Young Min Kim et al.

Patent Trials and Appeals Board

Dec 23, 2019

13510989 - (D) (P.T.A.B. Dec. 23, 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.
13/510,989 05/21/2012 Young Min Kim NPO20117298US 8767
66390 7590 12/23/2019
LEX IP MEISTER, PLLC
5180 PARKSTONE DRIVE, SUITE 175
CHANTILLY, VA 20151
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
12/23/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG MIN KIM, HA SIK KIM, BONG SUN YOU,
and CHANG DONG YIM
Appeal 2020-000583
Application 13/510,989
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
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 1–6. We have jurisdiction 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(a). Appellant identifies the real party in interest as Korea
Institute of Machinery & Materials. Appeal Br. 2.
Appeal 2020-000583
Application 13/510,989

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A magnesium alloy manufactured by melt casting, the
magnesium alloy consisting essentially of, by weight, 1.0% or
greater but less than 6.0% of Al, 0.05% to 1.0% of Ca, 0.05%
to 1.0% of Y, greater than 0% but not greater than 6.0% of Zn,
a balance of Mg, and other unavoidable impurities,
wherein a total content of the Ca and the Y is equal to or
greater than 0.1% but less than 1.8% of a total weight of the
magnesium alloy such that formation of a combined oxide layer
of CaO/Y2O3 on a surface of the magnesium alloy is induced.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Toshio JP 08-269609 Oct. 15, 1996
Sakamoto JP 06-257478 Sept. 28, 2006
Seong-Ho Ha et al., Effect of CaO on Oxidation Resistance and
Microstructure of Pure Mg, 49 Materials Transactions 1081–83 (2008).
Hyeon-Taek Son et al., The Effects of Yttrium Element on Microstructure
and Mechanical Properties of Mg-5 mass% Al-3 mass% Ca Based Alloys
Fabricated by Gravity Casting and Extrusion Process, 49 Materials
Transaction 945–51 (2008).

REJECTIONS
1. Claims 1–5 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Toshio (with English machine translation,
hereinafter JP ’609) in view of Ha and Son.
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Application 13/510,989

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2. Claims 1–6 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over JP ’609 in view of Ha and Sakamoto (with English
machine translation).
OPINION
For purposes of this appeal, we address separately argued claims, and
the remaining claims stand or fall with the argued claims, consistent with 37
C.F.R. § 41.37(c)(1)(iv) (2017). We select claim 1 as representative.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of the
evidence supports the Examiner’s findings and conclusion that the subject
matter of Appellants’ claims is unpatentable over the applied art for
Rejection 2, but not for Rejection 1. Accordingly, we affirm Rejection 2 but
reverse Rejection 1, with the following emphasis.

Rejection 1
We refer to pages 3–6 of the Non-Final Office Action mailed June 1,
2018 regarding the Examiner’s findings pertaining to Rejection 1. Therein,
the Examiner relies upon JP ’609 for teaching, inter alia, a Mg-Al-Ca based
alloy with 0.3–3.0 wt% of Ca. Non-Final Act. 3–5. The Examiner
acknowledges that JP ’609 in view of Ha does not specify adding Y as
claimed in the instant claims. Id. at 4.
The Examiner relies upon Son for teaching, inter alia, the effects of Y
elements on microstructure and mechanical properties of Mg-based alloy.
Non-Final Act. 4. In particular, the Examiner indicates that Son teaches that
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adding rare earth metal (REM) and Y in Mg alloy can influence the
mechanical properties greatly, and Son provides an example of adding 1
mass% of Y in the Mg alloy. Id. at 5. Then, the Examiner concludes that it
would have been obvious to add a proper amount of Y in the Mg-based alloy
as demonstrated by Son in the alloy of JP ’609 in view of Ha in order to
improve the properties of the Mg based alloy. Id.
Regarding the range of amounts of Ca and Y in claims 1 and 4, the
Examiner states that in the absence of evidence to the contrary, the selection
of the proportions of elements Ca and Y from the combination of JP’609 and
Son in order to meet the claimed equations would appear to require no
more than routine investigation by those ordinary skilled in the art. Non-
Final Act. 5–6.
Appellant disagrees with the conclusion of obviousness and submits
that the above statements by the Examiner are based on impermissible
hindsight reasoning. Appeal Br. 4. Appellant argues, inter alia, that
a particular parameter must first be recognized as a result-effective variable
before the determination of the optimum or workable ranges of said variable
might be characterized as routine experimentation. In re Antonie, 559 F.2d
618 (CCPA 1977). Appeal Br. 5. Appellant submits that therefore there is
no teaching or suggestion in the art to adjust the proportions of elements Ca
and Y as claimed. Appellant states that in the instantly claimed invention,
when Ca and Y are added in combination, a dense combined oxide layer of
CaO/Y2O3 is formed on the surface of a solid or liquid Mg alloy, so that the
ignition resistance of the Mg alloy is superior, and at the same time, the
addition of Ca and Y in combination can advantageously improve
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tensile properties by decreasing the fraction and size of the intermetallic
compound. Appeal Br. 5–6.
The Examiner responds by stating that Son provides an example of
adding 1 mass% of Y in the Mg alloy, and so adding that amount to the
composition of JP ‘609 would meet the claims. Ans. 5. However, we agree
with Appellant’s position set forth on page 6 of the Appeal Brief that in the
example of Son, upon which the Examiner relies regarding the 1 mass% Y,
the amount of Ca is 3 mass%, which well exceeds the claimed amount of Ca,
and also the claimed total content of the Ca and the Y. Appellant submits
that one skilled in the art, in view of Son, would not be motivated to reduce
the amount of Ca to lower than 3 wt%. We are persuaded by such argument.
Son teaches combining 1 mass% Y with 3 mass% Ca, but not any value less
than 3 mass% Ca. Son, Figure 7.
In view of the above, we reverse Rejection 1.

