Ex Parte Wakisaka et al

Patent Trial and Appeal Board

Dec 21, 2018

13915811 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/915,811 06/12/2013
40854 7590 12/26/2018
RANKIN, HILL & CLARK LLP
38210 GLENN A VENUE
WILLOUGHBY, OH 44094-7808
FIRST NAMED INVENTOR
Taisei Wakisaka
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.
HKY-33872.02 3365
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAISEI W AKI SAKA, TOKUJI OKUMURA, and
TAKANORI SUZUKI
Appeal2017-000264
Application 13/915,811
Technology Center 1700
Before TERRY J. OWENS, GRACE KARAFFA OBERMANN, and
BRIAND. RANGE, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant is the Applicant, Honda Motor Co., which, according to the
Appeal Brief, also is the real party-in-interest. Appeal Br. 3. Appellant
seeks relief from the Examiner's non-final rejections of claims 2--4 under 35
U.S.C. §§ 102(b) and 103(a), and the Examiner's non-final rejection of
claim 2 under 35 U.S.C. § 112. Appeal Br. 5, 8-16. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-000264
Application 13/915,811
STATEMENT OF THE CASE
Appellant describes the invention as relating to a brazing filler metal
that is used to join a Fe-based metallic member and an Al-based metallic
member. Spec. ,r 1. Appellant explains that dissimilar metallic members are
joined by interposing a brazing filler metal between the members, such that a
joining layer is formed between the members. Id. ,r 2.
In conventional joining, a Zn-based brazing filler metal is heated so as
not to melt the Fe-based metallic member. Id. ,r 9. Appellant, however,
asserts to have found that the joint strength between the Fe-based metallic
member and the joining layer having a Zn-based brazing filler metal can be
increased by heating at a temperature higher than the melting point of the
Fe-based material, and, thereby, melting the joined part of the Fe-based
metallic member. Id.
According to Appellant, when adding Si to Zn, the melting point of
the resulting material increases with the addition of Si and becomes as high
as 600QC to 900QC, and for that reason, Si has not been investigated as an
additive element of a brazing filler metal. Id. ,r 17. Appellant states that Al
has been used as an additive element as Al decreases the melting point of the
Zn-based brazing filler metal. Id. Appellant, however, uses a brazing filler
metal that comprises Zn, Si, and unavoidable impurities in joining a Fe-
based metallic member and Al-based metallic member. Id. ,r 19.
Claim 2 is illustrative of the subject matter and is reproduced below:
A brazing filler metal used to join a Fe-based metallic
member containing a Fe-based material and an Al-based
metallic member containing an Al-based material comprising
Zn, Si and unavoidable impurities,
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Application 13/915,811
wherein 0.25 to 2.5% by weight of the brazing filler
metal is Si, and the remainder being Zn and unavoidable
impurities,
wherein a manufacturing process by which the brazing
filler metal is produced includes an extrusion process.
OPINION
35 US.C. § 112 Rejection
The Examiner rejects claim 4 under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112, second paragraph. Non-Final Act. 2-3. Claim 4, which depends
from claim 2, requires that "a particle size of Si in the brazing filler metal
is 10 µm or less." The Examiner asserts that "there are many standards to
measure particle size that in tum have many different results" and "due to
the lack of any measuring standard at all, the scope of the claim is
indefinite." Id. at 3; see also Ans. 3 (identifying different methods of
measuring particle size).
Appellant argues that particle size is defined in the specification as
relating to particle diameter, that "the term 'particle size' is frequently used
in the art and understood by those skilled in the art to relate to a particle
diameter," and that the existence of different methods of measurement does
not change the fact that the term, as readily understood in the art, relates to
particle diameter. Appeal Br. 9-10 ( citing Spec. ,r 69). Appellant further
argues that the fact there are different methods for measuring particle size is
true for most parameters and does not render indefinite the specified value
range-and, by way of example, points out that "the length of one foot" is
not indefinite, even though the length may be measured using a yard stick, a
tape measure, or a computerized device. Reply Br. 2-3.
