Ex Parte BOILEAU et al

Patent Trial and Appeal Board

May 14, 2018

14697932 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/697,932 04/28/2015
28395 7590 05/16/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
James Maurice BOILEAU
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.
83515001 3348
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
05/16/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MAURICE BOILEAU, JANICE LISA TARDIFF,
and MATTHEW JOHN ZALUZEC 1
Appeal2017-005885
Application 14/697,932
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY B. ROBERTSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections under 35 U.S.C. § 103 of claims 1--4, 7, and 10 as unpatentable
over McCane (US 6,592,947 Bl; July 15, 2003) in view of Butler, Jr. (US
200510000609 Al; Jan. 6, 2005 ("Butler")) and of claim 5 as unpatentable
over these references in combination with Holroyd (US 4,943,492; July 24,
1990). We have jurisdiction under 35 U.S.C. § 6.
1 Ford Global Technologies, LLC is identified as the real party in interest
(App. Br. 2).
Appeal2017-005885
Application 14/697 ,932
We AFFIRM.
Appellants claim a corrosion-resistant assembly comprising a first
6XXX series aluminum alloy component 14 joined to a second 5XXX or
7XXX series aluminum alloy component 12, a joint interface 19 between the
first and second components, and a corrosion protection layer 16 covering at
least a portion of the joint interface, the corrosion protection layer including
at least 99.0 wt.% aluminum (sole independent claim 1; Fig. 8).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A corrosion-resistant assembly, comprising:
a first 6XXX series aluminum alloy component joined to
a second 5XXX or 7XXX series aluminum alloy component;
a joint interface between the first and second
components; and
a corrosion protection layer covering at least a portion of
the joint interface, the corrosion protection layer including at
least 99 .0 wt.% aluminum.
Appellants do not present separate arguments specifically directed to
dependent claims 2, 3, and 7 (see App. Br. 3---6). Accordingly, these claims
will stand or fall with their parent independent claim 1.
We will sustain the Examiner's§ 103 rejections for the reasons given
in the Final Office Action, the Answer, and below.
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Application 14/697 ,932
In rejecting claim 1, the Examiner finds that McCane discloses
enhancing the corrosion resistance of metal components via protective metal
coatings such as ferrous components via protective zinc coatings or
aluminum alloy components via protective high-purity aluminum coatings
wherein the protected components are used, for example, in automobile
assemblies (Final Action 2--4 (citing, e.g., McCane, col. 4, 11. 26--43, col. 5,
11. 27-30, 34--35)). The Examiner also finds that McCane discloses
providing a joint interface between inner and outer automobile panels or
components with a zinc sealing layer to augment corrosion resistance (id. at
3--4 (citing, e.g., McCane, col. 5, 11. 56-59)). In addition, the Examiner finds
that McCane fails to disclose explicitly an assembly of the particular
aluminum alloy components required by claim 1 and concomitantly the
claim 1 requirement wherein the joint interface between such components is
provided with a corrosion protection layer of at least 99.0 wt.% aluminum
(id. at 4 ). Concerning this deficiency, the Examiner finds that Butler teaches
using 6XXX series aluminum alloy for outer automobile panels and 5XXX
series aluminum alloy for inner automobile panels (id. at 5 (citing Butler i-f
3)).
In light of these findings, the Examiner concludes that it would have
been obvious to use 6XXX series aluminum alloy as McCane's outer (i.e.,
first) automobile panel/component and 5XXX series aluminum alloy as
McCane's inner (i.e., second) automobile panel/component, in view of
Butler (id.), and to provide the joint interface between these aluminum alloy
components with a corrosion protection layer of at least 99.0 wt.%
aluminum in light of McCane' s previously mentioned disclosure of
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Application 14/697 ,932
providing an aluminum alloy with high-purity aluminum for purposes of
developing a surface which is less corrosion prone (id. at 4--5).
Appellants argue that McCane' s column 5 disclosure of a zinc sealing
layer is an alternative embodiment and that the column 4 disclosure
regarding high-purity aluminum does not apply to this sealing layer (App.
Br. 3; Reply Br. 2-3). Appellants further argue that "[o]ne of ordinary skill
in the art would not modify McCane based on the teachings of Butler" (App.
Br. 4).
Appellants do not embellish this last mentioned argument with any
reasons why the Examiner erred in concluding that an artisan would have
