Ex Parte Evans

Patent Trial and Appeal Board

Aug 26, 2016

12846156 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/846, 156 07/29/2010 James M. Evans
23643 7590 08/30/2016
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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.
3847-213075 1405
EXAMINER
MORILLO, JANELL COMBS
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. EV ANS
Appeal2015-003964
Application 12/846, 156
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-14 of Application 12/846, 156 under
35 U.S.C. § 103(a) as obvious. Non-Final Act. (Sept. 6, 2013). Appellant1
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The Gibbs Die Casting Corporation is identified as the real party in
interest. Appeal Br. 2.
Appeal2015-003964
Application 12/846, 156
BACKGROlJND
The present application describes an aluminum alloy optimized for
pressure die-casting. The alloy includes (by weight) at least about 86.0
percent aluminum, from about 9. 70 to about 10. 70 percent silicon, from
about 0.40 to about 0.70 percent iron, up to about 0.25 percent copper, up to
about 0.50 percent manganese, from about 0.10 to about 0.20 percent
titanium; and from about 0.010 to about 0.025 percent strontium. Spec. 2,
i-f 16. Such alloy is indicated to have improved thermal conductivity and
strength. Id.
Claim 1 is representative of the present claims and is reproduced
below:
1. An alloy for use in die casting comprising
at least 86.0 percent aluminum by weight;
from 9.70 to 10.70 percent silicon, by weight;
from 0.40 to 0.70 percent iron, by weight;
about 0.25 percent copper, by weight;
about 0.50 percent manganese, by weight;
from 0.10 to 0.20 percent titanium, by weight; and
from 0.010 to 0.025 percent strontium, by weight.
Appeal Br., Claims App.
REJECTIONS
On appeal, the Examiner maintains the rejection of Claims 1-14 under
35 U.S.C. § 103(a) as being unpatentable over Backerud et al. (U.S.
6,267 ,829, iss. July 31, 2001) ("Backerud").
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DISCUSSION
The Appellant seeks reversal on several bases. First, Appellant asserts
that the claims of Backerud are not supported by its Specification as required
by the first paragraph of 35 U.S.C. § 112 and, as a consequence, may not
render the Appellant's claims obvious. Appeal Br. 6-9; Reply Br. 2--4.
Second, the Appellant argues that the preferred embodiments of Backerud
do not fall within the scope of the claims at issue and cannot, therefore,
underlie a prima facie case of obviousness. Id. at 9-10. Third, that a person
of ordinary skill would not be led to the claims at issue by the teachings of
Backerud. Id. at 10-12. Fourth, that the obviousness rejection is based only
upon conclusory analysis and does not consider whether the values of the
ranges taught by Backerud are result-effective. Id. at 12-15. Fifth,
Appellant contends that the strontium range recited in independent claim 1
imparts unexpected properties to the claimed composition and that this
rebuts any presumption of obviousness that may arise from the description
of an overlapping range in the prior art. Id. at 15-16.
Appellant Asserts That Bdckerud's Claims
Are Unsupported by its Specification
Appellant asserts that Backerud' s claims are not supported by its
Specification as required by the first paragraph of 35 U.S.C. § 112 and, as a
consequence, may not render the Appellant's claims obvious. Appeal Br. 6.
Appellant relies upon Application of Fisher, 427 F.2d 833, 839 (CCPA
1970), for the notion that the claims of a patent cited as prior art must be
adequately supported by its specification in order to render a subsequent
application obvious. Appeal Br. 6-7. This is not Fisher's holding. In
Fisher, the Court of Customs and Patent Appeals affirmed the rejection of
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pending claims that were not supported as required by§ 112. That case does
not require that the claims of a prior art reference be properly supported in
order to render a pending application obvious. Rather, it stands for the well-
established proposition that pending claims may be rejected under 35 U.S.C.
§ 112, i-f 1 if not properly described and enabled by the specification.
Similarly, Appellant relies upon Application of Lukach, 442 F.2d 967
(CCP A 1971 ), citing the statement in Lukach that "a single example does not
provide support for a range." Appeal Br. 7. As with Fisher, the Court in
Lukach was considering the claims of a pending application. Lukach, 442
F.2d at 967. The Court did not announce a rule that any range stated in a
prior art reference must be supported by multiple examples falling within the
stated range.
Indeed, Lukach discusses the distinction between the adequacy of a
description necessary for a prior art reference to render an application
unpatentable (as here) and that required to provide a written description
sufficient to support pending claims (as in Fisher and Lukach). In that case,
the patent applicants argued that it would be inconsistent to find that the U.S.
grandparent application did not provide sufficient support for the pending
claims yet find the British counterpart of the grandparent to have sufficient
description to anticipate. The Court held:
This argument appears to overlook the law that the description
of a single embodiment of broadly claimed subject matter
constitutes a description of the invention for anticipation
purposes whereas the same information in a specification might
not alone be enough to provide a description of that invention for
purposes of adequate disclosure.
Lukach, 442 F.2d at 970 (citation omitted); see also Chester v. Miller, 906
F.2d 1574, 1577 (Fed. Cir. 1990) ("differences exist between the
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Application 12/846, 156
requirements for claim-anticipating disclosures and for claim-supporting
disclosures"). Accordingly, the Fisher and Lukach cases are inapposite to
whether a prior art reference is sufficiently enabled to render a subsequent
application unpatentable.
In determining whether a prior art reference is enabled, one asks
"whether a person of ordinary skill in the art could make or use the claimed
invention without undue experimentation based on the disclosure of that
particular document." In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)
(emphasis in original). That is, one does not look to the specification of a
prior art reference to determine if the prior art claims are supported thereby;
rather, one looks to the prior art document as a whole to determine if it
provides sufficient teaching to make or use the invention of the pending
claims. Here, it appears, and Appellant has not contested, that a person of
skill in the art of metallurgy could readily make a composition falling within
the ranges taught by Backerud. See, e.g., Spec. 1, ,-r 3 ("Various alloying
agents are known to be used with aluminum. For example, copper,
manganese, silicon, magnesium, zinc, and even iron, in some cases, may be
used to form aluminum alloys with varying properties."). Accordingly,
Backerud is sufficiently enabled and may be used for what it teaches to one
of skill in the art.
Appellant Asserts That Bdckerud 's Examples
Do Not Overlap with the Pending Claims
Appellant asserts that none of the three exemplary compositions
described in Backerud fall within the scope of the pending claims. Appeal
Br. 9. Appellant contends that "[t]he rejection fails to identify a reason why
a person of ordinary skill in the art would modify the amounts of Si, Fe, Cu,
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1\1n, and Sr [found in the exemplary compositions] to arrive at the claimed
ranges. Therefore, the examples cannot form the basis for prima facie
obviousness." Appeal Br. 10.
The Examiner, however, does not rely upon the exemplary
compositions. Non-Final Rejection at 3. Rather, the Examiner relies upon
the broader disclosure found in the claims and Abstract, noting that
"Backerud teaches an alloy comprising (in wt%): 6-10% Si, 0.4--2.0% Fe,
0-6% Cu, 0.05-1.0% Mn, 0.1---0.3% Ti and 0.01---0.02% Sr (Backerud at cl.
1, 15)." Non-Final Office Action 3; Answer i-f 2.
Appellant Asserts That Bdckerud Would Not Lead a Person of
Ordinary Skill in the Art to the Claimed Invention
Appellant further argues that Backerud would not lead one of skill in
the art to the composition of the present claims. Appeal Br. 10-12.
