Tatsuya Morikawa et al.

Patent Trials and Appeals Board

Jan 29, 2020

15327269 - (D) (P.T.A.B. Jan. 29, 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.
15/327,269 01/18/2017 Tatsuya Morikawa 087268.0105 5569
24735 7590 01/29/2020
BAKER BOTTS LLP
C/O INTELLECTUAL PROPERTY DEPARTMENT
THE WARNER
1299 PENNSYLVANIA AVE, NW
WASHINGTON, DC 20004-2400
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
amy.lynn.whitaker@bakerbotts.com
dcipdocket@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TATSUYA MORIKAWA, TAKANORI KADOKURA, and
KENSUKE OSAWA
____________________

Appeal 2019-001772
Application 15/327,269
Technology Center 1700
____________________
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–10. We affirm.

1 e appeal record includes the following: Specification, Jan. 18, 2017
(“Spec.”); Final Office Action, Nov. 16, 2017 (“Final Action”); Appeal
Brief, June 15, 2018 (“Appeal Br.”); Examiner’s Answer, Oct. 24, 2018
(“Answer”); and Reply Brief, Dec. 21, 2018 (“Reply Br.”).
2 Appellant is A.L.M.T. Corp., which is the applicant as defined in 37 C.F.R.
§ 1.42. Appellant also identifies this entity as the real party in interest. See
Appeal Br. 1.
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BACKGROUND
According to the Specification, the invention at issue “relates to a
composite material in which diamond and metal are composited together, . . .
“which is excellent in thermal conductivity, suitable as a material for a heat
radiating member, and dense.” Spec. 1:6–10. Representative of the invention
is claim 1, the sole independent claim:
1. A diamond composite material comprising:
a coated diamond particle including a diamond particle
and a carbide layer covering a surface of the diamond particle
and including an element of group 4 of the periodic table; and
silver or a silver alloy binding such coated diamond
particles together,
with an oxygen content of 0.1 mass% or less.
Appeal Br. 20 (emphasis of key phrases added). Claims 2–10 depend from
claim 1. Id. at 20–21.
e Examiner rejects claims 1–10 under 35 U.S.C. § 102(a)(1) as
being anticipated by Abyzov.3 Final Action 2–5.
DISCUSSION
Appellant argues the claims together. See Appeal Br. 7–18. erefore,
we focus our decision on independent claim 1, and the remaining claims fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Abyzov discloses high-thermal-conductivity materials “which can be
used as heat exchangers, heat sinks, [and] heat spreaders for electronics.”
Abyzov, Abstr. e material “comprises coated diamond particles in a metal
or metal alloy matrix,” in which the coating comprises “a metal and/or
carbide of a carbide-forming element selected from IV–VI Groups of the

