Ex Parte 7097719 et al

Patent Trial and Appeal Board

Sep 11, 2015

95000285 (P.T.A.B. Sep. 11, 2015)

NITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Kaiser Aluminum & Chemical Corp.
Requester

v.

Patent of Alcoa, Inc.
Patent Owner and Appellant
____________

Appeal 2014-008138
Reexamination Control Nos. 95/000,285 & 95/001,085
Patent 7,097,719
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2014-008138
Reexamination Control 95/000,285 & 95/001,085
Patent 7,097,719

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Patent Owner Alcoa, Inc. (“Patent Owner”) appeals under 35 U.S.C.
§§ 134(b) and 315(a) (pre-AIA) the Examiner’s decision to reject
claims 1-6, 8, and 14.
1
Patent Owner no longer contests the Examiner’s
Decision to reject claim 14. (Or. Hrg. Transcript, p. 3, ll. 20-22.) Claims 7
and 9-13 have been cancelled. (App. Br. 3; Ans. (noting the entry of Patent
Owner’s amendment filed October 18, 2012).) Third-Party Requester Kaiser
Aluminum & Chemical Corp. (hereinafter “Requester”) urges that the
Examiner’s decision must be affirmed.
2
We have jurisdiction under
35 U.S.C. §§ 134(b) and 315(a) (pre-AIA). We affirm the Examiner’s
decision to reject claims 1-6, 8, and 14.
3
Pursuant to our authority under 37
C.F.R. § 41.77(b), we enter a new ground of rejection for claims 1-6, and 8
under 35 U.S.C. § 112, 2
nd
paragraph. As a result of the new ground of
rejection and as further explained below, we reverse pro forma the prior art
rejections of the claims because the scope of claims 1-6 and 8 cannot be
ascertained in order to apply prior art.

STATEMENT OF THE CASE
United States Patent 7,097,719 (hereinafter “the ’719 Patent”) issued
to Bray et al. on August 29, 2006. Two separate requests for reexamination

1
See Patent Owner’s Corrected Appeal Brief 3 (filed October 18, 2012)
(hereinafter “App. Br.”) Examiner’s Answer (mailed December 14, 2012)
(hereinafter “Ans.”); Right of Appeal Notice (mailed May 17, 2012)
(hereinafter “RAN.”).
2
See Requester’s Respondent Brief (filed September 14, 2012) (hereinafter
“Resp. Br.”).
3
Although Patent Owner no longer contests the rejection of claim 14, it has
not been cancelled. Therefore, we summarily affirm the rejection of claim
14.
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were filed by Requester on September 21, 2007 (resulting in Reexam
Control 95/000,285) and October 2, 2008 (resulting in Reexam Control
95/001,085). A decision merging the two reexamination proceedings was
mailed on March 24, 2009. (See Decision, Sua Sponte, to Merge
Reexamination Proceedings at 6.)
We heard oral argument from both Patent Owner and Requester on
January 21, 2015, a transcript of which was entered into the electronic
record.
The ’719 Patent relates to alloy products having improved fatigue
failure resistance. (Col. 1, ll. 14-18.) Claim 1, which is illustrative of the
appealed subject matter, reads as follows (with underlining showing
additions to the claim and bracketing showing deletions to the claim relative
to the originally issued claims):
1. An improved aluminum alloy product having
improved fatigue failure resistance, the aluminum product
consisting essentially of about, by weight, 7.6 to about 8.4%
zinc, about 2.0 to about 2.5% copper, about 1.8 to about 2.3%
magnesium, about 0.088 to about 0.25% zirconium, the balance
to 100 weight % substantially aluminum and incidental
elements and impurities, the improvement comprising
maintaining the weight percents of iron and silicon to about
0.01 to not greater than about [0.09%] 0.044% iron, and about
0.01 to not greater than about 0.029% [about 0.06%] silicon;
wherein the improved fatigue failure resistance is that the
aluminum alloy product achieves an average fatigue life of at
least about 355485 cycles, based on the log average, at a net
section stress of 207 MPa, wherein the fatigue life is measured
using a Kt=2.5 open hole specimen having a width of 25.4 mm,
a thickness of 3.17 mm and two holes of 4.75 mm diameter
spaced 25.4 mm apart, tested in ambient laboratory air, at a
stress ratio of R=0.1 and a frequency of 25 Hz.
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.
(App. Br. 40, Claims App’x.)