Rejection 2
We refer to the Examiner’s statement of the rejection as set forth on
pages 6–7 of the Non-final Office Action mailed June 1, 2018, and pages 3–
4 of the Final Office Action mailed December 18, 2018, both of which we
incorporate herein.
Appellant argues that Sakamoto is cited as disclosing, inter alia, a Mg
based cast material containing 1–12 mass% Al, 0.2–5.0 mass% Ca, and
adding 0.01–5.0 mass% of further alloy elements including Y and Zr, in
order to improve the fire-resistant property of the Mg alloy. Appeal Br. 7.
Appellant states that the Examiner asserts that it would have been obvious to
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have added a proper amount of Y and Zr in the Mg-based alloy as
demonstrated by Sakamoto in the alloy of JP ‘609 in view of Ha in order to
improve the properties of the Mg based alloy. Id. Appellant argues that
Sakamoto fails to cure the deficiency discussed with regard to Rejection 1.
In particular, Appellant refers to the Declaration under 37 C.F.R
§1.132 submitted on May 16, 2018 to demonstrate the criticality of the
claimed feature “a total content of the Ca and the Y is equal to or greater
than 0.1% but less than 1.8% of a total weight of the magnesium alloy.”
Moreover, Appellant submits that there is no suggestion in Sakamoto for one
of ordinary skilled person to adjust the proportions of elements Ca and Y.
Appeal Br. 7.
With regard to the Declaration evidence, we are unpersuaded by this
evidence because the data is not commensurate in scope with the claims.
The data in the table at the top of page 3 of the Declaration does not
adequately represent the range claimed (total content of the Ca and the Y is
equal to or greater than 0.1% but less than 1.8%). We note that the burden
rests with Appellants to establish, inter alia, (1) that the comparisons are to
the disclosure of the closest prior art, and (2) that the supplied evidentiary
showing is commensurate in scope with the claimed subject matter. See In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Furthermore, as stated by the
Examiner on page 6 of the Answer, JP ‘609 provides examples with 0.3 wt%
Ca and 0.5 wt% Ca (Examples 1 and 2 in Table 1 of JP ’609). The
Examiner states that Sakamoto teaches adding 0.01–5 wt% Y in the alloy
(see claims of Sakamoto). Ans. 6. We agree with the Examiner that when
combining 0.01 wt% Y disclosed by Sakamoto with examples of JP ‘609,
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the calculated Ca+Y amount is within the claimed range of Ca+Y as recited
in Appellant’s claims 1 and 4. Id.
In view of the above, we affirm Rejection 2.
CONCLUSION
We reverse the Examiner’s decision with regard to Rejection 1.
We affirm the Examiner’s decision with regard to Rejection 2.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5 103 JP ’609, Ha, Son 1–5
1–6 103 JP ’609, Ha,
Sakamoto
1–6
Overall
Outcome
1–6

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED