Ex Parte 8118950 et alDownload PDFPatent Trial and Appeal BoardSep 29, 201595002150 (P.T.A.B. Sep. 29, 2015) 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. 95/002,150 09/07/2012 8118950 12-1181 1225 8840 7590 09/29/2015 INTELLECTUAL PROPERTY ALCOA TECHNICAL CENTER, BUILDING C 100 TECHNICAL DRIVE ALCOA CENTER, PA 15069-0001 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 09/29/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ CONSTELLIUM FRANCE Requester v. ALCOA INC. Patent Owner and Appellant ____________ Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 Technology Center 3900 ____________ Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 2 Patent Owner, Alcoa Inc. (hereinafter “Patent Owner”), appeals from the Patent Examiner’s final decision to reject pending claims 1 and 4-23 in an inter partes reexamination of U.S. Patent 8,118,950 B2 (hereinafter “’950 patent”). See Patent Owner’s Appeal Brief 1, filed November 24, 2014 (hereinafter “PO App. Br.”). The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134(b), and 315(a). 1 We AFFIRM. BACKGROUND The ’950 patent issued February 21, 2012, naming Edward L. Colvin, et al., as inventors. The ’950 patent issued with claim 1-16. Claims 1, 4, and 14-16 have been amended, claims 2 and 3 have been cancelled, and claims 17-23 have been added during reexamination. The claims are drawn to a wrought aluminum alloy product having longitudinal tensile yield strength of at least 86 ksi. PO App. Br. 30-33, Claim App’x. The Third-Party Requester, Constellium France (hereinafter “Requester”), filed a request for inter partes reexamination under 35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the ’950 patent on September 7, 2012. Request for Inter Partes Reexamination (hereinafter “Request”). Requester filed a Respondent Brief in this appeal on December 23, 2014 (hereinafter “Req. Res. Br.”). An oral hearing was held August 7, 2015. A transcript of the hearing will be entered into the record in due course. 1 All reference to U.S. statues are to the statutes as they appear before enactment of the Leahy-smith America Invents Act of 2011 (“AIA”). Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 3 Claim 1 is representative and reads as follows (with bracket showing deleted language and underlining showing added language relative to the originally patented claim): 1. A wrought aluminum alloy product consisting of: [3.4] 3.6 - 4.0 [4.2] wt. % Cu; [0.9] 1.1- 1.2 [1.4] wt. % Li; [0.3] 0.4 - 0.55 [0.7] wt. % Ag; [0.1] 0.25 - 0.45 [0.6] wt. % Mg; [0.2] 0.4 - 0.6 [0.8] wt. % Zn; [0.1] 0.2 - 0.4 [0.6] wt. % Mn; and 0.05 - 0.15 wt. % Zr; the balance being aluminum and incidental elements and impurities; wherein the wrought aluminum alloy product realizes a longitudinal tensile yield strength of at least 86 ksi. REJECTIONS ON APPEAL The Examiner maintains, and the Patent Owner appeals, the following final rejections: 1. Claims 1 and 4-23 as obvious under 35 U.S.C. § 103(a) over U.S. Patent 5,445,003 to Pickens (“P003”) 2 in view of U.S. Patent Application Publication 2005/0006008 to Cho (“C008”). 3 2. Claims 1 and 4-23 as obvious under 35 U.S.C. § 103(a) over U.S. Patent 5,211,910 to Pickens (“P910”) 4 in view of C008. 2 U.S. Patent 5,445,003, issued October 3, 1995, to Joseph R. Pickens, et al., is referred to in the briefs of this appeal as “the ’003 patent” or “D1.” 3 U.S. Patent Application Publication 2005/0006008, published January 13, 2005, and naming Alex Cho as the sole inventor, is referred to in the briefs of this appeal as “the ’008 patent” or “D2.” 4 U.S. Patent 5,211,910, issued May 18, 1993, to Joseph R. Pickens, et al., is referred to in the briefs of this appeal as “the ’910 patent” or “D3.” Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 4 Additionally, Requester and the Examiner rely on the following Declaration testimony: Declaration of Dr. Armelle Danielou, executed September 7, 2012 (hereinafter “1st Danielou Decl.”). Second Declaration of Dr. Armelle Danielou, executed March 16, 2013 (hereinafter “2nd Danielou Decl.”). Third Declaration of Dr. Armelle Danielou, executed July 25, 2014 (hereinafter “3rd Danielou Decl.”). In response, Patent Owner further relies on the following Declaration testimony: Declaration of Dr. Cagatay Yanar, executed July 7, 2014 (hereinafter “Yanar Decl.”). Declaration of Edward l. Colvin, executed March 18, 2011 (hereinafter “1st Colvin Decl.”). Second Declaration of Edward L. Colvin, executed September 20, 2011 (hereinafter “2nd Colvin Decl.”). Third Declaration of Edward L. Colvin, executed February 15, 2013 (hereinafter “3rd Colvin Decl.”). DISCUSSION The Examiner used similar rationales in the two separate rejections of claims 1 and 4-23. The Examiner found that P003 and P910 both teach an aluminum alloy comprising Cu, Li, Ag, Mg, Zn in either preferred, more Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 5 preferred, or most preferred ranges that fully encompass the claimed ranges. Right of Appeal Notice 4-5, 11-12, 21, mailed August 29, 2014 (hereinafter “RAN”). For each element, the Examiner found that the most preferred ranges either closely encompass or overlap the recited ranges. Id. P003 and P910 further teach including “grain refiners,” including Mn and Zr, in a preferred amount of 0.01 to 1 weight percent and a more preferred amount of 0.08-0.3 weight percent. Id. 4-5, 11-12, 21-22. P003 and P910 do not teach any specific ranges for Mn or Zr separately. However, P003 and P910 teach specific examples with each of the described elements, other than Mn, within the claimed ranges, including Zr amounts of 0.14 or 0.15 weight percent. Id. at 23. None of the specific examples recited in P003 or P910 included Mn. C008 also teaches an aluminum alloy that comprises Cu, Li, Ag, Mg, Mn, and Zr in either broad or preferred ranges that fully encompass the claimed ranges. See C008 ¶¶ 12 and 16-17. For each of these elements, the preferred ranges either encompass or overlap the claimed ranges. Id. The Examiner found that C008 teaches “addition of Mn to Al-Cu-Mg-Ag alloys results in improved fracture toughness at a similar strength level.” RAN 7, 11-12, 22 (citing C008 ¶ 11; see also C008 ¶ 15 (“minor additions of manganese to Al–Cu–Mg–Ag alloys . . . unexpectedly provided improved results, inter alia in terms of fracture toughness.”) and 16. C008 teaches a preferred Mn content of 0.3 to 0.5 wt. %. C008, ¶ 16. Moreover, C008 includes an example having 0.43 wt. % Mn. RAN 7 and 22; C008 ¶ 37, Table 1. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 6 The Examiner concludes that the claimed ranges of elements would have been obvious to one of ordinary skill in the art based on the fact that the claimed ranges are very closely encompassed by and/or substantially overlap the preferred or most preferred ranges, and precise amounts that fall within the claimed ranges for each element are exemplified, with the exception of Mn, by P003 and P910. RAN 7 and 12. 5 The Examiner determines, however, that it also would have been obvious to include Mn in the claimed ranges in an aluminum alloy based on the teachings of C008 of using Mn within the claimed range in similar alloys to improve fracture toughness. Id. 5 In fact, the most preferred ranges described by P003 and C008 are so substantially identical to the claimed ranges that arguably there are no “considerable difference between the claimed range and range in the prior art,” such that we would not have considered a proposed anticipation rejection to be an unreasonable argument based on the facts of this case, though anticipation is not before us and not decided on this record. See ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344-45 (Fed. Cir. 2012) (finding that a range of 150 ppm or less anticipates a claimed range of 50 ppm or less where (1) there was not a “considerable difference between the claimed range and the range in the prior art” such that a reasonable fact finder could conclude that the prior art described the claimed range with sufficient specificity to anticipate the claim limitation and (2) there is no evidence, as there was in Autofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006), that the broader range recited in the prior art would have been inoperable outside of the narrower claimed range, such that the broader disclosed range in fact “failed to teach one of ordinary skill in the art how to use the claimed invention,” i.e., there was no evidence of a difference in expected success across the broader range). While Patent Owner argues criticality of the claimed ranges with respect to unexpected results, there is no evidence in this case that the broader ranges described in P003 are inoperable outside of the claimed ranges. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 7 The Examiner found that the resultant product comprising Mn would encompass alloys having components in the compositional ranges claimed and would inherently have a tensile yield strength of at least 86 ksi. RAN 7. The Examiner further notes that “almost all of the ’003 patent’s alloys possess this property.” Id. at 22. Patent Owner argues that the teachings of the prior art are “disparate, meaning the skilled person is given no indication as to which of the numerous possible alloying choices provided by the combination of D1 [P003] and D2 [C008] are likely to be successful.” PO App. Br. 11 (citing Bayer Schering Pharma AG v. Barr Laboratories, 575 F. 3d 1341, 1347 (Fed. Cir. 2009) (“[W]here the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful an invention would not have been obvious.”). As an example, Patent Owner points to the preferred ranges of Cu in P003 of 3.0 - 4.5 wt. % and the teaching of Cu in C008 to be 3.0 - 4.0% and concludes that “the skilled person would not know to use only 3.6 - 4 wt. % Cu [as claimed] based on the disparate teachings.” Id. at 12. We are not persuaded by the reasoning of the Patent Owner. P003, P910, and C008 expressly describe not only very broad ranges that would be expected to be successful alloys, but also very narrow and substantially overlapping preferred ranges and example have one or more of the alloy elements falling squarely within the claimed ranges. RAN 6 (P003), 11 (P910). In Patent Owner’s example above, the skilled artisan having both P003 and C008 would reasonably expect successful alloys with the use of any amount of Cu within the overall range of 3.0 – 4.5 wt. %. To the extent Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 8 that P003 teaches a preferred range that is slightly different than C008 or P910, the skilled artisan would not see such a difference as a demonstration of a lack of success or a requirement to choose one preferred range over another, but rather that any amount within the describe ranges would have produced an alloy having high longitudinal tensile yield strength and high fracture toughness. See P003, col. 18, ll. 30-35; C008 ¶ 3. Patent Owner further presents evidence that the alloys that fall within the precisely claimed ranges exhibit superior longitudinal tensile yield strength as compared to alloys with elements falling within the broader disclosed ranges of the prior art, and that such results would not have been expected by one of ordinary skill in the art. PO App. Br. 14-28. In particular, Patent Owner relies on a comparison between Examples L, S, T and DD in P003 and Example IX in P910 6 to two invention alloys produced according to the process of P0003, identified as Comparative Material A and Comparative Material B. Id. at 15. As explained in more detail below, Patent Owner has provided evidence of unexpected results that, when considered in light of the narrow ranges, specific preferred amounts, and descriptions of the effects described in P0003 of adding copper, lithium, silver, and zinc to alloys, do not weigh in favor of nonobviousness by a preponderance of the evidence. Instead, we find that Patent Owner’s contribution to the art is no more than routine 6 P910 does not expressly teach a longitudinal tensile yield strength for the alloy of Example IX. However, Patent Owner contends that longitudinal tensile yield strength for alloy IX would be substantially similar to the results of the alloy of Example L in P003. Requester does not dispute this finding. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 9 optimization of the already very narrow ranges described in the prior art for an alloy comprising copper, lithium, silver, magnesium, zinc, manganese, zirconium, a balance of aluminum, and incidentals. Rejections based on optimization must be weighed along with evidence of unexpected results. See, e.g., In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (“In general, an applicant may overcome a prima facie case of obviousness by establishing ‘that the [claimed] range is critical, generally by showing the claimed range achieves unexpected results relative to the prior art range,’” which “standard applies when . . . the applicant seeks to optimize certain variables by selecting narrow ranges from broader ranges disclosed in the prior art.”) (quoting In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Wertheim, 541 F.2d 257, 267 (CCPA 1976) (recognizing that “ranges which overlap or lie inside ranges disclosed by the prior art may be patentable if the applicant can show criticality in the claimed range by evidence of unexpected results”); see also In re Nolan, 553 F.2d 1261, 1267 (CCPA 1977) (“Considering all of the evidence, we are not persuaded that the evidence of the unexpected higher luminous efficiency and lower peak discharge current rebuts the strong showing of obviousness.”); Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness.”). To show unexpected results, applicant must establish: “(1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art,. . . and (2) that the difference actually Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 10 obtained would not have been expected by one skilled in the art at the time of invention.” In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). “[O]ne should consider the substantiality of the differences between the properties of the prior art and those of the invention to determine the significance of those differences” and, thus, “to determine the weight such evidence should be given in the obviousness analysis.” Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 769 F.3d 1339, 1344–1345 (Fed. Cir. 2014) (en banc). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.Cir.1991). Patent Owner contends that alloys S, T, DD, and L are the closest prior art alloys. PO App. Br. 14. Dr. Yanar further adopts these particular alloys as the closest, but fails to explain the underlying reason for this selection. See Yanar Decl. ¶¶ 39 and 40. There is no requirement that the closest described prior art necessarily be one or more working examples in the prior art. Rather, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments and embodiments that are not exemplified. Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred embodiments, must be considered.”). As explained below, P003 particularly describes alloy combinations that are closer to the claimed invention, even though these alloys are not provided as working examples. Because P0003 describes these components as resulting in alloys with optimal properties, the Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 11 disclosures cannot be ignored when considering the weight of the unexpected results. P003 teaches that certain results are to be expected, namely that Copper and lithium levels have a significant effect on the strength levels attained in the present alloys. Copper levels above about 4% produce the highest strengths, with significant decreases in strength below about 3% (see Alloy Z in Table 3). In addition, the highest strengths are attained with Li levels of from about 1.05 to about 1.35%, with a peak at about 1.2% lithium. P003, col. 17, ll. 59-65. With respect to copper and lithium content, P003 further states that while the desirable cryogenic fracture toughness trend is most easily attained and strength levels are very high at copper levels of about 4% and lithium levels of about 1%, lowering of the copper and lithium levels significantly below these amounts may still result in the desirable trend, but with lower strengths. Id., col. 17, l. 67 to col. 18, l. 35; see also, id., col. 17, ll. 40-41. P003 also teaches that, at these preferred copper and lithium levels, no additional processing is necessary, but as the ends of the most preferred ranges are reached, “optimal amounts of stretch and carefully controlled artificial aging treatments may be required in order to produce the desired cryogenic fracture toughness trend at technologically useful strength levels.” Id., col. 18, ll. 46-50. Specifically, P003 identifies these components as result- effective variables whose amounts affect the longitudinal tensile yield strength of the alloy into which they are incorporated. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 12 P003 also teaches that “the strength of the alloys is highly dependent on Mg content, with peak strengths being attained at Mg levels of from about 0.3 to about 0.6 percent.” Id., col. 18, ll. 53-55. P003 further teaches that the presence or absence of silver in the alloys has no effect on fracture toughness, but “Ag produces an improvement in strength.” Id., col. 18, ll. 60-62. P003 teaches also that “strength levels and aging kinetics (the rate at which the alloys progress along the aging curve) may be increased with minor amounts of Zn.” Id., col. 18, l. 64 to col. 19, l. 2. 7 P003 further teaches that longitudinal tensile yield strength is a function of aging, and that for certain alloy compositions that might obtain a peak longitudinal tensile yield strength of 100 ksi, underaging to obtain a longitudinal tensile yield strength of only 90 ksi may be desirable for producing better cryogenic fracture toughness. Id., col. 19, ll. 30-60. In other words, longitudinal tensile yield strength generally increases with aging up to a certain point, but P003 teaches that it may be desirable in some cases to sacrifice peak longitudinal tensile yield strength in order to achieve better cryogenic fracture toughness by aging below a peak amount. It is with these findings in mind that we look to the data that Patent Owner relies upon as evidence of unexpected results. P003 describes a preferred alloy with a copper content of 4% by weight and a lithium content of 1% by weight (for optimal longitudinal tensile yield strength and 7 This finding is supported by the testimony of Dr. Yanar which cites to U.S. Patent 5,462,712 to Pickens, et al., which states that highest strengths are typically achieved with Zn levels of from about 0.5 to 1%. Yanar Decl. ¶ 13. