Ex Parte Sato et al

Patent Trial and Appeal Board

Oct 17, 2016

13008639 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/008,639 01/18/2011
7055 7590 10/19/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Akinobu Sato
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.
P44177 9163
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
10/19/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKINOBU SATO,
AKIKO SUZUKI, and TAKESHI KAW ANO
Appeal2015-003586
Application 13/008,639
Technology Center 1700
Before GEORGE C. BEST, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 11-26 of Application
13/008,639 under 35 U.S.C. § 103(a) as obvious. Final Act. (August 20,
2014). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Japan Aviation Electronics Industry Limited is identified as the real party
in interest. Appeal Br. 3.
Appeal2015-003586
Application 13/008,639
BACKGROUND
The '639 Application describes a surface structure for a slide part
such as a mold. Spec. i-f 1. A method for creating the surface structure is
also described. Id.
Claim 11 is the '639 Application's sole independent claim and is
reproduced below:
11. A slide part comprising a surface structure in which a
second periodic structure with a period of 100 nm to 1000 nm
inclusive and a depth of 20 nm to 500 nm inclusive is formed
on a third periodic structure with a period of 1000 nm to
10000 nm inclusive and a depth of 100 nm to 3000 nm
inclusive,
wherein at least one of the second periodic structure and
the third periodic structure is a ripple structure.
Appeal Br. 20 (Claims App'x).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 11, 12, 15, 16, 19, 20, 23, and 24 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Saruwatari2 and Ishida. 3 Final Act. 2.
2. Claims 13, 14, 17, 18, 21, 22, 25, and 26 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Saruwatari, Ishida, and Ushijima.4 Final Act. 6.
2 US 2009/0317654 Al, published December 24, 2009.
3 US 2009/0092796 Al, published April 9, 2009.
4 US 2002/0090155 Al, published July 11, 2002.
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Application 13/008,639
DISCUSSION
Rejection 1. Appellants' only substantive arguments were for
reversal of this rejection with respect to independent claim 11. See Appeal
Br. 6-17. Dependent claims 12, 15, 16, 19, 20, 23, and 24 are alleged to be
patentable by virtue of their direct or indirect dependence from independent
claim 11. See id. at 16-1 7. We, therefore, restrict our discussion to
independent claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 11, the Examiner found that Saruwatari describes
the third periodic structure, but neither describes nor suggests the second
periodic structure. Final Act. 3. The Examiner further found that Ishida
describes a sliding member comprising "extremely minute" concavities
formed in "minute" concavities at the sliding face of the sliding member. Id.
(citing Ishida Figures 25 and 27, i-f 216).
Based upon these findings, the Examiner concluded that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to form extremely minute
concaves[ SJ between the convexities of Saruwatari in order to
improve retention of the lubricating oil between the convexities,
and thereby, to maintain wear and seizing resistance even when
the outside oil supply is interrupted.
Id. at 4.
5 We note that Ishida, the Examiner, and Appellants each use the adjective
"concave" as a noun. This is an error. "Concave" is an adjective, and that
the corresponding noun is "concavity." See Webster's Ninth New Collegiate
Dictionary 271 (1989) (identifying concave as an adjective and defining
concavity as "a concave line, surface, or space"). Ishida, the Examiner, and
Appellants also make the corresponding error with the adjective "convex."
See id. at 287. For the sake of clarity, we note these errors here and will not
further identify each occurrence thereof.
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Appeal2015-003586
Application 13/008,639
The Examiner also found that the cited references "do not disclose the
claimed period and depth of the extremely minute concaves (second periodic
structures)." Id. The Examiner, however, concluded that it would have been
obvious to optimize the period and depth of these concavities to arrive at a
structure within the ranges specified for the claimed second periodic
structure. Id.
In the alternative, the Examiner found
[i]t is expected [that] the depth and period of the extremely
minute concaves of Ishida overlap the claimed depth and period
of the second periodic structures given the depth must be less
than 1 micron (less than the diameter of the projection particle)
and given the period is approximately the width of the minute
concave (I micron or less) depending on the number of
projection particles used.
Id. at 4--5.
Appellants contest both of these rationales.
First, Appellants argue that "there is no evidence on record that it is
common knowledge for one having ordinary skill in the art at the time of the
present invention that the variables-to-be-optimized regarding the smaller
concaves which are formed on the larger concaves are a 'period' and a
'depth."' Appeal Br. 16. In response, the Examiner argues that Ishida' s
disclosure suggests optimization. Answer 6.
The Examiner's argument is unpersuasive. Ishida suggests that
in the sliding member manufacturing method in which such
mixed projection particles 441 are projected at high velocity
onto the sliding face of the sliding member 401, the material
properties, shapes and projecting conditions of the projection
particles are adjusted. Thus, it becomes possible to
simultaneously form, at the sliding face of the sliding member
401, the transfer layer 404 in which the component of each
projection particle is transferred, and a large number of the
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Appeal2015-003586
Application 13/008,639
minute cavities 405, and to modify the surface so that the
surface has high wear resistance and high seizing resistance.
Ishida i-f 239. In sum, Ishida suggests optimizing the properties of the mixed
projection particles 441 to optimize formation of a transfer layer primarily
composed of calcium oxide left on the sliding member surface by the mixed
projection particles. Ishida is silent regarding adjustment of the depth and
periodicity of the extremely minute concavities.
Second, the Examiner's alternative rationale also is unpersuasive.
This rationale is based upon the Examiner's assumption that the period of
the extremely minute concavities described in Ishida is equal to or less than
the diameter of the particles used to create them. Final Act. 5. The
Examiner bases this assumption on Ishida' s "suggest[ ion to] provid[ e] the
extremely minute concaves directly adjacent to each other, see Figure 27."
Id. at 9.
This argument is unpersuasive because a person of ordinary skill
would understand that the arrangement of minute and extremely minute
concavities shown in Ishida's Figure 27 is an idealized depiction and is not
necessarily produced by the methods described in Ishida. As shown in
Figure 26, Ishida forms the minute and extremely minute concavities by
spraying mixed projection particles 441 at the surface of the sliding member.
Thus, the carrier beads 440 will impact the surface in a random fashion.
Projection particles 411-whether or not they are associated with a carrier
bead 440 to form a mixed rejection particle 441-also will strike the surface
in a random distribution. Due to the random nature of the location of the
minute and extremely minute concavities in Ishida, the Examiner erred by
finding that a person having ordinary skill in the art would have understood
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Appeal2015-003586
Application 13/008,639
Ishida to be suggesting an arrangement of extremely minute concavities
directly adjacent to each other.
We, therefore, reverse the Examiner's rejection of claim 11 of the
'639 Application. Accordingly, we also reverse the rejection of dependent
claims 12, 15, 16, 19, 20, 23, and 24.
Rejection 2. Appellants' sole argument for reversal of this rejection
is that each of the rejected claims depend either directly or indirectly from
independent claim 11, which they allege to be nonobvious based upon the
arguments discussed above. See Appeal Br. 17.
As discussed above, we reverse the rejection of claim 11. Thus, we
also reverse the rejection of claims 13, 14, 17, 18, 21, 22, 25, and 26 of the
'639 Application.
CONCLUSION
For the reasons set forth above we reverse the rejection of claims 11-
26 of the '639 Application.
REVERSED
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