HITACHI METALS, LTD.

Patent Trials and Appeals Board

Sep 2, 2020

14911597 - (D) (P.T.A.B. Sep. 2, 2020)

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.
14/911,597 02/11/2016 Takeshi NISHIUCHI Q225218 4783
23373 7590 09/02/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
SU, XIAOWEI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKESHI NISHIUCHI, TAKAYUKI KANDA, RINTARO ISHII,
FUTOSHI KUNIYOSHI, and TEPPEI SATOH
Appeal 2019-006045
Application 14/911,597
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
JULIA HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6–12, which constitute all the claims
pending in this application. Claims 1–5 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Hitachi Metals,
LTD. Appeal Br. 2.
Appeal 2019-006045
Application 14/911,597

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CLAIMED SUBJECT MATTER
Claim 6 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
6. An R-T-B based sintered magnet represented by
the following formula (1):
uRwBxGayCuzAlqM(100-u-w-x-y-z-q)T (1)
wherein R is composed of light rare-earth element(s) RL and
heavy rare-earth element(s) RH, RL is Nd and/or Pr, RH is Dy
and/or Tb, T as balance is Fe, and 10% by mass or less of Fe
being replaced with Co, M is Nb and/or Zr, and u, w, x, y, z, q
and 100-u-w-x-y-z-q are expressed in terms of % by mass;
said RH accounts for 5% by mass or less of the R-T-B
based sintered magnet, the following inequality expressions (2)
to (6) being satisfied:
0.4 ≤ x ≤ 1.0 (2)
0.07 ≤ y ≤ 1.0 (3)
0.05 ≤ z ≤ 0.5 (4)
0 ≤ q ≤ 0.l (5)
0.100 ≤ y/(x + y) ≤ 0.340 (6)
v = u - (6α +β + 8γ), wherein the amount of oxygen (%
by mass) of the R-T-B based sintered magnet is α, the amount
of nitrogen(% by mass) is β, and the amount of carbon (% by
mass) is γ; and
v and w satisfy the following inequality expressions (7)
to (9):
v ≤ 29.5 (7)
0.89 ≤ w ≤ 0.93 (8)
-12.5w + 38.75 ≤ v ≤ -62.5w + 86.125 (9).

Appeal 2019-006045
Application 14/911,597

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Miwa et al. (“Miwa”) US 2015/0170810 A1 June 18, 2015

THE REJECTION
Claims 6–12 are rejected under 35 U.S.C. §103 as being unpatentable
over Miwa.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon review of the
evidence and each of the respective positions set forth in the record, we find
that the preponderance of evidence supports Appellant’s position in the
record. Accordingly, we reverse the Examiner’s rejection on appeal
essentially for the reasons set forth in the record by Appellant, and add the
following for emphasis.
We refer to the Examiner’s statement of the rejection as set forth on
pages 3-5 of the Final Office Action.
As background, Appellant explains that an R-T-B-based sintered
magnet including an R2T14B type compound as a main phase (R is composed
of light rare-earth element(s) RL and heavy rare-earth element(s) RH, RL is
Appeal 2019-006045
Application 14/911,597

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Nd and/or Pr, RH is Dy and/or Tb, and T is at least one of transition metal
elements and inevitably includes Fe) has been known as a permanent magnet
with the highest performance among permanent magnets, and has been used
in various motors for hybrid vehicles, electric vehicles and home appliances.
Appeal Br. 4. Appellant explains however, in the R-T-B-based sintered
magnet, coercivity force HcJ (hereinafter sometimes simply referred to as
“HcJ”) decreases at a high temperature to cause irreversible thermal
demagnetization, and when the magnet is used particularly in motors for
hybrid vehicles and electric vehicles, there is a need to maintain high HcJ
even at a high temperature. Appeal Br. 4.
Appellant explains that to increase HcJ, a large amount of heavy rare-
earth elements (mainly, Dy) have previously been added to the R-T-B-based
sintered magnet, but there arose a problem that a residual magnetic flux
density Br (hereinafter sometimes simply referred to as “Br”) decreases, so
there has recently been employed a method in which heavy rare-earth
elements are diffused from the surface into the inside of the R-T-B-based
sintered magnet to thereby increase the concentration of the heavy rare-earth
elements at the outer shell part of main phase crystal grains, thus obtaining
high HcJ while suppressing a decrease in Br (see paragraph [0004] at page 2,
lines 3-14 in the present application). However, Dy has problems such as
unstable supply and price fluctuations, so there is a need to obtain high
Hcj while suppressing a decrease in Br without using heavy rare-earth
elements such as Dy as much as possible, i.e., by reducing the amount used
as far as possible (see paragraph [0005] at page 2, ll. 15–21 in the
Specification). Appeal Br. 4–5.
Appeal 2019-006045
Application 14/911,597

