NITTO DENKO CORPORATION

Patent Trials and Appeals Board

Jul 21, 2020

2019004818 (P.T.A.B. Jul. 21, 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.
14/893,179 11/23/2015 Takashi HABU 71450.0422 5960
13155 7590 07/21/2020
Edwards Neils LLC
125 West Street
Suite 202
Annapolis, MD 21401
EXAMINER
CHAU, LISA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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):
ipgeneral@edwardsneils.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte TAKASHI HABU and HIROFUMI EBE
____________
Appeal 2019-004818
Application 14/893,179
Technology Center 1700
____________
Before BRIAN D. RANGE, DEBRA L. DENNETT, and
MICHAEL G. McMANUS Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5 of Application 14/893,179, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/893,179 filed Nov. 23, 2015 (“the ’179 App’n”); the Final Office Action
dated July 6, 2018 (“Final Act.”); the Appeal Brief filed Dec. 12, 2018
(“Appeal Br.”); and the Examiner’s Answer dated Apr. 3, 2019 (“Ans.”).
Appellant did not file a Reply Brief.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Nitto Denko
Corporation. Appeal Br. 2.
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Application 14/893,179
2
STATEMENT OF THE CASE
The subject matter of the invention relates to soft magnetic resin
compositions, soft magnetic adhesive film, soft magnetic laminate circuit
boards, and a position detection device. Spec. ¶ 1. According to Appellant,
an object of the invention includes providing a soft magnetic film filled with
soft magnetic particles at a higher proportion and having excellent magnetic
properties, and a soft magnetic resin composition capable of producing such
film. Spec. ¶ 9. Claim 1, reproduced below from the Claims Appendix of
the Appeal Brief, illustrates the claimed subject matter:
1. A soft magnetic resin composition comprising:
soft magnetic particles shaped flat, a resin component,
and polyether phosphate ester, wherein
the soft magnetic particles content is 60% by volume or
more and
the polyether phosphate ester content relative to 100 parts
by mass of the soft magnetic particles is 0.1 to 5 parts by mass.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Kaneda et al.
(“Kaneda”)
US 2011/0253949 A1 Oct. 20, 2011
Sato JP 2008021990 A Jan. 31, 2008
Kondo JP 2009059753 A Mar. 19, 2009

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REJECTION
The Examiner maintains the rejection of claims 1–53 under 35 U.S.C.
§ 103(a) as obvious over Kondo in view of Sato, and in view of Kaneda.
Final Act. 3–5.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant 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 [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
rejections.
Appellant argues the claims as a group. Appeal Br. 7–9.
The Examiner finds that Kondo teaches a soft magnetic adhesive film
formed from a soft magnetic resin composition comprising flat soft magnetic
particles, a resin component, and a dispersant (e.g., Disperbyk111). Final
Act. 4; Ans. 4. Regarding the dispersant, the Examiner finds that Kondo
teaches 3–20 parts by mass of dispersant relative to 1000 parts by mass of
soft magnetic material. Final Act. 4. The Examiner finds that Kondo does
not teach (1) a soft magnetic particles content of 60% or more by volume, or
(2) the dispersant is a polyether phosphate ester with an acid value of 10 or
more. Id. The Examiner relies on Sato as disclosing a film comprising 30 to

3 Claims 6 and 7 are withdrawn. Final Act. 1.
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Application 14/893,179
4
80 volume percent of soft magnetic particles. Id. The Examiner concludes
that one of ordinary skill in the art at the time of the invention would have
found it obvious to optimize Kondo’s soft magnetic particles content to 60%
by volume or more in order to achieve desirable magnetic properties as
disclosed in Sato. Id.
The Examiner finds that Kaneda teaches dispersants Disperbyk111 (as
also disclosed in Kondo) and HIPLAAD ED152 (as also disclosed in the
Specification). Ans. 4 (citing Kondo ¶¶ 27, 30; Kaneda Abstract and ¶ 73;
Spec. ¶¶ 53 [sic], 161). HIPLAAD ED152 is a polyether phosphate ester.
Ans. 4; Spec. ¶ 54. The Examiner determines that one of ordinary skill in
the art would have found it obvious to use polyether phosphate ester to
evenly distribute the soft magnetic particles and have a more uniform
magnetic property within the film. Final Act. 4. The Examiner determines
that Kondo’s and Kaneda’s dispersants are art-recognized functional
equivalents, thus substituting one for the other would have been obvious.
Id.; see also Ans. 4.
Appellant raises several arguments to contend that the Examiner fails
to establish a prima facie case of obviousness. Appeal Br. 7–9.
Appellant first argues that Kondo’s dispersion target is a flat soft
magnetic particle, but Kaneda’s dispersion target is a fine silver particle, and
different dispersion targets have different dispersion capabilities or
dispersion functions. Id. at 8. According to Appellant, no equivalence is
recognized between the two dispersants, thus the combination of Kondo and
Kaneda would not have been obvious. Id.
This argument is unpersuasive because Disperbyk111 and HIPLAAD
ED152 are both dispersants and Kaneda recognizes the equivalence of
Disperbyk111 and HIPLAAD ED152. See Kaneda ¶ 73. Appellant does not
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present persuasive evidence to the contrary. Further, Appellant’s assertions
regarding different dispersion capabilities are not supported by citation to
evidence of record. It is well settled that arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Second, Appellant argues that Kaneda relates to a method for
manufacturing silver nanoparticles, and has nothing to do with a soft
magnetic resin composition. Id. Therefore, per Appellant, one of ordinary
skill in the art would not have looked to Kaneda to modify Kondo’s noise
suppressing sheet. Id.
However, “[o]ne of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323, (Fed. Cir. 2005) (citing In re Oetiker, 977 F.2d 1443, 1448
(Fed. Cir. 1992). “As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventors.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal – and even
common-sensical – we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In
such situations, the proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable
of combining the prior art references.
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Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). Appellant does not persuade us
otherwise.
Third, Appellant argues that the invention uses polyether phosphate
ester “to obtain excellent (high) magnetic properties” that cannot be obtained
by using and evenly distributing a common dispersant. Id. at 8–9 (citing
Spec. ¶ 159, Comparative Examples 4 and 5 in Table 1). Thus, Appellant
urges, “it would not have been obvious to have excellent (high) magnetic
properties within the film by the use of polyether phosphate ester.” Id. at 9.
Finally, Appellant contends that the claimed polyether phosphate ester
content ensures that bleed-out of the polyether phosphate ester occurs on a
surface of the soft magnetic adhesive film, reducing the possibility of
reduction in adhesive force relative to an adherend. Id. (citing Spec. ¶¶ 57–
59).
As with the first two arguments, the last two arguments are
unpersuasive of reversible error by the Examiner. Limitations not appearing
in the claims cannot be relied upon for patentability. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”). The
claims do not recite high magnetic properties or adhesive force. See Appeal
Br. 11–12 (Claims App.).
In addition, to the extent that Appellant addresses unexpected results
with polyether phosphate ester as evidence of nonobviousness, unexpected
results must be “commensurate in scope with the degree of protection sought
by the claims on appeal.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005). The claims recite, inter alia, “soft magnetic particles,” “a resin
component,” and “polyether phosphate ester.” However, the ’179
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Application provides beneficial data only on one specific “soft magnetic
particle,” one example each of only three specific polyether phosphate
esters, and one example each of different mixtures of four specific resin
components. See Spec. ¶ 160 (Table 1). In contrast, the claim scope is
vastly broader than these disclosures. See, e.g., Spec. ¶ 22 (“Examples of
the soft magnetic materials of the soft magnetic particles include magnetic
stainless steel (Fe-Cr-Al-Si alloy), Sendust (Fe-Si-Al alloy), permalloy (Fe-
Ni alloy), silicon copper (Fe-Cu-Si alloy), Fe-Si alloy, Fe-Si-B (-Cu-Nb)
alloy, Fe-Si-Cr-Ni alloy, Fe-Si-Cr alloy, Fe-Si-Al-Ni-Cr alloy, and ferrite.”).
We sustain the rejection of claims 1–5 as obvious over Kondo in view
of Sato and Kaneda.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5 103(a) Kondo, Sato, Kaneda 1–5
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED