Ex Parte Caron et al

Board of Patent Appeals and Interferences

Mar 26, 2009

10657005 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD N. CARON, PETER W. ROBINSON,
DEREK E. TYLER, ANDREAS BOEGEL,
DORIS HUMPENODER-BOGEL, HANS-ACHIM KUHN,
and JOERG SEEGER
____________

Appeal 2008-6196
Application 10/657,005
Technology Center 1700
____________

Decided:1 March 26, 2009
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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2
Appellants seek review under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1-7 in the final Office Action. This Board has
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
STATEMENT OF THE CASE
The invention of the present application is directed to a copper-based
alloy having high yield strength and moderately high electrical conductivity.
Claim 1 is illustrative and reproduced below.
1. A copper based alloy consisting essentially
of, by weight:

from 0.35% to 5% titanium;

from 0.001% to 10% of X, where X is selected
from Ni, Fe, Sn, P, Al, Zn, Si, Pb, Be, Mn, Mg, Bi,
S, Te, Se, Ag, As, Sb, Zr, B, Cr and Co and
combinations thereof; and

the balance copper and inevitable impurities, said
alloy having an electrical conductivity of at least
50% IACS and a yield strength of at least 105 ksi.

The Examiner relies on the following prior art as evidence of
unpatentability.
Ogura (as translated) JP 09263864 (‘864) Oct. 7, 1997
Maki (as translated) JP 2001181759 (‘759) Jul. 3, 2001
Hirai (as translated) JP 2002038246 (‘246) Feb. 6, 2002

Appellants appeal the following rejections of pending claims 1-7:
1. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as obvious
over ‘759.
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2. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as obvious
over ‘864 or ‘246.
In the first rejection, Appellants argue independent claims 1 and 5
separately. We therefore address the claims of this rejection in two groups
comprising claims 1-4 and 5-7, each to stand or fall together, with separately
argued claims 1 and 5, respectively. 37 C.F.R. § 41.37(c)(1)(vii).
In the second rejection, Appellants separately argue only claim 5. We
therefore treat claims 5-7 as a group, to stand or fall together, with claim 5.
37 C.F.R. § 41.37(c)(1)(vii).
Appellants make similar arguments regarding the first and second
rejections. Regarding the first rejection, the Examiner finds ‘759 discloses a
Cu-based alloy having constituents in ranges overlapping claims 1 and 5,
and tensile and electrical conductivity properties (Ans. 3). The Examiner
further finds ‘759 does not disclose the tensile property as yield strength, but
these properties are about the same because of the spring property of the
material. Id. The Examiner concludes that Appellants’ claimed ranges
would have been obvious because they overlap with the ranges disclosed by
‘759 (Ans. 4).
With regard to claim 1, Appellants contend any prima facie case of
obviousness is rebutted by their showing that the claimed ranges are critical.
Appellants contend that the titanium range of 0.35-5.0% recited in claim 1
provides the composition with new and unexpected results with regard to the
claimed values of electrical conductivity and yield strength (App. Br. 4).
Appellants contend the prior art does not necessarily possess the claimed
physical properties because ‘759 does not disclose the critical claimed range
of 0.35-5.0% titanium (App. Br. 5). Appellants further contend ‘759 merely
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discloses a genus of copper alloys that may include titanium and merely
invites further experimentation to find Appellants’ claimed species of copper
alloy possessing the claimed yield strength and electrical conductivity such
that Appellants’ claimed alloy is non-obvious (App. Br. 6).
With regard to claim 5, Appellants similarly argue that ‘759 fails to
disclose a copper alloy having the claimed titanium and nickel ranges recited
in claim 5, which Appellants believes are critical to achieve the claimed
yield strength and electrical conductivity (App. Br. 6). Appellants further
argue that ‘759 merely discloses a genus of copper alloys that may include
titanium, which invites further experimentation to determine the copper
alloy species claimed by Appellants such that the claimed alloy is non-
obvious (App. Br. 7).
Appellants make similar arguments regarding the § 103 rejection over
‘246 or ‘864. Specifically, Appellants contend that ‘246 or ‘864 fails to
disclose the claimed ranges of titanium and nickel and thus, cannot
inherently possess the claimed yield strength or electrical conductivity (App.
Br. 9). Appellants moreover argue that ‘246 and ‘864 merely disclose a
genus of copper alloys containing titanium and nickel that invite further
experimentation to determine Appellants’ claimed copper alloy such that the
claimed alloy is non-obvious (App. Br. 9-10).2

