Takeshi Nishiuchi et al.

Patent Trials and Appeals Board

Oct 11, 2019

14780264 - (D) (P.T.A.B. Oct. 11, 2019)

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.
14/780,264 09/25/2015 Takeshi NISHIUCHI Q222501 4757
23373 7590 10/11/2019
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
10/11/2019 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, FUTOSHI KUNIYOSHI,
RINTARO ISHII, and TSUNEHIRO KAWATA
____________

Appeal 2019-001808
Application 14/780,264
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 12–14, 19, 22, and 232. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Hitachi Metals, Ltd. as the real party in
interest. Appeal Brief filed July 20, 2018 (“Appeal Br.”) at 2.
2 Final Office Action entered February 22, 2018 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims an R-T-B-based3 sintered magnet that includes an
Nd2Fe14B compound as a main phase. Appeal Br. 4–6. Claim 12 illustrates
the subject matter on appeal, and is reproduced below with contested
language italicized:
12. An R-T-B based sintered magnet including an Nd2Fe14B
compound as a main phase comprising:
the main phase;
a first grain boundary phase located between two main
phases; and
a second grain boundary phase located between three or
more main phases,
wherein the first grain boundary phase has an average
maximum thickness of 10 nm or more and 30 nm or less, and
the composition of the R-T-B based sintered magnet
comprises:
R: 14.01 atomic % or more and 14.8 atomic % or less,
wherein R is Nd and/or Pr,
B: 5.42 atomic % or more and 5.44 atomic % or less,
Ga: 0.47 atomic % or more and 0.57 atomic % or less,
Al: 0.69 atomic % or less, including 0 atomic %, and
balance being T, wherein T is Fe or transition metal
elements comprising Fe, and inevitable impurities,
wherein the R-T-B based sintered magnet satisfies the
following inequality expression (2):
1.03 ≤ /(1/17 x 100 - ) ≤ 1.24 (2)
wherein is the amount of Ga in terms of atomic %,
and is the amount of B in terms of atomic %, and
wherein an atomic ratio of the amount of B to the amount
of R satisfies the following inequality expression (4):
0.37 ≤ / ≤ 0.42 (4)
wherein is the amount of B in terms of atomic %,
and is the amount of R in terms of atomic %.

3 According to the Specification, “R” is at least one of rare-earth elements
and “T” is a transition metal element. Spec. ¶ 2. B is the atomic symbol for
boron.
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Appeal Br. 20–21 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 12–14, 19, 22, and 23
under 35 U.S.C. § 103 as unpatentable over Nakajima et al. (WO
2013/008756 A1, published January 17 20134) in the Examiner’s Answer
entered November 9, 2018 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 12–14, 19, 22, and 23 under 35 U.S.C. § 103 for the reasons set forth
in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).

