Ex Parte Skoug et al

Patent Trial and Appeal Board

Sep 27, 2017

13773935 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
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.
13/773,935 02/22/2013 ERIC J. SKOUG P020051-RD-SDJ 3024
60770 7590 09/27/2017
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
09/27/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte GM GLOBAL TECHNOLOGY OPERATIONS LLC1
Appeal 2016-008340
Application 13/773,93 52
Technology Center 1700
Before PETER F. KRATZ, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL3
1 The inventors are Eric J. Skoug, Martin S. Meyer, Jan F. Herbst, and
Frederick E. Pinkerton.
2 General Motors Company and its wholly owned subsidiary, GM Global
Technology Operations LLC, are identified as the real parties in interest.
App. Br. 2.
3 In this Opinion, we refer to the Specification filed Feb. 22, 2013 (“Spec.”),
the Final Office Action dated Oct. 14, 2015 (“Final Act.”), the Appeal Brief
filed Mar. 10, 2016 (“App. Br.”), the Declaration of Jan F. Herbst under
37 C.F.R. § 1.132 dated Oct. 18, 2013 (“Herbst Decl.”), the Examiner’s
Answer dated July 22, 2016 (“Ans.”), and the Reply Brief filed Sept. 8, 2016
(“Reply Br.”).
Appeal 2016-008340
Application 13/773,935
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 2, 4—6, 8, and 9 as obvious under 35 U.S.C.
§ 103(a) over Yamamoto.4 App. Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to rare earth-iron-boron permanent magnets,
more particularly, cerium-iron-boron permanent magnets and cerium-iron-
cobalt-boron magnets. Spec. 12. According to Appellant, renewed interest
in optimizing the permanent magnet properties of cerium-iron-boron
compositions has been stimulated by developments in the supply and price
of rare earth elements. App. Br. 4. While Nd2Fei4B is said to be the best
permanent magnet, neodymium is expensive and the future cost and
availability of Nd, Pr, Dy, and Tb are also of concern. Id. Claim 1 is
illustrative (disputed limitations italicized):
1. A method of making a permanent magnet composition
comprising:
preparing a melt consisting essentially of the elements cerium,
iron, and boron, the melt being under a non-oxidizing
atmosphere;
forming rapidly solidified, amorphous or nano-crystalline
particles of the cerium-iron-boron composition from the melt,
such particles having properties of a soft magnetic material;
annealing the soft magnetic particles at a predetermined
temperature above about 450°C for a predetermined time to form
a crystalline material having permanent magnet properties
characterized by values of intrinsic coercivity, Hci in kOe, and
4 Hiroshi Yamamoto, Mitsuru Nagakura & Masahiko Saito, Magnetic
Properties of Melt-spun Ce-(Fe, Co)-(B, Si) System Alloys, 51 J. Japan Instit.
Metals 83—90 (1987). The Examiner and Appellant refer to this reference as
Hiroshi and Yamamoto interchangeably in the record.
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Application 13/773,935
remanence, Br in kG, where the numerical sum of Hci and Br is
10 or greater, the crystalline material further being characterized
as comprising at least seventy percent by mass of the compound
Ce2Fei4B and the balance comprised of secondary phases, each
secondary phase containing one or more of cerium, iron, and
boron, the permanent magnet properties and the proportions of
the compound Ce2Fei4B and the secondary phases in the
annealed material resulting from the proportions of the elements
cerium, iron, and boron in the prepared melt and the annealing
time and temperature, the proportions of the compound Ce2Fei4B
and the secondary phases being determined from analyses of X-
ray diffraction patterns of powder samples of the annealed
permanent magnet material.
App. Br. 12 (Claims Appendix).
OPINION
The Examiner finds that claims 1, 2, 4—6, 8, and 9 would have been
obvious to one of ordinary skill in the art at the time of the invention over
Yamamoto for the reasons stated on pages 2—5 of the Final Office Action.
