Ex parte Bryant et al.

Board of Patent Appeals and Interferences

Mar 9, 1999

08308205 (B.P.A.I. Mar. 9, 1999)

Application for patent filed September 19, 1994. 1
According to the appellants, the application is a continuation
of Application No. 07/888,287, filed May 26, 1992, now
abandoned; which is a continuation of Application No.
07/698,391, filed
May 10, 1991, now abandoned.
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journal and (2) is not binding precedent of the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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TIMOTHY F. BRYANT, SIMON B. DODD, STEPHEN M.
FLITCROFT, WILLIAM S. MILLER, ROGER MORETON and CHRISTOPHER J.
PEEL
____________
Appeal No. 96-2060
Application No. 08/308,2051
____________
ON BRIEF
____________
Before CAROFF, ELLIS and WALTZ, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2060
Application No. 08/308,205
2
This is a decision on appeal from the final rejection of
claims 10 and 13-18, all of the claims now pending in the
involved application.
The claims on appeal relate to a process for treating a
composite comprising an aluminum alloy matrix and a
particulate ceramic reinforcement material.
Appellants acknowledge in their Brief that the subject
claims stand or fall together for purposes of determining
their patentability. Accordingly, we will limit our
consideration to claim 10, the sole independent claim, which
reads as follows:
10. A treatment process for a composite comprising a
matrix of a precipitation hardenable aluminum alloy and a
particulate ceramic reinforcement, said process comprising the
steps of:
providing a composite prepared by hot pressing a blended
powder of said precipitation hardenable aluminum alloy and
said particulate ceramic reinforcement;
subjecting said composite to an intermediate thermo-
mechanical treatment step to produce a treated composite;
subjecting said treated composite to a controlled heating
step in which the temperature of said treated composite is
raised from ambient temperature to a temperature of from 250
to 450°C at a rate of temperature increase of from 3 to 100°C
per hour from ambient temperature to 450°C to produce a
temperature treated composite; and
Appeal No. 96-2060
Application No. 08/308,205
3
subjecting said temperature treated composite to a final
thermo-mechanical treatment step which includes a solution
treatment step.
The examiner relies upon the following prior art
reference (combined with acknowledged prior art in appellants’
specification) as evidence of obviousness:
Appeal No. 96-2060
Application No. 08/308,205
4
Rioja et al. (Rioja) 5,066,342 Nov. 19,
1991
(application filing date: June 19,
1989)
All of the claims on appeal stand rejected under 35
U.S.C.
§ 103 as being unpatentable over acknowledged prior art on
page 1, lines 12-18, of the instant specification in view of
Rioja.
Based upon the record before us, we agree with appellants
for the reasons stated in their Appeal Brief that the examiner
has failed to present a prima facie case of obviousness.
Accordingly, we are compelled to reverse the rejection at
issue.
There appears to be no dispute that the “intermediate
thermo-mechanical treatment step” and the “final thermo-
mechanical treatment step” of the instant claims are
conventional operations in the art of treating aluminum alloy
matrix composites (instant specification: page 1, lines 3-20;
page 2, lines 18-21 and lines 32-34; page 3, line 10).
However, as indicated in appellants’ Appeal Brief, there
appears to be nothing in the prior art relied upon by the
Appeal No. 96-2060
Application No. 08/308,205
5
examiner which would provide a person of ordinary skill in
this art with the requisite motivation to limit the rate of
temperature rise to a relatively slow 3° - 100°C./hour from
ambient temperature upward, subsequent to the intermediate
thermo-mechanical treatment step. Rioja teaches limiting the
heating rate only after the temperature has reached an
elevated temperature of 750°F to 800°F.
Simply put, the examiner has not met his burden of
explaining why one of ordinary skill in the art would have
found it obvious, within the context of 35 U.S.C. § 103, to
limit the heating rate from ambient temperature onwards.
Merely stating that a claimed feature would have been obvious
without adequate explanation or factual support is
insufficient to establish a prima facie case of obviousness.
See In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271 (CCPA
1966).
Because we reverse on the basis of failure to establish a
prima facie case of obviousness, we need not reach the issue
of the sufficiency of appellants’ showing of unexpected
results in the declaration of Dr. Flitcroft, as referred to in
Appeal No. 96-2060
Application No. 08/308,205
6
the Brief and in the examiner’s Answer. See In re Geiger, 815
F.2d 686, 688,
2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
Appeal No. 96-2060
Application No. 08/308,205
7
For the foregoing reasons, the decision of the examiner
is reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOAN ELLIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 96-2060
Application No. 08/308,205
8
Nixon and Vanderhye
1100 North Glebe Road
8th Floor
Arlington, VA 22201-4714
JENINE GILLIS
Appeal No. 96-2060
Serial No. 08/308,204
Judge CAROFF
Judge WALTZ
Judge ELLIS
Received: 03/03/99
Typed: 03/03/99
Rev. 03/04/99
DECISION: REVERSED

Send Reference(s)
or Translation(s): Yes No
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1308
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed:
Updated Monthly Disk (FOIA): ____
Updated Monthly Report: ___
Appeal No. 96-2060
Application No. 08/308,205
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