Ex Parte Gaag

Patent Trial and Appeal Board

Sep 26, 2012

11857662 (P.T.A.B. Sep. 26, 2012)

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.
11/857,662 09/19/2007 Norbert Gaag 21532 1326
23389 7590 09/27/2012
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
09/27/2012 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 NORBERT GAAG

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Appeal 2011-008349
Application 11/857,662
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-008349
Application 11/857,662

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6.1 Claim 1 is
illustrative of the subject matter on appeal and is reproduced below.
1. An article of manufacturing comprising:
a slide bearing constituted of a copper zinc alloy, said
alloy consisting essentially of, in percent by weight, 59-
73% copper, 2.7 - 8.5% manganese, 1.5-6.3% aluminum,
0.2-4% silicon, 0.2-3% iron, 0-2% lead, 0-2% nickel, 0-
0.4% tin, residual zinc, at least one of P and Cr, wherein
said P is present in an amount of less than or equal to
0.03% and said Cr is present in an amount of less than or
equal to 0.05%, and unavoidable impurities, and said
alloy having a microstructure including an alpha and beta
mixed crystal matrix that includes 60-85% alpha phase.
The Examiner maintains and Appellant’s request review of the
following rejection (App. Br. 6):

I. Claims 1-3, 7, 8, 12, 13 and 17 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Niimi, U.S. 3,773,504 or DE 1205285 (DE ‘285).
II. Claims 1-17 stand finally rejected under 35 U.S.C. § 103 as
unpatentable over Ruchel, U.S. 4,676,848 or British Patent No. 2049727
(GB ‘727) in view of Niimi et al. or DE ‘285.

OPINION
We have thoroughly reviewed the Examiner’s rejections and
Appellant’s arguments there against. We affirm the Examiner’s rejections
for the reasons presented by the Examiner. We add the following.

1 According to Appellant, claims 18-20 have been canceled. (App. Br. 2).
Appeal 2011-008349
Application 11/857,662

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Appellant’s claimed invention relates to a copper zinc alloy which is
suitable for use as sliding bearings. (Spec. 3). According to Appellant, “the
present invention relates to a new use, e.g., as a slide bearing, for an old
alloy that is disclose within DE 29 19 478 C2 (DE ‘478).” (App. Br. 7).
Appellant further states:
In DE ‘478, the alloy is used as a synchronizing ring alloy. Appellant
observes that in col. 2, line 52 of DE ‘478 there is mentioned that the
Cu-Zn alloy, which also has the claimed microstructure, has a high
friction coefficient (e.g., hohe Reibungswerte). Although high friction
coefficients are acceptable for an alloy in use as a synchronizing ring,
such high friction coefficients were not acceptable for an alloy in use
as a slide bearing since slide bearings generally require low friction
coefficients. Hence, one skilled in the art would refrain from using an
alloy having such a microstructure in connection with slide bearings.
Reference is made to paragraphs 0007-0009 of the present application.
Therefore, without any ex post knowledge, one skilled in the art
would discard alloys having the microstructure as presently claimed
as a slide bearing material. The Appellant of the instant application,
however, unexpectedly found that despite the high friction
coefficients, the claimed alloys can be used as a slide bearing, and the
claimed alloys when used as a slide bearing meet all the requirements
imposed on a material for slide bearings, particularly at elevated
temperatures. (Id.)

It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new
property or use of a previously known composition, even when that
property and use are unobvious from prior art, cannot impart patentability to
claims to the known composition.”); In re Pearson, 494 F.2d 1399, 1403
(CCPA 1974) (intended use of an old composition does not render
composition claim patentable); In re Zierden, 411 F.2d 1325, 1328, (CCPA
Appeal 2011-008349
Application 11/857,662

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1969) (“[M]ere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition patentable.”); In re
Hack, 245 F.2d 246, 248, (CCPA 1957) ("the grant of a patent on a
composition or a machine cannot be predicated on a new use of that
machine or composition"); In re Benner, 174 F.2d 938, 942, (CCPA 1949)
(“no provision has been made in the patent statutes for granting a patent
upon an old product based solely upon discovery of a new use for such
product”).
Accordingly, Appellant’s contention that his Cu-Zn alloy will be used
as a slide bearing does not have patentable weight if the structure is already
known, regardless of whether it has ever been used in any way in connection
with a slide bearing. Moreover, Appellant acknowledges that the
requirements of a slide bearing for new engines have changed for modern
engines. Appellant specifically states “the properties of the CuZn31 Si 1
alloys no longer meet the requirements that are imposed on materials for
sliding bearings in modern engines, for instance, diesel engines.” (Spec. 1).
Thus, a person of ordinary skill in the art who was designing a slide bearing
for a modern engine would look to Cu-Zn alloys, including known Cu-Zn
alloys, which would have the properties suitable for such a purpose.
Under these circumstances, we find no error in the Examiner’s
obviousness determination.

ORDER
The Examiner obviousness rejections 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)(1)(iv).
Appeal 2011-008349
Application 11/857,662

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AFFIRMED
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