Appellant does not separately argue the claims rejected, therefore, we
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that the Examiner erred in rejecting the claims over
Yamamoto because Yamamoto does not disclose a magnet composition
where at least 70% is Ce2Fei4B and the balance comprised of secondary
phases. App. Br. 7. Appellant contends that Yamamoto “has no idea of the
proportionality of Ce2Fei4B or any other element or phase” because
Yamamoto states “it is difficult to calculate theoretical values because it is
impossible to calculate the proportions of the two phases.” Id. (quoting
Yamamoto 85) (emphasis omitted). According to Appellant, the Examiner
erred in finding that it would have been obvious to discover an optimum
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value of a result effective variable in view of Yamamoto’s teaching that it is
impossible to calculate the proportions of the composition phases. Id.
Similarly, Appellant contends that Yamamoto does not “provide any
teaching of how to manage crystal phases and proportions to obtain the
combination of intrinsic coercivity and remanence values obtained” in view
of Yamamoto’s teaching that “it is difficult to calculate theoretical values
because it is impossible to calculate the proportions of the two phases from
the results of X-ray diffraction.” Id. at 8 (quoting Yamamoto 85) (emphasis
omitted). Appellant argues that the Examiner erred in finding that the
claimed sum of values of intrinsic coercivity and remanence would have
been expected in the Yamamoto process because the effect of the time and
temperature of Appellant’s annealing processes require analysis and control
of the crystal structure to be produced, which Yamamoto did not and could
not accomplish. Id. at 9.
Regarding the Herbst Declaration, Appellant contends that the
Examiner erred in “reject[ing] Dr. Herbst’s analysis” that Yamamoto’s
statement on page 90 that “the creation of fine structure yielding maximum
coercivity by the annealing of amorphous samples was found to be
extremely difficult” reflects Yamamoto’s “failure to successfully discover or
devise the methods for obtaining optimum Ce-Fe-B and Ce-(Fe, Co)-B
permanent magnets that we have disclosed and claimed in our present
application.” Id. at 10 (quoting Yamamoto 90; Herbst Decl. 114).
According to Appellant, “[a]ny fair reading of the Hiroshi paper, as
summarized and evaluated in the Herbst declaration, reveals that Hiroshi
made some Ce2oFe7oBio alloy ribbons at different quench wheel speeds, and
annealed some of them, but was wholly unable to analyze the proportions of
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any crystal phases or effectively modify the amount of any phase, including
the Ce2Fei4B ‘variable.’” Id. at 9.
The Examiner responds that “[e]ven if... it is difficult to obtain
desirable results, or to improve the current result, difficult to achieve is not
impossible to achieve; and less than desirable result, or unimproved result,
does not necessarily [mean] being an unsatisfactory result.” Ans. 5—6. The
Examiner also responds that Yamamoto teaches that determination by X-ray
diffraction has been conducted (Yamamoto Section II, Experimental
Methods). Id. at 5. Regarding the recited numerical sum of HCi and Br, the
Examiner responds that such properties would be expected in Yamamoto in
view of Yamamoto’s disclosure of “the same or substantially the same
method using the same or substantially the same composition as instantly
claimed” and the lack of factual evidence to show otherwise. Id. at 6.
Regarding optimizing the quantities of compound Ce2Fei4B in order
to achieve desired magnetic properties, the Examiner finds that Yamamoto
teaches the quantity of the compound “greatly affects the magnetic
properties (Pages 84-85)” and therefore the quantity as well as the remaining
phase are result effective variables. Ans. 6—7. The Examiner concludes that
Appellant has not rebutted the evidence of obviousness with the Herbst
Declaration because “discovering an optimum value of a result effective
variable requires only routine skill in the art.” Id. at 7.
In the Reply Brief, Appellant argues that “[t]he Examiner has again
improperly refused to consider Dr. Herbst’s declaration.” Reply Br. 4.
Appellant contends that the Declaration explains why the claimed methods
“requires much more than just sorting out optimum values for ‘variables’
presented in the Hiroshi Yamamoto paper.” Id. Appellant further argues
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that the Herbst Declaration is factually supported objective evidence in its
detailed analysis in paragraphs 7—11. Id. at 4—5. According to Appellant,
Yamamoto’s statements about being difficult to calculate the proportions of
the two phases because it was impossible to calculate the proportions from
the results of the X-ray diffraction means “[t]hey couldn’t do it, they didn’t
do it, and they certainly didn’t encourage anyone else to try to do it” since
Appellant’s claimed methods are not the result of optimizing the teachings
of Yamamoto. Id. at 5.
We are not persuaded by Appellant’s arguments for the reasons stated
by the Examiner in the Final Office Action and Answer. We add the
following primarily for emphasis.
The problem with Appellant’s argument is that Yamamoto explicitly
teaches “[o]n the basis of these results, it is thought that Ce2Fei4B is formed
in melt-spun Ce-Fe-B ternary alloy ribbons and that the quantity of this
compound greatly affects its magnetic properties.” Yamamoto 84. Thus,
the Examiner’s finding that Yamamoto recognizes that the amount of
Ce2Fei4B is a result effective variable that greatly affects the magnetic
properties of the compound (Final Act. 3) is supported by the preponderance
of the evidence cited in this appeal. The discovery of an optimum value of a
variable in a known process is normally obvious. In re Aller, 220 F.2d 454,
456 (CCPA 1955) (experimentation to find optimum conditions was “no
more than the application of the expected skill of the chemical engineer.”).
To the extent that Appellant argues criticality in achieving the
claimed properties, Appellant’s argument is not adequately supported by
evidence in the cited record on appeal. As the Examiner finds, the claim is
not limited to any specific composition, such as Ce2oFe7oBio, the alloy of
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Yamamoto’s example that Appellant criticizes. Ans. 8; Yamamoto 85—88.
Moreover, it is not necessary that Yamamoto disclose the claimed
composition as a working example as Appellant’s arguments suggest. In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted) (“a reference is not
limited to the disclosure of specific working examples.”).
In addition, Appellant does not adequately explain why the
compositions taught by Yamamoto would not be expected to share the same
properties as the claimed composition (App. Br. 9; Reply Br. 2). As
Appellant notes, the “magnetic properties are demonstrated to depend on
proportions of the formed crystal structures” (Reply Br. 2), and Appellant
does not dispute that Yamamoto discloses that quantity “greatly affects its
magnetic properties” (Yamamoto 84). In the absence of evidence to the
contrary, the Examiner’s finding that the claimed properties would be
expected in Yamamoto’s composition (Final Act. 3) is supported by the
record on appeal. The Examiner has provided the record with a
preponderance of evidence including commonalities shared by the method of
Yamamoto and the claims (id. at 2—3), which justifies requiring Appellant to
show that Yamamoto’s product would not be expected to have the claimed
numerical sum of Hci and Br. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“[T]he PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.” (footnote omitted)). The Herbst Declaration is
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insufficient to rebut the Examiner’s findings because it is not necessary that
Yamamoto use the same methods of optimization that Appellant used in
view of Yamamoto’s express disclosure of optimizing quantity to achieve
the desired result (Ans. 7).
Appellant’s argument that Yamamoto did not calculate proportions of
the two phases from the results of X-ray diffraction because the reference
states that it was difficult to do so (App. Br. 8—9; Reply Br. 5) is not
persuasive. As discussed above, Appellant provides no evidence to support
its argument other than that Yamamoto discloses difficulties in calculations
performed in connection with an example. Appellant does not dispute the
Examiner’s finding that difficult to achieve does not mean impossible to
achieve. Ans. 5—6. Moreover, neither Appellant nor the Herbst Declaration
addresses whether the difficulties described by Yamamoto are simply due to
the state of the laboratory equipment available at the time for analyzing
Yamamoto’s samples.
In sum, we affirm the Examiner’s rejection of claims 1, 2, 4—6, 8, and
9 as obvious over Yamamoto.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 2, 4—6, 8, and 9 as
obvious under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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