been motivated to combine McCane and Butler as proposed in order to
obtain the predictable result of using known aluminum alloys for their
established functions as outer and inner automobile panels/components. See
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (In assessing the
obviousness of a claim to a combination of prior art elements, the question
to be asked is "whether the improvement is more than the predictable use of
prior art elements according to their established functions.").
Likewise, there is no embellishment of or convincing merit in the
above argument that McCane's high-purity aluminum disclosure in column
4 is not applicable to the sealing layer disclosure in column 5. That is,
Appellants do not explain why McCane's column 5 disclosure of a sealing
layer for augmenting corrosion resistance at an interface would not have
suggested augmenting corrosion resistance at the aluminum-alloys interface
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Application 14/697 ,932
of the McCane/Butler combination via a sealing layer of high-purity
aluminum in view of McCane's column 4 teaching that applying high-purity
aluminum to an aluminum alloy results in a less corrosion prone surface.
The record reflects that providing such an aluminum-alloys interface with a
layer of high-purity aluminum is nothing more than the predictable use of
high-purity aluminum according to its established function of developing a
less corrosion prone surface on an aluminum alloy. See again KSR, 550
U.S. at 417.
Appellants also complain that neither McCane nor Butler discloses the
problem solved by the claimed invention concerning galvanic corrosion at a
joint interface between different aluminum alloys (App. Br. 4).
For a number of reasons, Appellants' complaint does not show
reversible error in the rejection of claim 1. First, Appellants do not identify
any Specification disclosure supporting their contention that the problem
solved by the claimed invention relates to galvanic corrosion. Second, while
the Specification discloses "[ w ]hen dissimilar metals are in electrical contact
and in the presence of an electrolyte, galvanic corrosion may occur" (Spec. i-f
23 (emphasis added)), this disclosure merely indicates that galvanic
corrosion is a possibility and accordingly does not support the proposition
that galvanic corrosion is the problem solved by the claimed invention.
Third, Appellants fail to explain why claim 1 should be considered as
limited to an assembly resistant to galvanic corrosion specifically or why
such galvanic-corrosion resistance would structurally distinguish the claimed
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Application 14/697 ,932
assembly from the assembly proposed in the Examiner's obviousness
conclusions.
Based on the record before us, the reference evidence adduced by the
Examiner establishes a prima facie case of obviousness for the subject
matter of claim 1 for the reasons expressed above and given by the
Examiner.
Appellants' comments regarding dependent claims 4 and 10 (App. Br.
5) are little more than reiterations of their unsuccessful arguments directed to
parent claim 1. As a consequence, Appellants fail to show reversible error in
the rejection of these claims.
As for the thicknesses of the corrosion protection layer recited in
dependent claim 5, the Examiner concludes that it would have been obvious
"to have utilized the thickness values taught in Holroyd as the thickness of
the corrosion protection layer of McCane in view of Butler" because
"Holroyd ... shows that it is known in the [prior] art that an aluminum
composition having the claimed 99 .0% or greater aluminum provides
corrosion protection when the thickness is in a range of 0.1 to 1.0 mm"
(Final Action 7).
Appellants contest the rejection of claim 5 by stating that "Holroyd is
directed to covering a weld bead between aluminum components with a
surface layer, whereas McCane is directed to a hem flange between two steel
components" and arguing that "[ o ]ne o [ f] ordinary skill would therefore not
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Application 14/697 ,932
be motivated to modify McCane based on the disclosure of Holroyd" (App.
Br. 6).
Appellants' argument lacks persuasive merit for the reasons detailed
by the Examiner (Ans. 15-16). Moreover, we emphasize that the argument
attacks McCane and Holroyd individually and that "[ n ]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Under the circumstances recounted above, we sustain the § 103
rejections of claims 1--4, 7, and 10 over McCane in view of Butler and of
claim 5 over these references in combination with Holroyd.
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 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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