Ex Parte Fanning

Patent Trial and Appeal Board

Aug 25, 2014

12790502 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/790,502 05/28/2010 John Fanning 14685.031 1693
110407 7590 08/25/2014
BGL/Detroit
P.O. BOX 10395
Chicago, IL 60610
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
08/25/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN FANNING
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Appeal 2012-011674
Application 12/790,502
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-8 as unpatentable over
Tetjukhin (RU 2 122 040 C1 published Nov. 20, 1998). We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims a titanium alloy consisting essentially of, inter alia,
5.3 to 5.7 weight percent aluminum (sole independent claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A titanium alloy consisting essentially of, in weight
%, 5.3 to 5.7 aluminum, 4.8 to 5.2 vanadium, 0.7 to 0.9 iron,
4.6 to 5.3 molybdenum, 2.0 to 2.5 chromium, and 0.12 to 0.16
Appeal 2012-011674
Application 12/790,502

2
oxygen and optionally one or more additional elements selected
from N, C, Nb, Sn, Zr, Ni, Co, Cu and Si wherein each
additional element is present in an amount of less than 0.1 %
and the total content of additional elements is less than 0.5
weight %, and the balance titanium.
The Examiner finds that Tetjukhin discloses a titanium alloy having
the claim 1 ingredients in concentration ranges which overlap the claimed
ranges including 4.0-6.3 weight percent aluminum which overlaps
Appellant's claimed 5.3-5.7 weight percent aluminum (see, e.g., Ans. 4-5).
The Examiner concludes that it would have been obvious to select from the
Tetjukhin 4.0-6.3 aluminum range values which fall within the 5.3-5.7
aluminum range of claim 1 (id. at 5).
Appellant contests the Examiner's finding and conclusion by
submitting argument (App. Br. two full paras. at 8 and para. bridging 8-9)
and evidence (1st Fanning Declaration under 37 C.F.R. § 1.132 at paras. 15-
26) that one with an ordinary level of skill in this art (1) would have
recognized the weight percent aluminum range for Tetjukhin's titanium alloy
is 2.2-3.8 rather than the erroneously disclosed 4.0-6.3 range relied upon by
the Examiner and accordingly (2) would not have found it obvious to
provide the titanium alloy of Tetjukhin with aluminum in the 5.3-5.7 range
defined by claim 1.
The above noted argument and evidence are persuasive. See In re
Yale, 434 F.2d 666, 668-69 (CCPA 1970) ("Since it is an obvious error, it
cannot be said that one of ordinary skill in the art would do anything more
than mentally disregard CF(3) CF(2) CHClBr as a misprint."), cited by
Appellant (App. Br. 11-12).
Appeal 2012-011674
Application 12/790,502

3
We perceive no convincing merit in the Examiner's unembellished
response that "there is no persuasive evidence to show that [Tetjukhin] does
not intently disclose the composition ranges: 4.0-6.3wt%Al" (Ans. 8).
Moreover, we disagree with the Examiner that a 4.0-6.3 aluminum range for
the Tetjukhin alloy is supported by the corresponding range disclosed in a
discussion of the Tetjukhin alloy in US Patent 6,800,243 (id.). As correctly
explained by Appellant, the 4.0-6.3 range disclosed in the '243 patent is
merely a repetition of the obviously erroneous range disclosed in the
Tetjukhin reference (App. Br. para. bridging 10-11).
The decision of the Examiner is reversed.
REVERSED

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