Ex Parte Aruga et alDownload PDFPatent Trial and Appeal BoardJun 22, 201613283012 (P.T.A.B. Jun. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/283,012 10/27/2011 Yasuhiro ARUGA 22850 7590 06/24/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 388507US99DIV 3052 EXAMINER IP,SIKYIN ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 06/24/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte YASUHIRO ARUGA, RYOICHI OZAKI, and YOSUKE MIWA Appeal2014-004870 Application 13/283,012 Technology Center 1700 Before CHUNG K. PAK, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1-7 and 9-16 under 35 U.S.C. § 103(a) as being unpatentable over Aruga (WO 2006/019035 Al, published Feb. 23, 2006, relying upon US Pub. 2009/0010197 Al, pub. Jan. 8, 2009 as English translation) or JP 11-256255 A (published Dec. 26, 1999 (hereinafter, JP Appeal2014-004870 Application 13/283,012 255)). 1 An oral hearing was conducted on June 14, 2016. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. Claim 1 is illustrative of the subject matter on appeal (emphasis added): 1. A copper alloy sheet comprising: 0.01 to 0.50 mass% of Fe; 0.01to0.15 mass% of P; and 3 to 15 ppm ofC, wherein a content of 0 is at most 40 ppm, a content of H is at most 1.0 ppm, and contents of S and Pb are each 20 ppm or less. ANALYSIS We have thoroughly reviewed each of Appellants' arguments for patentability. However, we will sustain the Examiner's rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. It is well established that when claimed ranges overlap or lie inside ranges disclosed by the prior art for every component in a claim, a prima facie case of obviousness is established. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). It is also well established that a reference is not limited to its examples or preferred embodiments; see Merck & Co., Inc. v. Biocraft Labs., Inc., 874 1 The Examiner also provisionally rejected the claims as unpatentable on the grounds of obviousness-type double patenting (Final Action 2, 3; Ans. 2, 3). These rejections are not addressed by Appellants (generally App. Br.). Accordingly, we summarily affirm these rejections. 2 Appeal2014-004870 Application 13/283,012 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200 possible combinations rendered all possible formulations obvious). In reviewing the relevant facts of this case, the Examiner's determination that each of Aruga and JP 255 suggests overlapping ranges for all of the compositional components is reasonable (see, e.g., Ans. 6). Appellants' argument that neither reference explicitly discusses a range for the carbon impurity relative to all the other listed impurities (which are inclusive of carbon) is unavailing for reasons set out by the Examiner (Ans. 3, 4, 6-10). Furthermore, in assessing the obviousness of the subject matter recited in the claims on appeal, "[ o ]ften, it will be necessary for ... [us] to look to interrelated teachings of [the] multiple [prior art references relied upon by the Examiner] ... in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed .... " KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). These prior art references must be read in context, taking into account "demands known to the design community," "the background knowledge possessed by a person having ordinary skill in the art," and "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) ("[A] prior art reference must be 'considered together with the knowledge of one of ordinary skill in the pertinent art."') (quoting In re Samour, 571F.2d559, 562 (CCPA 1978)). The background knowledge attributable to one of ordinary skill in the art includes what was admittedly known in the art at the time of the invention. Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is binding 3 Appeal2014-004870 Application 13/283,012 on the applicant and patentee for determinations of anticipation and obviousness."); In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (using the admitted prior art in applicant's Specification to determine the patentability of a claimed invention.); In re Fout, 675 F.2d 297, 301 (CCPA 1982) ("[i]t is not unfair or contrary to the policy of the patent system that appellants' invention be judged on obviousness against their actual contribution to the art") (footnote omitted)). As pointed out by the Examiner, Ans. 7, Appellants admit that the amount of carbon in a platable copper alloy sheet was known to be controlled to within a range of 10 to 100 ppm in order to prevent intercrystalline cracks (Spec. i-f 31 ). This amount overlaps the claimed amount of 5 to 15 ppm throughout almost 50% (i.e., 46% )2 of the claimed range. Thus, a preponderance of the evidence supports the Examiner's position that it would have been prima facie obvious to use carbon in amounts that overlap the claimed range. The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that the Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See e.g., In re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention 2 The total range encompasses 13 digits from 3 to 15 and the overlap of 10 to 15 is 6 out of 13 digits, i.e., 46.1 %. 4 Appeal2014-004870 Application 13/283,012 are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants point to the inventive and comparative examples presented in the Specification Tables 7 and 8 as providing evidence of the criticality of the claimed amount of carbon (App. Br. 14-15). However, a preponderance of the evidence supports the Examiner's position that this evidence is not commensurate in scope with the claims (e.g., Ans. 11 ). For example only, claim 1 uses the open-ended term "comprising" and thus may include other unrecited components. Furthermore, the Tables merely show a balance of all the alloy components is needed to achieve what the Appellants define as acceptable platability (e.g., Ans. 10, 11 ). As previously discussed, the admitted prior art also explicitly teaches using an amount of carbon in a copper alloy throughout much of the claimed range. On this record, Appellants have not adequately shown why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. See, e.g., In re Harris, 409 F.3d at 1344 ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978). Appellants have made no such showing on this record. The strength of the one example alloy discussed by Appellants does not demonstrate that the property would have been expected throughout the claimed ranges (id.; no responsive brief has been filed). 5 Appeal2014-004870 Application 13/283,012 We, therefore, discern no error in the Examiner's determination that the applied prior art would have rendered obvious the copper alloy sheet of claim 1 of Appellants' invention. Thus, Appellants have not persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of obviousness as to claim 1. To the extent additional arguments are also presented for claims 14-16 which recite certain process parameters that Appellants state are used to ensure that the alloy contains 3 to 15 ppm carbon, we find them unpersuasive for the reasons set out by the Examiner (App. Br. 14--16; Ans. 7, 8). Indeed, as previously discussed, Appellants have admitted that the prior art recognized advantages of controlling the carbon amount to be within a range of 10 to 100 ppm (Spec. i-f 31 ). It has been 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). In light of these circumstances, the preponderance of the evidence supports all of the Examiner's rejections. Accordingly, we sustain the rejections of the claims on appeal. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ). 6 Appeal2014-004870 Application 13/283,012 AFFIRMED 7 Copy with citationCopy as parenthetical citation