Appellant states that Backerud describes three exemplary compositions and
a process of modifying such compositions so as to arrive at a "hypoeutectic
aluminum alloy free from primary platelet-shaped beta-phase AlsFeSi-type
in the solidified structure." Appeal Br. 10. The three exemplary
compositions, however, are not the basis of the Examiner's rejection. The
rejection is based upon the aluminum alloy described in claims 1 and 15 of
Backerud. Non-Final Office Action 3; Answer ,-r 2. The ranges set forth in
those claims overlap the ranges set forth in the claims at issue. "[A] prior art
reference that discloses a range encompassing a somewhat narrower claimed
range is sufficient to establish a prima facie case of obviousness." In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
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Sitfficienc;) of Obvioitsness ,L4nal;)sis
Appellant next asserts that the rejection does not set forth a reasonable
rationale to establish a prima facie case of obviousness as required by the
Supreme Court in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The KSR case concerned one's motivation to combine the teachings of prior
art references to arrive at the subject claims. In KSR, the Supreme Court
held that lower courts should not apply the longstanding Teaching,
Suggestion or Motivation to Combine ("TSM") test in an unduly rigid
manner. KSR, 550 U.S. at 415 ("our cases have set forth an expansive and
flexible approach inconsistent with the way the Court of Appeals applied its
TSM test here."). That is, the Supreme Court mandated a more flexible test
for finding obviousness. Here, Appellant seeks to rely upon KSR to require
a more formalistic analysis. Further, the language quoted by the Appellant
concerned the necessity of articulating a decision maker's analysis in
combining the teachings of multiple references. Id. at 418. The present
analysis concerns a single prior art reference.
Further, Appellant seems to argue that KSR is in conflict with In re
Peterson: "Jn re Peterson was decided prior to KSR and the rejection
appears to rely on this holding of In re Peterson in contravention of KSR's
explicit admonishment that rejections must be factually supported." Appeal
Br. 13. The Board is not aware of any case stating that KSR overruled
Peterson.
Result-Effective Variables
The Appellant additionally asserts that there is no prima facie case of
obviousness because the claim limitations at issue do not concern result-
effective variables. A variable is result-effective where variation yields a
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predictable result in a property. lrz re Applied Afaterials, lrzc., 692 F.3d
1289, 1297 (Fed. Cir. 2012). It is well-known that the properties of an alloy
are determined by its components. The Specification provides that
"[ v ]arious alloying agents are known to be used with aluminum. For
example, copper, manganese, silicon, magnesium, zinc, and even iron, in
some cases, may be used to form aluminum alloys with varying properties."
Spec. 1, i-f 3; see also Answer i-f 6. Further, the Specification notes that the
"use of various alloying agents to improve the strength, ductility, wear
resistance, corrosion resistance, and thermal conductivity of aluminum may
result in significant variations in the physical properties of the resulting
alloy." Spec. 1, i-f 3. "A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective."
Applied Materials, 692 F.3d at 1297. Accordingly, the components of the
present aluminum alloy are result-effective variables.
Unexpected Results
Appellant further asserts that the claims at issue are nonobvious
because the claimed range of strontium yields unexpected results. Appeal
Br. 15-16. "[A] prima facie case of obviousness established by the overlap
of prior art values with the claimed range can be rebutted by evidence that
the claimed range is 'critical' because it 'achieves unexpected results."'
Applied Materials, 692 F.3d at 1297 (internal citation omitted). Evidence of
unexpected results must be commensurate with the scope of the rejected
claims. See Peterson, 315 F.3d at 1329.
Claim 1 of the pending application requires "from 0.010 to 0.025
percent strontium, by weight." Appeal Br., Claims Appendix. Claim 16 of
Backerud, which depends indirectly from claim 1 thereof, provides that "the
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amount of strontium added is 0.01 -0.02%." Backerud, col. 8:48--49. That
is, the strontium range taught by claim 16 of Backerud falls within the range
claimed to be critical. Answer i-f 7. Thus, the composition set forth in claim
16 of Backerud embodies whatever property strontium imparts to the
claimed composition.
Moreover, the Specification states that "[s]trontium is used to modify
and refine the silicon particles" of the claimed alloy. Spec. 5, i-f 15. This is
consistent with Ikuno which provides that "[t]he aluminum alloy castings of
the invention can be produced by adding elements such as strontium (Sr) ...
that can make the eutectic Si finer." Ikuno, col. 9:49-51. Thus, use of
strontium for refinement of silicon particles and any consequent effect is
known in the art. Accordingly, any resultant property is not surprising
relative to the prior art.
CONCLUSION
The rejection of Claims 1-14 under 35 U.S.C. § 103(a) as being
unpatentable over Backerud 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).
AFFIRMED
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