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Application 13/915,811
We are persuaded that the particle size limitation at issue in this
appeal is similar to the particle diameter measurement that was at issue in
Takeda Pharmaceutical Co. v. Zydus Pharmaceuticals USA, Inc., 743 F.3d
1359, 1366-67 (Fed. Cir. 2014), where our reviewing court acknowledged
that methods using "different means of approximating average particle
diameter ... can produce different results even for the same sample," yet
"the mere possibility of different results from different measurement
techniques" does not result in an indefinite claim. Id.; see also id. at 1367
("That there is more than one way of determining the average particle
diameter of a particular sample does not render that clear claim language
indefinite."). Accordingly, we do not sustain the Examiner's rejection of
claim 4 under 35 U.S.C. § 112.
35 US.C. § 102 Rejection
The Examiner rejects claims 2--4 under 35 U.S.C. § 102(b) as
anticipated by Olesinski. 1 Non-Final Act. 3--4. The Examiner does not
allege that Olesinski discloses the claim limitation reciting that "a
manufacturing process by which the brazing filler metal is produced
includes an extrusion process," but instead argues that, where a substantially
similar product is found in the prior art, Appellant must demonstrate the
claimed product is patentably distinct. Id. (citing In re Fessmann, 489 F.2d
742 (CCPA 1974); and In re Brown, 459 F.2d 531 (CCPA 1972)); Ans. 4.
The Examiner, however, does not adequately explain how or why Olesinski
discloses a product substantially similar to that claimed by Appellant.
1 R.W. Olesinski & G.J. Abbaschian, The Si-Zn (Silicon-Zinc) System, 6
Bulletin Alloy Phase Diagrams 545 (1985).
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Application 13/915,811
On that point, the Examiner states only "that since the product of the
prior art is structurally and compositionally identical to the claimed product,
it is capable of performing the claimed function( s) with the claimed material,
achieve any claimed result, and have any claimed structure." Non-Final
Act. 6-7. The Examiner does not identify any reason why Olesinski's
composition, which is not subjected to an extrusion process, is structurally
the same or substantially similar to the structure of the claimed product,
which is subjected to an extrusion process. See id.
The record indicates that an extrusion process imparts structural
features. See Machinery's Handbook2 1181 ("On account of the high
pressure under which the metal is extruded, its structure becomes more
compact and its strength is increased. The surfaces are smooth and free
from flaws and other defects."). The Examiner, however, does not consider
structural features resulting from an extrusion process in asserting that
Olesinski discloses a product substantially similar to that claimed by
Appellant. See In re Nordt Dev. Co., 881 F.3d 1371, 1375 (Fed. Cir. 2018)
(finding that the claim term "injection molded"-although described in the
application as a process of manufacture----connotes structure, and should
have been afforded weight when assessing patentability).
Accordingly, we do not sustain the Examiner's rejection of claims 2--4
under 35 U.S.C. § 102(b) as anticipated by Olesinski.
2 Machinery's Handbook(5th ed. 1916).
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35 USC§ 103 Rejection over Olesinski & Machinery's Handbook
The Examiner rejects claims 2--4 under 35 U.S.C. § 103(a) in view of
the combined disclosures of Olesinski and Machinery's Handbook. 3 Non-
Final Act. 6-7. The Examiner relies on Olesinski for disclosure of a metal
containing 0.25o/o-2.5% by weight of Si, with the remainder being Zn and
unavoidable impurities. Non-Final Act. 6. The Examiner turns to
Machinery's Handbook for teaching an extrusion process. Id. The
Examiner finds that Machinery's Handbook teaches extrusion for shaping
metals, including zinc, and concludes that it would have been obvious to
extrude Olesinski's alloy to achieve great accuracy and increased strength.
