Ex Parte Takada et al

Patent Trial and Appeal Board

Jan 30, 2017

13795557 (P.T.A.B. Jan. 30, 2017)

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.
13/795,557 03/12/2013 Yohei TAKADA 7991-000046/US 1656
27572 7590 02/01/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
YANG, ZHEREN J
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOHEI TAKADA and YOSHIFUMIITO
Appeal 2015-006343
Application 13/795,557
Technology Center 1700
Before: LINDA M. GAUDETTE, WESLEY B. DERRICK, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision below we refer to the Specification filed March 12, 2013
(Spec.), the Final Office Action mailed April 11, 2014 (Final Act.), the
Appeal Brief filed October 27, 2014 (Appeal Br.), the Examiner’s Answer
mailed April 10, 2015 (Ans.), and the Reply Brief filed June 10, 2015 (Reply
Br.).
2 Appellants identify the real party in interest as Daido Metal Company Ltd.
Appeal Br. 1.
Appeal 2015-006343
Application 13/795,557
STATEMENT OF CASE
The claims are directed to a resin sliding member including crystalline
CaF2 where the “peak intensity of a (111) plane of the calcium fluoride
exposed on a sliding surface is larger than a peak intensity of a (220) plane.
Spec. 2-3. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A resin sliding member, comprising:
0.5 to 25 vol% of calcium fluoride dispersed as particles; and
a polyether ether ketone resin as a remainder,
wherein the calcium fluoride is crystalline,
the particles are oriented such that many (111) cleavage
planes of the calcium fluoride exist on surfaces thereof, and
a peak intensity of a (111) plane of the calcium fluoride
exposed on a sliding surface is larger than a peak intensity of a
(220) plane.
Claims Appendix at Appeal Br. 23.
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1-5 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mori3 in view of Kamiya4 and
Roy5 as evidenced by Nabot6 or Gardos.7 Final Act. 2-3.
3 Mori et al., US 5,039,575, issued August 13, 1991 (“Mori”).
4 Kamiya et al., WO 2011/111668, relying on use of its English language
equivalent US 2012/0270761 Al, published October 25, 2012 (“Kamiya”),
which use is not contested.
5 Roy et al., US 2009/0053976 Al, published February 26, 2009 (“Roy”).
6 Nabot et al., Cathodic Sputtering for Preparation of Lubrication Films,
Surface and Coatings Technology (1990) 629-639 (“Nabot”).
7 Gardos et al., Determination of Tribological Fundamentals of Solid
Lubricated Ceramics Volume 1: Summary, Materials Laboratory
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Application 13/795,557
B. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mori, Kamiya, and Roy as evidenced by
Nabot or Gardos and further in view of Kim.* * 8 Id. at 6.
Appellants seek our review of rejections A-B. Appellants argue
claim 1 and do not present any argument, separate from what is argued for
claim 1, for claims 2-6. See generally Appeal Br. 7, 19, and 20. Therefore,
we focus our discussion on claim 1 (Rejection A) to resolve the issues on
appeal.
After consideration of the evidence on this appeal record and in light
of the respective positions advanced by the Examiner and Appellants, we are
unpersuaded that the Examiner erred reversibly in determining that the
applied prior art renders the subject matter of claims 1-6 obvious.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C. § 103.
We add the following primarily for emphasis.
OPINION
The Examiner rejects claim 1 as unpatentable over Mori in view of
Kamiya and Roy as evidenced by Nabot or Gardos. Final Act. 3. The
Examiner finds Mori teaches a sliding member comprised of a polyether
ketone, specifically PEEK (polyether ether ketone), and 1-35 wt. % of a
metal fluoride, e.g., CaF2. Id. (citing, inter alia, Mori col. 1,11. 63-67, col.
2,11. 1-2, 15-19, col. 3,11. 1-7). The Examiner acknowledges that Mori
Wright Research and Development Center, November 1990
(“Gardos”).