2 Appellants additionally argue that the second rejection lacks motivation for
“combining the known elements of JP 2001181759 [i.e., ‘759] that would
result in the fashion claimed in the present patent application” (App. Br. 10).
This argument is not understood because ‘759 was not used in the second
rejection. In the context of this motivation argument, Appellants argue that
‘246 and ‘864 fail to mention whatsoever the titanium or nickel content
required to achieve the unexpected yield strength and electrical conductivity
(App. Br. 11). Again, we fail to see the relevancy of this argument because
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ISSUE
Have Appellants shown the Examiner reversibly erred in concluding
the claimed ranges of constituents and the claimed physical properties of
claims 1 and 5 would have been obvious over ‘759 or that claim 5 would
have been obvious over ‘246 or ‘864?
FINDINGS OF FACT (FF)
1. ‘759 discloses a copper alloy for electronic materials of
superior strength and electric conductivity, comprising 1.5-4.0% Ni, 0.3-
1.2% Si, 0.05-0.20% Mg, and 0.005-2.0% of one or more of the following
elements: Zn, Sn, Fe, Ti, Zr, Cr, Al, P, Mn, Ag or Be, the balance
comprising Cu and unavoidable impurities (claim 2; p. 7, ¶ [0009]).
2. ‘759 teaches that Ni, together with Si after the aging-hardening
treatment, result in markedly increased strength and electrical conductivity
maintained at high levels (p. 8, ¶ [0012]).
3. ‘759 teaches that Ti, Zr, Al and Mn improve the strength and
heat resistance of Cu-Ni-Si alloys, as well as improve hot rolling
characteristics (p. 12, ¶ [0020]).
4. ‘759 teaches one example of a copper alloy comprising Ni
(2.20%), Si (0.40%), Mg (0.11%) and Be (0.007%), but no Ti. (p. 14, ¶
[0023], Table 1). This alloy exhibits a tensile strength of 725 N/mm2, and
electrical conductivity of 52% IACS. (p. 16, ¶ [0027], Table 2).
5. ‘759 teaches another copper alloy comprising 2.11% Ni, 0.52%
Si, 0.06% Mg, 0.01% Ti and 0.03% Cr. (p. 14, ¶ [0023], Table 1). This

the Examiner does not combine the teachings of ‘246 and ‘864, but rather
applies them alternatively.

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alloy exhibits a tensile strength of 678 N/mm2 and 52% IACS (p. 16, ¶
[0027], Table 2).
6. ‘246 teaches a copper alloy for electrical connector parts that
may include, inter alia, by weight, 0-10% Ni, 0-1% Ti, 0-1% Mg and 0-3%
Fe (claim 3; p. 10, ¶ [0011]).
7. ‘246 discloses that the copper alloy has improved spring
characteristics and is used as an electrical conductor (¶ [0021]). In other
words, the copper alloy must have good strength and electrical
characteristics.
8. ‘864 teaches a copper alloy that may include 0.01-4.0 wt.% Ni,
0.01-1.0 wt.% Ti, 0.01-1.0 wt.% Mg and 0.01-3.0 wt.% Fe (claim 2; p.5, ¶
[0004]).
9. ‘864 teaches that Ti, Co, Fe and Ni, when added to a Cu-Si
alloy, intensify the deposition of Si and, as a result, increases wear
resistance. The preferred content of Ti is between 0.05-1.0%, for Cr is
between 0.05-1.0%, for Fe and Co is between 0.1-2.5% and for Ni is 0.3 to
4% (p. 7, ¶ [0007]).
10. ‘864 teaches one example (Example 10) of the invention has a
Ti content of 0.86%, and an electrical conductivity of 59% IACS (p. 9, ¶
[0010], Table 1). It does not disclose the yield strength or tensile strength of
this alloy.
11. ‘864 discloses that the copper alloy has superior resistance to
electric-discharge wear (¶ [0003]).
12. In the Specification, 6 alloys (J345, J346, J347, J348, J351 and
J354) are listed with their compositions, the compositions being within the
constituent ranges of claim 1 (Spec. 13, Table 1). However, only J345 (yield
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str. = 107 KSI, EC = 57.8 %IACS) clearly meets the physical and electrical
properties of claim 1. J347 (yield str. = 105 KSI, EC = 49.9 %IACS)
borders the claimed properties. The other alloys do not meet both the
claimed yield strength and electrical conductivity properties (Spec. 15, Table
3).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966),
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003). “In fact, when … the claimed ranges are completely encompassed by
the prior art, the conclusion is even more compelling than in cases of mere
overlap.” Id. at 1330. Even without complete overlap of the claimed range
and the prior art range, a minor difference shows a prima facie case of
obviousness. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “In
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general, an applicant may overcome a prima facie case of obviousness by
establishing ‘that the [claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art
range.’” Peterson, 315 F.3d at 1330 (quoting In re Geisler, 116 F.3d 1465,
1469-70).
Objective evidence of nonobviousness must be commensurate in
scope with the claims which the evidence is offered to support. The
showing of unexpected results must be reviewed to see if the results occur
over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036 (CCPA
1980).
Where the claimed and prior art products are identical or substantially
identical, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of the
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
A patent that discloses a multitude of effective compositions including
those claimed by applicant does not render any particular formulation less
obvious. Merck v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). Cf In
re Jones, 958 F.2d 347 (Fed. Cir. 1992) (The patent did not disclose
applicant’s claimed compound or even a generic compound having structural
similarity to applicant’s claim species such that applicant’s claimed species
was non-obvious). analysis
35 U.S.C. § 103 REJECTION OVER ‘759: CLAIMS 1 AND 5