Id. ( citing Machinery's Handbook 1181-82); Ans. 5. The Examiner also
finds that the claim 1 preamble ( specifying " [a] brazing filler metal used to
join a Fe-Based metallic member containing a Fe-based material and an Al-
based metallic member containing an Al-based material") is a statement of
intended use. Ans. 4. According to the Examiner, Olesinski's product, as
modified to include the extrusion process of Machinery's Handbook, would
have been structurally and compositionally identical to the claimed product,
and capable of performing those functions. Non-Final Act. 6-7.
Appellant acknowledges that Olesinski generally discloses a Si-Zn
alloy and Machinery's Handbook teaches an extrusion process. Appeal
Br. 13. Appellant, however, argues that the prior art is silent as to a reason
for Olesinski's alloy to be extruded (id. at 11, 13), and that the Examiner's
rationale for combining Olesinski with Machinery's Handbook is factually
unfounded because "[ a ]ny of several metal processing techniques could
yield 'great accuracy and increased strength"' (Reply Br. 4). Appellant also
3 Supra note 3.
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Application 13/915,811
argues that Olesinski does not disclose its alloy as being suitable for use as a
brazing filler metal, for joining a Fe-based metallic member and an Al-based
metallic member, as required by claim 2. Appeal Br. 11, 13-14.
We disagree with Appellant's argument that the Examiner's rationale
for combining Olesinski with Machinery's Handbook is unsupported. The
Examiner identifies disclosure in Machinery's Handbook that teaches "[t]he
dimensions of extruded shapes can be gaged with great accuracy" and
provides a table showing the influence of the extrusion process on the tensile
strength of metals in a table with experimental data comparing casting to
extrusion. Machinery's Handbook 1181-82; see Non-Final Act. 6.
Accordingly, Machinery's Handbook would have suggested a reason for
extruding the alloy disclosed in Olesinski-to achieve a product having
great accuracy and increased strength-and the Examiner's reasoning for
combining the references is supported by the record. Furthermore,
Appellant's argument that other processes may also provide great accuracy
and increased strength is not persuasive. See PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014) ("Our precedent,
however, does not require that the motivation be the best option, only that it
be a suitable option from which the prior art did not teach away.").
Nor are we persuaded by Appellant's further argument that the subject
matter of claim 2 is not obvious because Olesinski fails to disclose a Si-Zn
alloy as suitable for use as a brazing filler metal or suitable for use in joining
a Fe-based metallic member and Al-based metallic member. The reference
to "[a] brazing filler metal used to join a Fe-based metallic member
containing a Fe-based material and an Al-based metallic member" in the
preamble of claim 2 is a statement of intended use or purpose of the claimed
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composition. "[T]he patentability of apparatus or composition claims
depends on the claimed structure, not on the use or purpose of that
structure." Catalina Mktg. Int 'l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002); see also In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) ("It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable.").
Appellant argues dependent claim 4 separately, asserting that
Olesinski does not teach the Si particle size range recited in claim 4. Appeal
Br. 12-13. The Examiner explains that "smaller Si particles ... would flow
naturally from following the suggestion of the prior art." Ans. 5. Appellant
does not dispute the Examiner's position that the range of particle sizes
recited in claim 4 is the natural result of an extrusion process, including the
process disclosed in Machinery's Handbook. See Reply Br. 3-5. Further,
Appellant's specification does not identify any process parameters----other
than extrusion generally-required to obtain the claimed particle size (see
Spec. ,r 69), and Appellant admits that "[i]t is by the extrusion process that
the particle size of Si reaches 10 µm or less" (Appeal Br. 12).
For these reasons, we sustain the Examiner's rejections of claims 2
and 4 under 35 U.S.C. § 103(a) in view of the combined disclosures of
Olesinski and Machinery's Handbook. Appellant does not argue dependent
claim 3 separately, and, therefore, we sustain also the Examiner's rejection
of claim 3 under 35 U.S.C. § 103(a) in view of the combined disclosures of
Olesinski and Machinery's Handbook. See 37 C.F.R. § 4I.37(c)(l)(iv).
