Toyota Motor Engineering & Manufacturing North America, Inc.

Patent Trials and Appeals Board

Jul 1, 2020

2019000925 (P.T.A.B. Jul. 1, 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.
13/942,116 07/15/2013 Michael Paul ROWE 415396US71 9821
22850 7590 07/01/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PAUL ROWE, SEAN EVAN SULLIVAN, and
DAISUKE OKAMOTO
Appeal 2019–000925
Application 13/942,116
Technology Center 1700
Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
BEVERLY A. 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 3, 6, 7, 9, and 13–17.2 We have

1 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 Toyota Motor
Engineering & Manufacturing NA. Appeal Br. 1.
2 Appellant has withdrawn pending claims 11 and 12 from consideration and
claims 1, 2, 4, 5, 8, 10, 18, and 19 are cancelled. Appeal Br. 23–25 (Claims
Appendix).
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jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on June 11,
2020.
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 6 is illustrative of Appellant’s subject matter on appeal
and is set forth below (with text in bold for emphasis):
6. A magnetic core, comprising:
superparamagnetic grains of an iron cobalt alloy; and
a matrix of silicon dioxide;
wherein
a diameter of the iron cobalt alloy grain is from 3 to 35 nm,
the magnetic core is superparamagnetic, and
the magnetic core is a monolithic structure obtained by a process
comprising:
wet chemical precipitation of the iron cobalt alloy grain;
coating of the grain with a silicon dioxide shell to obtain a thermally
untreated core shell nanoparticle having a magnetic saturation (MS);
thermal annealing of the untreated core shell nanoparticle to obtain a
thermally annealed superparamagnetic core shell nanoparticle having a
magnetic saturation (TAMS),wherein TAMS is equal to or greater than 1.25MS;
and
sintering the thermally annealed core shell nanoparticles under
pressure to form the monolithic structure of thermally annealed
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superparamagnetic core grains of an iron cobalt alloy directly bonded by the
silicon dioxide shells, which form the matrix,
wherein the monolithic structure obtained in the sintering has a
length dimension and a thickness dimension greater than 1 mm.
Appeal Br. 23–24 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bumb et al. US 2010/0092384 A1 Apr. 15, 2010
Yoshizawa US 2002/0189718 A1 Dec. 19, 2002
Chang et al. US 5,763,108 June 9, 1998
Xiao et al. US 2008/0087314 A1 Apr. 17, 2008

REJECTIONS
1. Claims 3, 6, 7, 9, and 13–17 are rejected under 35 U.S.C. §112(a)
or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.3
2. Claims 3, 6, 7, 9 and 17 are rejected under 35 U.S.C. §103 as being
unpatentable over Bumb, Yoshizawa or Chang, and further in view of Xiao.

3 We note that on page 4 of the Answer, claims 2, 3, 7–12, and 15–17 are
incorrectly listed as being rejected in Rejection 1. However, we view this as
harmless error because the Examiner specifically discusses claim 6 in the
body of the rejection, and all other appealed claims either directly or
indirectly depend upon independent claim 6. Also, claims 3, 6, 7, 9, and
13–17 are correctly listed on page 2 of the non-final rejection mailed
February 26, 2018 as being rejected, from which this appeal is taken.
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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.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error regarding Rejection 1, but are persuaded of reversible error
regarding Rejection 2.

