Ex Parte Hrastnik

Board of Patent Appeals and Interferences

Sep 30, 2008

10448651 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS HRASTNIK
____________

Appeal 2008-3631
Application 10/448,651
Technology Center 1700
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Decided: September 30, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 2-8, 10, and 12.1 We have
jurisdiction pursuant to 35 U.S.C. § 6.

1 In rendering this decision we have considered the Appellant’s arguments
presented in the Brief dated July 2, 2007 and the Reply Brief dated
December 12, 2007.

Appeal 2008-3631
Application 10/448,651

Appellant’s invention is directed to a nickel-based electrode. The
electrode is suitable for use as a sparkplug electrode. Claim 8 and 10 are
representative of the invention and are reproduced below:
8. A spark-plug electrode for an internal combustion engine,
comprising:

a nickel-based alloy comprising:
1.8 wt% to 2.2 wt% silicon;
0.05 wt % to 0.1 wt% of at least one of hafnium and zirconium;
2 wt % 2.4 wt % aluminum; and
a remainder of nickel.
10. A spark-plug electrode for an internal combustion engine,
comprising:
a nickel-based alloy comprising:
1.8 wt% 2.2 wt% silicon;
0.05 wt % to 0.1 wt% of at least one of yttrium, hafnium and
zirconium;
2 wt % to 2.4 wt % aluminum;
more than 0 and up to 5 wt % of cobalt; and
a remainder of nickel.

ISSUES ON APPEAL
Claims 2-8, 10, and 12 stand finally rejected under 35 U.S.C. § 103(a)
as unpatentable over Marushichi, Japanese Patent Document No. 9-92290
published April 4, 1997, or Kurauchi, Japanese Patent Document No. 64-
79337 published March 24, 1989.2 Claims 2-8, and 12 stand finally rejected

2 English-language translations of these Japanese Patent documents have
been provided in the present record.
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Application 10/448,651

under 35 U.S.C. § 103(a) as unpatentable over Kitamura, Japanese Patent
Document No. 8-53729 published February 27, 1996. 3
The Examiner contends that Marushichi, Kurauchi and Kitamura each
discloses nickel-based compositions suitable for use as electrodes that
comprise silicon, aluminum, and at least one of hafnium or zirconium in
amounts that render obvious the percentages of these components specified
by the claimed invention.4 The Examiner does not consider the claim
language “a spark-plug electrode for an internal combustion engine” to
patentably distinguish the claimed invention from the nickel alloy
compositions of Marushichi, Kurauchi, and Kitamura and the use thereof as
an electrode. (Ans. 3-7).
For each of the rejections, Appellant has not argued that the nickel
alloy compositions of Marushichi, Kurauchi, and Kitamura are patentably
distinct from the nickel alloy compositions of the claimed invention. (See
Briefs generally). Rather, Appellant contends that the claim language “a
spark-plug electrode for an internal combustion engine” defines structure
that distinguishes the invention from the invention of Marushichi, Kurauchi
and Kitamura. Appellant contends that Marushichi, Kurauchi, and Kitamura

3 For each of the rejections, Appellant has relied upon the arguments
presented for the independent claims, i.e. 8 and 10. That is, Appellant has
not presented substantive arguments for the dependent claims.
Consequently, the appealed claims stand or fall with independent claims 8
and 10. Our analysis will be limited to claims 8 and 10.

4 Regarding claim 10, the Examiner contends that Marushichi and Kurauchi
also describe more than 0 and up to 5 wt% of cobalt.

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Application 10/448,651

describe a different utility for their nickel alloy compositions. (App. Br. 3-6,
Reply Br. 2-5).
The issue presented is: did Appellant identify reversible error in the
Examiner’s rejections of claims 2-8, 10, and 12 under § 103? We answer
this question in the negative. The issue presented is whether a person of
ordinary skill in the art would have recognized that nickel alloy
compositions are suitable for use as a spark-plug electrode for internal
combustion engine.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of § 103
in view of the applied prior art. Accordingly, we will sustain the Examiner’s
rejections.
OPINION
We determine the following Findings of Fact (FF) from the record
presented in this appeal:
(1) The Specification discloses that nickel-based alloys are
known to have been suitable for producing electrodes for
spark plugs in internal combustion engines. (Spec. 1-4).
(2) The Specification discloses the known parts of spark
plugs include “a stopper which includes a ceramic, a
middle electrode and a terminal pin. A sparkplug also
has a steel casing having one or more ground electrodes
mounted on it. These electrodes are usually made of
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Application 10/448,651

corrosion-resistant and heat-resistant metals such as
nickel.” (Spec. 1).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. See
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of
whether the subject matter of a claim is obvious] need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007). “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. See also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted));.
Applying the preceding legal principles to the Factual Findings (FF)
in the record of this appeal, we determine that the Examiner has established
a prima facie case of obviousness, which prima facie case has not been
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adequately rebutted by Appellant’s arguments. As shown by FF (1-2)
above, persons of ordinary skill in the art recognized that nickel alloys have
corrosion-resistant and heat-resistant properties that make them suitable for
forming sparkplug electrodes. Marushichi, Kurauchi and Kitamura each
describes nickel alloy compositions. Persons of ordinary skill in the art
recognized the parts that are normally associated with forming a sparkplug
including nickel alloys as electrodes. (FF 2). Consequently, persons of
ordinary skill in the art would have reasonably looked to prior art describing
nickel-based alloy compositions such as those described by Marushichi,
Kurauchi and Kitamura to determine their suitability for use as electrodes in
sparkplugs.5
Appellant has alleged that using the claimed materials in the claimed
amounts results in certain unexpected benefits in sparkplugs electrodes
(App. Br. 4, Reply Br. 5). However, Appellant has not directed us to

5 Appellant has not argued that the Examiner's findings regarding the
compositional content of the nickel alloy compositions of Marushichi,
Kurauchi and Kitamura are incorrect. Thus, we will not repeat those
findings here. Given the teachings of the background of the invention and
the cited prior art, it is our judgment that one of ordinary skill in the art
would have found the requisite motivation, suggestion, to arrive at optimum
amount of components for a nickel alloy composition. In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003)(“The normal desire of scientists or
artisans to improve upon what is already generally known provides the
motivation to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.”); In re Aller, 220 F.2d 454, 456
(CCPA 1955)("[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.").

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evidence to support these alleged unexpected benefits. Arguments and
conclusory statements, which are unsupported by factual evidence (e.g.,
comparative experimental data commensurate with the degree of patent
protection sought), are entitled to little probative value. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705,
(Fed. Cir. 1984).
For the foregoing reasons and those set forth in the Answer, we affirm
the 35 U.S.C. § 103(a) rejections of claims 2-8, 10, and 12 as unpatentable
over Marushichi or Kurauchi; and claims 2-8, and 12 as unpatentable over
Kitamura.

ORDER
The rejections of claims 2-8, 10, and 12 under 35 U.S.C. § 103(a) 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).
AFFIRMED

Ls/cam

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