Ex Parte Gable et alDownload PDFPatent Trial and Appeal BoardMay 29, 201814736000 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 141736,000 06/10/2015 Brian M. Gable 118689 7590 05/31/2018 Apple Inc. c/o POLSINELLI PC 1401 Lawrence Street Suite 2300 Denver, CO 80202 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. P22444US1 (P250004.US.02) CONFIRMATION NO. 6142 EXAMINER JOHNSON, JONATHAN J ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 05/31/2018 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): uspt@polsinelli.com aworsnop@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN M. GABLE, JAMES A. WRIGHT, and HOISHUNLI Appeal2017-005962 Application 14/736,000 Technology Center 1700 Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-3 and 5-15. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 In our Decision we refer to the Specification filed June 10, 2015 ("Spec."), the Final Office Action appealed from dated April 19, 2016 ("Final Act."), the Appeal Brief filed October 5, 2016 ("Appeal Br."), the Examiner's Answer dated December 19, 2016 ("Ans.") and the Reply Brief filed Feb. 21, 2017 ("Reply Br."). 2 Appellant is Applicant, Apple Inc., which according to the Appeal Brief is also the real party in interest. Appeal Br. 3. Appeal2017-005962 Application 14/736,000 STATEMENT OF THE CASE The subject matter on appeal relates to a 7000 series alloy having "high tensile yield strength, high extrusion speed, and/or low thermal conductivity" and "[i]n certain variations, the alloys are press quenchable, allowing processing without additional subsequent solution heat treatment while not compromising the ability to form an aluminum alloy having a high tensile yield strength as described herein." Spec. i-f 6; see also Appeal Br. 3 (same). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An alloy comprising Fe from 0 to 0.08 wt%, Si from 0 to 0.05 wt%, Mg from 1.85 to 3.0 wt%, Zn from 5.0 to 6.3 wt%, and Cu from 0.9 to 2.15 wt%, the remaining wt% being Al and incidental impurities, wherein the tensile yield strength of the alloy is greater than 450 MPa. Appeal Br. 11 (Claims App'x). REJECTIONS The Examiner rejects claims 1-3 and 5-15 under 35 U.S.C. § 103 as unpatentable over Nagai. 3 Ans. 2. Appellant seeks our review of the Examiner's rejection of claims 1-3 and 5-15. See generally Appeal Br. Appellant argues claims 1 (and 13 together) 4 and 6 separately and do not separately address the remaining 3 Nagai et al., JP 2010-159489 A, published July 22, 2010 (hereinafter "Nagai"). 4 Appellant contends that the same reasons that support a reversal of the Examiner's rejection for independent claim 1, similarly support reversal of independent claim 13. Appeal Br. 9. 2 Appeal2017-005962 Application 14/736,000 claims. Id. Therefore, we limit our discussion to claims 1 and 6, and all other claims stand or fall together with these claims. OPINION The Examiner finds that Nagai teaches an alloy having a composition as claimed with amounts of Fe, Si, Mg, Zn, Cu, and Al that overlap with instant claims 1 and 6. Ans. 2-3. The Examiner further finds that because "Nagai teaches Mn, Cr, Zr and Ti may be absent from the composition ... the alloy in Nagai is identical to the claimed composition." Id. at 3 (emphasis omitted). The Examiner reasons that because the composition is the same, the "tensile yield strength and thermal conductivity would be expected in Nagai et al." Id. Appellant begins by arguing that Nagai fails to teach a composition having the claimed ranges that results in the claimed tensile yield strength of greater than 450 MPa. Appeal Br. 4; Reply Br. 3. According to Appellant, the "claimed alloys are directed to a much narrower subset of elements than disclosed by Nagai" and, as a result, is insufficient to establish a prima facie case of obviousness. Appeal Br. 4; Reply Br. 4--5. Appellant cites to Examples El-19 of Nagai, each having a tensile yield strength lower than 450 MPa, as evidence that Nagai fails to render Appellant's claims obvious. Appeal Br. 5; Reply Br. 4. Appellant further contends that "Nagai provides no basis to make the claimed alloy having a tensile yield strength greater than 450MPa." Appeal Br. 4; Reply Br. 4. Appellant's arguments fail to identify a reversible error in the Examiner's rejection. "[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of 3 Appeal2017-005962 Application 14/736,000 obviousness." Iron Grip Barbell Co. v. USA Sports, Inc., 392F.3d1317, 1322 (Fed. Cir. 2004). The presumption may be rebutted by evidence of unexpected results or a teaching away. Id. Here, the Examiner establishes that the claimed ranges fall squarely within the teachings of Nagai (Final Act. 2; Ans. 2), thereby establishing a prima facie case of obviousness. We further observe that the preferred composition ranges of Nagai are narrower than those relied upon by the Examiner. Compare Ans. 2 with Nagai i-f 9. The Examiner, based on the substantial similarity between the composition of Nagai and the range of components of the claimed alloy, fairly reasons that the claimed tensile yield strength would be a property of the compositions which are within Appellant's claims. Id. Appellants' argument that the examples in Table 1 of Nagai fail to show a tensile yield strength lower than 450 MPa is unconvincing because each of the examples includes some amount of Mn, Cr, Zr, and Ti and therefore, does not provide a clear comparison the claimed alloy. See Ans. 4. Furthermore, the teachings of the prior art are not limited to its preferred embodiments or express examples. Rather, "all disclosures of the prior art, including unpreferred embodiments must be considered." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Notably too, Appellant does not provide objective evidence of unexpected results to overcome the prima facie case of obviousness. With respect to claim 6, Appellant further argues that the claimed alloy exhibits unexpected results. Appeal Br. 5. In particular, Appellant argues that the claimed alloys unexpectedly do not require a solution treatment during processing, are press quenchable, and maintain a tensile yield strength of greater than 450 MPa. Id. Appellant cites as evidence, 4 Appeal2017-005962 Application 14/736,000 Table 1 of the Specification illustrating Sample alloy 1, having a composition within the claimed range and is press quenchable where Sample alloys 2 and 3 each having a composition outside the recited ranges of claim 6 are not press quenchable. Id. at 7. Appellant further contends that the Specification unexpectedly shows the claimed alloys do not require a solution heat treatment. Id. at 8. Appellant compares Sample alloy 1 with the 7003 alloy (having ranges that fall within the teachings of Nagai) and states that the 7003 alloy is press quenchable but has a tensile yield strength of 350 MPa. Id. Appellant fails to identify error in the Examiner's rejection of claim 6. Based on the evidence submitted, it is not possible to tell if the results achieved by the narrowed composition ranges are truly unexpected. Also, Appellant's evidence is not commensurate in scope with the claim over the entire range or a substantial portion of the range. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) ("It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims."). Therefore, on this record, we sustain the Examiner's rejection as obvious over Nagai. CONCLUSION Appellant failed to show a reversible error in the Examiner's rejection of claims 1-3 and 5-15 under 35 U.S.C. § 103 as unpatentable over Nagai. 5 Appeal2017-005962 Application 14/736,000 DECISION For the above reasons, the Examiner's rejection of claims 1-3 and 5- 15 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 6 Copy with citationCopy as parenthetical citation