is constituted by
forming a non-porous anodization film with a porosity of 20% or below and a thickness of 30-250 nrn at least on one
side of a substrate body comprising aluminum or an aluminum alloy, coating the non-porous anodization film with a
silane coupling agent within a range of 0.1-100 mg/m2and forming a resin coating layer comprising a
thermoplastic resin at least on one side of the substrate body.
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