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 13 cryogenic fracture toughness) (id. at col. 17, ll. 59-65), and further describes that, when it comes to longitudinal tensile yield strength, there is a peak when lithium reaches 1.2%. Accordingly, when comparing only longitudinal tensile yield strength, the skilled worker would have considered an alloy having 4% copper and 1.2% lithium, as these are amounts (1) are specifically described in the prior art, (2) fall squarely within Patent Owner’s narrowly claimed ranges, 8 and (3) are identified in the art as expected for “peak” or “highest” longitudinal tensile yield strength. None of examples L, S, T, or DD of P003 have 4% copper and 1.2% lithium. While Exhibit L is described as having 4% copper, the amount of lithium (1.41%) taught for Exhibit L falls outside of what P003 teaches as a most preferred range of 0.7-1.1% and outside of what P003 describes as a lithium longitudinal tensile yield strength “peak” at 1.2%. Likewise, Exhibit DD has a lithium amount of 1.12%, which is closer to the 1.2% “peak” amount, but has a copper amount (3.41%) less than what P003 describes as 8 Because the claims are directed to an alloy with a copper content of 3.6 to 4% (claim 1) or more narrowly 3.8-3.95% (claim 23), Patent Owner argues that P003’s teaching of highest longitudinal tensile yield strength with “[c]opper levels above about 4%,” finding that the skilled artisan would have been directed to amounts lower than “about 4%” is “an improper disregard for the whole of the teachings of [P003].” PO App. Br. 27-28. Patent argument is not persuasive because, despite P003’s description of preferred amounts for particular objectives, P003 describes broader ranges which are said to exhibit good tensile longitudinal tensile yield strength and good fracture toughness, either with or without manipulating the alloy above or below peak aging. See P003, col. 18, ll. 30-50. Moreover, the phrase “about 4%” includes some amount less than 4% and, thus, reasonably falls within the claimed ranges of both claims 1 and 23. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 14 the minimum for producing “the highest strengths,” i.e., “about 4%.” 9 Thus, the improvement observed for the inventive alloys must be considered in view of the disclosure in P003 that other values of lithium and copper, not included within the working examples, were said to give superior results. Indeed, these other values in P003 are included within the range recited in claim 1 for Li and Cu, indicating that the inventors have not discovered ranges that impart unexpected results but rather have selected ranges that include what would have been expected to be superior based on P003. The longitudinal tensile yield strength of these alloys is most suitable for comparison to the prior art because “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392. Even if we are most concerned with improvement over only the exemplary alloys, namely Examples L, S, T, and DD, we are not persuaded that any improvement shown in longitudinal tensile yield strength of Comparative Alloys A and B is necessarily unexpected. First of all, as discussed above, improvements in longitudinal tensile yield strength would 9 We agree with the Patent Owner that side-by-side comparisons are not necessary to the extent that there is insufficient evidence that minor differences in process conditions between those described in the prior art and those used in obtaining comparison data would have affected the outcomes. Nonetheless, Patent Owner was in a position to perform side-by-side testing of Comparison Materials A and B and the actual closest prior art, namely alloys having 4% copper, 1.2% lithium and non-optimized amounts silver, magnesium, zinc, manganese and zirconim, to show a true “apples-to- apples” comparison between the claimed invention and the closest prior art in order to show that the optimized Comparison Materials A and B exhibit results that would have been unexpected. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 15 be expected with alloys having copper content closer to 4% and lithium values closer to “peak” strength of 1.2%. Similarly, from the teachings of P003 identified above, the skilled artisan would expect increases in longitudinal tensile yield strength as the amounts of silver and zinc increase. In particular with respect to zinc, even minor amounts of zinc cause strength increases. Since Comparison Alloys A and B both have higher amounts of silver and higher amounts of zinc than any of Example alloys L, S, T and DD, an increase in longitudinal tensile yield strength of such materials would have been expected. A demonstration of mere improvement, without a showing that the improvement is significant or unexpected, is insufficient evidence of unexpected results. See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“Mere improvement in properties does not always suffice to show unexpected results. . . . [W]hen