The Examiner finds ‘759 teaches a copper alloy having the claimed
constituents in ranges overlapping the claimed constituents (Ans. 3; FF 1).
We agree with the Examiner’s finding which Appellants do not dispute.
Specifically, ‘759 discloses a copper based alloy composition having
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titanium and nickel amounts that overlap those recited in Appellants’ claims
1 and 5, respectively. ‘759 discloses ranges of constituents that overlap the
claimed ranges, presenting a strong prima facie case that Appellants’
claimed ranges would have been obvious. Peterson, 315 F.3d at 1330. But,
Appellants may overcome a prima facie case of obviousness by establishing
that the claimed range is critical, in that the claimed range achieves
unexpected results relative to the prior art range. Id.
Appellants contend the claimed alloy achieves unexpectedly good
yield strength and electrical conductivity due to the amount of titanium, and
titanium and nickel recited in claims 1 and 5, respectively. However, as
evidence, Appellants cite only Example 7 of ‘759 (see FF 5), involving a Cu
alloy with 0.1% Ti, which is outside the claimed titanium range. (App. Br.
5). This single data point outside the claimed range is insufficient to
establish that the claimed titanium range produces unexpectedly good results
with regard to yield strength and electrical conductivity properties. In re
Hill, 284 F.2d 955, 959 (CCPA 1960).
Moreover, Appellants have not compared the claimed copper based
alloy with ‘759, the closest prior art. ‘759 includes titanium concentrations
that overlap the claimed range. However, Appellants have not shown
unexpected results over the entire claimed range (i.e., unexpected results
must be commensurate with the claimed invention) as required. In fact,
Appellants have not even provided evidence of a comparison of the
overlapping titanium concentration values (i.e., 0.35-2.0%) of ‘759 with the
claimed copper-based alloy values in an attempt to establish unexpected
results over the overlapping range. Accordingly, we are unpersuaded by
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Appellants’ evidence and arguments regarding criticality of the claimed
titanium concentration.
With regard to claim 1, Appellants also contend that the prior art does
not necessarily possess the characteristics of the claimed alloy, citing In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). However, Appellants’ only reason
that the prior art does not necessarily possess the characteristic is that ‘759
does not explicitly disclose the characteristic (App. Br. 5), which is
insufficient to establish that the claimed properties are not inherently in the
claimed composition. Under Best, once the Examiner has shown the prior
art and the claimed alloys reasonably appear to be the same or substantially
the same, the characteristics can be presumed to be possessed by the prior
art, and Appellants have the burden of putting forth affirmative evidence that
the prior art alloy does not inherently possess the claimed characteristics
Best, 562 F.2d at 1255.3
With regard to claims 1 and 5, Appellants also argue that the ‘759
reference is merely an invitation to further experiment to find the species
from a broad genus, citing Metabolite Labs, Inc. v. Lab. Corp. of Am.
Holdings, 370 F.3d 1354 (Fed. Cir. 2004). (App. Br. 6). However, the
present application is distinguishable from Metabolite Labs on its facts. In