3 Abyzov, US 2010/0319900 A1, published Dec. 23, 2010 (“Abyzov”).
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Periodic Table.” Id. Abyzov also discloses that the matrix material may be
silver or a silver alloy. Id. ¶ 114.
e Examiner finds that Abyzov discloses each limitation recited in
claim 1. See Final Action 2–3. In particular, according to the Examiner,
Abyzov teaches that “the metal/carbide coating includes carbides of Hf, Ti
and Zr” (i.e., group 4 elements on the periodic table), that the matrix is
“silver, or copper silver,” and that “the composites are manufactured in
vacuum or non-oxidizing atmospheres of inert gas . . . with exclusion of
oxygen,” and “use of pure matrix materials.” Id. (citing Abyzov ¶¶ 58, 62,
68, 73, 85, 114–15). With regard to the limitation “oxygen content of 0.1
mass% or less,” the Examiner relies on inherency. See id. at 5–6; Answer 7.
When an examiner provides a prima facie basis to expect that the
claimed product is substantially the same as a product found in the prior art,
the burden shifts to the applicant to present evidence that the prior art
product is not inherently within the scope of the claim. See In re Spada, 911
F.2d 705, 709 (Fed. Cir. 1990) (“When the PTO shows a sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”); In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (“Where, as here, 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.”).
e Examiner has made a sufficient initial showing that Abyzov
necessarily discloses the “0.1 mass% or less” limitation of claim 1. As the
Examiner explains, Abyzov discloses that the silver is “commercially pure,”
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with the weight content of silver at “99.9% or above.” Answer 6 (citing
Abyzov ¶ 114). e Examiner also correctly notes that Abyzov teaches
performing the process in an environment that excludes oxygen. Id. at 6–7
(citing Abyzov ¶ 115 (“[O]xygen may oxidize the diamond, the coating and
the metal of the matrix, and so the process is carried out in a vacuum or in an
inert or reducing atmosphere.”)). us, the Examiner has shown, sufficiently
to put the burden on Appellant to provide rebuttal evidence, that Abyzov
discloses a process and starting materials that would produce a composite
with no more than 0.1 mass% oxygen.
Appellant argues that the Examiner has applied the wrong standard of
proof, by requiring Appellant to “prove that Abyzov necessarily has an
oxygen content of greater than 0.1 mass%.” Reply Br. 14. However, the
Examiner clearly finds that “Appellant has not provided evidence that the
product of Abyzov does not necessarily or inherently possess the claimed
less than 0.1 mass% oxygen.” Answer 8–9 (emphasis omitted). e evidence
of record supports the Examiner’s finding under this correct articulation of
the standard. Best, 562 F.2d at 1255. us, any of the Examiner’s other
statements that might suggest a different standard are harmless error.
To rebut the Examiner’s inherency rationale, Appellant cites Table 1
of the Specification, which shows comparative examples, using “so[-]called
pure silver” and a coating of Ti, Zr, or Hf, performed in a vacuum or non-
oxidizing atmosphere, in which the oxygen content is greater than 0.1
mass%. Appeal Br. 9 (quoting Spec. 17, Table 1), 11–13. According to
Appellant, this is “clear evidence of so-called ‘pure silver’ that contains
oxygen, and therefore, the ‘pure silver’ disclosed by Abyzov does not
necessarily mean ‘no oxygen silver’ as incorrectly assumed by the
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Examiner.” Id. at 10; see also id. at 11–13 (arguing that the comparative
examples in Table 1 were made under a non-oxidizing atmosphere using
“pure silver”). Responding to the Examiner’s observation that the
comparative examples in Table 1 use different carbide-forming materials
than the working examples in Table 1, Appellant also cites Tables 2–4,
which contain comparative examples using the same carbide-forming
materials as the working examples. Reply Br. 9–13.
We do not find this evidence sufficient to rebut the Examiner’s
inherency rationale. Appellant does not point to any disclosure in the
Specification, or other evidence, as to the actual oxygen content of the “so-
called pure silver” (Spec. 17) used in the examples. See Spec. 19 (stating
that silver and silver alloys may be a source of oxygen, but not providing a
concentration for the silver used in the examples). us, the evidence of
record does not establish that the silver used in the comparative examples of
Tables 1–4 is comparable in purity with the silver used in Abyzov, which
could have an oxygen content from 0–0.1%. Abyzov ¶ 114 (“commercially
pure silver (weight content of the basic substance—Cu or Ag—99.9% or
above)”); see also Answer 8 (“Abyzov teaches commercially pure silver and
silver alloys, including silver of 99.9% or greater purity . . . .”).4 In addition,
in the case of the comparative examples in Tables 2–4, the diamond particle

4 In the Reply Brief, Appellant argues that “one of ordinary skill in the art
would understand that a composition ratio, such as 99.9% silver, indicates a
ratio of solid components only,” and thus, would not include “adhering
oxygen.” Reply Br. 7. is argument is not entitled to persuasive weight,
because Appellant cites no supporting evidence. See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the
place of evidence.”).
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size is 0.1 μm, id.; Spec. 45–50, which is outside Abyzov’s particle size
range of 50–1000 μm, see Abyzov ¶ 103. us, based on the evidence of
record, the comparative examples in Tables 1–4 are insufficiently
comparable to Abyzov’s composite material to show that its oxygen content
can be greater than 0.1 mass% under Abyzov’s disclosure.
Appellant also argues that diamond raw materials are a potential
source of oxygen. Appeal Br. 10–11 (citing Spec. 19 (“It is believed that
sources of oxygen [that] can be included in diamond composite material 1
are a powder 20 of diamond of a raw material (see Fig. 4) . . . .”)). us,
Appellant argues that the Examiner incorrectly assumed “that the diamond
raw material[s] of Abyzov are oxygen free.” Id. at 11.
We disagree. As the Examiner notes, “Abyzov teaches the use of high-
quality synthetic diamond with low impurity content.” Answer 10 (citing
Abyzov ¶ 103).5 us, the evidence suggests that the diamond powder used
in Abyzov is at least as oxygen-free as the low-purity industrial diamond
that, according to the Specification, one may successfully use to produce the
claimed composite. See Spec. 25:1–8 (“[I]ndustrial diamond is relatively
inexpensive and easily available although it is low in purity,” but the
disclosed manufacturing process “can use even industrial diamond as a raw
material”).
Appellant further argues that, unlike the inventors’ disclosure,
“Abyzov does not provide any steps to reduce or remove oxygen present in