In the Appeal Brief, Patent Owner appeals the Examiner’s final
decision to reject the claims as follows (App Br. 5):
Claims 1-6 and 8 under 35 U.S.C. § 112, first paragraph (pre-AIA) as
lacking enablement (RAN Ground VI);
Claims 1-6 and 8 under 35 U.S.C. § 112, first paragraph (pre-AIA) as
lacking written description support (RAN Ground VII);
Claims 1-6, 8, and 14 under 35 U.S.C. § 102(b) as anticipated by
Hunt
4
(RAN Ground XV);
Claims 1-5 and 14 under 35 U.S.C. § 102(b) as anticipated by
Yamamoto
5
(RAN Ground VIII);
Claim 14 under 35 U.S.C. § 102(b) as anticipated by Zheng
6
(RAN
Ground XII);
Claims 1-6, 8 and 14 under 35 U.S.C. § 103(a) as obvious over
Murtha
7
in view of Agrawal
8
(RAN Ground II);
Claims 1-5 and 14 under 35 U.S.C. § 103(a) as obvious over
Yamamoto (RAN Ground VIII);

4
Hunt et al., U.S. Patent No. 5,221,377, issued June 22, 1993 (“Hunt”).
5
Yamamoto, S., et al., Quantitative Estimation Method of Exfoliation
Corrosion of High Strength Aluminum Alloys, J. Japan Inst. Metals, vol. 60
pp. 1187-1191 (“Yamamoto”).
6
Zheng, Z., et al., Retrogression and Re-aging Treatment of a 7055 Type
Aluminum Alloy, Chinese Journal of Nonferrous Metals, vol. 11,
pp. 771-776 (“Zheng”).
7
Murtha, U.S. Patent No. 5,496,426, issued March 5, 1996 (“Murtha”).
8
Agrawal, U.S. Patent No. 4,867,805, issued Sept. 19, 1989.
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Claim 6 under 35 U.S.C. § 103(a) as obvious over Yamamoto in view
of Hunt (RAN Ground IX); and
Claims 1-6, 8, and 14 under 35 U.S.C. § 103(a) as obvious over Hunt
or Zheng in view of ASM Handbook
9
and Lutjering
10
alone or supplemented
by Magnusen,
11
Dubost,
12
and Schwarmann
13
(RAN, Ground X).

In addition to the prior art cited against the claims, Patent Owner
relies on the following additional evidence in support of the patentability of
the claims:
Rule 132 Declaration by Dr. Gary H. Bray executed on
March 19, 2008, submitted with the response of October 23, 2009 (“the
Bray 2009 Declaration”) (App. Br., App’x A);
Rule 132 Declaration by Dr. Alten F. Grandt, Jr. executed on
June 30, 2010, submitted with the response of February 4, 2011 (“the Grandt
Declaration”) (App. Br., App’x B);

9
ASM Handbook (Vol. 19, pages 785-800, ASM International, Dec. 1996).
10
Lutjering, G., et al., Fatigue and Fracture of Aluminum Alloys, Aluminum
Transformation Technology and Applications, pages 171-210 (“Lutjering”).
11
Magnusen, Paul E., et al., Final Report: The Role of Microstructure on the
Fatigue Durability of Aluminum Aircraft Alloys, O. N. R. Contract
NOOOI4-91-C-0128 (“Magnusen”).
12
Dubost, Dr. B., et al., 7075-101-T73: tough plates and forgings with
improved fatigue strength for airframe applications (9 pages), in Aluminium
Technology '96 (“Dubost”).
13
Schwarmann, L., Material Data of High-Strength Aluminium Alloys for
Durability Evaluation of Structures, pages 73, 74, 76, Aluminium-Verlag
(“Schwarmann”).
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Rule 132 Declaration by Dr. Jay H. Goodman executed on
June 29, 2010, submitted with the response of February 4, 2011 (“the
Goodman Declaration”) (App. Br., App’x C);
Rule 132 Declaration by Dr. Ralph R. Sawtell, executed on
July 1, 2010, submitted with the response of February 4, 2011 (“the Sawtell
Declaration”) (App. Br., App’x D); and
Rule 132 Declaration by Dr. Gary H. Bray executed on July 1, 2010,
submitted with the response of February 4, 2011 (“the Bray 2011
Declaration”) (App. Br., App’x E).