4 Appellant does not contest the Examiner’s reliance on Nakajima et al. (US
2014/0132377 A1, published May 15, 2014) as an English translation of
Nakajima et al. (WO 2013/008756 A1, published January 17, 2013).
Citations to “Nakajima” in this decision, therefore, refer to the published
U.S. patent application.
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Claims 12–14 and 19
Appellant presents arguments directed to independent claim 12, and
does not separately address dependent claims 13, 14, and 19. Appeal Br. 7–
13. We accordingly select claim 12 as representative, and decide the appeal
as to claims 12–14 and 19 based on claim 12 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
Nakajima discloses an R-T-B-based sintered magnet that includes a
main phase primarily containing R2F14B, where R is a rare earth element,
and a grain boundary. Nakajima Abstr., ¶¶ 1, 19. Nakajima discloses that
the grain boundary contains an R-rich grain boundary phase having a high
concentration of rare earth elements, and a transition metal-rich grain
boundary phase having a lower concentration of rare earth elements and a
higher concentration of transition metal elements, relative to the R-rich grain
boundary phase. Nakajima ¶¶ 19, 21.
Nakajima discloses numerous embodiments of the R-T-B-based
sintered magnet of Nakajima’s invention, and in one embodiment, referred
to as the “First Embodiment,” the sintered magnet includes 13 % to 15 %
rare earth elements (R), 4.5 % to 6.2 % boron (B), 0.1 % to 2.4 % of one or
more metals (M) selected from aluminum (Al), gallium (Ga), and copper
(Cu), and the balance consisting of a transition metal (T) containing
essentially iron (Fe). Nakajima ¶¶ 79, 82. The ranges of the concentrations
of R, B, and Ga in the sintered magnet of Nakajima’s First Embodiment
encompass the corresponding R, B, and Ga concentration ranges recited in
claim 12. See Final Act. 3.
Nakajima discloses that to improve the coercive force of the sintered
magnet of the First Embodiment, the ratio of the concentration of B to the
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total concentration of rare earth elements (TRE), or B/TRE, in the magnet is
preferably 0.355 to 0.38 (¶ 92), which the Examiner finds “overlaps the
recited B/R [of formula (4)] in claim 12.” Final Act. 4.
The Examiner finds that Experimental Example 44 of Nakajima
describes producing an R-T-B-based sintered magnet from an alloy
including 14.83 % rare earth elements (11.05 % Nd and 3.78 % Py), 5.34 %
B, 0.54 % Ga, and 0.49 % Al. Final Act. 4; see also Nakajima ¶¶ 212–221,
Table 1. As the Examiner acknowledges, the concentration of rare earth
elements (14.83 %) and B (5.34 %) in the magnet of Example 44 are slightly
outside the corresponding concentration ranges for these elements recited in
claim 12 (14.01 % to 14.8 %, and 5.42 % to 5.44 %, respectively). Final
Act. 2–4. Nakajima discloses that the magnet of Example 44 exhibited a
coercive force (Hcj) of 19.6 kOe and a remanence (Br) of 13.2 kG
(Nakajima Table 4; see also Nakajima ¶ 227), which the Examiner
determines correspond to a coercive force of 1.56 MA/m and a remanence of
1.32 T. Final Act. 4; Ans. 7.
The Examiner finds that because the R-T-B-based sintered magnet
disclosed in Nakajima “has a composition overlapping” the composition of
the R-T-B-based sintered magnet recited in claim 12, Nakajima’s R-T-B-
based sintered magnet renders the magnet of claim 12 prima facie obvious.
Final Act. 3.
Appellant argues that “Nakajima does not disclose the feature of claim
12 that ‘the first grain boundary phase has an average thickness of 10 nm or
more and 30 nm or less.’” Appeal Br. 13.
The Examiner finds, however, that although Nakajima “is silent on the
average thickness of the first grain boundary phase located between two
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main phases as recited in claim 12,” the thickness of the first grain boundary
of a sintered magnet is determined by the composition of the alloy used to
produce the magnet, and the method of producing the magnet, which
Appellant does not dispute. Compare Final Act. 4 and Ans. 4, with Appeal
Br. 7–13 and Reply Br. 4–5. The Examiner finds that because the
composition of Nakajima’s R-T-B-based sintered magnet “overlaps” the
composition of the R-T-B-based sintered magnet recited in claim 12, and
because Nakajima’s magnet is produced by substantially the same process as
the magnet of claim 12, “one of ordinary skill in the art would expect that
the first grain boundary phase in the magnet of Nakajima et al. to meet the
first grain boundary phase thickness limitation recited in claim 12.” Final
Act. 5; Ans. 4–5.
More specifically, the Examiner finds that Nakajima discloses that the
process for producing the R-T-B-based sintered magnet of Nakajima’s
invention involves press molding a powder-form R-T-B-based alloy to
obtain a green compact, sintering the green compact at a temperature of
900ºC to 1200ºC, thermally treating the green compact at 800ºC, thermally
treating the green compact at 500ºC, and cooling the resulting R-T-B-based
sintered magnet. Final Act. 5 and Ans. 4–5 (citing Nakajima ¶ 220). As the
Examiner finds, this process disclosed in Nakajima involves the same
sequence of process steps that Appellant’s Specification describes for
producing the R-T-B-based sintered magnet of Appellant’s invention, and
Nakajima’s process uses sintering and heat treatment temperatures that are
the same as, or include, those used in the process described in Appellant’s
Specification. Final Act. 5 and Ans. 5 (citing Nakajima ¶ 220 and Spec. ¶¶
49–51).
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Furthermore, as discussed above, Nakajima discloses an R-T-B-based
sintered magnet including a main phase primarily containing R2F14B, an R-