8 Kim et al., US 7,491,353 B2, issued February 17, 2009 (“Kim”).
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Application 13/795,557
does not teach the crystalline orientation of the CaF2 particles on the surface
of the sliding member. Final Act. 4. The Examiner finds that Kamiya
teaches a sliding member “comprised of solid lubricant particles disposed in
a resin” and where the “particles are oriented so that for the majority of the
particles, the surface parallel to the major surface of the coating exhibit the
same crystalline plane.” Final Act. 4 (citing Kamiya 17, 38). While
Kamiya teaches use of M0S2, WS2, graphite, and boron nitride—and not
CaF2—the Examiner finds “Kamiya teaches the specific method to
accomplish the orientation of particles.” Final Act. 4 (citing Kamiya 3,
17, 30, 37). The Examiner also finds that Roy discloses that M0S2, WS2,
graphite, boron nitride, and CaF2 are all inorganic solids that are useful as
lubricants. Final Act. 4 (citing Roy ^ 154). And, even though CaF2 is not a
lamellar solid, the Examiner finds that Roy teaches CaF2has surfaces that
slip easily and have a lubricating effect. Final Act. 4. “While Roy does not
explicitly state which crystalline plane CaF2 possesses this property [i.e.,
slips easily and has a lubricating effect], one of skill in the art would
recognize that crystalline plane in question is the (111) crystalline plane, as
evidenced by the teachings of Nabot and Gardo [sic].” Id. The Examiner
finds Nabot teaches a preferred orientation of (111) for CaF2 and layers that
Gardos “discusses the tribological properties of the (111) face of CaF2,
wherein the (111) face of a CaF2 tribopin slides against the (111) face of a
CaF2 triboflat.” Final Act. 5 (citing Nabot 638 § 3.6; Gardos 355 § 3.4.1.2,
351, Fig. 192). Thus, the Examiner finds that “Kamiya modified by Roy
would have a coating comprised of CaF2 particles dispersed within a resin,
wherein the particles are oriented so that for the majority of the particles, the
surface parallel to the major surface of the coating would exhibit the (111)
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crystalline plane.” Final Act. 5. The Examiner reasons that it would have
been obvious to make these modifications to the sliding member of Mori
because “Kamiya teaches that aligning the crystalline plane leads to lower
coefficient of friction and increased seizure resistance 0016).” Id.
First, Appellants argue that the Examiner’s rejection, inter alia, fails
to establish a prima facie case of obviousness. Appeal Br. 7. Specifically,
Appellants urge that the combination of references fails to teach “a peak
intensity of a (111) plane of the calcium fluoride exposed on a sliding
surface is larger than a peak intensity of a (220) plane.” Id. at 8. According
to Appellants, Mori fails to teach orientation of CaF2 particles in the resin
and Kamiya does not teach CaF2 particles at all. Id. at 9. Moreover, Kamiya
discusses only lamellar particle alignment and because “CaF2 particles are
not lamellar and thus do not have a plate shape .... Kamiya does teach or
otherwise suggest how non-plate-shaped particles, such as the claimed CaF2,
could be modified or aligned.” Id. at 9-10. Appellants contend that “[njone
of the other cited references, including Roy, Nabot, and Cardo, teaches or
otherwise suggests CaF2 particles that are processed or oriented such that a
peak intensity of a (111) plane of the calcium fluoride exposed on a sliding
surface is larger than a peak intensity of a (220) plane, as claimed.” Id. at
11.
Appellants’ arguments do not convince us that the Examiner has
failed to establish a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“[The] [patent] examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.”); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that while “the applicant must identify
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to the Board what the examiner did wrong . . . the examiner retains the
burden to show invalidity”). As the Examiner finds above (see supra p. 3-
4), Mori teaches a sliding member as claimed even if it does not teach the
specific crystalline orientation of the CaF2 on the surface of the sliding
member. Final Act. 3—4. As to that, however, the Examiner aptly finds that
Roy teaches CaF2 particles are known solid lubricants that “have surfaces
that slip easily along one another at the molecular level, thereby producing
lubrication at the macroscopic level.” Roy 154 (emphasis added); see also
Final Act. 4. The Examiner also finds that “while Roy does not explicitly
state which plane of CaF2 is the slipping plane, it is understood that these
would necessarily be the (111) plane given the teachings of Nabot and
Gardo [sic]. Namely, both references . . . state that the crystalline plane of
CaF2 exhibiting low friction (i.e. lubricating properties) is the (111)
crystalline plane.” Ans. 11. And, the Examiner further explains that in the
combination, “the particles are oriented so that for the majority of the
particles, the surface parallel to the major surface of the coating would
exhibit the (111) crystalline plane.” Id. at 5 (emphasis added); Ans. 5.
Thus, we find that the Examiner has established a prima facie case of
obviousness.
Appellants next argue that absent hindsight, “nothing in the scope and
content of the prior art would provide any apparent reason for a skilled
artisan to make the modifications necessary to arrive at the claimed
invention.” Appeal Br. 14. Specifically, Appellants urge that “no
compelling reason has been articulated as to how and why a person having
ordinary skill in the art would modify conventional calcium fluoride
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particles in a resin in the manner necessary to arrive at the claimed sliding
member . . . Id.
