ALANTUM EUROPE GMBHDownload PDFPatent Trials and Appeals BoardFeb 18, 202015038958 - (D) (P.T.A.B. Feb. 18, 2020) Copy Citation 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 Appeal 2019-004010 Application 15/038,958 2 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. Appeal 2019-004010 Application 15/038,958 3 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: Appeal 2019-004010 Application 15/038,958 4 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 Appeal 2019-004010 Application 15/038,958 5 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. Appeal 2019-004010 Application 15/038,958 6 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 Copy with citationCopy as parenthetical citation