Ex parte Bartges et al.

Board of Patent Appeals and Interferences

Sep 30, 1999

08287915 (B.P.A.I. Sep. 30, 1999)

Application for patent filed August 9, 1994. According1
to appellants, this application is a continuation-in-part of
Application No. 08/034,090, filed March 22, 1993, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES W. BARTGES, GERALD D. SCOTT,
THOMAS J. KLEMP, M. ELISE HYLAND, JAMES A. BROCK,
and COLLEEN SPILLARD
__________
Appeal No. 1996-4176
Application 08/287,9151
__________
ON BRIEF
__________
Before WARREN, OWENS, and LIEBERMAN, Administrative Patent
Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1996-4176
Application No. 08/287,915
2
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 31 and 33 through
37 which are all of the claims remaining in the application.
THE INVENTION
Appellants’ invention is directed to a lead-free aluminum
alloy, products prepared therefrom, and a method for
manufacturing the alloy products. The alloy consists
essentially of aluminum, copper, bismuth and tin in specific
quantities. Iron, silicon and zinc may be optionally present
in limited quantities.
THE CLAIMS
Claims 1 and 8 are illustrative of appellants’ invention
and are reproduced below.
1. A substantially lead-free 2000 Series aluminum alloy
consisting essentially of: about 4-5.75 wt.% copper, about
0.2-0.9 wt.% bismuth, about 0.12-1.0 wt.% tin, the ratio of
bismuth to tin ranging from 0.8:1 to 5:1, up to about 0.7 wt.%
iron, up to about 0.4 wt.% silicon, up to about 0.3 wt.% zinc,
the balance essentially aluminum with incidental elements and
impurities.
8. A substantially lead-free, cadmium-free and thallium-
free, aluminum-based alloy having good combinations of tool
wear and tool life properties, said alloy consisting
essentially of about 4-5.75 wt.% copper, about 0.2-0.9 wt.%
bismuth, about 0.12-1.0 wt.% tin, the ratio of bismuth to tin
ranging from 0.8:1 to 5:1, up to about 0.7 wt.% iron, up to
about 0.4 wt.% silicon and up to about 0.3 wt.% zinc.
Appeal No. 1996-4176
Application No. 08/287,915
We refer in our decision to the translation of Japan2
(‘044) translated by the Ralph McElroy Translation Company for
the United States Patent and Trademark Office in October 1996.
3
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the
following references.2
Kempf et al. (Kempf) 2,076,568 Apr. 13, 1937
Japan Patent 62-74044 Apr. 4, 1987
(Japan ‘044)
THE REJECTIONS
Claims 1 through 31, and 33 through 37 stand rejected
under 35 U.S.C. § 103 as unpatentable over the admitted prior
art in view of Kempf.
Claims 8 through 12 and 33 through 37 stand rejected
under 35 U.S.C. § 103 as unpatentable over Japan (‘044).
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner. We agree with
appellants that the aforementioned rejection over the admitted
prior art in view of Kempf is not well founded. Accordingly,
Appeal No. 1996-4176
Application No. 08/287,915
4
we will not sustain that rejection. We agree with the
examiner that the rejection over Japan(‘044) is well founded.
Accordingly, we will sustain
the examiner's rejection over Japan(‘044) for essentially
those reasons expressed in the Answer, and we add the
following primarily for emphasis.
The § 103 Rejection Over The Admitted Prior Art In View Of
Kempf
“[T]he examiner bears the initial burden, on review of
the prior art or on any other ground, of presenting a prima
facie case of unpatentability.” See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The
examiner relies upon a combination of the admitted state of
the prior art and Kempf to teach the claimed subject matter of
appellants.
Both the admitted prior art and Kempf disclose an
aluminum alloy. The admitted prior art directed to the “2011"
aluminum alloy discloses an alloy containing aluminum, about
5-6 wt.% Cu, up to about 0.3 wt.% Zn, up to about 0.7 wt.% Fe,
up to about 0.4 wt.% Si, about 0.2-0.6 wt.% Bi and about 0.2-
0.6 wt.% Pb. See Specification, page 2. The alloy differs
Appeal No. 1996-4176
Application No. 08/287,915
5
from the claimed subject matter in the absence of tin. It
further differs from the claimed subject matter in the
presence of lead as set forth supra.
The examiner relies upon the teaching of Kempf for both
the omission of the lead component and the presence of tin.
Kempf discloses that aluminum alloys may be machined when two
or more of the elements, lead, tin, thallium, cadmium or
bismuth are present in the aluminum alloy. See column 2,
lines 9-12. The examiner further relies upon the disclosure
of Kempf at page 1, column 2, line 54 through, page 2, column
1, line 5, that,
[T]he total amount of free machining elements should
not be less than about 0.05 per cent since below
this amount there is scarcely any advantageous
effect. We have determined that a maximum limit of
about 6 per cent total of two or more of the free
machining elements is sufficient for satisfactory
commercial results...
It is the examiner’s position that inasmuch as Kempf
discloses the combination of two or more of the “free
machining” elements selected from the group composed of lead,
tin, thallium, cadmium and bismuth, it would have been obvious
to the person having ordinary skill in the art to omit the
presence of lead and include the presence of tin. See Answer,
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Application No. 08/287,915
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page 5. It is further reasoned by the examiner that since
Kempf discloses that the five machining elements may be used
in amounts overlapping the alloy ranges of the claimed subject
matter, the claimed subject matter is thereby rendered obvious
to the person having ordinary skill in the art. Accordingly,
the examiner submits that the teachings of the admitted prior
art in view of Kempf are sufficient to establish a prima facie
