Ex Parte Eccles

Board of Patent Appeals and Interferences

Sep 27, 2002

08637802 (B.P.A.I. Sep. 27, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTHONY P. ECCLES
____________
Appeal No. 2001-2449
Application No. 08/637,802
____________
ON BRIEF
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Before PAK, WALTZ, and KRATZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 4, 6 through 15 and 17 through 23,
which are the only claims remaining in this application. We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to silver
copper alloy compositions exhibiting superior fire scale
resistance, improved work hardenability, increased cast hardening
and an expanded fluidity range (Brief, page 2). Appellant states
that the claims do not stand or fall together (Brief, page 3) but
Appeal No. 2001-2449
Application No. 08/637,802
2
fails to provide specific, substantive reasons for the separate
patentability of any claims except claims 1 and 7 (Brief, page 6;
Answer, page 2, ¶(7)). Accordingly, we limit our consideration to
claims 1 and 7 on appeal. We note that the mere reiteration of the
limitations of a dependent claim is not a substantive reason for
the separate patentability thereof (e.g., see the Brief, page 11).
See 37 CFR § 1.192(c)(7)(8)(1997). Illustrative independent claim
1 is reproduced below:
1. Fire scale resistant, work hardenable jewelry silver alloy
compositions comprising:
0.5-5.5% by weight copper;
0.07-6% by weight of a mixture of zinc and silicon, wherein
said silicon is present in the range of 0.02 to 2.0% by weight;
0.01-2.5% by weight germanium; and
at least 86% by weight silver.
The examiner has relied upon the following references as
evidence of obviousness:
Bernhard et al. (Bernhard) 5,039,479 Aug. 13, 1991
Rateau et al. (Rateau) 2 255 348 A Nov. 4, 1992
(published UK Patent Application)
The claims on appeal stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bernhard in view of Rateau (Answer, page 5).
Appeal No. 2001-2449
Application No. 08/637,802
3
We affirm this ground of rejection essentially for the reasons well
stated by the examiner in the Answer and the reasons set forth
below.
OPINION
The examiner finds that Bernhard discloses a reduced fire
scale silver-copper alloy where the amounts of each component
overlap with those recited in claim 1 on appeal, with the exception
that Bernhard does not teach the use of germanium (Answer, pages 5-
6). The examiner finds that Rateau teaches the addition of 0.5 to
3% by weight germanium to a silver-copper alloy to improve the
hardness of the resulting composition (Answer, page 6). From these
findings, the examiner concludes that it would have been obvious to
one of ordinary skill in the art to add germanium to the alloy of
Bernhard for improved hardness as taught by Rateau (id.). We
agree.
Appellant argues that the combination of references does not
teach the addition of trace amounts of germanium to a complex
silver alloy (Brief, paragraph bridging pages 4-5). Appellant
argues that Rateau teaches only the use of “large quantities of
germanium” in a silver-copper alloy comprised of only the two base
metals silver and copper (Brief, page 5).
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Application No. 08/637,802
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Appellant’s arguments are not persuasive. As correctly argued
by the examiner (Answer, page 7) and admitted on page 1 of
appellant’s Reply Brief, Rateau teaches the addition of germanium
in amounts that substantially overlap those required by the claims
(see claim 1 vs. Rateau, page 3, ll. 3-4). Furthermore, Rateau
teaches addition of the germanium to harden a silver-copper alloy
while the alloy of Bernhard comprises predominantly silver and
copper, with only small amounts of silicon, boron, zinc, and tin
(Bernhard, col. 2, ll. 24-29). Due to the similarities in the
alloy compositions and similar uses of Rateau and Bernhard, it
would have been expected by one of ordinary skill in the art that
the addition of germanium would be beneficial for the advantage of
improved hardness. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991). As correctly stated by the examiner
(Answer, page 9), appellant has not provided any factual basis for
the allegation that it is “well known” that the addition of an
alloying metal to a base metal composition which contains other
additives may not necessarily have the same result as the addition
of the same alloying metal to the base metal alone (see the Brief,
Appeal No. 2001-2449
Application No. 08/637,802
1Appellant cites a reference in support of this contention
on page 2 of the Reply Brief but fails to make this reference of
record. Furthermore, the quoted portion of this reference does
not support appellant’s contention that the teaching of Rateau
should not be applied to the similar silver-copper alloys of
Bernhard, i.e., that minor amounts of silicon and zinc additives
render the teachings of a germanium additive in Rateau
“unpredictable.”
5
page 5).1 Appellant does refer to the Declaration under 37 CFR
§ 1.132 by Bernhard (copy attached to the Brief) as support for the
alleged “lack of predictability” (Brief, page 6). However, as
noted by the examiner (Answer, paragraph bridging pages 9-10), no
such support can be found in the Bernhard Declaration and appellant
has not pointed to any specific page and line.
Appellant argues that Rateau teaches away from the use of
silicon in silver alloy compositions because silicon is insoluble
in silver and thus results in brittle alloys (Brief, page 6). This
argument is not well taken since Rateau merely teaches the
differing effects of silicon and germanium in silver-copper alloys,
while also teaching the addition of germanium to ensure that the
alloy does not become brittle, thus teaching the use of both
silicon and germanium (Answer, page 10, citing Rateau, page 3, ll.
26-29).
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
Appeal No. 2001-2449
Application No. 08/637,802
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of obviousness in view of the reference evidence. Appellant has
submitted objective secondary evidence of commercial success to
rebut any prima facie case of obviousness (Brief, pages 6-10).
Therefore we must review the evidence of obviousness against the
evidence of non-obviousness and determine whether a preponderance
of evidence weighs for or against patentability. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Appellant relies upon the Declaration of Bernhard attached to
the Brief but also refers to previous Declarations by Bernhard
(Brief, page 7). We adopt the examiner’s well reasoned analysis of
all of these Declarations (Answer, pages 10-16). We add the
following comments for emphasis and completeness.
Even assuming that appellant had sufficiently demonstrated
commercial success, that success is relevant in the context of
obviousness only if there is evidence that the sales were a direct
result of the unique characteristics of the claimed invention, and
not the result of other economic and commercial factors unrelated
to the quality of the claimed subject matter. See In re Huang, 100
F.3d 135, 140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). We also note
that the Bernhard Declaration is in error when stating that Rateau
teaches “only silver copper alloys incorporating large
Appeal No. 2001-2449
Application No. 08/637,802
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concentrations of germanium,” thus concluding that the product of
Rateau would have such an increased cost that it would negate any
real commercial value of the alloy (Declaration, page 5, second
full paragraph). See the Answer, page 7.
For the foregoing reasons and those stated in the Answer,
based on the totality of the record, we determine that the
preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of section 103(a). Accordingly, we
affirm the examiner’s rejection of the claims on appeal under
35 U.S.C. § 103(a) over Bernhard in view of Rateau.
The decision of the examiner is affirmed.
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Application No. 08/637,802
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2001-2449
Application No. 08/637,802
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