11809575 (B.P.A.I. Nov. 30, 2011)

Ex Parte Gaag et al

Board of Patent Appeals and InterferencesNov 30, 2011

11809575 (B.P.A.I. Nov. 30, 2011)

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. 11/809,575 06/01/2007 Norbert Gaag DSC-DP-1955 9906 24131 7590 11/30/2011 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER IP, SIKYIN ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 11/30/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte NORBERT GAAG and ALEXANDER DEHNELT ____________ Appeal 2011-000050 Application 11/809,575 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and RAE LYNN P. GUEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000050 Application 11/809,575 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-8 and 10. We have jurisdiction under 35 U.S.C. § 6.1 Appellants’ claimed invention relates to a valve guide formed of a copper-zinc alloy. Spec. 1. Claim 1 is illustrative (indentations added): 1. A valve guide formed of a copper-zinc alloy, the alloy consisting essentially of, in percent by weight: 59 to 73% copper; 2.7 to 8.3% manganese; 1.5 to 6% aluminum; 0.2 to 4% silicon; 0.2 to 3% iron; 0 to 2% lead; 0 to 2% nickel; 0 to 0.2% tin; and a remainder zinc and impurities; said alloy formed into a valve guide. Appellants request review of the following rejections (App. Br. 4) from the Examiner’s final office action: 1. Claims 1, 5, 6 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Niimi, U.S. Patent 3,773,504 issued November 20, 1973. 2. Claims 1-4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Niimi and Schmidt, GB 2,049,727 A published December 31, 1980. 1An oral hearing for this appeal was held on October 25, 2011. Appeal 2011-000050 Application 11/809,575 3 OPINION2 The dispositive issue for the rejections is: Did the Examiner err in determining that Niimi describes or suggests a valve guide formed of a copper-zinc alloy as required by the subject matter of independent claim 1? We answer this question in the negative and AFFIRM. Appellants argue that a copper alloy of Niimi includes chromium which is excluded from the claimed invention.3 Specifically, Appellant states [t]he claim has a preamble ‘consisting essentially of’ meaning the claimed alloy contains 59 to 73% copper; 2.7 to 8.3% manganese; 1.5 to 6% aluminum; 0.2 to 4% silicon; 0.2 to 3% iron; 0 to 2% lead; 0 to 2% nickel; 0 to 0.2% tin; and a remainder zinc and impurities. The claim is limited to the recited elements and no other materials. (App. Br. 5). On the present record, we determine that the transitional phrase “consisting essentially of” recited in claim 1 does not exclude Niimi’s copper-zinc alloy which includes chromium. See In re Herz, 537 F.2d 549, 551-52 (CCPA 1976). Appellants have the burden of showing that a component in a reference would materially affect the basic and novel characteristics of a claimed composition. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). On the present record, Appellants have not identified the basic and novel characteristics of the claimed invention. Appellants have 2 Appellants did not argue the dependent claims separately in the Briefs. Accordingly, the dependent claims stand or fall together with the respective independent claim. 3 There is no dispute on this record that Niimi discloses a copper alloy comprising the elements recited in claim 1 in amounts that overlap the claimed ranges. Appeal 2011-000050 Application 11/809,575 4 not established what effect chromium would have on the basic and novel characteristics of the copper-zinc alloy required by the claimed invention. Moreover, Appellants have not demonstrated that Niimi’s copper-zinc alloy would have materially different basic and novel characteristics when used as a valve guide. Appellants cite US Patent 4,676,848 as evidence of the negative effects of chromium in an alloy composition. (App. Br. 6). This extrinsic evidence was not cited to establish the basic and novel characteristics of the appealed invention. Appellants have not established that the basic and novel characteristics of the ‘848 patent are the same as the basic and novel characteristics of the claimed invention. Appellants also argue that “the present invention forms a valve stem with close to 30 times the tensile strength as the composition disclosed in the Niimi patent.” (emphasis omitted). (App. Br. 9; see also claims 8 and 10). The Examiner correctly responds that the comparison of the hot tensile strength was not performed under the same temperature conditions. (Ans. 9). In order for the evidence to be persuasive of non-obviousness the comparison must be done under identical conditions except for the novel features of the invention. Consequently, we agree with the Examiner that the information provided by the examples in the specification is insufficient evidence of unexpected results. Appellants provide arguments regarding the rejection over the combination of Niimi and Schmidt for the first time on appeal in the Reply Brief. Arguments raised for the first time in a Reply Brief are considered waived. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1321 n.3 (Fed. Cir. 2005). Appellants have not presented an Appeal 2011-000050 Application 11/809,575 5 explanation establishing a showing of good cause explaining why these new arguments were not presented in the Appeal Brief. Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474-77 (BPAI 2010) (informative). For the foregoing reasons and those set forth in the Answer, based on the totality of the record, we determine that the preponderance of evidence weighs in favor of obviousness, giving due weight to Appellants’ arguments and evidence. Accordingly, the Examiner’s rejections are affirmed. ORDER The rejection of claims 1, 5, 6 and 10 under 35 U.S.C. § 103(a) as unpatentable over Niimi is affirmed. The rejection of claims 1-4, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over Niimi and Schmidt is affirmed. TIME PERIOD 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). AFFIRMED bar