an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.”); In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987) (“[T]he mere submission of some evidence that a new compound possesses some unpredictable properties does not require an automatic conclusion of nonobviousness in every case.”); In re Merck & Co., Inc., 800 F.2d 1091, 1099 (Fed. Cir. 1986) (“In the absence of evidence to show that the properties of the compounds differed in such an appreciable degree that the difference was really unexpected, we do not think that the Board erred in its determination.”); In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (“A greater than expected result is an evidentiary factor pertinent to the legal Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 16 conclusion of [ ] obviousness.”); see also Galderma Laboratories, L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013) (“Results which differ by percentages are differences in degree rather than kind, where the modification of the percentage is within the capabilities of one skilled in the art at the time. Thus, where an unexpected increase in efficacy is measured by a small percentage, as here, and the evidence indicates that skilled artisans were capable of adjusting the percentage, the result constitutes a difference in degree, not kind.”) (internal citations omitted). Patent Owner contends that even with the known effects on longitudinal tensile yield strength described in P003, the improvement shown in Comparison Examples A and B are higher than what would have been expected by the skilled artisan with changes made so as to form an alloy having elemental concentrations within the claimed range. We do not find Patent Owner’s arguments that the improvements in longitudinal tensile yield strength of Comparison Materials A and B over Examples L, S, T and DD are unexpected, but rather are the expected results due to increases in copper, silver and zinc over that of Examples L, S, T and DD and lithium amounts closer to the “peak” lithium amount as identified in P003, 10 which 10 While we note that Example L of P003 actually has more copper and lithium as compared to Comparative Materials A and B, as mentioned above, Example L’s amount of lithium is substantially outside of what P003 has identified for “peak” yield strength. Likewise, Example T of P003 has more copper than Comparative Material A and substantially the same amount of copper as Comparative Material B. Yet, the lithium content of Example T (0.92%) is less than a preferred amount of 1% and less than a “peak” strength amount of 1.2%. Comparative Materials A and B both have more lithium and in an amount closer to the “peak” amount (1.16% and Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 17 P003 describes to improve longitudinal tensile yield strength. We note that Patent Owner has the burden of proving that the results are unexpected, which includes the burden of showing what would have been expected and that the actual results are superior to what would have been expected. Galderma, 737 F.3d at 738 (“[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, the burden of production falls upon the patentee.”). Patent Owner has not met this burden. Dr. Yanar testifies that “based on the known data, it is not possible to make any definitive conclusions, and the skilled person would not make any definitive conclusions, regarding the effect of using 0.5 wt. % zinc in the low copper (≤ 4.0 wt. % Cu) Al-Cu-Li-Mg-Ag alloys of Dr. Pickens.” Yanar Decl. ¶ 8. Dr. Yanar’s position is further supported by Dr. Colvin. See 3rd Colvin Decl. ¶ 10. To the extent that Dr. Danielou, expert for the Requester, testifies that using 0.5 wt. % zinc results in a 3-5% increase in longitudinal tensile yield strength as compared to a zinc-free version of such an alloy, Patent Owner’s expert refutes this finding arguing that “this assertion is incorrect and not supported by the facts.” Yanar Decl. ¶ 8. While Dr. Yanar calculates that the data on which Dr. Danielou based his data “realized, at most, a 3.6% increase in strength . . . when moving from 0 wt. % Zn to 0.52 wt. % Zn” (Yanar Decl. ¶¶ 58), there is no evidence of what a skilled artisan would have expected in altering the zinc content from that described in Examples S and T, which already include some zinc content, to that of Compartive Materials A and B. 1.13%, respectively), which would have been expected to produce alloys with better longitudinal tensile yield strength. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 18 Moreover, findings directed to what the skilled artisan may expected with respect to an increase in zinc is not probative that the results shown for Comparison Materials A and B are unexpected, when the differences between Comparison Materials A and B and Examples L, S, T, and DD also include differences in the amounts of in copper, lithium and silver, which according to P003, also favor an expected increase in longitudinal tensile yield strength. In particular, P003 has identified that the amount of Ag present affects the longitudinal tensile yield strength and each of Examples L, S, T, and DD have silver content less than the recited range. Yet, Patent Owner puts forth no evidence to suggest that the increased longitudinal tensile yield strength between in Comparison Materials A and B, with a higher silver content, would have been unexpected despite the teachings of P003 that an increase in silver provides an increase in longitudinal tensile yield strength. In other words, the amounts of Ag are explicitly identified in P003 as a variable which improves the alloy’s properties so it would not have been unexpected that values outside the working examples would lead to improved results. Accordingly, Patent Owner has not sufficiently explained why the increase in longitudinal tensile yield strength of Comparison Materials A and B is such a vast improvement that it would not have been expected, in light of the teachings of P003, which describes an increase in longitudinal tensile yield strength when copper content is about 4% or more, lithium is closest to 1.2%, and silver and zinc contents are increased, as would be the case when comparing Examples L, S, T and DD with Comparison Materials Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 19 A and B. As discussed above, mere evidence of improvement is evidence only of routine optimization and not evidence of unexpected results. 11 Moreover, considering the closely or substantially encompassing or overlapping ranges between the most preferred ranges cited in P003 and the claimed ranges, the two data longitudinal tensile yield strength provided by Comparison Materials A and B are insufficient to show that the results are commensurate with the upper and lower ranges of the claims or that similar exceptional results are not achieved for alloys outside of this range. For example, we find that P003 describes high longitudinal tensile yield strength very similar to those of Comparison Materials A and B at 16 hours for Example D, which has more copper than recited in the claims and no zinc. Compare P003, Table 3, Alloy D with aging at 143°C and 16 hours having a longitudinal tensile yield strength of 98.5 ksi with 3rd Colvin Decl., ¶¶ 8 and 28, Comparison Materials A and B at 143°C and 16 hours having longitudinal tensile yield strengths of 97.8 ksi and 98.0 ksi, respectively. This finding suggests that the results within the claimed range are not necessarily superior and that difference in longitudinal tensile yield strength 11 In light of the lack of evidence of record to persuasively demonstrate what improvement in tensile yield strength would have been unexpected over that reported in the prior art upon manipulation of each of copper, lithium, silver, and zinc into the claimed ranges, we find it unnecessary to include in our findings of fact the details of the particular tensile yield strengths reported in either P003 or by Dr. Colvin for Comparative Materials A and B. We acknowledge that Comparison Materials A and B are reported to have improved yield strength over the yield strengths for Examples L, S, T and DD. However, we are not persuaded that this improvement is more than routine optimization. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 20 throughout the ranges is reasonably expected and only requires routine optimization. Further, Patent Owner acknowledges that aging times and temperatures can be likewise optimized for each alloy for best longitudinal tensile yield strength. Thus, with limited comparison data provided by P003 and Dr. Colvin, Patent Owner has not shown that the superior results exist for a variety of processes, including over a variety of aging times and temperatures. Accordingly, based on a preponderance of the evidence of the teachings of the prior art and Patent Owner’s evidence of unexpected results, we affirm the Examiner decision to reject claims 1 and 4-23 under 35 U.S.C. § 103(a) as obvious over P003 in view of C008 and claims 1, 4-9 and 17-23 under 35 U.S.C. § 103(a) as obvious over P910 in view of C008. TIME PERIOD FOR RESPONSE 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 (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. Appeal 2015-004782 Reexamination Control 95/002,150 Patent 8,118,950 B2 21 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. 7, July 2008). AFFIRMED PATENT OWNER: Intellectual Property Alcoa Technical Center, Building C 100 Technical Drive Alcoa Center, PA 15069-0001 THIRD-PARTY REQUESTER: Susan E. 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