Ex Parte Arsenault et al

Patent Trials and Appeals Board

Sep 26, 2013

11768955 - (R) (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/768,955 06/27/2007 Sarah Arsenault 67097-825;
PA-0003466-U
3936
54549 7590 01/30/2014
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
KATZ, VERA
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
01/30/2014 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 THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SARAH ARSENAULT, JAMES T. BEALS, and
MARK R. JAWOROWSKI
____________

Appeal 2013-006001
Application 11/768,955
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Application 11/768,955

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On November 26, 2013, Appellants filed a Request for Rehearing of
the Decision of September 26, 2013. In that Decision, the panel sustained
the Examiner’s rejection of claims 25-28 under 35 U.S.C. § 103(a) as
unpatentable over Yu (US 2004/0262580 A1; published Dec. 30, 2004) in
view of Morris (US 2006/0113007 A1; published June 1, 2006) and 7075
Alloy Data Sheet, Capital Aluminum Extrusions Limited, 1-2 (2006)
(hereinafter “Alloy 7075”) or, alternatively, over Yu (EP 1 493 846 A1;
published Jan. 5, 2005) in view of Lin (2005/0179010 A1; published Aug.
18, 2005) and Aluminum 7075-T6, 7075-T651, Automation Creation, Inc., 1
(1996-2004) (hereinafter “Alloy 7075-T6”).
Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1)
which specifies in pertinent parts that “[t]he request for rehearing must state
with particularity the points believed to have been misapprehended or
overlooked by the Board.”
In their Request, Appellants state the following points were
misapprehended or overlooked in the Decision.
1. One of ordinary skill in the art would have an expectation that
aluminum alloys other than aluminum 2024 alloys would have
problems with cerium or rare earth element coating compositions
because Morris identifies 2024 alloy as only one specific example.
Request 2.
2. The fact that Morris describes a successful coating using cerium
should not be given probative value as to the expectation of
success in using Yu’s coating for a high [] aluminum alloy because
Yu does not use the same type of coating composition as Morris,
namely Morris uses multiple anions of one or more rare earth
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elements. “The specific, industry-recognized
challenges/disadvantages raised in Morris with regard to cerium
coatings, along with the juxtaposition of Morris’ own inventive
coating against that of Yu, show that it is more probable than not
that one of ordinary skill in the art would have an expectation of
failure, not success, for the proposed combination.” Request 2-3.
As explained below, Appellants have not persuaded us of any
reversible error in our Decision.
The Decisions states
However, even if the teaching of paragraph [0004] of
Morris extends to aluminum alloys other than just those with a
high copper content, Appellants urge us to place more emphasis
on the teaching of Morris than are warranted. According to
Morris, coating problems occur in “at least some” cerium and
other rare earth element containing coatings. Morris, ¶¶ 3-4. If
“at least some” coatings have disadvantages, one of ordinary
skill in the art would have expected that not all cerium-coatings
have such disadvantages.1
We find this statement in Morris insufficient to establish
that the use of cerium contacting coatings have such a
recognized unpredictability in the art that one of ordinary skill
in the art would have had no expectation of success used the
cerium-containing composition of Yu on an aluminum alloy
having over 5 wt% zinc, despite the fact that Yu specifically
describes its use with zinc-containing aluminum alloys.
Decision 5. Footnote 1 of the Decision states “In fact, Morris provides
evidence of cerium-containing coatings that do not have such disadvantages,
even with copper-containing aluminum alloys. See Morris, ¶ [0021].” Id.
Accordingly, we disagree with Appellants’ first contention that we
overlooked or misapprehended that the statement in Morris regarding
coating incompatibility may have extended to aluminum alloys other than
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high copper containing alloys such as 2024 aluminum alloys. In fact, the
Decision states “even if the teaching of paragraph [0004] of Morris extends
to aluminum alloys other than just those with a high copper content,
Appellants urge us to place more emphasis on the teaching of Morris than
are warranted.” The Decision specifically considers whether or not the
teaching of Morris would have suggested to the skilled artisan “such a
recognized unpredictability in the art that one of ordinary skill in the art
would have had no expectation of success used the cerium-containing
composition of Yu on an aluminum alloy having over 5 wt% zinc.”
We further disagree with Appellants’ second contention that the
Decision relies on Morris’ multiple anion coating as evidence that cerium-
containing compositions would have been expected to be successful on high
zinc containing aluminum alloys. The Examiner does not rely on Morris’
teachings in such a capacity and neither does the Decision. To the contrary,
the Decision relies on Morris only as minor supporting evidence that
successful cerium-containing coatings do exist in the prior art. See Decision
5, n. 1. Accordingly, the “at least some” coatings language of Morris would
not have been considered by the skilled artisan to be a condemnation of “all”
or even “most” cerium-coating for aluminum alloys.
Moreover, the Decision further relies on the teachings of Yu directed
to use of its cerium-containing coating with zinc-containing alloys as
evidence that contradicts a suggestion, if any, in Morris that the cerium-
containing coating of Yu might be one of the ones that is unsuccessful with
zinc-containing aluminum alloys. Id. at 5.
We disagree with Appellants that the evidence demonstrates that it is
more probable than not that the coating of Yu will be unsuccessful if applied
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to a high zinc content aluminum alloy. Thus, we find no error in the
Decision that, taking the evidence as a whole, one of ordinary skill in the art
would have had a reasonable expectation of success in using the coating of
Yu on a high zinc content aluminum alloy. “Obviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success.” In re Kubin, 561 F.3d 1351, 1359-60 (Fed. Cir.
2009) (citing In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).
The subject Request has been granted to the extent that the Decision
has been reconsidered, but is denied with respect to making any changes
therein.
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)(iv).

DENIED

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