5 In the Reply Brief, Appellant argues that “[o]ne of ordinary skill in the art
would . . . understand that ‘low impurity content’ of a synthetic diamond
does not reflect adhering oxygen.” Reply Br. 13. is argument is not
entitled to persuasive weight, because Appellant cites no supporting
evidence. See Pearson, 494 F.2d at 1405.
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the diamond.” Appeal Br. 13–14 (citing Spec. 10, 23). is argument is not
persuasive of reversible error, because claim 1 recites a product, not the
process for making it. e claim itself does not require a process that reduces
oxygen in the diamond powder. us, any means for limiting the composite
material’s oxygen content (such as selecting oxygen-free starting materials
and making the material in an oxygen-free atmosphere) is permissible under
the claims, so long as the final composite material has an oxygen content of
0.1 mass% or less.
Next, Appellant argues that Abyzov is not enabling. According to
Appellant, “Abyzov merely provides a generic disclosure of an element of
group 4 of the periodic table, but provides no working embodiments
including an element of group 4.” Appeal Br. 15. Moreover, Appellant
argues that Abyzov discloses an example including titanium (a group 4
element) that was inoperable. Id. at 15–16 (citing Abyzov ¶¶ 122, 128
(Examples 1 and 2 with a titanium carbide coating)); see also id. at 17
(“Abyzov provides no embodiments to show that Group IV elements such as
titanium are suitable to form a carbide layer coating of a diamond composite
material.”); Reply Br. 15–17 (arguing that Abyzov’s non-working example
was inoperable even when the impregnation step occurred in a vacuum, and
that the working examples only disclose tungsten carbide coatings).
Appellant’s arguments as to the generality of Abyzov’s disclosure of
group 4 elements is not persuasive of reversible error. A prior art printed
publication, such as Abyzov, “is presumptively enabling barring any
showing to the contrary by a patent applicant.” In re Antor Media Corp., 689
F.3d 1282, 1288 (Fed. Cir. 2012). To rebut this presumption, the applicant
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must show “that undue experimentation would be needed to practice the
claimed invention.” Id. at 1292.
However, Appellant’s proposed evidence of inoperability is not
commensurate with the broad scope of the claimed invention. As the
Examiner notes, claim 1 encompasses other group 4 elements than just
titanium. See Answer 12. Claim 1 also does not require any particular
amount of the group 4 element, or that the group 4 element is the only
element in the carbide layer. See id. at 14 (“[A] diamond particle whose
carbide coating also includes tungsten is not excluded by the instant claims
. . . .”).
Likewise, despite the inoperable titanium-based example, Abyzov
explicitly discloses that the carbide layer may include any group 4 element,
as well as combinations of group 4 elements and other elements. See Abyzov
¶ 37. us, we agree with the Examiner that Appellant’s reliance on the
inoperability of Abyzov’s titanium-based embodiment “ignores all other
teachings of Abyzov including broader, non-preferred and/or non-
exemplified embodiments set forth therein.” Answer 15. Abyzov’s non-
working example is also insufficient evidence of non-enablement because, as
the Examiner points out, the example uses copper as the binder, rather than
silver or a silver alloy as recited in claim 1. See id. at 14; Abyzov ¶¶ 120–
122, 127, 128.
In sum, Appellant has not provided evidence sufficient to show that a
person of ordinary skill in the art would have been unable, without undue
experimentation, to make the broadly claimed composite material based on
the disclosure of Abyzov and the general knowledge available in the field.
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Finally, Appellant argues that “Abyzov provides no embodiments
showing a coated diamond particle including a diamond particle and a
carbide layer covering a surface of the diamond particle and including an
element of group 4 of the periodic table, and silver or a silver alloy binding
such coated diamond particles together.” Appeal Br. 17. is is not
persuasive of reversible error. “[A] reference can anticipate a claim even if it
‘d[oes] not expressly spell out’ all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the reference, would ‘at once
envisage’ the claimed arrangement or combination.” Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (second
alteration in original) (quoting In re Petering, 301 F.2d 676, 681 (1962)). We
agree with the Examiner that Abyzov’s disclosure of group 4–6 elements is a
finite list, see Answer 14, and so is the short list of possible binders. us, a
person of ordinary skill in the art would at once envisage the combination of
the diamond particles with a carbide layer containing a group 4 element and
a silver or silver alloy binder.
For the above reasons, and based on the Examiner’s findings and
conclusions as a whole, which we find persuasive, the preponderance of the
evidence supports the Examiner’s rejection, and Appellant has not shown
reversible error. erefore, we affirm the Examiner’s decision as to all
claims.
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CONCLUSION
In summary,
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–10 102(a)(1) Abyzov 1–10
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. §§ 1.136(a)(1)(iv), 41.50(f)
(2018).
AFFIRMED