Rejection 1
Appellant presents arguments solely for the patentability of
independent claim 6. Appeal Br. 4–10. We thus select claim 6 as
representative, and the remaining claims stand or fall with claim 6.
37 C.F.R. § 41.37(c)(1)(iv).
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
The Examiner determines that adequate written descriptive support is
not provided in the originally-filed Specification for a monolithic structure
having “a length dimension and a thickness dimension greater than 1 mm”
as recited in claim 1. Ans. 4. The Examiner states that the only disclosure
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directed to dimensions of a magnet core is on page 14 of the Specification,
which discloses dimensions for a disc of 9 mm in diameter and 2.5 mm
thickness. Ans. 10. The Examiner explains that this is just one example of a
monolithic magnetic core structure, whereas the claim broadly recites a
monolithic magnetic core structure having a length dimension and a
thickness dimension greater than 1 mm, and thus determines that the
Specification does not have support for reciting any known monolithic
structure in the art having a length dimension and a thickness dimension
greater than 1 mm. Ans. 10–11.
Appellant argues the Examiner’s rejection of claim 6 should be
reversed because the originally-filed Specification provides written
description that fully supports the claimed subject matter, including each
element recited in the claim for the reasons stated by Appellant in the
Appeal Brief and Reply Brief. See Appeal Br. 4–11; Reply Br. 1–4.
In particular, Appellant argues that one of ordinary skill would have
recognized Appellant was in possession of a magnetic core structure, which
adequately supports the magnetic core having “a length dimension and a
thickness dimension greater than 1 mm” as claimed. Appeal Br. 4–6
(arguing that one skilled in the art “based on the descriptions provided above
recognizes that the toroid obtained in the example was obtained from a
monolithic structure disc”). Appeal Br. 6. Relying on the Declaration
under 37 C.F.R. § 1.132 of Inventor, Dr. Michael Paul Rowe, filed Feb. 6,
2018 (“Rowe Decl.”) (Appeal Br. 6–7), Appellant further argues
it is entirely obvious and common knowledge to anyone of
ordinary skill in the art that these electronic devices are typically
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a few millimeters to several inches in size, with large examples
of the technology measuring several feet in diameter.
Appeal Br. 6–7.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and for the reasons
provided by the Examiner in the Final Office Action and in the Answer, with
the following emphasis.
Rather, on the record before us, we agree with the Examiner that a
monolithic structure having “a length dimension and a thickness dimension
greater than 1 mm” as claimed in claim 1 is not adequately supported by the
originally-filed Specification. We have reviewed the portions of the
Specification relied upon by Appellant, but find that the written description
does not adequately describe and is not commensurate in scope with this
element of the claim. As mentioned, supra, although the Specification
describes an example of a structure having a diameter of 9 mm and a
thickness of 2.5 mm (Spec. 14), we do not find that disclosure, without
more, sufficient to reasonably convey to one of ordinary skill in the art that
the Inventors had possession of a magnetic core encompassing a length
dimension and a thickness dimension greater than 1 mm, as claimed.
We also do not find the Rowe Declaration and Appellant’s arguments
regarding the Rowe Declaration persuasive because whether it may have
been “entirely obvious” and “common knowledge” (Appeal Br. 7;
Declaration, p. 2), or not, to one of ordinary skill, that devices, such as the
device of claim 6, are typically a few millimeters to several inches in size,
without more, does not establish reversible error in the Examiner’s rejection.
Contrary to what Appellant’s argument seems to suggest, as discussed
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above, the test for compliance with the written description requirement is not
whether the claimed subject matter would have been obvious to one of
ordinary skill, but whether the disclosure of the application relied upon
reasonably conveys to one of ordinary skill in the art that the inventor had
possession of the claimed subject matter as of the filing date. Ariad Pharm.,
598 F.3d at 1351. Indeed, it is well-settled
[t]he question is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification. Rather, a
prior application itself must describe an invention, and do so in
sufficient detail that one skilled in the art can clearly conclude
that the inventor invented the claimed invention as of the filing
date sought.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(citations omitted).
Accordingly, we affirm Rejection 1.

Rejection 2
Appellant presents arguments for the patentability of independent
claim 6. Appeal Br. 11–21. We thus select claim 6 as representative, and
the remaining claims stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(iv).
We refer to the Examiner’s rejection as set forth on pages 5–9 of the
Answer regarding the Examiner statement of the rejection for Rejection 2.
We are persuaded by Appellant’s arguments for the reasons presented
on pages 11–21 of the Appeal Brief. We add that we agree with Appellant
that the proposed modification of Bumb would render Bumb unsatisfactory
for its intended purpose. The Examiner relies upon Xiao as showing
consolidation of core-shell particles to a monolithic composite structure and
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alleges that Xiao’s description of “improved uniformity in the distribution of
metal component” in paragraph [0124] would be motivation to
consolidate the core-shell particles of Bumb. Ans. 7–8.
We agree with Appellant that uniformity of metal distribution in a
monolithic structure may be a property important to thermoelectric
performance for Xiao, but has no place in Bumb because consolidation of
the nanoparticles of Bumb, according to the description of Xiao, to a
monolithic unit having a length dimension and a thickness dimension greater
than 1 mm, would preclude in vivo utility as sought by Bumb, and therefore,
convert the particle of Bumb to a large size unsuitable for its intended use
for in vivo imaging. Appeal Br. 14.
We thus reverse Rejection 2.
CONCLUSION
We affirm Rejection 1, but reverse Rejection 2.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 6, 7, 9,
13–17
112 lack of written
description
3, 6, 7, 9,
13–17

3, 6–7, 9,
17
103 Bumb, Yoshizawa,
Chang, Xiao
3, 6, 7, 9,
17
Overall
Outcome
3, 6, 7, 9,
13–17
3, 6, 7, 9,
17
AFFIRMED