We do not find Appellants’ arguments persuasive of reversible error
because Appellants have failed to establish any deficiency as to the
Examiner’s prima facie case. If the Examiner has articulated reasoning
having rational underpinnings for making a proposed combination of prior
art teachings, then that articulated reasoning supports a finding that the
combination is not based on hindsight, absent a showing to the contrary. Cf.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”).
Further, even had Appellants been able to establish some error as to
any or all of the references other than Mori and in the Examiner’s reliance
on Nabot, the error would be harmless and not grounds to reverse the
Examiner’s decision. See Shinseki v. Sanders, 556 U.S. 396, 409 (2009)
(The burden of showing an error is harmful falls on Appellant). Here, Mori
teaches a sliding member comprising a polyether ether ketone resin and a
metal fluoride (CaF2) in the claimed amount. Mori col. 1,11. 8-10 and 11.
60-68, col. 2,11. 15-18, and col. 3,11. 1-7. Mori also teaches that metal
fluoride, including CaF2, in amounts of 1-35% by weight is known to
improve frictional properties and wear resistance. Id. at col. 3,11. 10-14.
Nabot teaches that CaF2 is known for its “lubricating behavior” and that
“[fjluorides such as CaF2 and BaF2, whose friction coefficients are about
0.2-0.3, are frequently used as components in composite materials for
reducing friction at higher temperatures (500-800 °C).” Nabot 629-630.
Nabot also teaches that “the CaF2 layers are cubic with a (111) preferred
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orientation.” Id. at 629 and 632. Thus, Nabot reasonably teaches that the
skilled artisan would have known to use CaF2 having a (111) orientation “for
enhancing the lubricating properties of mechanical devices.” Id. at 639.
Further, in teaching that the (111) orientation is preferred for obtaining the
desired benefit, Nabot reasonably teaches it would have been known to
include greater levels of exposed CaF2 on a sliding surface with a (111)
orientation than with a (222) orientation, and also, that this would result in
an accordingly greater (111) peak intensity. Cf. In re Preda, 401 F.2d 825,
826 (CCPA 1968) (In evaluating a reference, “it is proper to take into
account not only the specific teachings of the reference but also inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”).
We are not, accordingly, persuaded that the Examiner is relying on
impermissible hindsight reasoning as the Examiner’s articulated reasons for
combining the teachings of Mori, Kamiya, and Roy, as evidenced by Nabot
or Gardos, are supported by the prior art disclosures themselves. See, e.g.,
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
Moreover, Appellants do not identify any knowledge relied upon by the
Examiner that was gleaned only from the Appellants’ disclosure. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Lastly, Appellants contend that unexpected results rebut the
Examiner’s prima facie case of obviousness, should a prima facie case be
found to exist. Appeal Br. 20. According to Appellants, the inventive
sliding member yields a “friction coefficient after 100 hours of operation in
Comparative Ex. 1 and 2 far exceeds that of Ex. 1-13 (over 40% higher). . .
[and] the backside temperature after 100 hours in the sliding test
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detrimentally and significantly increased in Comparative Ex. 1 and 2, by
over 100%.” Id. at 21. Appellants argue that these results are unexpected
and not suggested by the prior art. Id.
We do not find Appellants’ arguments persuasive of reversible error.
The burden of showing unexpected results rests on the person who asserts
them by establishing that the difference between the claimed invention and
the closest prior art was unexpected. See In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The presence of unexpected results must be established by factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). As the
Examiner explains, “there is nothing unexpected regarding lowering of
coefficient of friction when the particles comprising a sliding member are
oriented in such a way that the crystalline plane corresponding to a slipping
plane is exposed more than another crystalline plane.” Ans. 15. Moreover,
the Specification does not expressly describe the results of Table 1 as
unexpected or surprising (Spec., generally). Rather, the Specification states
that “the friction coefficients ... are stably low within the range of 0.25 to
0.36” (Spec. 9 (emphasis added)) and only through attorney argument, do
the results become unexpected. See Geisler, 116 F.3d at 1470-71.9
9 Appellants’ claims require a “polyether ether ketone.” Claims Appendix at
Appeal Br. 23. Table 1 reports results comprising PEEK. Spec. 6. In the
event of further examination, consideration should be given to whether the
results of Table 1 are commensurate in scope with the degree of protection
sought by the claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
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CONCLUSION
The Examiner did not err in rejecting claims 1-6, under 35 U.S.C.
§ 103(a) over Mori, Kamiya, and Roy as evidenced by Nabot or Gardos.
DECISION
For the above reasons, the Examiner’s rejections of claims 1-6 is
affirmed.
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).
AFFIRMED
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