rich grain boundary phase (first grain boundary phase), and a transition
metal-rich grain boundary phase (first grain boundary phase), in which the
concentration ranges of R, B, and Ga in the sintered magnet encompass the
corresponding R, B, and Ga concentration ranges recited in claim 12, and the
range of the preferred ratio of the concentration of B to the concentration of
R encompasses the range of formula (4) in claim 12. Nakajima, therefore,
discloses an R-T-B-based sintered magnet having a composition that
includes the R-T-B-based sintered magnet recited in claim 12, and Nakajima
discloses producing the R-T-B-based sintered magnet by a process that is
substantially similar to, or the same as, the process disclosed in Appellant’s
Specification for producing the R-T-B-based sintered magnet of claim 12.
The Examiner, therefore, has a reasonable basis for finding that the R-
rich grain boundary phase (first grain boundary phase) in Nakajima’s R-T-
B-based sintered magnet would have an average maximum thickness of 10
nm to 30 nm as recited in claim 12. In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (citation and footnote omitted) (“Where . . . the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. []Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.”).
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The burden, therefore, shifts to Appellant to show that the R-rich
grain boundary phase (first grain boundary phase) of Nakajima’s R-T-B-
based sintered magnet would not have an average maximum thickness of 10
nm to 30 nm, as recited in claim 12. Best, 562 F.2d at 1255. On the record
before us, Appellant does not meet this burden. Although Appellant argues
that the first grain boundary of the R-T-B-based sintered magnet of
Nakajima’s Example 44 would be thinner than 10 nm because the B and R
contents of the magnet of Example 44 “are outside of the ranges of the
composition recited in claim 12,” and although Appellant argues that
magnets of “other examples” of Nakajima “are also outside of the ranges of
the composition recited in claim 12, and would have a first grain boundary
thinner than 10 nm” (Appeal Br. 12), Nakajima’s disclosures are not limited
to the referenced experimental examples. Rather, as discussed above,
Nakajima broadly discloses an R-T-B-based sintered magnet having a
composition that would include an R-T-B-based sintered magnet as recited
in claim 12, which is produced by substantially the same process as the
magnet of claim 12. Appellant’s arguments directed to select experimental
examples in Nakajima do not demonstrate that an R-T-B-based sintered
magnet as broadly disclosed in Nakajima would not have an R-rich grain
boundary phase (first grain boundary phase) with an average maximum
thickness of 10 nm to 30 nm, as recited in claim 12.
Appellant argues that unexpected results set forth in Tables 1–3 of
their Specification show that the R-T-B-based sintered magnet of claim 12
would not have been obvious. Appeal Br. 12. Appellant argues that the
results for samples 1, 2, and 6–9 in Tables 1–3 show that if at least one of R,
B, and Ga has a content outside the respective ranges for these elements
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recited in claim 12, and if both Formulas 2 and 4 in claim 12 are not met, “a
first grain boundary thickness is thinner than 10 nm, and Hcj of the sample is
not so high.” Id. Appellant argues that, in contrast, “when all of the R, B
and Ga contents of a sample fall within the very narrow ranges of contents
thereof recited in claim 12, the first grain boundary thickness of the sample
is 10 nm or more, and both Br and Hcj of the sample are sufficiently high.”
Id. Appellant argues that these results show that the R-T-B-based sintered
magnet of claim 12 “provides unexpectedly superior results and is not
obvious.” Id.
It is well-established, however, that “when unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (citation omitted).
We point out initially that Appellant’s Specification indicates that
high Br and high Hcj are achieved in the R-T-B-based sintered magnet of
Appellant’s invention “through the existence of a first grain boundary phase
having a thickness of 5 nm or more and 30 nm or less.” Spec. ¶ 23. As
discussed above, the Examiner finds that Example 44 of Nakajima describes
producing an R-T-B-based sintered magnet that includes concentrations of
rare earth elements and boron that are outside, but close to, the
corresponding concentration ranges for these elements recited in claim 12.
The amounts of Ga and Al included in the magnet of Example 44, however,
fall within the corresponding concentration ranges for these elements recited
in claim 12, as set forth above. The Examiner’s reliance on the R-T-B-based
sintered magnet of Example 44 of Nakajima reasonably indicates that this
particular magnet exemplified in Nakajima has a composition closest to that
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of the R-T-B-based sintered magnet of claim 12.
Tables 1–3 in Appellant’s Specification do not provide a comparison
between the first grain boundary thickness of the magnet of Nakajima’s
Example 44 and the magnets of samples 3–5, 10, and 11, which include
concentrations of R, B, and Ga that fall within the ranges recited in claim 12,
and satisfy formulas (2) and (4) recited in the claim. Spec. ¶¶ 53–54, 57.
The Examiner, however, includes the following table in the Answer to
provide a comparison between the coercive force (Hcj) and remanence (Br)
exhibited by the R-T-B-based sintered magnet of Nakajima’s Example 44
(expressed in units that correspond to those used in Appellant’s
Specification), and the R-T-B-based sintered magnets of Appellant’s
samples 1, 2, and 6–9 (Ans. 6–7):

