Ex Parte Suzuki et al

Patent Trial and Appeal Board

Jan 24, 2018

13968514 (P.T.A.B. Jan. 24, 2018)

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.
13/968,514 08/16/2013 Akiko SUZUKI P44394 1825
7055 7590 01/26/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
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 AKIKO SUZUKI and AKINOBU SATO
Appeal 2017-005058
Application 13/968,514
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a chipping-proof nonmetal inorganic solid-state
material and a chipping-proof edge tool made of the material. Claim 1 is
illustrative:
1. A chipping-proof nonmetal inorganic solid-state material,
wherein said inorganic solid-state material has, in at least
a part of a surface thereof, a surface structure in which a
network of recesses and protuberances surrounded by the
recesses are formed,
Appeal 2017-005058
Application 13/968,514
said protuberances have an average width of 5 nm to
50 nm,
a physical property of said surface structure differs from
the physical property of an interior of said inorganic solid-state
material lying below said surface structure, and there is no
solid-solid interface between said surface structure and the
interior of said inorganic solid-state material.
The References
Sato (Sato’510) US 2011/0061510 A1 Mar. 17,2011
Sato (Sato’439) US 2011/0189439 A1 Aug. 4,2011
The Rejection
Claims 1-25 stand rejected under 35 U.S.C. § 103 over Sato ‘510 in
view of Sato ‘439.
OPINION
We reverse the rejection. We need address only the independent
claims, i.e., claims 1-6 and 25. Those claims require protuberances having
an average width of 5-50 nm.1
Sato ’510 discloses a metal-stamping tool comprising “ripples having
depths ranging from 10 to 100 nm formed with periodicities ranging from
100 to 1000 nm on a stamping tool surface that comes into contact with a
workpiece material, and the ripples have a stripe shape extending in a
direction substantially perpendicular to the direction of sliding between the
stamping tool and the workpiece material” (^ 10). To form the ripples, “the
stamping tool surface is irradiated with a gas cluster ion beam in a direction
1 The Appellants state that “the diameter of the smallest circle containing a
single protuberance is determined for various protuberances, and the average
value of the diameters is defined as the ‘average width of the
protuberances’” (Spec. ^ 34).
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Appeal 2017-005058
Application 13/968,514
substantially parallel to the direction of sliding between the stamping tool
and the workpiece material” (]| 11). The stamping tool “can satisfactorily
achieve fine and precise metal stamping of a product that is required to have
a surface roughness of the order of several tens of nm or lower” (]f 12).
Sato ’439 discloses “a slide part [such as a tool, mold or engine part]
that has a surface structure in which there are at least two periodic structures
among a first periodic structure with a period of 10 nm to 100 nm inclusive
and a depth of 5 nm to 50 nm inclusive, and a second periodic structure with
a period of 100 nm to 1000 nm inclusive and a depth of 20 nm to 500 nm
inclusive, and a third periodic structure with a period of 100 nm to 10000 nm
inclusive and a depth of 100 nm to 3000 nm inclusive, in which one of the at
least two periodic structures is formed on the other periodic
structure” fl] 11). “[A]t least one of the second periodic structure and the
third periodic structure is a ripple structure” fl] 12). The periodic structures
are formed “using a gas cluster ion beam, in which the method has a step of
radiating the gas cluster ion beam from a direction parallel to a slide
direction of the slide part” (]f 15). Sato 439 states that Japanese Patent
Application Laid-Open No. 2001-247948 (JP ’948) “discloses a metal
member having grooves with a depth of 0.1 pm to 5.0 pm inclusive at an
area ratio of 0.1% to 30.0% inclusive on the surface and particle projections
with a diameter of 5 nm to 500 nm inclusive, viewed from the surface, and a
height of 5 nm to 500 nm inclusive at an area ratio of 30% or more
(including 100%) in the surface other than the above” (]fl| 5, 8).
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art to combine the stamping tools of Sato ’510 with the
surface structure of Sato ’439 [i.e., JP ’948’s 5-500 nm particle projections]
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Appeal 2017-005058
Application 13/968,514
for stamping tools wherein adhesion of the stamping tools to workpieces is
unlikely to occur and the life and maintenance period of the stamping tools
can be extended” (Ans. 3—4, 6, 9, 12, 15, 18, 22-23).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner does not establish that the applied references would
have provided one of ordinary skill in the art with an apparent reason to
select JP ’948’s 5-500 nm particle projections in combination with or as a
substitute for Sato ’510’s stripe-shaped ripples to achieve the Examiner’s
stated benefits of reducing the likelihood of adhesion of stamping tools to
workpieces and extending the life and maintenance period of the stamping
tools. The Examiner provides mere speculation, and such speculation is not
a sufficient basis for a prima facie case of obviousness. See In re Warner,
379 F.2d 1011,1017 (CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA
1962).
The Examiner notes that the Appellants have not provided evidence
that one of ordinary skill in the art could not have modified Sato ’510 as
proposed by the Examiner (Ans. 26-27).
The Examiner has the initial burden of establishing a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In
re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). When a prima facie case of
obviousness has been established, the Appellants have the burden of
rebutting it by presenting objective evidence of non-obviousness. See
Piasecki, 745 F.2d at 1472; In re Keller, 642 F.2d 413, 425 (CCPA 1981).
A final determination regarding obviousness is then reached by starting
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Application 13/968,514
anew and evaluating the rebuttal evidence along with the evidence upon
which the conclusion of prima facie obviousness was based. See Rinehart,
531 F.2d at 1052. Because the Examiner has not established a prima facie
case of obviousness, the Appellants have no burden of presenting rebuttal
evidence.
For the above reasons we reverse the rejection.
DECISION/ORDER
The rejection of claims 1-25 under 35 U.S.C. § 103 over Sato ’510 in
view of Sato ’439 is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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