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Appellant states that the present invention (the subject matter of claim
6) has been made so as to solve the above problems, and an object is to
provide an R-T-B-based sintered magnet having high Br and high HcJ
while suppressing the content of Dy (see paragraph [0010] at p. 4, ll. 8–12 in
the present Specification). Appeal Br. 5.
It is the Examiner’s position that Miwa suggests the claimed subject
matter of claim 6, and that Appellant’s secondary considerations are
unpersuasive. See generally Final Action and Answer. The Examiner sets
forth Table 1 and Table 2 on page 4 of the Answer showing comparisons
between Miwa’s Sample A1 with Appellant’s claim 6.
It is noted that on page 4 of the Answer, the Examiner points out that
Sample A1 in Table 2 of Miwa is relied upon in making the rejection, and so
Appellant’s argument pertaining to other Miwa samples are moot.
Claim 6 not only includes the inequality expressions (2)-(6), but also
includes inequality expressions (7), (8), and (9). See Claim 6, supra.
With particular regard to inequality expression (9), on page 13 of the
Appeal Brief, Appellant argues that it is important that the values of v and w
are within the range defined by the recited inequality expression (9), as
shown in Figure 1 of Appellant’s Specification, wherein Figure 1 is an
explanatory graph showing ranges of values for v and w satisfying
inequality expressions (7), (8), and (9). Spec. 25. Appeal Br. 13.
Appellant emphasizes that Sample A1 of Miwa cited by the Examiner
on page 4 of the Final Office Action does not satisfy the range of v and w
defined by the inequality expression (9), specifically because v = 29.9 and w
= 0.91, as noted by the Examiner in page 4 of the Final Office Action.
Appeal 2019-006045
Application 14/911,597

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Appeal Br. 14. Appellant states that because w of Sample A1 is 0.91, if
Sample A1 were to satisfy the inequality expression (9), Sample A1 would
need to have v in the range of 27.4 – 29.3 (which is calculated by applying
w=0.91 to the inequality expression (9)). However, Appellant explains that
v of Sample A1 is 0.6 larger than the upper limit of this calculated range,
which is significant. Appeal Br. 14.
Appellant also points out that Miwa does not disclose nor imply that
v and w values are controlled to satisfy the range defined by the inequality
expression (9). Appeal Br. 14.
Therefore, Appellant submits that claim 1 of the present application is
not prima facie obvious over Miwa. Id.
We are persuaded by the aforementioned line of argument. The
Examiner acknowledges that v does not fall within inequality expression (9),
but that it is “close” in value. Final Act. 4. Also, in response to the
aforementioned argument related to inequality expression (9), on page 12 of
the Answer, the Examiner states that the elements critical to the claimed
formula substantially overlap the quantities of the same elements in the prior
art, and since there is utility over the entire disclosed range, the claimed
formula is satisfied by the broader ranges taught in the prior art. The
Examiner states that it is also well settled that there is no invention in the
discovery of a general formula if it covers a composition described in the
prior art, and refers to certain case law therein. Ans. 12. This stated position
is nebulous, and inadequately addresses the valid points made by Appellant
in connection with the claim element pertaining to inequality expression (9).
We agree with Appellant’s reply made on page 5 of the Reply Brief that
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Application 14/911,597

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Miwa’s general disclosure is very broad, and that the formulas recited in the
present claims limit the invention to a composition which would not have
been obvious from the very broad general disclosure of Miwa.
In view of the above, we reverse the rejection. We need not address
the secondary considerations in making this determination.
CONCLUSION
We reverse the Examiner’s decision.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
6–12 103(a) Miwa 6–12

REVERSED