As this comparison shows, although the concentrations of rare earth
elements and boron in the magnet of Nakajima’s Example 44 are outside the
corresponding concentration ranges for these elements recited in claim 12,
the magnet of Example 44 nonetheless exhibits both a coercive force and a
remanence comparable to the coercive force and remanence exhibited by the
magnets of Appellant’s samples 3–5, 10, and 11. Nakajima ¶¶ 53–54
(Tables 1 and 2). In view of this comparison, and contrary to Appellant’s
arguments, the high coercive strength exhibited by the magnets of samples
3–5, 10, and 11 would not have been unexpected to one of ordinary skill in
the art at the time of Appellant’s invention, due to Nakajima’s disclosure of
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an R-T-B-based sintered magnet exhibiting a comparable coercive strength.
Notably, on the record before us, Appellant does not direct us to any
statement in the Specification attesting to the unexpected nature of the
results obtained for samples 3–5, 10, and 11, or to any other persuasive
evidence or averment evincing that the results actually would have been
unexpected by one of ordinary skill in the art at the time of Appellant’s
invention. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“Geisler
made no such assertion [that results were unexpected] in his application.
Nor did Geisler submit any such statement through other evidentiary
submissions, such as an affidavit or declaration under Rule 132 . . . . Instead,
the only reference to unexpected results was a statement by Geisler’s
counsel . . . that Geisler’s results were ‘surprising.’”).
Appellant’s arguments and the relied-upon disclosures in the
Specification, therefore, do not establish that the R-T-B-based sintered
magnet of claim 12 exhibits a significant, unexpected difference in coercive
strength or first grain boundary thickness compared to an R-T-B-based
sintered magnet as disclosed in Nakajima. Appellant, therefore, does not
meet its burden of demonstrating that the R-T-B-based sintered magnet of
claim 12 imparts results that would have been unexpected by one of ordinary
skill in the art at the time of Appellant’s invention relative to the closest
prior art. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[T]he burden
of showing unexpected results rests on he who asserts them.”)
Therefore, considering the totality of the evidence relied upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner’s
conclusion of obviousness. We, accordingly, sustain the Examiner’s
rejection of claims 12–14 and 19 under 35 U.S.C. § 103 as unpatentable over
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Nakajima.
Claim 22
Claim 22 depends from claim 12 and recites that “(i) the first grain
boundary phase contains Fe or (Fe + Co), and the Fe or (Fe + Co) is present
in the first grain boundary phase in a content of 20 atomic % or less, or (ii)
the first grain boundary phase does not contain Fe or (Fe + Co).”
As discussed above, Nakajima discloses an R-T-B-based sintered
magnet including a grain boundary containing an R-rich grain boundary
phase having a high concentration of rare earth elements, and a transition
metal-rich grain boundary phase having a lower concentration of rare earth
elements and a higher concentration of transition metal elements relative to
the R-rich grain boundary phase. Nakajima ¶¶ 19, 21.
Appellant argues that “as illustrated in Nakajima’s Fig. l0(b), the R-
rich phase (shown in white) is not in contact with two main phases (shown
in gray), and thus would not satisfy the requirement of the first grain
boundary phase located between two main phases in addition to having an
Fe or (Fe+Co) content of 20 % or less.” Appeal Br. 16. Appellant argues
that Nakajima’s transition metal-rich grain boundary phase “might be
considered as a first grain boundary phase (particularly a grain boundary
phase in contact with two R2T14B main phases),” but Nakajima discloses that
the transition metal-rich phase preferably contains 50 % to 70 % of a
transition metal essentially containing Fe, which is “far from” an Fe or
(Fe+Co) content of 20 % or less as recited in claim 22. Appeal Br. 15
(citing Nakajima ¶ 81).
Claim 12, from which claim 22 depends recites, however, “a first
grain boundary phase located between two main phases.” Claim 12 does not
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recite that the first grain boundary phase is “in contact with” two main
phases, as Appellant argues. We find no definition or limiting description of
the first grain boundary phase in Appellant’s Specification that would
require the phase to be “in contact with” two main phases, and Appellant
does not identify any such disclosure in the Specification. Appeal Br. 14–
16. Accordingly, under the broadest reasonable interpretation of the plain
language of claim 12, the R-rich grain boundary phase illustrated in Figure
10(b) of Nakajima corresponds to the recited “first grain boundary phase”
because the (white) R-rich phase is located between two (gray) main phases.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted) (During prosecution of patent applications, “the PTO must
give claims their broadest reasonable construction consistent with the
specification . . . .Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.”).
As the Examiner finds (Ans. 8–9), Nakajima discloses that the R-rich
grain boundary phase “is a phase in which the concentration of all atoms of
R which is rare earth elements is 70 [] % or more,” and Nakajima further
discloses that the R-rich grain boundary phase “may contain, substantially,
only R.” Nakajima ¶¶ 81, 88. These disclosures, in view of Nakajima’s
illustration in Figure 10(b) showing the R-rich phase positioned between two
main phases, would have suggested a (first) grain boundary phase located
between two main phases that includes 20 % or less of Fe or Fe+Co, as
recited in claim 22.
We, accordingly, sustain the Examiner’s rejection of claim 22 under
35 U.S.C. § 103 as unpatentable over Nakajima.