Requester relies on the following additional evidence in support of the
unpatentability of the claims:
Rule 132 Declaration by Dr. JC Ehrstrom, executed October, 2008
(“the Ehrstrom Declaration”) (Resp’t. Br., Ex. A);
Rule 132 Supplemental Declaration by Dr. JC Ehrstrom, executed
July 28, 2010 (“the Supplemental Ehrstrom Declaration”) (Resp’t. Br.,
Ex. B);
Rule 132 Declaration by Bruno Dubost, executed July 28, 2010 (“the
Dubost Declaration”) (Resp’t. Br., Ex. C); and
Rule 132 Declaration by Dr. Hervé Stoppiglia, executed July 28, 2010
(“the Stoppiglia Declaration”) (Resp’t. Br., Ex. D).

We have considered the evidence of record—to the extent that they
have been relied upon by the parties and the Examiner in this appeal—in the
course of rendering this decision.
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35 U.S.C. § 112 Rejections
ISSUE
Enablement
The Examiner determined that the ’719 Patent does not provide
enablement for aluminum alloy products having the claimed elemental
compositions with the recited average fatigue life. (RAN 12.) The
Examiner stated the specification is enabled for Examples 1 and 2, but does
not reasonably provide enablement for aluminum alloy products having the
more broadly claimed elemental composition. (RAN 12). Furthermore, the
Examiner found that the ’719 patent “does not enable one of ordinary skill in
the art to achieve an average fatigue life of at least about 355,485 cycles . . .
within the full scope of the claimed range.” (RAN 14). The Examiner stated
that one of ordinary skill in the art would have to engage in undue
experimentation in order to make and use alloy products within the full
scope of the claimed range. (RAN 15.)
Requester agrees with the Examiner that the claims are broader than
the Examples in the ’719 Patent relied on to provide enablement and further
argues that an extensive experimental program would be needed in order to
determine whether the entire range of the components in the alloy would
have the claimed fatigue properties. (Resp’t Br. 5.) Requester contends also
that the ’719 Patent does not provide any guidance that would direct one of
ordinary skill in the art to determine what combination of alloying
components would achieve the claimed fatigue failure resistance properties.
(Resp’t Br. 5-6.) Requester argues that one of ordinary skill in the art would
not be able to determine whether it is only the silicon and iron levels that
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determine the fatigue properties or whether amounts of other elements such
as copper, impact the fatigue properties. (Resp’t Br. 6-7.)
Patent Owner contends that the ’719 Patent discloses that all invention
alloys would be expected to behave similarly if subjected to the same fatigue
testing methods. (App. Br. 7, citing ’719 Patent, col. 6, ll. 8-18.) Patent
Owner argues that Examples 1 and 2 illustrate that alloys having different
amounts of iron and silicon within the claimed ranges achieve the claimed
fatigue life properties, such that the full scope of the ranges for iron and
silicon are enabled for claims 1-6 and 8. (App. Br. 7-8.) Patent Owner also
points to the Bray 2009 Declaration for the position that alloys having lower
amounts of iron and silicon down to the minimum amounts recited in the
claims would achieve better fatigue performance. (App. Br. 8, Bray 2009
Declaration, pp. 16-17.) Patent Owner contends that because properties of
alloys having the amounts of zinc, copper, magnesium, and zirconium
recited in the claims but having more than the claimed range of silicon and
iron were known to those skilled in the art and because the ’719 Patent
informs one of ordinary skill in the art how much fatigue improvement will
be achieved using the claimed iron and silicon ranges, there is no undue
experimentation necessary to achieve the claimed fatigue properties. (App.
Br. 9-10.)
Accordingly, the dispositive issue on appeal is: Did the Examiner err
in determining that claims 1-6 and 8 are enabled for the full scope of the
subject matter claimed?

