Ex Parte Jacinto et al

Patent Trial and Appeal Board

Sep 17, 2012

12626205 (P.T.A.B. Sep. 17, 2012)

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.
12/626,205 11/25/2009 Monica A. Jacinto 2019-US-AA;67397-012PUS3 1708
54549 7590 09/17/2012
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte MONICA A. JACINTO and
DALLIS ANN HARDWICK
____________

Appeal 2011-006034
Application 12/626,205
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/626,205

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 and 2. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

Claim 1 is illustrative of the claimed subject matter:
1. A burn resistant, high tensile strength alloy, consisting
of:
70 to about 75 weight percent nickel;
about 10 to about 17 weight percent cobalt;
about 6 to about 15 weight percent chromium;
about 1 to about 4 weight percent aluminum;
about 1 to about 4 weight percent titanium;
at least one of carbon, boron, or zirconium;
wherein the alloy has a tensile strength of at least about
145,000 pounds per square inch;
wherein the alloy is oxidation resistant; and
wherein the alloy has an extinguishing threshold pressure
of at least about 4,000 pounds per square inch.
The Examiner maintains, and the Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) claims 1 and 2 as unpatentable over Ballocci (FR 2 534 167,
published Apr. 13, 1984, as translated);
2) claims 1 and 2 as unpatentable over Willi (DE 3,428,316, published
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Feb. 13, 1986, as translated);
3) claim 1 as unpatentable over Darmara (US 2,809,110, issued Oct.
8, 1957).

PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
It is well established that where the claimed ranges overlap or lie
inside ranges disclosed by the prior art, a prima facie case of obviousness
exists. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 267 (CCPA
1976).

ANALYSIS
After thorough review of the respective positions provided by
Appellants and the Examiner, we AFFIRM the § 103(a) rejections of claims
1 and 2 based on Ballocci or Willi on appeal for essentially the reasons
presented by the Examiner, including the Response to Argument section
(Ans., mailed Dec. 20, 2010). We reverse the rejection of claim 1 based on
Darmara. We add the following primarily for emphasis.
With respect to the rejection based on Darmara, we agree with
Appellants that the Examiner has not established a prima face case of
obviousness since the maximum amount of nickel in the alloy of Darmara
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(64.75%) is well outside the claimed range of 70 to 75% (App. Br. 7).
Accordingly, this situation does not fall within the general principle that a
prima facie case of obviousness may exist where the prior art and claimed
ranges do not overlap but are sufficiently close that one skilled in the art
would have expected them to have the same properties, as held in Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
On the other hand, the Appellants do not dispute that Examiner has
established a prima facie case of obviousness as to claims 1 and 2 based on
either of Ballocci or Willi (App. Br. 3-5). As such, where the Examiner
establishes a reasonable basis to conclude that the claimed invention would
have been obvious, as here, the burden shifts to the Appellants to rebut the
prima facie case by providing evidence of unexpected results, based on
comparisons with the closest prior art and commensurate in scope with the
claimed subject matter, or a showing that the prior art teaches away from the
claimed invention in any material respect. See, e.g., In re Geisler, 116 F.3d
at 1469-70; In re Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990).
Appellants do not argue that the prior art teaches away from the
claimed invention; rather, Appellants only contend that the claimed
composition “represents a sweet spot for achieving a particularly desirable
combination of strength and burn resistance” (App. Br. 3). To demonstrate
unexpected results, Appellants primarily rely upon the Jacinto Declaration,
filed February 8, 2010, as well as the data in Table 1 of the Specification
(App. Br. 3, 4). Appellants state that the data “tends to show that the
claimed composition represents an unexpected compositional sweet spot”
(App. Br. 5, emphasis added; see also Reply Br. 3). Appellants urge that the
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data is sufficient to show trends and conclude that the claimed composition
yields new and unexpected results (App. Br. 4).
However, Appellants do not dispute with any specificity the
Examiner’s detailed findings that the various tested comparative alloys,
upon which Appellants rely upon to show the criticality of the claimed
invention, are not sufficient comparative examples because, e.g., the
elements are too far outside the claimed range to show criticality, and the
comparative examples include many other elements not permitted in the
claimed alloy (Ans. 11-19; generally App. Br., Reply Br.). The
preponderance of the evidence therefore supports the Examiner’s
determination that the submitted evidence does not show that the claimed
alloy that “consists of” the recited elements in the claimed ranges exhibits
unexpected results compared to those comparative examples (id.).
Appellants also do not dispute the Examiner’s finding that inventive
Examples 1 and 2 from Table 1 are not commensurate in scope with the
claimed alloy because they do not contain one of the elements required by
claim 1 (see, e.g., Ans. 15; Reply Br. 2). Accordingly, a preponderance of
the evidence supports the Examiner’s determination that Appellants’
showing in the Jacinto Declaration, as well as the data in Table 1, is not
sufficient to show unexpected results on this record. See In re Peterson, 315
F.3d at 1330-31 (in order to successfully rebut a prima facie case of
obviousness, a showing of unexpected results must be commensurate in
scope with the claims); see also, In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
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the claims which the evidence is offered to support.’ In re Tiffin, 448 F.2d
791, 792 (CCPA 1971)” (parallel citation omitted)); see also, In re Dunn,
349 F.2d 433, 439 (CCPA 1965) (“[W]e do not feel it an unreasonable
burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be
proven is lost here in the welter of unfixed variables.”).

In conclusion, Appellants have not shown reversible error in the
Examiner’s obviousness rejection of claims 1 and 2 based on Ballocci or
Willi, nor have Appellants overcome these rejections by rebutting the prima
facie case with sufficient evidence of unexpected results.
Accordingly, we affirm the § 103 rejections of claims 1 and 2 on
appeal based on Ballocci or Willi.
ORDER
We affirm the Examiner’s decision to reject claims 1 and 2 based on
Ballocci or Willi.
We reverse the Examiner’s rejection of claim 1 based on Darmara.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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