Ex Parte Clark

Patent Trial and Appeal Board

Jun 19, 2017

13495250 (P.T.A.B. Jun. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/495,250 06/13/2012 Darin Clark CC-5630(A0552US2) 5470
23377 7590 06/21/2017
BAKER & HOSTETLER LLP
CIRA CENTRE 12TH FLOOR
2929 ARCH STREET
PHILADELPHIA, PA 19104-2891
EXAMINER
TOLAN, EDWARD THOMAS
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARIN CLARK
Appeal 2015-007548
Application 13/495,250
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darin Clark (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-007548
Application 13/495,250
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, reproduced below, is illustrative
of the claimed subject matter:
1. A method of forming a high strength can end in
commercial quantities, comprising the steps of:
a. positioning from a coil a sheet of an aluminum alloy
having between 3.0% and 4.5% magnesium;
b. forming high strength beverage end shells from the
aluminum alloy coil in a shell press operating at least at 180
strokes per minute;
c. producing at least 4140 shells per minute;
whereby, when the seamed can ends are fully aged, the
aged ends satisfy a burst pressure specification of a minimum of
at least 80 psi and an average of at least 90 psi.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stodd US 5,491,995 Feb. 20, 1996
Brifcani US 6,065,634 May 23, 2000
Zonker US 6,761,280 B2 July 13, 2004
Fields WO 98/34743 Aug. 13, 1998
REJECTIONS
I. Claims 1—7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Brifcani, Zonker, and Stodd.
II. Claims 8—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brifcani, Zonker, Stodd, and Fields.
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Appeal 2015-007548
Application 13/495,250
ISSUE
The issue presented by this Appeal is whether Brifcani suggests “an
aluminum alloy having between 3.0% and 4.5% magnesium” as required by
claim 1, and by claims 2—15 based on their dependency from claim 1.
ANALYSIS
When claimed ranges overlap or lie inside ranges disclosed by the
prior art, a prima facie case of obviousness is established. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d
1465, 1469-70 (Fed. Cir. 1997). Such overlap itself provides sufficient
motivation to optimize the ranges. See Peterson, 315 F.3d at 1330 (“The
normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
set of. . . ranges is the optimum combination . . . .”).
The Examiner finds that “Brifcani discloses aluminum alloy 5182
which has 4.5% magnesium.” Final Act. 2. The Examiner notes that “5182
aluminum alloy is generally known to have about 4.5% magnesium, 0.35%
manganese and about 95.2% aluminum.” Id. The Examiner explains that
“Applicant’s range of Mg in [0034] (3.0-4.5) is an overlapping range of A1
5182 (4.0-5.0)” and therefor renders the claimed range obvious. Id.
(quoting MPEP § 2144.05).
The Examiner is correct. Because the prior art disclosed values
overlapping the claimed ranges, the “general conditions” of the claim are
disclosed. See In reAller, 220 F.2d 454, 456 (CCPA 1955); see also In re
Boesch, 617 F.2d 272, 276 (CCPA 1980).
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Appeal 2015-007548
Application 13/495,250
Despite admitting that Brifcani discloses an overlapping range,
Appellant contends that:
Even though the specification for 5182 alloy discloses a
magnesium content range (4 to 5%) that overlaps the claimed
magnesium content range (“between 3.0% and 4.5%”), it was
common knowledge in the beverage can industry to specify and
use 5182 alloy that had a magnesium content in the upper half
the specification’s range — that is, greater than 4.5%.
Appeal Br. 3 (emphasis added); see also Reply Br. 2. In support of this
contention, Appellant directs our attention to the Declaration (Dec.) of the
inventor, Darin Clark, dated March 6, 2014. Id. at 5.
In the Declaration Mr. Clark states that:
At the time that the invention disclosed in the 250
application was made, one of skill in the art would not have
sought to use an aluminum alloy with less than 4.5% magnesium.
It was known in the art that using aluminum alloy with a
magnesium level of less than 4.5% would result in a beverage
can end that was not strong enough and would likely leak at
lower pressures relative to beverage can ends made from
aluminum alloys with at least 4.5% magnesium.
Dec. 2. However, Mr. Clark provides no objective evidence in support of
this statement. Moreover, Mr. Clark’s Declaration appears to be little more
than a reiteration of Appellant’s arguments in declaration form. Compare
Appeal Br. 3^4 to Dec. 1—2. Moreover, an attorney’s arguments in a brief
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
The Board has broad discretion as to the weight to give to declarations
offered in the course of prosecution. See Velander v. Gamer, 348 F.3d
1359, 1371 (Fed. Cir. 2003) (“[A]ccord[ing] little weight to broad
conclusory statements [in expert testimony before the Board] that it
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Appeal 2015-007548
Application 13/495,250
determined were unsupported by corroborating references [was] within the
discretion of the trier of fact to give each item of evidence such weight as it
feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Opinion testimony rendered by
experts must be given consideration, and while not controlling, generally is
entitled to some weight. Lack of factual support for expert opinion going to
factual determinations, however, may render the testimony of little probative
value in a validity determination.” (citations omitted)). Although there is
“no reason why opinion evidence relating to a fact issue should not be
considered by an examiner,” In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir.
1996), the Board is entitled to weigh the declarations and conclude that the
lack of factual corroboration warrants discounting the opinions expressed in
the declarations, see Velander, 348 F.3d at 1371; Ashland Oil, 116 F.2d at
294.
The lack of supporting evidence in this case causes us to attribute little
weight to this Declaration. Also, the fact that the Declarant is the named
inventor makes his Declaration self-serving and diminishes credibility.
Moreover, we note that Brifcani discloses use of the 5182 aluminum alloy in
conjunction with a layer of polyester film. Brifcani 3:44-47. Brifcani
further states that “[t]his polyester/aluminum alloy laminate permitted
manufacture of a can end with a narrow, and therefore strong reinforcing
bead in the cheaper [i.e. having less magnesium] aluminum manganese
alloy.” Id. at 46-48. Thus, one skilled in the art would understand
Brifcani’s disclosure to pertain to the entire range of magnesium percentages
encompassed by 5182 aluminum alloy and not just the top 4.5—5% as argued
by Appellant.
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Appeal 2015-007548
Application 13/495,250
Weighing the evidence of nonobviousness against the evidence of
obviousness, we find that the evidence of obviousness outweighs the
evidence of obviousness for the reasons discussed supra. Accordingly,
Appellant does not apprise us of error in the Examiner’s determination that
Brifcani renders the claimed range obvious.
DECISION
The Examiner’s rejections of claims 1—15 are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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