ALANTUM EUROPE GMBH

Patent Trials and Appeals Board

Feb 18, 2020

15038958 - (D) (P.T.A.B. Feb. 18, 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.
15/038,958 05/24/2016 Rene Poss 053263-00010 1103
59582 7590 02/18/2020
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
OMORI, MARY I
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
DWPatents@dickinson-wright.com
tgood@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RENE POSS, SHADI SABERI, and FRANK DEISEL
____________________

Appeal 2019-004010
Application 15/038,958
Technology Center 1700
____________________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 16, 18–21, and 23–25 under 35 U.S.C. § 103(a) as unpatentable
over at least the combined prior art of Sugikawa (US 5,496,650, iss. Mar.
5, 1996), Pillet (WO 2006/111837 A2, pub. Oct. 26, 2006) (as translated),
and Hildabolt (US 2,267,918, iss. Dec. 30, 1941).2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies ALANTUM EUROPE GmbH as
the real party in interest (Appeal Br. 3).

2 An additional reference, Radivojevic (US 2014/0221700 A1, pub. Aug. 7,
2014), was applied to dependent claims 20 and 24 and is listed in the
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We affirm.

CLAIMED SUBJECT MATTER
Claim 16, reproduced below, is illustrative of the claimed subject
matter (emphasis added to highlight key disputed limitation):
16. A metallic foam body, comprising
(a) a metallic foam body substrate made of at least one metal
or metal alloy A; and
(b) a layer of a metal or metal alloy B present on at least a
part of the surface of the metallic foam body substrate
(a), wherein A and B differ in the grain size of the
metal or metal alloy, and wherein the metal or metal
alloy A and B is selected from a group consisting of Ni,
Cr, Co, Cu, Ag, and any alloy thereof;
obtainable by a process comprising the steps
(i) provision of a porous organic polymer foam;
(ii) deposition of at least one metal or metal alloy A on the
porous organic polymer foam;
(iii) burning off of the porous organic polymer foam to obtain
the metallic foam body substrate (a); and
(iv) deposition by electroplating of the metallic layer (b) of a
metal or metal alloy B at least on a part of the surface of
the metallic foam body substrate (a);
wherein step (ii) comprises the steps
(ii1) deposition of a first metallic layer containing a metal or
metal alloy A1 by a chemical or physical vapor
deposition method; and
(ii2) deposition of a second metallic layer containing a metal
or metal alloy A2 by electroplating;

Summary Table located at the end of this Decision. A discussion of this
reference is not needed for disposition of this appeal.

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Application 15/038,958

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wherein the metal or metal alloy A1 is selected from a group
consisting of Ni, Cr, Co, Cu, Ag, and any alloy thereof, and
wherein A2 and B are silver.
Claims Appendix (Appeal Br. 20).
OPINION
We review the appealed § 103 rejection for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf. 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 having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
the Final Office Action and the Answer.
We add the following primarily for emphasis.
Appellant’s main arguments are that 1) Hildabolt is directed to
non-analogous art (Appeal Br. 9, 10), 2) there is no reason to combine
Hildabolt with Sugikawa (Appeal Br. 11–13), 3) there is not reasonable
expectation of success from combining these references (Appeal Br. 14, 15),
and finally, 4) even if combined the final product would have been driven to
a uniform grain size (Appeal Br. 15–18). These arguments are reiterated in
the Reply Brief. These arguments fail to show reversible error in the
Examiner’s rejection based on the fact-finding and for reasons well
presented by the Examiner (e.g., Ans. 10–18).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007), the
Supreme Court stated that:
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In determining whether the subject matter of a . . . claim
is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
. . . [unpatentable] under § 103.
Our reviewing court followed this by stating:
The Supreme Court’s decision in KSR . . . directs us to construe
the scope of analogous art broadly, stating that “familiar items
may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting
KSR, 550 U.S. at 420). See also, In re Clay, 966 F.2d at 658 (holding that
whether a prior art reference is “analogous” is a question of fact).
In this case, based on the teachings of the applied prior art, we are
unpersuaded that the Examiner reversibly erred in determining that a skilled
artisan would have combined the concept exemplified in Hildabolt, that is,
using metallic layers having two different particle/grain sizes for a porous
filter (see Final Act. 3, Ans. 6), with the Sugikawa/Pillet metallic silver
foam, for the reasons presented by the Examiner (see generally Ans. and
Final Act.). Notably, the claim does not require any specific difference in
grain size or any specific properties in the metallic foam resulting therefrom.
Furthermore, the skilled artisan is essentially faced with only two choices,
that is, using the same or different grain sizes in each of two layers.
In light of these circumstances, Appellant has not shown error in the
Examiner’s determination that one of ordinary skill in the art, using no more
than ordinary creativity, would have used different particle grain sizes in the
layers of Sugikawa/Pillet metallic silver foam based on the inferences one of
ordinary skill in the art would have readily appreciated from Hildabolt. See
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also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (acknowledging
it is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
It is also well established that, when a product recited in
product-by-process format reasonably appears to be the same as or obvious
from a product of the prior art, the burden is on applicant to show that the
prior art product is in fact different from the claimed product, even though
the products may be made by different processes. In re Thorpe, 777 F.2d
695, 697 (Fed. Cir. 1985).
Here, as pointed out by the Examiner, Appellant has failed to provide
any evidence in support of its allegation that the process of Sugikawa would
have resulted in layers wherein the silver layers would have “be[en] driven
to a uniform grain size” (Appeal Br. 15 (emphasis removed); Ans. 16).
Accordingly, on this record, Appellant has failed to demonstrate that a
product made by the process recited herein results in a structural difference
from the product made in the Sugikawa combination of the applied prior art.
In re Thorpe, 777 F.2d at 697; cf. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255 (Fed. Cir. 1977). As a result, we
sustain the Examiner’s rejections.
Accordingly, we sustain the Examiner’s rejections of all the claims on
appeal.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 18, 19, 21,
23, 25 103
Sugikawa, Pillet,
Hildabolt
16, 18, 19, 21,
23, 25

20, 24 103
Sugikawa, Pillet,
Hildabolt,
Radivojevic
20, 24

Overall
Outcome
16, 18–21,
23–25

The Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).

AFFIRMED