Ex Parte Frommeyer et al

Patent Trial and Appeal Board

Oct 23, 2014

10935934 (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEORG FROMMEYER,
KARL FORWALD, GUNNAR HALVORSEN, KAI JOHANSEN,
OYVIND MIKKELSEN, and GUNNAR SCHUSSLER
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Appeal 2012-009004
Application 10/935,934
Technology Center 1700
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Before CHARLES F. WARREN, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
In the Final Office Action mailed July 21, 2011 (FOA), the Examiner
finally rejected all of the pending claims in of Application 10/935,934. On
October 21, 2011, Appellants1 filed a notice of appeal. We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 ELKEM ASA is identified as the real party in interest. (App. Br. 3.)
Appeal 2012-009004
Application 10/935,934
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BACKGROUND
The ’934 Application describes titanium-silicon alloys that are alleged
to have improved properties relative to the prior art. Spec. 2.
The Examiner finally rejected claims 1–7, all of the pending claims,
under 35 U.S.C. § 112, ¶ 1, for lack of written description support, 35 U.S.C.
§ 112, ¶ 2 as indefinite, and 35 U.S.C. § 103(a) as obvious. FOA. At that
time, claim 1, the only independent claim in the ’934 Application, read as
follows:
1. A titanium-silicon base alloy with high strength at
elevated temperature and which can be cast directly to a final
component, comprising:
2.5 – 12 wt % Si;
0.3 – 5 wt % Al;
0 – 0.5 % B;
0.1 – 2 % Cr;
0.001 – 1 wt % rare earth metals and/or scandium;
and
a balance of Ti with unavoidable impurities;
wherein the alloy has a hypoeutectic, a hypereutectic or an
eutectic microstructure and the eutectic microstructure
consisting of finely dispersed Ti5Si3 silicide particles of
discontinuous rod like shape within the hexagonal close-packed
α-Ti(Si) solid solution matrix,
the rare earth metals and scandium form a fine dispersion of
thermo-dynamically stable oxides in the alloy,
and
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Application 10/935,934
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the alloy is suitable for as cast component.
Amendment 2 (June 24, 2011) (underlining omitted); see also FOA 2.
On September 21, 2011, Appellants responded to the Final Office
Action and proposed amending claim 1 to overcome the written description
and indefiniteness rejections. See Response 2, 5–6 (Sept. 21, 2011). The
Examiner refused to enter Appellants’ proposed amendment. Advisory
Action 1 (October 18, 2011).
On December 21, 2011, Appellants filed their Appeal Brief. The
Brief states that the proposed amendment had been entered by the Examiner.
App. Br. 6. Appellants reproduced claim 1 in the Claims Appendix as if the
Examiner had actually entered the proposed amendment. Id. at 18. In their
brief, Appellants only presented argument for reversal of the obviousness
rejection. See App. Br. generally. These arguments were based upon the
claims as they would have read if the Examiner had entered the proposed
Amendments. Id.
On February 24, 2012, the Examiner filed an Answer to the Appeal
Brief. In the first pages of the answer, the Examiner refused to comment
either “on the appellant’s [sic, appellants’] statement of the status of
amendments after final rejection contained in the brief”, Ans. 3, or “on the
copy of the appealed claims contained in the Appendix to the appellant’s
[sic, appellants’] brief”, id. at 4. The Examiner, however, maintained all
three grounds of rejection stated in the Final Rejection. Id. at 3–4.
Furthermore, the portion of the Answer headed “Response to Argument”
begins: “The examiner notes here that appellant has not addressed the
grounds of rejection under 35 USC [§] 112. The amendment filed on 21
September 2011 was not entered by the examiner because it removed subject
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matter from the claims as finally rejected, thus changing the scope [of the
claims].” Ans. 11.
Appellants did not file a Reply Brief.
DISCUSSION
In view of the foregoing, it is clear from the record that the claims as
amended on June 24, 2011 are the pending claims in the ’934 Application.
These claims were finally rejected under § 103 and § 112. Appellants have
not addressed the § 112 rejections in the Final Action dated July 21, 2011,
from which this appeal has been taken. Appellants, therefore, have waived
the right for further appellate review of this rejection. The Board will
generally not reach the merits of any issues not contested by the Appellants.
See 37 C.F.R. § 41.37(c)(1)(vii) (2010) (“Any arguments or authorities not
included in the brief or a reply brief filed pursuant to § 41.41 will be refused
consideration by the Board, unless good cause is shown.”); Hyatt v. Dudas,
551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments
the appellant failed to make for a given ground of rejection as waived); In re
Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). Accordingly, we summarily
affirm the uncontested § 112 rejections.
Furthermore, Appellants’ arguments for reversal of the § 103 rejection
are based upon the claims as they would have been amended. Because the
Examiner did not enter Appellants’ proposed amendment, Appellants’ Brief
is not directed to the claims presented for appeal that are of record in the
’934 Application and are a nullity. We, therefore, have no basis on which to
consider the § 103 rejection.
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CONCLUSION
For the foregoing reasons, we affirm the rejections under 35 U.S.C.
§ 112, ¶ 1, for lack of written description support, 35 U.S.C. § 112, ¶ 2, as
indefinite, and 35 U.S.C. § 103(a).
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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