case of obviousness. We disagree.
The examiner has presented no rationale as to why one
having knowledge of the admitted prior art and Kempf would
choose to include tin and exclude lead. Nor has any rationale
been proposed why the inclusion of tin should be within the
narrow range set forth by appellants in the claimed subject
matter. See In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95
(CCPA 1972). Furthermore, the examiner must show
reasons that the skilled artisan, confronted with the same
problem as the inventor and with no knowledge of the claimed
invention, would select the elements from the cited prior art
references for combination in the manner claimed. We
determine that there is no reason, suggestion, or motivation
to combine the references in the manner proposed by the
Appeal No. 1996-4176
Application No. 08/287,915
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examiner. Accordingly, the examiner has not established a
prima facie case of obviousness. See In re Rouffet, 149 F.3d
1350, 1357-1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
The § 103 Rejection Over Japan (‘044)
As an initial matter, appellants submit that the claims
do not stand or fall together. Appellants’ argument on behalf
of separate consideration of each claim is limited to a
statement that separate arguments for patentability exists
with respect to four groups of claims. See Brief, pages 3-4.
The subsequent portion of the Brief, directed to the rejection
of claims 8 through 12 and 33 through 37 over Japan (‘044),
does not contain any reasons why appellants consider the
rejected claims to be separately patentable. See Brief, page
6. Based on the above considerations, we shall treat the
claims of the above rejection as standing or falling together.
We select claim 8 as representative of appellants’ invention
and limit out consideration to said claim. See 37 CFR § 1.192
(c)(7)(1995).
Appellants argue that the term “consisting essentially
of” in claim 8 excludes the presence of magnesium which is an
indispensable component of the aluminum alloy disclosed in
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Application No. 08/287,915
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Japan(‘044). Magnesium must be present in an amount of 0.2-
0.8% by weight. See Brief, page 6.
It is well settled that the term “consisting essentially
of” includes not only what is specifically recited in
appellants’ claim, but also any other materials which do not
materially affect the basic and novel characteristics of the
claimed composition. See PPG Indus., Inc. v. Guardian Indus.
Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-1354 (Fed.
Cir. 1998); In re Herz, 537 F.2d 549, 551-552, 190 USPQ 461,
463 (CCPA 1976); In re De Lajarte, 337 F.2d 870, 873-874, 143
USPQ 256, 258 (CCPA 1964); In re Janakirama-Rao, 317 F.2d 951,
954, 137 USPQ 893, 896 (CCPA 1963).
We find in appellants’ specification that the basic and
novel characteristics of the alloy are defined as
substantially free of lead, cadmium and thallium. See
specification, page 4 and 5. In contrast, we find that
Japan(‘044) discloses on page 4, last paragraph through page
5, line 12, an alloy composed of 3.0-6.8 wt% Cu, 0.05-1.0 wt%
Sn, 0.20-0.80 wt% Mg and the balance consisting essentially
of aluminum. Other components may be present including Bi in
amounts of 0.1-0.8%. We further find that any additional
Appeal No. 1996-4176
Application No. 08/287,915
9
component contemplated either is optionally present or may be
present in amounts less than that defined by appellants as
“substantially free.” See Specification, page 5.
The issue before us is whether the claimed subject
matter would have conveyed to one having ordinary skill in the
art that magnesium was excluded by the language “consisting
essentially of.” We conclude that it was not. Our conclusion
results from interpretation of the claimed subject matter and
supporting language in the specification supra. During patent
prosecution, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the
claim language is to be read in view of the specification as
it would be interpreted by one of ordinary skill in the art.
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983); In re Okuzawa, 537 F.2d 545, 548, 190
USPQ 464, 466 (CCPA 1976).
Our construction of the claimed subject matter is based
upon our findings that appellants expressly excluded those
components regarded as materially affecting the composition by
inserting the language, “lead-free, cadmium-free and thallium-
Appeal No. 1996-4176
Application No. 08/287,915
10
free.” If appellants had intended to exclude magnesium, they
would have inserted the language “magnesium-free.” As that
language is absent from both the specification and claimed
subject matter, we conclude that the language “consisting
essentially of” does not exclude the presence of magnesium.
Based upon the above considerations and findings, we conclude
that the examiner has established a prima facie case of
obviousness against each of the claims rejected over
Japan(‘044).
DECISION
The rejection of claims 1 through 31, and 33 through 37
under 35 U.S.C. § 103 as unpatentable over the admitted prior
art in view of Kempf is reversed.
The rejection of claims 8 through 12 and 33 through 37
under 35 U.S.C. § 103 as unpatentable over Japan (‘044) is
affirmed.
The decision of the examiner is Affirmed-in-Part.
Appeal No. 1996-4176
Application No. 08/287,915
11
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
Charles F. Warren )
Administrative Patent Judge )
)
)
)
Terry J. Owens ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Paul Lieberman )
Administrative Patent Judge )
tdc
Appeal No. 1996-4176
Application No. 08/287,915
12
Gary P. Topolosky
Aluminum Company of America
Alcoa Technical Center
100 Technical Drive
Alcoa Center, PA 15069-0001