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FINDINGS OF FACT (“FF”)
1. In Example 1, the ’719 Patent sets forth four lots (A, B, C, D)
each having amounts of iron and silicon between 0.01-0.044%
by weight and 0.01-0.029% by weight respectively, where each
of the lots were cast and fabricated into a plate. (Col. 5,
ll. 25-43, Table II.) Fatigue tests were performed on each plate.
(Col. 5, l. 43 to col. 6, l. 12.) Lot Nos. A though D are referred
to as the “Invention.” Id. A “Standard 7055” was also tested as
Lot Nos. G and H. Id.
2. Regarding testing of the alloys in Example 1, the ’719 Patent
states:
Thus, while the observed fatigue improvements in the
invention alloy corresponded to the specific test coupon
type and the dimensions noted, it is expected that
improvements will be observed in other types and sizes
of open hole fatigue specimens although the lifetimes and
magnitude of the improvement may differ.

Col. 6, ll. 13-18.
3. The ’719 Patent states, based on the test results of Example 1:
In these tests, the invention showed significant
improvements in fatigue life with respect to the standard
7055 product. For example, at an applied net section
stress of 207 MPa, the invention alloy had a lifetime
(based on the log average of all specimens tested at that
stress) of 355485 cycles compared to 47692 for the
standard 7055 alloy.

Col. 6, ll. 19-24.
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4. Dr. Bray provides a table of the Log Average Fatigue Life of
the alloys produced in Lots A-D:

(Bray 2009 Declaration, p. 16, para. 29.)
5. Dr. Bray provides a table of a summary of open-hole S-N
fatigue life and Log Average Fatigue Life of the alloys
produced in Lots A-H:

(Bray 2009 Declaration, p. 11, para. 20.)

PRINCIPLES OF LAW
The scope of the claims must not be broader than the scope of the
enabling description in the specification. See Nat’l Recovery Tech., Inc. v.
Magnetic Separation Systems, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999).
“The scope of enablement, in turn, is that which is disclosed in the
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specification plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.” Id. (citation omitted).
To determine whether the necessary experimentation is undue, we
look at factors including:
(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the
art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims.

In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Arts based on chemical reactions may be unpredictable. In re Fisher,
427 F.2d 833, 839 (C.C.P.A. 1970). “In cases involving unpredictable
factors, such as most chemical reactions and physiological activity, the
scope of enablement obviously varies inversely with the degree of
unpredictability of the factors involved.” Id.

