Ex Parte Grün et al

Patent Trial and Appeal Board

May 16, 2018

13945431 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/945,431 07/18/2013
53609 7590 05/18/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Gerd-Ulrich Griin
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. CONFIRMATION NO.
509811 9479
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD-ULRICH GRUN, HARTMUT JANSSEN,
KATRIN KUHNKE, and WERNER DROSTE
Appeal2018-004058
Application 13/945,431
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
JANEE. INGLESE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1---6,
10, and 11. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as "Hydro Aluminium
Rolled Products GmbH" (Appeal Brief filed November 22, 2017, hereinafter
"Appeal Br.," 2).
2 Appeal Br. 5-11; Reply Brief filed March 2, 2018, hereinafter "Reply Br.,"
5-10; Final Office Action entered May 3, 2017, hereinafter "Final Act.," 2-
7; Examiner's Answer entered January 4, 2018, hereinafter "Ans.," 3-14.
Appeal2018-004058
Application 13/945,431
I. BACKGROUND
The subject matter on appeal relates to an aluminum alloy product and
to a method for producing such a product by implementing an improved
soldering process using an AlSi (aluminum-silicon) aluminum alloy
(Specification filed July 18, 2013, hereinafter "Spec.," ,r 4). According to
the Appellants, the invention addresses soldering problems caused by
primary Si particles having sizes of more than 10 µm (id. ,r 6).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br. 13), with key limitations emphasized, as follows:
1. An aluminium alloy product with an aluminium
solder layer, wherein the aluminium alloy of the aluminium
solder layer comprises the following proportions of alloy
components in percentage by weight:
4.5 %:S Si < 12%, -
p < JO ppm,
B < JO ppm,
30 ppm :S Ti < 240ppm,
Fe < 0.8%, -
Cu < 0.3 %, -
Mn < 0.10 %, -
Mg < 2.0%, -
Zn < 0.20%, -
Cr < 0.05 %, -
the remainder being Al and unavoidable impurities, individually
at most O. 0 5 % by weight, and in total at most O .15 % by weight,
and
the aluminium solder layer is free from primary Si particles
with a size of more than 10 µm.
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Application 13/945,431
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a rejection under pre-AIA
35 U.S.C. § 103(a) of claims 1---6, 10, and 11 as unpatentable over
Matsumoto et al. (US 8,343,635 B2, issued January 1, 2013; hereinafter
"Matsumoto"). 3
III. DISCUSSION
The Appellants rely on the same arguments for all claims on appeal
(Appeal Br. 5-11). Therefore, we confine our discussion to claim 1, which
we select as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). As
provided by this rule, claims 2-6, 10, and 11 stand or fall with claim 1.
The Examiner finds that Matsumoto describes a multi-layered
aluminum alloy sheet for use in a heat exchanger, wherein the multi-layered
aluminum alloy sheet includes a braze clad layer-i.e., a solder layer (Ans.
3; Final Act. 2). The Examiner finds further that Matsumoto discloses the
use of a known aluminum alloy ( e.g., an Al-Si 4000-series alloy brazing
material such as JIS 4045) as the braze clad layer (Ans. 3; Final Act. 2). The
Examiner points out that the Appellants' Specification (i1 1 O; emphasis
added) acknowledges the JIS 4045 material's compositional makeup as
follows:
The aluminium alloy of type AA 4045 provided with a
higher Si content contains 9 .0 to 11.0 % by weight of Si, at most
0.8 % by weight of Fe, at most 0.30 % by weight of Cu, at most
0.05 % by weight of Mn, at most 0.05 % by weight of Mg, at
most 0.10 % by weight of Zn and at most 0.20 % by weight of
Ti.
3 Ans. 3-14; Final Act. 2-7.
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Application 13/945,431
According to the Examiner, phosphorus (P) and boron (B) amounts are not
provided in the description and, therefore, are considered impurities, which
the Specification (i1 13) states are present in the JIS 4045 material in an
amount at most 0.05% by weight individually and at most 0.15% by weight
total (Ans. 4; Final Act. 3). Based on these findings, the Examiner
concludes (Ans. 4--6; Final Act. 3--4):
(i) "[i]t would have been obvious to one of ordinary skill
in the art ... [to] have minimized and eliminated as much of the
impurities as possible, including boron and phosphorus, from
the 4045 alloy, as taught by Matsumoto";
(ii) because the Specification attributes the absence of
primary Si particles with a size more than 10 microns to low B
and P levels, Matsumoto's braze clad layer would be expected
to be free from such primary Si particles with a size more than
10 microns as required by claim 1 ; and
(iii) the overlap between Matsumoto's disclosed the Ti
amounts of at most 0.2% by weight (i.e., 0-2,000 ppm) and the
range recited in claim 1 (30-240 ppm) creates a prima facie
case of obviousness.
The Appellants' principal contention is that the range for Ti amounts
disclosed in the prior art (0-2,000 ppm) constitutes a broad genus that is
insufficient to establish a prima facie case of obviousness as to the
Appellants' narrow species (30-240 ppm) (Appeal Br. 5). According to the
Appellants, their "claimed range of 30 ppm to 240 ppm only comprises
10.5% of Matsumoto's disclosed Ti range of O ppm to 2000 ppm" (id. at 6).
In the Appellants' view, the Examiner's rejection does not consider several
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Appeal2018-004058
Application 13/945,431
factors discussed in MPEP § 2144.08 II.A.4 (e.g., the size of the genus
disclosed in the prior art relative to the size of the species recited in claim 1)
and, therefore, the rejection fails (id. at 6-9). The Appellants argue that,
because no prima facie case of obviousness exists, the Appellants "need not
demonstrate criticality" for the specified range (id. at 9). Finally, the
Appellants contend that the Examiner's inherency theory as to the braze clad
layer being free from primary Si particles having a size greater than 10
microns lacks factual basis (id. at 10-11).
The Appellants' arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Our reviewing court has stated that "[a] primafacie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (citing, e.g., In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir. 1997) and In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Indeed, the court stated that "when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap." Peterson, 315 F .3d at 1330.
"[ A ]n applicant may overcome a prima facie case of obviousness by
establishing 'that the [ claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art
range."' Id. (quoting Geisler, 116 F.3d at 1469-70).
Applying these principles, the Appellants' arguments do not reveal
any reversible error in the Examiner's rejection. The Appellants do not
dispute the Examiner's finding that Matsumoto describes using JIS 4045
material as the braze clad layer (Matsumoto, col. 2, 11. 26-28; col. 15, 11. 35-
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Application 13/945,431
42; col. 16, 11. 18-20), which the Appellants concede contains 0-2,000 ppm
Ti (Appeal Br. 5). Nor do the Appellants directly refute the Examiner's
findings that the Appellants' own admissions concerning the JIS 4045
material (Spec. ,r,r 10, 13) provide no indication that B and P are present and,
even if these elements are present, they would only be present in amounts
that are considered impurities (at most 0.05% by weight each).
Under controlling case law, these facts amply support a prima facie
case of obviousness. Peterson, 315 F.3d at 1329.
The cases cited by the Appellants are inapposite. In In re Baird, 16
F.3d 380,383 (Fed. Cir. 1994), the court held that a "disclosure of millions
of compounds does not render obvious a claim to three compounds,
particularly when that disclosure indicates a preference leading away from
the claimed compounds." Likewise, in In re Jones, 958 F.2d 347, 350 (Fed.
Cir. 1992), the court held that the prior art reference disclosed a "potentially
infinite genus of 'substituted ammonium salts'" without listing the claimed
salt and that the PTO failed to provide a reason for combining other
references in the manner claimed.
Here, in stark contrast, the Examiner correctly finds (Ans. 5) that the
range for Ti amounts recited in claim 1 constitutes a significant portion (i.e.,
10.5%) of the prior art range, which completely encompasses the
Appellants' range. Therefore, the Appellants are incorrect in asserting that
the Examiner's rejection failed to consider various relevant factors, such as
the size of the prior art genus relative to the claimed species. Cf In re
Schaumann, 572 F.2d 312, 316-17 (CCPA 1978) (small prior art genus
describes a species within the genus).
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Application 13/945,431
Given the structural similarities between the solder layer specified in
claim 1 and the braze clad layer disclosed in Matsumoto, a sufficient factual
basis upon which to presume that Matsumoto's layer would possess the
same or similar characteristics (e.g., content of primary Si particles having a
size more than 10 microns) as the Appellants' layer exists. In re Best, 562
F.2d 1252, 1255 (CCPA 1977); In re Dillon, 919 F.2d 688,693 (Fed. Cir.
1990) ( en bane).
The Appellants rely on the experiments and data summarized in the
Specification (Tables 1 and 2, Spec. ,r,r 31, 37) as rebuttal evidence (Appeal
Br. 10-11). According to the Appellants, Samples VIa and VIb are
representative of the prior art and these prior art alloys had primary Si
particles in the ranges of 12-22 microns and 12-28 microns, respectively
(Table 2, Spec. ,r 37). But consistent with the Examiner's position (Ans. 10-
13), we find the proffered evidence to be insufficient. The Appellants
appear to consider Samples VIa ( 50 ppm of Ti, 11 ppm of B, and 7 ppm of
P) and VIb (30 ppm of Ti, 11 ppm of B, and 7 ppm of P) as representative of
the closest prior art (i.e., Matsumoto). The Specification states, however,
that Samples VIa and VIb were produced using a different method involving
grain refining agents in the form of AlTiB bars (Spec. ,r 33) and, in the case
of Sample VIb (id. ,r 37), under unique melt temperature conditions. The
Appellants do not direct us to concrete, objective evidence (e.g., declaration
evidence) establishing that JIS 4045 alloys are in fact manufactured using
grain refining agents in the form of AlTiB bars and/or unique melt
temperature conditions. Although we appreciate that claim 1 is limited to
alloys that are free from primary Si particles with a size of more than 10
microns, claim 1 does not----on its face----exclude any grain refining agent or
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Application 13/945,431
specify any particular melting temperatures. Therefore, the evidence is
insufficient to establish that the actual differences between the claimed alloy
and JIS 4045 alloy----e.g., a B content (if present in JIS 4045) of 11 ppm
versus 10 ppm as specified in claim I-give rise to any unexpected result.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
For these reasons, we uphold the Examiner's rejection.
IV. SUMMARY
The Examiner's rejection under U.S.C. § I03(a) of claims 1---6, 10,
and 11 as unpatentable over Matsumoto is sustained. Therefore, the
Examiner's final decision to reject claims 1---6, 10, and 11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a).
AFFIRMED
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