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35 US. C. § 103 Rejection over Kanai & Machinery's Handbook
The Examiner rejects claims 2--4 under 35 U.S.C. § 103(a) in view of
the combined disclosures of Kanai4 and Machinery's Handbook. The
Examiner relies on Kanai as teaching the claimed amounts of Si and Zn
(Non-Final Act. 7-8), but Kauai's composition also includes Al (Kanai,
Abstract). Appellant asserts that the composition of claim 2 contains only
Si, Zn, and unavoidable impurities. Appeal Br. 15. Appellant explains:
The term "remainder" used in claim 2 is considered to clearly
and unambiguously reference the entirety of the portion of the
brazing filler metal that is not Si (i.e., the 99.75 to 97.5% by
weight of the brazing filler metal). As the entirety of the
remainder is accounted for by Zn and unavoidable impurities,
the claimed brazing filler metal can only be reasonably
interpreted as being made of three materials: Si, Zn, and
unavoidable impurities.
Id. The Examiner, on the other hand, argues that because claim 2 uses the
transitional phrase "comprising," the claim is open to including unspecified
ingredients, and the phrase "the remainder being" is open-ended because it
too is modified by the term "comprising." Ans. 6.
We agree with Appellant that the term "remainder" as used in claim 2
refers to "the entirety of the portion of the brazing filler metal that is not Si
(i.e., the 99.75 to 97.5% by weight of the brazing filler metal)" and that
claim 2 limits the remainder to Zn and unavoidable impurities. Appeal
Br. 15. "The open-ended transition 'comprising' does not free the claim
from [these] limitations," and cannot restore subject matter otherwise
excluded from the claim. Kustom Signals, Inc. v. Applied Concepts, Inc.,
264 F.3d 1326, 1332 (Fed. Cir. 2001) (citing Spectrum Int'!, Inc. v. Sterilite
4 JP 3-285761 A (1991).
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Corp., 164 F.3d 1372, 1379--80 (Fed. Cir. 1998)). The Examiner's view that
the phrase "'remainder being' ... is open ended since 'comprising' is open
ended" is erroneous. See Dippin 'Dots, Inc. v. Mosey, 476 F.3d 1337, 1343
(Fed. Cir. 2007) ("The presumption raised by the term 'comprising' does not
reach into each of the [ claim limitations] to render every word and phrase
therein open-ended."). Accordingly, we do not sustain the Examiner's
rejection of claims 2--4 over Kanai and Machinery's Handbook.
Analogous Art
Appellant, in the Reply Brief, makes a conclusory argument that "the
scope of prior art available to anticipate or render the claim obvious should
be limited to those fields deemed analogous to brazing filler metals," and
"[n]o such finding has been made in the case at hand." Reply Br. 3. The
Appeal Brief, however, does not argue that the prior art references applied
by the Examiner are non-analogous, and Appellant does not show good
cause for presenting this argument for the first time in the Reply Brief. See
37 C.F.R. § 4I.41(b)(2). Further, Appellant does not address, much less
explain, why Olesinski and Machinery's Handbook, both of which pertain to
Zn alloys, are not reasonably pertinent to forming a brazing filler metal,
given that the specification indicates that it was known to use a Zn-based
alloy as a brazing filler metal (Spec. ,r,r 3--4, 17). See In re Clay, 966 F .2d
656, 659 (Fed. Cir. 1992) ("A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor's endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem.").
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ORDER
We sustain the Examiner's rejection of claims 2--4 over Olesinski and
Machinery's Handbook under 35 U.S.C. § 103(a).
We do not sustain the Examiner's rejection of claim 4 under
35 U.S.C. § 112; the Examiner's rejection of claims 2--4 over Olesinski
under 35 U.S.C. § 102(b); or the Examiner's rejection of claims 2--4 over
Kanai and Machinery's Handbook under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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