ANALYSIS
Initially, we observe that both independent claims 1 and 3 contain
similar language regarding the functional requirement of improved fatigue
failure resistance, which was determined by the Examiner not to be enabled
for the full scope of the claims. Dependent claims 2, 4-6, and 8 do not
modify the language objected to by the Examiner in the independent claims.
Accordingly, we select claim 1 as representative of the claims at issue. We
are not persuaded by Patent Owner’s arguments and evidence that claim 1 is
enabled for its full scope. Specifically, in reviewing the Wands factors, we
agree with the Examiner that the quantity of experimentation necessary in
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order to ascertain whether an alloy product having the fatigue life recited
claim 1 would have been undue given the amount of direction provided in
the ’719 Patent and the unpredictability of the art.
Claim 1 requires that the aluminum alloy product achieve an average
fatigue life of at least about 355485 cycles under specific conditions. The
’719 Patent discloses this average fatigue life for specific aluminum alloy
lots set forth in Example 1. (FF 1, 3.) Notably, according to Dr. Bray, in
Example 1, Lot A and Lot D both have a fatigue life of 326521 and 205922
cycles at 207 MPa, respectively. (FF 4.) It is only when combined with the
fatigue life of Lot B and Lot C, does the average fatigue life achieve the
number of cycles required by claim 1. (FF 3, 4.) The ’719 Patent does not
set forth a minimum number of Lots required to be tested, the number of
tests required per Lot in order to achieve the recited average, or a criteria for
selecting the various samples. Indeed, Dr. Bray reported that the number of
tests performed for Invention Lots A-D varies from 2, as performed for
Invention Lot D and 6, as performed for Invention Lot A. (FF 5.) Example
1 of the ’719 Patent does not report how many tests were performed or even
the fatigue life of the individual Lot Nos. Thus, in a situation where an alloy
product is produced having a fatigue life either above or below the recited
minimum value, one of ordinary skill in the art would have to undertake
undue experimentation in order to determine whether the alloy products
produced meet the required average fatigue life, producing an untold number
of alloy products at varying elemental compositions falling within the scope
of claim 1 in an effort to determine whether claim 1 was met.
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While the claim calls for an average, there is no particular guidance
provided in the ’719 Patent on how to achieve specific average fatigue life
recited in the claims over the range of values recited for the elements
encompassed by the aluminum alloy product recited in claim 1. Indeed, the
’719 Patent itself acknowledges that the lifetime and magnitude of the
fatigue failure resistance correspond to the specific test coupon types, and
that such may differ in other specimens. (FF 2.) Moreover, Dr. Bray’s
declaration shows that alloys characterized as “inventive” can have the
claimed amounts of elements, but exhibit an average fatigue life outside the
required value. (FF5, Lot A and D). The only way Dr. Bray showed that
those alloys meet the claimed amount of average fatigue life was to average
their fatigue life with alloys that appear to be selected arbitrarily but exhibit
high average values. Thus the amount of direction provided in the ’719
Patent is insufficient to enable claim 1 for the full scope of ranges recited
therein.
We observe that Dr. Bray emphasizes the unexpected improvement of
the alloys recited in the claims with respect to conventional 7055 alloys,
stating that there is a trend in the data to inform one of skill in the art how to
achieve unexpected results. (Bray 2009 Declaration, paras. 22, 28-31.)
However, Dr. Bray’s statements do not speak to the specific average fatigue
life recited in the claims, nor do the statements provide any particular insight
as to how a specific fatigue life could be achieved in order to result in the
average recited in claim 1. The fact that two of the four lots tested (A and
D) were outside the claimed average fatigue life, and thus on average would
be lower than this value, provides additional evidence on the unpredictability
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of producing aluminum alloy products that fall within the scope of the claim.
(FF 4,5.)
As a result, we affirm the Examiner’s decision to reject claims 1-6 and
8 as lacking enablement under 35 U.S.C. § 112, first paragraph for the full
scope of the claims.

Written Description
The Examiner found that the fatigue failure resistance of 355485
cycles is a specified test condition taken from an average of four specific
aluminum alloys, “which are not coextensive with or representative of the
scope of the compositions claimed in claims [1-6 and 8].” (RAN 16.) The
Examiner explained that the ’719 Patent fails to describe aluminum alloy
products having the claimed improved fatigue failure resistance and the
range of component concentrations recited in the claims. (RAN 16-17.)
Requester agrees with the Examiner. (Resp’t Br. 7.)
Patent Owner contends that the Examiner erred in rejecting the claims
because the Examiner assessed the claims under a standard of whether the
claims are “coextensive or representative of” the invention rather than
whether Patent Owner was in “possession of the invention” recited in the
claims. (App. Br. 11-12.) Patent Owner then points to several places in the
’719 Patent alleged to show possession of alloys having the claimed ranges
and fatigue failure resistance. (App. Br. 12-14; ’719 Patent col. 3, ll. 5-6,
col. 5, ll. 28-42 Table II, Alloy D, Example 1, col. 6, ll. 19-24, Example 1,
col. 5, l. 56 to col. 6, l. 8.)

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PRINCIPLES OF LAW
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis omitted).

DISCUSSION
We agree with the Examiner that the claims do not satisfy the written
description requirement. Specifically, the ’719 Patent does not convey with
reasonable clarity, an alloy product having both the amounts of iron and
silicon and the fatigue failure resistance recited in the claims. The ’719
Patent discloses amounts of iron and silicon present in the alloy including
0.01-0.09 wt. % iron and 0.01-0.06 wt. % silicon, the low endpoint of the
range corresponding to the low endpoint of the range recited in claim 1.
(’719 Patent, col. 3, ll. 3-6 and Table I.) The ’719 Patent sets forth also
amounts of iron corresponding to the high endpoint of the range of 0.044 wt.
% iron (col. 6, Example 2, Table III, Lot L) and amounts of silicon
corresponding to the high endpoint of the recited range of 0.029 wt. %
silicon (FF 4, Lot D.)
However, with respect to the average fatigue life, the ’719 Patent
discloses an average fatigue life of 355485 cycles only for the specific alloys
as tested in Example 1. (FF 3, 5.) Table II of Example 1 shows four
different lots, A through D. The ’719 Patent does not describe the fatigue
life for the individual lots. Rather, it is stated in the example that the
“invention alloy had a lifetime (based on the log average of all specimens
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tested at that stress) of 355485 cycles compared to 47692 for the standard
7055 alloy.” The ’719 Patent does not describe that the log average of
355485 cycles is possessed by an alloy possessing the elemental
composition recited in claim 1. Specifically, the amounts of all components
(i.e., zinc, copper, magnesium, zirconium, iron, and silicon) encompass a
broader range than the values tested in Example 1 and said to have an
average log fatigue life of 355485 cycles. Thus, this example does not
describe an average log fatigue life of 355485 cycles for the full scope of
ranges covered by the claims.
Example 2 of the ’719 Patent performs fatigue testing, but it refers to
a “a mean lifetime (based on the Box-Cox fit) of 415147 cycles.” (’719
Patent, col. 7, ll. 34-35.) Example 3 also performs fatigue testing but
describes “average lifetime” values. (’719 Patent, col. 9, ll. 1-21.) It is not
clear whether these examples are using the same standard of “log average.”
Moreover, even if they are, while Example 2 alloys meet the claimed log
average, Example 3 alloys do not.
In addition, the ’719 Patent expressly acknowledges that the lifetime
and magnitude of any improvement may differ without specifying a
minimum number of cycles characteristic of the alloy products produced
according to the ’719 Patent. (FF 2.) As we explained above, the ’719
Patent does not provide an indication of a sufficient number of tests to be
performed in order to achieve at least the specific average recited in the
claims. Importantly, the claims recite amounts of iron and silicon that
extend beyond the specific amounts used to generate the experimental
results and the average fatigue failure resistance recited in the claims.
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As a result, we find that in view of the ’719 Patent, one of ordinary
skill in the art would not have been reasonably certain that Patent Owner had
invented an alloy product having the amounts of iron, silicon, and other
elements, and the recited fatigue failure resistance for the full scope of the
claims. Because our rationale differs from the Examiner’s, we designate the
affirmance of the Examiner’s rejection as a new ground of rejection.

New Ground of Rejection-35 U.S.C. § 112, 2
nd
paragraph (Pre AIA)
14

Claims 1-6 and 8 are rejected herein under 35 U.S.C. § 112, 2
nd

paragraph.
Rejections under 35 U.S.C. § 112 are not permitted in reexamination
for originally issued claims, but for claims with subject matter that is added
or deleted, they are examined based on the requirements of 35 U.S.C. § 112.
37 C.F.R. § 1.906(a).
We observe that Requester proposed a rejection of claims 1-6 and 8
under 35 U.S.C. § 112, 2
nd
paragraph in Requester Comments filed in the
95/001,085 proceeding on August 2, 2010 (“the ’085 Comments” 2-9).
Requester stated that one of ordinary skill in the art would not have been
able to understand the scope of the claims because the claimed average
fatigue life is taken from Example 1 of the ’719 Patent, and the compositions
tested cover ranges or elements that are much narrower than the ranges
recited in the claims. (’085 Comments 3-4.)

14
Because the ’719 Patent was filed and issued prior to enactment of the
America Invents Act, we apply the pre-AIA paragraphing for this new
ground of rejection.
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The Examiner declined to adopt the rejection as noted in the Right of
Appeal Notice. (RAN 11-12.) The Examiner reasoned that the claimed
fatigue life improvement recited in the claims constituted additional
limitations on the alloy product such that the alloy products claimed are
limited to those having both the composition within the recited range and
meeting the recited test conditions. Id.
The test for compliance for 35 U.S.C. § 112, second paragraph, is
whether the claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in light of the
application disclosure as they would be interpreted by one of ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971); In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014) (Reh’g Denied).
As discussed above, both independent claims 1 and 3 contain the
limitation that average fatigue failure resistance of the alloy product is at
least 355485 cycles. In this case, one of ordinary skill in the art would not
be able to determine whether an alloy product would fall within the scope of
the claim when read in light of the specification. The ’719 Patent does not
set forth a particular number of alloys or tests required for achieving the
average fatigue failure resistance recited in the claims. According to Dr.
Bray, the recited log average can be attained using individual lots which do
not meet the value of 355485 cycles. (FF5) Thus, Patent Owner admits that
the number of tests performed is significant in calculating the log average.
Because the claim fails to recite such numbers of the claimed log average,
for any particular alloy product having an elemental composition falling
within the recited ranges, regardless of whether the fatigue life falls above or
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below the recited average number of cycles, one of ordinary skill in the art
would not be able to determine whether the particular alloy product would
satisfy the “wherein” clause recited in the claims.
Neither the claims nor the remainder of the ’719 Patent Specification
provides a standard for selecting the various inventive lots A–D (some of
which had average fatigue life values below 355455 cycles), the individual
samples making up the lots, or the number of samples to be tested for
determining whether a particular alloy falls within the scope of claim 1. To
the contrary, the ’719 Patent states that the fatigue lifetime depends on a
number of factors “including, but not limited to specimen type and
dimensions, thickness, method of surface preparation, test frequency and test
environment.” (Col. 6, ll. 7-13; see also col. 9, l. 44-col. 10, l. 6; FF2.) The
declaration evidence submitted by Patent Owner also illustrates this point.
For example, in inventive Lot B (FF 5), the log average fatigue life value
was 369152 cycles, but two of the samples had cycles well below the
specified average of 355455 cycles (i.e., 212298 and 323907 cycles). The
Bray 2009 Declaration does not explain why two other samples (585702 and
461080 cycles) were selected to offset the other two lower cycle values.
Thus, one skilled in the relevant art would have been unable to ascertain
whether an alloy satisfying the compositional requirements of claim 1 but
having a fatigue life below the specified 355485 cycles would infringe or
anticipate claim 1.
As a result of the uncertainty in the number and make up of alloys
required to obtain the average fatigue failure resistance recited in the claims,
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Patent 7,097,719

20
the claims do not set forth with reasonable precision, a particular area as
required in order to satisfy 35 U.S.C. § 112, 2
nd
paragraph.
Therefore, claims 1-6, and 8 are rejected under 35 U.S.C. § 112, 2
nd

paragraph.
Prior Art Rejections
Rejections of claims over prior art should not be based on
“considerable speculation as to the meaning of the terms employed and
assumptions as to the scope of such claims.” In re Steele, 305 F.2d 859, 862
(CCPA 1962).
As a result of the new ground of rejection set forth above, we reverse,
pro forma, all the rejections of claims 1-6 and 8 based on prior art.
(Grounds II, VIII-X, and XV.) Any rejection of claims 1-6 and 8 over prior
art would require speculation as to the wherein clause recited in the claims,
and specifically whether an individual alloy product would meet the required
average fatigue life resistance recited in the claims. We decline to engage in
such speculation. It should be understood that our decision is based solely
on the indefiniteness of the claimed subject matter and not on adequacy of
the prior art evidence. Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI
2008).

DECISION
In sum:
1. we summarily affirm the Examiner’s rejections of claim 14 over
prior art;
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Patent 7,097,719

21
2. we affirm the Examiner’s rejection of claims 1-6 and 8 as lacking
enablement;
3. we affirm the Examiner’s rejection of claims 1-6 and 8 as lacking
written description;
4. we enter a new ground of rejection for claims 1-6 and 8 under 35
U.S.C. § 112, 2
nd
paragraph; and
6. we reverse pro forma, the Examiner’s rejections of claims 1-6 and
8 over prior art.

Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that Patent Owner, WITHIN ONE MONTH FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 by the Board
upon the same record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.

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Patent 7,097,719

22
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
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Patent 7,097,719

23
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED
37 C.F.R. § 41.77(b)

PATENT OWNER:

Intellectual Property
Alcoa Technical Center, Building C
100 Technical Drive
Alcoa Center, PA 15069-0001

THIRD-PARTY REQUESTER:

Jennifer P. Yancy
Yancy IP Law, PLLC
5904 Jane Way
Alexandria, VA 22310