2020006642 (P.T.A.B. Jan. 13, 2021)

HITACHI METALS, LTD.

Patent Trials and Appeals BoardJan 13, 2021

2020006642 (P.T.A.B. Jan. 13, 2021)

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. 15/925,876 03/20/2018 Shinji Yamamoto P180255US00 5894 38834 7590 01/13/2021 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER LA VILLA, MICHAEL EUGENE ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 01/13/2021 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHINJI YAMAMOTO Appeal 2020-006642 Application 15/925,876 Technology Center 1700 Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and JAMES C. HOUSEL, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision twice rejecting claims 1–4.3 1 This Decision includes citations to the following documents: Specification filed March 20, 2018, as amended October 10, 2018 (“Spec.”); Non-Final Office Action dated February 3, 2020 (“Non-Final Act.”); Appeal Brief filed June 17, 2020 (“Appeal Br.”); Examiner’s Answer dated July 28, 2020 (“Ans.”); and Reply Brief filed September 23, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Hitachi Metals, Ltd. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-006642 Application 15/925,876 2 We REVERSE. CLAIMED SUBJECT MATTER The invention relates to a clad material comprising a stainless steel layer roll-bonded to a copper (Cu) layer or a Cu alloy layer. Spec. 1:11–15. According to the Specification, the inventive clad material reduces or prevents reduced workability by significantly reducing or preventing a reduced elongation. Id. at 2:20–24. The reduced elongation is achieved by using a grain size of 0.150 mm or less, such that the crystals of the Cu or Cu alloy are not excessively coarsened. Id. at 3:22–25. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A clad material comprising: a first layer made of stainless steel; and a second layer made of Cu or a Cu alloy and roll-bonded to the first layer and interatomic bonding by diffusion between the stainless steel and the Cu or the Cu alloy, wherein a grain size of the second layer made of Cu or the Cu alloy measured by a comparison method of JIS H 0501 is 0.075 mm or more and 0.150 mm or less and the Cu alloy contains 0.05 mass% or more and 0.15 mass% or less of Zr, or contains 4 ppm or more and 55 ppm or less of Ti, and 2 ppm or more and 12 ppm or less of S and 2 ppm or more and 30 ppm or less of O. Appeal Br. 21, App. A. REFERENCES Name Reference Date Winter GB 1,139,102 Jan. 8, 1969 Butt GB 1,242,325 Aug. 11, 1971 Appeal 2020-006642 Application 15/925,876 3 Zachary C. Cordero et al., Six Decades of the Hall-Petch Effect – a Survey of Grain-Size Strengthening Studies on Pure Metals, 61 International Materials Reviews 495–512 (2016). REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 4 103 Butt, Cordero 3 103 Butt, Cordero, Winter OPINION The Appellant’s arguments in support of patentability of the appealed claims are based on claim 1 limitations. See generally Appeal Br. 5–19. The Examiner rejected claim 1 over the combination of Butt and Cordero. Non- Final Act. 3. Butt discloses a composite article comprising a copper base alloy component bonded to an iron base alloy component. Butt 1:85–89. The copper alloy contains 0.5 to 5.0% iron and/or 0.5 to 2.0% cobalt. Id. at 2:104–107. The copper alloy may include other alloying substituents, such as 0.01–0.5% titanium. See id. at 2:108–115. According to Butt, [b]y alloying iron and/or cobalt in small amounts[,] grain growth in the copper base alloy is substantially restricted during annealing at the temperature range required to soften the base alloy component after having formed the composite article. By restricting grain growth the yield strength of the copper base alloy component can be increased to within at least 40% of the iron base component. Id. at 2:71–80. The Examiner found that Butt discloses the claim 1 invention except for the claimed grain size, and relies on Cordero for a disclosure or Appeal 2020-006642 Application 15/925,876 4 suggestion of the grain size limitation. See Non-Final Act. 3. The Appellant argues that the Examiner’s obviousness rejection is based on an erroneous finding that the claim 1 recitation “a second layer made of Cu” reads on Butt’s Cu alloy layer. See Reply Br. 11–13; Ans. 7 (“Such second layer made of Cu encompasses second layer made of copper alloys, such as those used in Butt. The rejection is not predicated on teaching or suggesting the claimed ‘Cu alloy’ . . . .”). The Appellant’s argument is persuasive of reversible error for the reasons discussed below. During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). We determine that the Examiner applied an overly broad interpretation of “layer made of Cu” in rejecting the claims. The Specification consistently uses “Cu” and “Cu alloy” in the alternative. Claim 1 explicitly requires that when the second layer is made of a Cu alloy, that alloy must contain specific components in specific amounts. Although the ordinary artisan would have understood that a Cu layer might contain small amounts of elements as impurities (see, e.g., Butt 2:119–125), the Examiner has not provided sufficient evidence or explanation as to why the ordinary artisan would have understood the term “Cu” as encompassing Butt’s Cu alloy containing 0.5 to 5.0% iron and/or 0.5 to 2.0% cobalt. Cf. CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Further, as argued by the Appellant, the Examiner Appeal 2020-006642 Application 15/925,876 5 also has not provided a reason why the ordinary artisan would have replaced Butt’s Cu alloy with Cu or a Cu alloy as claimed. See Reply Br. 12–13. Because the Appellant has identified reversible error in the Examiner’s obviousness determination as to claim 1, we do not sustain the rejection of this claim or the rejections of claims 2–4 which depend from claim 1. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4 103 Butt, Cordero 1, 2, 4 3 103 Butt, Cordero, Winter 3 Overall Outcome 1–4 REVERSED