Ex Parte Keener

Board of Patent Appeals and Interferences

Mar 17, 2010

10982338 (B.P.A.I. Mar. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN G. KEENER
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Appeal 2009-007447
Application 10/982,338
Technology Center 1700
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Decided: March 17, 2010
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Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 8-29. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 8 is representative of the subject matter on appeal and are set
forth below:

Appeal 2009-007447
Application 10/982,338

8. A method for making a pre-coated ultra-fine, submicron grain
titanium or titanium-alloy component comprising the steps of:

providing a titanium or titanium-alloy material having a first grain
size;

cryogenically milling the titanium or titanium-alloy material into an
ultra-fine, submicron grain material having a second grain size less than the
first grain size;

densifying the ultra-fine, submicron grain material to form a densified
ultra-fine grain material;

forming an article from said densified ultra-fine, submicron grain
titanium or titanium-alloy material; and,

coating the article with an organic coating containing phenolic resin.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Luton 4,818,481 Apr. 04, 1989
Keener ‘200 6,274,200 B1 Aug. 14, 2001
Keener ‘381 6,638,381 B2 Oct. 28, 2003

THE REJECTION(S)
Claims 8-29 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Luton in view of Keener ‘381 and further in
view of Keener ‘200.
ISSUE
Has Appellant identified error in the Examiner’s determination that
aluminum alloy is functionally equivalent to titanium and titanium alloys for
use in the Luton method?
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We answer this question in the affirmative.

FINDINGS OF FACT
1. The Examiner states:
[T]he fact that both materials [aluminum alloy versus titanium or
titanium alloy] can be used for the same applications [for the
manufacturing of aircraft skin and interior structures] is a strong
indication that the materials are similar in chemical, physical and
thermal properties. Therefore, the treatment methods suitable for one
material would very likely be applicable to the other material.
Ans. 7.
2. The Keener Declaration filed under 37 C.F.R. § 1.132 (submitted with
the response of 19 June 2007) states at paragraph 5:
In particular, at the time of the invention claimed in this application, it
would not have been obvious to a person of ordinary skill in the art to
substitute the aluminum-alloy powder used in the process of Luton, et
al. with titanium or titanium-alloy powder particles. Nor were
titanium and titanium alloys considered by those skilled in this art to
be functionally equivalent to aluminum alloy. To the contrary, the use
of titanium and titanium alloys in the cryogenic-milling and
densifying operations of the present invention presented concerns and
challenges that were inapplicable to the use of aluminum alloys in the
process of Luton, et al. For example, titanium and titanium alloys
were considered to be too volatile to be subjected to the cryogenic-
milling operations of Luton, et al. and the use of titanium and titanium
alloys in such processes was actually avoided due to safety concerns.
In fact, my suggestion to subject titanium and titanium alloys to
cryogenic milling and densifying was met with opposition and
objection. Upon my request to a milling house to perform such
operations in connection with my work on the present invention, the
milling house initially objected, citing concerns that the titanium
alloys could possibly cause an explosion during processing. Upon
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Application 10/982,338

relocating the attritor equipment to a smaller building, and only then,
the milling house agreed to perform the cryogenic milling. This was
not a concern for similar operations that the milling house performed
with aluminum alloys.
PRINCIPLES OF LAW
In order to rely on equivalence as a rationale supporting an
obviousness rejection, the equivalency must be recognized in the prior art,
and cannot be based on applicant’s disclosure or the mere fact that the
components at issue are functional or mechanical equivalents. In re Ruff,
256 F.2d 590, 596-97 (CCPA 1958) (emphasis added); In re Lam, 35 Fed.
Appx. 889, 894-95 (Fed. Cir. 2002).
ANALYSIS
Appellant’s claim 8 is directed to a method for making a pre-coated
ultra-fine, submicron grain titanium or titanium-alloy component comprising
the steps of: providing a titanium or titanium-alloy material having a first
grain size; cryogenically milling the titanium or titanium-alloy material into
an ultra-fine, submicron grain material having a second grain size less than
the first grain size; densifying the ultra-fine, submicron grain material to
form a densified ultra-fine grain material; forming an article from said
densified ultra-fine, submicron grain titanium or titanium- alloy material;
and, coating the article with an organic coating containing phenolic resin.
The Examiner concludes that it would have been obvious to have
modified the process of Luton by substituting the aluminum alloy powder
with titanium and titanium-alloy powder with expected success because
aluminum alloy and titanium alloys are functionally equivalent in terms of
being skin and frame materials as discussed in Luton. Ans. 3-4.
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However, the Examiner does not point to where the prior art
recognizes that these materials are equivalent for use in the method of Luton.
The statement set forth in the Keener Declaration, fact finding 2, supra,
supports that these materials are not equivalent for use in Luton’s method.
Hence, the statement made by the Examiner, Fact Finding 1, supra, is not
properly supported by objective evidence/prior art. Therefore, we disagree
with the Examiner’s rationale that the materials are functionally equivalent
for use in Luton’s method. In re Ruff, 256 F.2d at 596-97; In re Lam, 35
Fed. Appx. at 895-96. In this light, we agree with Appellant’s arguments
that the Examiner’s functionally equivalent rationale is flawed. Br. 5-7.
Reply Br. 2-4.
We also note the while the Examiner states he addressed the Keener
Declaration (Ans. 10), we are uncertain as to the Examiner’s position on
specific points made in the Keener Declaration. Also, Appellant argues, on
page 9 of the Brief, that the Examiner’s final office action and the advisory
action do not address this Declaration. In this light, we point to applicable
case law pertinent to how objective evidence must be weighed and
considered by the Examiner. When an applicant timely submits evidence
traversing a rejection, the Examiner must reconsider the patentability of the
claimed invention. The ultimate determination of patentability must be
based on consideration of the entire record, by a preponderance of evidence,
with due consideration to the persuasiveness of any arguments and any
secondary evidence. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.1992).
The submission of objective evidence of patentability does not mandate a
conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 646
(Fed. Cir. 1987). Facts established by rebuttal evidence must be evaluated
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along with the facts on which the conclusion of a prima facie case was
reached, not against the conclusion itself. In re Eli Lilly & Co., 902 F.2d
943, 946 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence
should not be evaluated for its ability to knockdown the prima facie case.
All of the competent rebuttal evidence taken as a whole should be weighed
against the evidence supporting the prima facie case. In re Piasecki, 745
F.2d 1468, 1472-73 (Fed. Cir. 1984). If, after evaluating the evidence, an
Examiner is still not convinced that the claimed invention is patentable, the
next Office action should include a statement to that effect and identify the
reason(s) (e.g., evidence of commercial success not convincing, the
commercial success not related to the technology, etc.). See Demaco Corp.
v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988).

CONCLUSIONS OF LAW
Appellant has identified error in the Examiner’s determination that
aluminum alloy is functionally equivalent to titanium and titanium alloys for
use in the Luton method.

DECISION
We reverse the rejection.

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)(v).
REVERSED

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