3 We note that Appellants argue that alloys with similar compositions do not
necessarily have the same properties because the properties depend on the
method used to form the alloy (Reply Br. 3). Appellants cite to their
Specification as showing that alloys with compositions within the claimed
ranges do not necessarily have the claimed properties (Reply Br. 3).
However, Appellants have not made the requisite showing that ‘759’s alloy
compositions do not inherently possess the claimed yield strength and
electrical conductivity properties. Moreover, Appellants’ claims are directed
to a composition or product, not a method or product-by-process claim,
which would require consideration of the method used to form the product.
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Metabolite Labs, the patent at issue claimed a method of detecting a
deficiency of cobalamin or folate in a human patient by correlating with an
elevated level of total homocysteine in the bodily fluids. The prior art
(Refsum) disclosed that homocysteine should be used to investigate
“perturbations of homocysteine metabolism in humans during disease or
pharmacological interventions that affect metabolism of one-carbon
compounds.” Id. at 1367. However, Refsum did not specifically mention
cobalamin or folate deficiencies as being associated with homocysteine
levels. The Court held that Refsum merely invited further experimentation
to find the claimed cobalamin or folate associations. Id.
In contrast, ‘759 does not merely invite further experimentation to
discover a species because it explicitly discloses the claimed alloy
constituents, including the titanium and nickel concentrations that overlap
the claimed titanium and nickel concentrations, and the desirable properties
obtainable from incorporating the constituents in disclosed amounts that
overlap the amounts claimed by Appellants (FF 1,3). In other words, though
‘759 discloses a multitude of compositions, it does not render any particular
composition less obvious. Merck, 874 F.2d at 807.
After giving full consideration of Appellants’ evidence and
arguments, we determine they have not rebutted the Examiner’s prima facie
case of obviousness of claim 1 or 5 over ‘759. We sustain the § 103
rejection over ‘759.

35 U.S.C. § 103 REJECTION OVER ‘246 AND ‘864: CLAIM 5
‘864 and ‘246 disclose copper alloys having constituents overlapping
the ranges of those in claim 5 (FF 6, 8), such that Appellants’ claimed
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composition would have been obvious. Peterson, 315 F.3d at 1330. In
traversing the rejection, Appellants argue they “believe” that the claimed
ranges of titanium and nickel are critical to achieve the unexpectedly good
yield strength and electrical conductivity (App. Br. 8). In support of this
argument, Appellants refer to one alloy disclosed in their Specification (FF
10), having a yield strength of 105 KSI and an electrical conductivity of
49.9% IACS. But, as before, Appellants’ belief does not constitute
evidence. Instead, the extent of their evidence in the one datum of the J347
alloy of Example 8 is not commensurate in scope with the claimed titanium
and nickel ranges. Clemens, 622 F.2d at 1036.
Appellants also argue that ‘864 and ‘246 do not necessarily possess
the characteristics of the “improved combination of yield strength and
electrical conductivity (such as a yield strength of 105 KSI and a
conductivity of at least 50% IACS)” (App. Br. 9). But, with respect to claim
5, this argument is immaterial, as the claim does not recite any particular
numerical values for the yield strength or electrical conductivity property.
Moreover, ‘246 and ‘864 both disclose that the copper alloys have
good strength or wear, and electrical properties for use as electrical
connectors such that there is a reasonable basis to believe that an alloy with
a similar composition would possess the same improved strength and
electrical properties. Accordingly, Appellants have the burden of showing
that the copper alloys of ‘246 or ‘864 do not possess the claimed properties.
Best, 562 F.2d at 1255. Appellants’ mere statement that ‘246 and ‘864 do
not disclose the specifically claimed range of titanium or nickel does not
satisfy their burden. In fact, Appellants have not even addressed the
overlapping portion of the disputed titanium and nickel ranges.
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We are unpersuaded by Appellants’ argument that ‘246 and ‘864
disclose too many combinations of elements such that Appellants’ claims to
the particular ranges of titanium and nickel are non-obvious (App. Br. 9-10).
As noted above, the fact that a multitude of composition formulations are
disclosed does not render any one of them less obvious. Merck, 874 F.2d at
807. This proposition applies especially where, as here, ‘246 and ‘864 do
not merely invite further experimentation to discover a species but, rather,
explicitly disclose the claimed alloy constituents, including titanium and
nickel concentrations that overlap the disputed titanium and nickel
concentrations (FF 6-11). Moreover, ‘864 discloses the desirable properties
obtainable by incorporating the constituents in disclosed amounts that
overlap the amounts claimed by Appellants (FF 9).
In consideration of the evidence and arguments, we determine
Appellants have not refuted the Examiner’s prima facie case. Accordingly,
we sustain the § 103 rejection of claim 5 and the represented claims over
‘246 or ‘864.
DECISION
The first rejection of claims 1-7 under 35 U.S.C. § 103(a) over ‘759 is
affirmed.
The second rejection of claims 5-7 under 35 U.S.C. § 103(a) over
‘864 or ‘246 is affirmed.

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TIME PERIOD FOR RESPONSE
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).

AFFIRMED

PL initial:
sld

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