Ex Parte Gable et al

Patent Trial and Appeal Board

May 29, 2018

14736000 (P.T.A.B. May. 29, 2018)

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.
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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
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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,
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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.
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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
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