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Claim 23
Claim 23 depends from claim 12 and recites that the R-T-B-based
sintered magnet does not contain Dy (Dysprosium).
Appellant argues that Nakajima teaches away from an R-T-B-based
sintered magnet as recited in claim 23 because Nakajima’s First
Embodiment, in which B/TRE is preferably 0.355 to 0.38, which the
Examiner relies on in rejecting claim 12 (as discussed above), requires
Formula 1 (0.0049Dy+0.34≤B/TRE≤0.0049Dy+0.36) to be met. Appeal Br.
17. Appellant argues that when Dy is zero, Formula 1 becomes
0.34≤B/TRE≤0.36, and because Nakajima discloses that TRE ranges from
13 % to 15 %, the largest amount of B that would satisfy this formula is 5.40
% (5.40/15=0.36), which is below the lower limit of the B concentration
recited in claim 12. Id. Appellant argues that Nakajima’s disclosure that
“[w]hen the amount of B is beyond the range of the above Formula 1, the
generation amount of the transition metal-rich phase becomes insufficient,
and the coercive force does not sufficiently improve” (Nakajima ¶ 87),
“teaches away from the [R-T-B-based sintered magnet of the] present
invention” that has a boron concentration that does not satisfy Nakajima’s
Formula 1 when Dy is zero as recited in claim 23. Appeal Br. 17–18.
As discussed above, however, Nakajima discloses numerous
embodiments of the R-T-B-based sintered magnet of Nakajima’s invention.
In response to Appellant’s argument, the Examiner finds in the Answer that
Nakajima discloses an embodiment that does not require Formula 1 to be
met, in which the R-T-B-based sintered magnet includes 0% to 65 % Dy, 13
% to 15 % rare earth elements (R), 5 % to 6 % B, 0.1 % to 2.4 % of one or
more metals (M) selected from Al, Ga, and Cu, and the balance consisting of
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a transition metal containing essentially Fe (T), where B/TRE is preferably
0.355 to 0.38. Ans. 11 (citing Nakajima ¶¶ 49–52). The Examiner
determines that this embodiment disclosed in Nakajima renders the R-T-B-
based sintered magnet of claim 23 prima facie obvious. Ans. 11.
Appellant argues in the Reply Brief that one of ordinary skill in the art
considering Nakajima as a whole would consider the embodiment described
in paragraphs 49–52 and relied-upon by the Examiner as rendering claim 23
prima facie obvious to be within Nakajima’s “First Embodiment,” because
Nakajima’s description of the “First Embodiment” in paragraphs 85–92
discloses features of paragraphs 49–52. Reply Br. 6–7. Appellant argues
that Formula 1, therefore, must be met in the embodiment described in
paragraphs 49–52 of Nakajima. Id.
Although Nakajima’s description of the “First Embodiment” discloses
certain features of the embodiment described in paragraphs 49–52 of
Nakajima, the same holds true for Nakajima’s description of a “Second
Embodiment” in paragraphs 162 to 185, and description of a “Third
Embodiment” in paragraphs 186 to 211. Simply because embodiments of
Nakajima’s invention share similarities and overlapping features do not
mean that the numerous embodiments described in the reference are not
separate embodiments with distinct features. We find no actual disclosure in
Nakajima indicating that the embodiment described in paragraphs 49–52 is
within, or part of, Nakajima’s “First Embodiment” that requires Formula 1
to be met, and Appellant does not identify any such disclosure. And
significantly, paragraphs 49–52 make no mention of Formula 1.
Consequently, Appellant’s arguments are unpersuasive of reversible error in
the Examiner’s determination that the embodiment described in paragraphs
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49–52 of Nakajima renders claim 23 prima facie obvious.
We, accordingly, sustain the Examiner’s rejection of claim 23 under
35 U.S.C. § 103 as unpatentable over Nakajima.
CONCLUSION

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
12–14, 19, 22, and 23 103 Nakajima 12–14, 19, 22, and 23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED