Ex Parte Kernig et al

Patent Trial and Appeal Board

Feb 21, 2017

12744173 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
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.
12/744,173 09/17/2010 Bernhard Kernig 509894 9663
53609 7590 02/23/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
MORILLO, JANELL COMBS
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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 BERNHARD KERNIG, HENK-JAN BRINKMAN, JOCHEN
HASENCLEVER, CHRISTOPH SETTELE, and GERD STEINHOFF
Appeal 2016-003859
Application 12/744,173
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—6 and 14.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Hydro Aluminium
Deutschland Gmbh. Appeal Brief filed March 31, 2015 (“App. Br.”), 2.
2 Claims 7—12 and 15 have been withdrawn from consideration. Final Office
Action entered September 30, 2013 (“Final Act.”) 2.
Appeal 2016-003859
Application 12/744,173
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to a method for
producing aluminum strips for lithographic printing plate support. Spec. 12.
Details of the appealed subject matter are recited in representative claim 1,
which is reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for producing aluminum strips for lithographic
printing plate supports, wherein the aluminum strip is produced
from a rolling ingot, which after optional homogenising is hot-
rolled to a thickness of 2 to 7 mm, and by cold-rolling the hot
strip the aluminum strip is cold-rolled to a final thickness of
0.15 to 0.5 mm, wherein the aluminum strip comprises an
aluminum alloy including the following alloying constituents in
weight percent:
0.3% < Fe < 0.4%,
0.25% < Mg < 1.0%,
0.05% < Si <0.25%,
Mn < 0.1%,
Cu < 0.04%,
with the remainder A1 and unavoidable impurities,
individually max. 0.05%, in total max. 0.15%; wherein the
aluminum alloy has a Cr content of a max. 50 ppm;
during cold-rolling an intermediate annealing at a
thickness of 1.5 mm to 0.5 mm is carried out and the aluminum
strip is then rolled to a final thickness of 0.15 mm to 0.5 mm by
cold-rolling and is coiled in a hard-as-rolled state for further
processing into a lithographic printing plate support.
(App. Br. Claims Appendix 1.)
Appellants seek review of the following rejections maintained by the
Examiner in the Answer entered July 22, 2014 (“Ans.”):
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Application 12/744,173
I. Claims 1—4, 6, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Shoji et al. (US 4,822,715, issued April 18, 1989).
II. Claims 1, 3—6, and 14 under 35 U.S.C. § 103(a) as unpatentable
over von Asten et al. (US 6,447,982 Bl, issued September10, 2002).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejections under 35
U.S.C. § 103(a) for the reasons set forth in the Final Action and the Answer.
We add the discussion below primarily for emphasis and completeness.
Rejection I3
Appellants do not dispute the Examiner’s finding that Shoji discloses
an aluminum alloy support for lithographic printing plates that comprises Fe,
Mg, Si, Mn, and Cu in amounts that overlap the respective ranges recited in
claim 1. Compare Final Act. 2—3, with App. Br. 4—10; Shoji col. 2,11. 64—
65; col. 3,11. 8—15. Nor do Appellants dispute the Examiner’s finding that
Shoji discloses that the support comprises no more than 0.05% (500 ppm)
Cr, which also overlaps the range of Cr content recited in claim 1. Compare
Final Act. 2, with App. Br. 4—10; Shoji col. 4,11. 8—11. Appellants also do
not dispute the Examiner’s finding that Shoji discloses that the aluminum
alloy support is produced by casting an ingot, hot rolling to a thickness of
4.5 mm, cold rolling to a thickness of 2.0 mm, interannealing, and cold
3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants argue claims 1—4, 6, and 14 as a group based
on claim 1. App. Br. 4—10. Therefore, for the purposes of this appeal, we
select claim 1 as representative, and decide the propriety of Rejection I
based on claim 1 alone.
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Application 12/744,173
rolling to a final thickness of 0.3 mm. Compare Final Act. 2, with App. Br.
4—10; Shoji col. 4,11. 16—23; col. 8,11. 8—19. The Examiner implicitly
acknowledges that the thickness during intermediate annealing disclosed by
Shoji (2 mm) is outside the range of 1.5 mm to 0.5 mm recited in claim 1,
but the Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to have
performed the intermediate annealing at a variety of suitable thicknesses,
such as 0.5—1.5 mm as recited in claim 1, to provide the predictable purpose
of stress relief. Final Act. 3.
Appellants argue that disclosures in their Specification demonstrate
the criticality of a Cr content of at most 50 ppm in aluminum alloy
lithographic printing plate supports as recited in claim 1, thus rebutting the
Examiner’s prima facie case of obviousness based on the overlapping range
of Cr content disclosed in Shoji (up to 500 ppm). App. Br. 4—6.
Specifically, Appellants contend that their Specification indicates that
recrystallization ensures that the wall surface of aluminum alloy lithographic
printing plate supports can be well roughened during production of the
supports, and Appellants point out that their Specification further indicates
that Cr inhibits recrystallization and should therefore only be included in the
aluminum alloy in very small proportions of less than 100 ppm, preferably
no more than 50 ppm. App. Br. 5; Spec. Tflf 10-11.4
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
4 Our citations to Appellants’ Specification refer to the Specification filed
May 21, 2010, and although the paragraph numbers that we cite differ from
those cited by Appellants in their Appeal Brief, both refer to the same
disclosures.
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Application 12/744,173
claims. These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
As correctly found by the Examiner, the relied-upon information
provided in Appellants’ Specification does not demonstrate the criticality of
a maximum Cr content of 50 ppm as recited in claim 1, and is therefore
insufficient to rebut the prima facie case of obviousness based on Shoji’s
disclosure of a Cr content of up to 500 ppm. Ans. 5—6. In re Peterson, 315
F.3d 1325, 1329-30 (Fed. Cir. 2003) (“In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness. . . .
Selecting a narrow range from within a somewhat broader range disclosed in
a prior art reference is no less obvious than identifying a range that simply
overlaps a disclosed range. In fact, 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.”)
Specifically, Appellants do not identify any averment in the
Specification or provide any other evidence establishing that the asserted
improvement in surface roughening resulting from recrystallization achieved
by limiting the Cr content in the aluminum alloy to less than 50 ppm would
have been unexpected by one ordinary skill in the art at the time of their
invention. App. Br. 4—10. In addition, the relied-upon disclosures in
Appellants’ Specification are not directed to a comparison between the level
of recrystallization in an aluminum alloy having a Cr content of no more
than 50 ppm as recited in claim 1 and the level of recrystallization in an
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Application 12/744,173
aluminum alloy having a Cr content of no more than 500 ppm as disclosed
in Shoji, the closest prior art. Spec. 10-11. Appellants’ arguments and
the relied-upon disclosures thus do not establish that a significant,
unexpected difference in the level of recrystallization would result from the
Cr content disclosed in Shoji as compared to the level resulting from the Cr
content recited in claim 1. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) (“Geisler made no such assertion [that results were unexpected] in his
application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132
.. . Instead, the only reference to unexpected results was a statement by
Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”); In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”). Accordingly,
Appellants do not meet their burden of establishing that the maximum Cr
content of 50 ppm recited in claim 1 is critical.
Appellants further argue that Shoji teaches away from limiting the
amount of Cr to less than 50 ppm because Shoji does not disclose the
advantages of doing so, and does not recognize that increased amounts of Cr
inhibit recrystallization and can adversely affect the roughening of
lithographic printing plate supports. App. Br. 6—7.
On this record, however, we find no disclosure in Shoji criticizing or
disparaging this lesser Cr content, and find, accordingly, that its disclosure
would not have discouraged one of ordinary skill in the art from producing
an aluminum alloy support having a Cr content of only up to 50 ppm.
Contrary to Appellants’ arguments, Shoji therefore does not teach away
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Application 12/744,173
from the Cr content recited in claim 1. DyStar Textilfarben Gmbh & Co.
Deutschland KG v. C.H. Patrick Col., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
(“We will not read into a reference a teaching away from a process where no
such language exists.”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“[t]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed”); In re Gurley, 27 F.3d 551, 552—53 (Fed. Cir. 1994).
Appellants also argue, with respect to the requirement in claim 1 for
intermediate annealing at a thickness of 0.5 to 1.5 mm, that the legal
precedent set forth in MPEP § 2144.04(IV)(A) {In re Rose, 220 F.2d 459
(CCPA 1955), In re Rinehart, 531 F.2d 1048 (CCPA 1976), and Gardner v.
TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984)) cannot be relied upon to
establish that Shoji’s disclosure of intermediate annealing at a thickness of 2
mm renders the recited thickness of 0.5 to 1.5 mm prima facie obvious based
on an uninventive change in size or proportion. App. Br. 7—10. Appellants
contend that, in contrast to Rose, Rinehart, and Gardner, in which the size of
a package, the scale of a production process, and the dimensions of a device,
respectively, each did not patentably distinguish over the prior art, the
intermediate annealing thickness recited in claim 1 does distinguish over
Shoji. App. Br. 7-10. Appellants cite paragraphs 25 and 26 of their
Specification5 as support for annealing at an intermediate thickness to
provide the significant advantages of optimum tensile strength and
maximum reversed bending fatigue properties. App. Br. 8; Spec. Tflf 15, 17.
Appellants’ arguments—focusing only on a statement made by the
5 See footnote 4 above.
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Application 12/744,173
Examiner in the Response to Arguments portion of the Final Action (Final
Act. 6)—are not persuasive of reversible error where the Examiner relies on
Shoji’s disclosure of intermediate annealing at a thickness of 2 mm in
concluding that it would have been obvious to one of ordinary skill in the art
at the time of Appellants’ invention to have performed the intermediate
annealing at a variety of suitable thicknesses, including at thicknesses of
0.5—1.5 mm as recited in claim 1, to predictably provide stress relief (Final
Act. 3). On this record, Appellants do not direct us to any persuasive
argument or evidence to distinguish the effect of intermediate annealing at a
thickness of 1.5 mm or less and 2 mm as disclosed in Shoji, particularly
where the thickness of lower than 1.1 mm set forth in their Specification is
merely exemplary. Spec. 115. Accordingly, Appellants’ arguments fail to
adequately address the Examiner’s rationale grounded on providing stress
relief supporting the conclusion of obviousness and are, therefore,
unpersuasive of reversible error.6
Nevertheless, Appellants’ arguments assert the criticality of the
6 Appellants do dispute the Examiner’s rationale based on the predictable
purpose of providing stress relief in the Reply Brief, but Appellants could
have raised these arguments earlier in their Appeal Brief. Reply Brief filed
February 26, 2016 (“Rep. Br”), 9. Because Appellants do not show good
cause for presenting these arguments for the first time in their Reply Brief,
we deem them waived and do not consider them. 37 C.F.R.
§ 41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(explaining that under the previous rules, which are similar to the current
rules, “the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
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Application 12/744,173
recited intermediate annealing thickness based upon the cited disclosures in
the Specification. However, Appellants do not identify any averment in the
Specification or provide any other evidence establishing a basis for
improved properties when the intermediate annealing thickness is 0.5 to 1.5
mm rather than thicknesses outside the claimed range or that the asserted
optimum tensile strength and maximum reversed bending fatigue properties
resulting from an intermediate annealing thickness of 0.5 to 1.5 mm would
have been unexpected by one ordinary skill in the art at the time of the
invention. App. Br. 7—10. The relied-upon disclosures in Appellants’
Specification are not directed to a comparison between the tensile strength
and reversed bending fatigue of a support produced in a process utilizing an
intermediate annealing thickness of 0.5 to 1.5 mm as recited in claim 1, and
a support produced in a process utilizing an intermediate annealing thickness
of 2 mm as disclosed in Shoji, the closest prior art. Appellants’ arguments
and evidence thus do not establish that a significant, unexpected difference
in tensile strength and reversed bending fatigue would result from
intermediate annealing at a thickness of 0.5 to 1.5 mm as recited in claim 1,
compared to intermediate annealing at a thickness of 2 mm as disclosed in
Shoji. Spec. 1115, 17.
Appellants’ arguments and evidence are thus unpersuasive of
reversible error. We accordingly sustain the Examiner’s rejection of claims
1—4, 6, and 14 under 35 U.S.C. § 103(a) as unpatentable over Shoji.
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Application 12/744,173
Rejection II7
Appellants do not dispute the Examiner’s finding that von Asten
discloses an aluminum alloy support for lithographic printing plates that
comprises Fe, Mg, Si, Mn, and Cu in amounts that overlap the respective
ranges recited in claim 1. Compare Final Act. 4—5, with App. Br. 10-14;
von Asten Abstract; col. 1,11. 7—24. Nor do Appellants dispute the
Examiner’s finding that von Asten discloses that the support comprises no
more than 0.01% (100 ppm) Cr, which also overlaps the range of Cr content
recited in claim 1. Compare Final Act. 4, with App. Br. 10—14; von Asten
col. 13,11. 44—55. von Asten discloses that the aluminum alloy support is
produced by casting an ingot, hot rolling to a thickness of 2—7 mm, and, after
cooling, “cold rolling is carried out with or without intermediate annealing”
with a reduction of 60% to a final thickness of 0.3 mm. von Asten Abstract;
col. 4,1. 62—col. 5,1. 6; col. 5,11. 42^46; col. 7,1. 64—col. 8,1. 6; col. 8,11.
39-42, 50. Appellants do not dispute the Examiner’s finding that von Asten
discloses that intermediate annealing is conducted during cold rolling, i.e.,
after a cold rolling, but before the final cold rolling.8 Compare Final Act. 4,
7 Appellants argue claims 1, 3—6, and 14 as a group based on claim 1. App.
Br. 10-14. Therefore, for the purposes of this appeal, we select claim 1 as
representative, and decide the propriety of Rejection II based on claim 1
alone.
8 Because Appellants do not dispute this finding, we need not reach its merits
in our decision. See, e.g., Shinseki v. Sanders, 556 U.S. 396, 409-10 (2009)
(“Fower court cases make clear that courts have correlated review of
ordinary administrative proceedings to appellate review of civil cases in this
respect. . . [T]he party seeking reversal normally must explain why the
erroneous ruling caused harm.”) (citations omitted); See also In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (discussing the role of
harmless error in appeals from decisions of the Board of Patent Appeals and
Interferences (now, the Patent Trial and Appeal Board)).
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Application 12/744,173
with App. Br. 10-14.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to have
performed the intermediate annealing at a variety of suitable thicknesses,
such as 0.5—1.5 mm as recited in claim 1, to provide the predictable purpose
of stress relief. Final Act. 4.
Appellants essentially proffer the same arguments for this rejection
based on von Asten as for Rejection I based on Shoji (discussed above).
App. Br. 10—14. Accordingly, for the same reasons set forth above for
Rejection I, the relied-upon information provided in Appellants’
Specification does not demonstrate the criticality of a maximum Cr content
of 50 ppm as recited in claim 1, and is therefore insufficient to rebut the
prima facie case of obviousness based on von Asten’s disclosure of an
overlapping Cr content of up to 100 ppm. Spec. 10-11. As with
Rejection I, Appellants do not provide a comparison between the surface
roughening resulting from recrystallization achieved with a Cr content
recited in claim 1 and the surface roughening resulting from recrystallization
achieved with the Cr content disclosed in the closest prior art—von Asten.
App. Br. 10; Spec. 10-11. In addition, contrary to Appellants’ assertions,
von Asten does not teach away from a Cr content of 50 ppm because we find
no disclosure in von Asten criticizing or disparaging such a Cr content.
App. Br. 11.
Moreover, Appellants’ arguments regarding the requirement in claim
1 for intermediate annealing at a thickness of 0.5 to 1.5 mm do not address
the Examiner’s rationale for reaching the conclusion of obviousness based
on the recognition by one of ordinary skill in the art that intermediate
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Application 12/744,173
annealing at such a thickness would have provided the predictable purpose
of stress relief.9 App. Br. 11—14.
Appellants again assert the criticality of the intermediate annealing
thickness recited in claim 1 based upon the same disclosures they cited in
their Specification in their arguments for Rejection I, but as with Rejection I,
Appellants do not establish that the asserted optimum tensile strength and
maximum reversed bending fatigue properties resulting from an intermediate
annealing thickness of 0.5 to 1.5 mm would have been unexpected by one
ordinary skill in the art at the time of the invention. App. Br. 11—14; Spec.
15, 17. Accordingly, Appellants do not meet their burden of establishing the
criticality of the intermediate annealing thickness recited in claim 1.
We accordingly sustain the Examiner’s rejection of claims 1, 3—6, and
14 under 35 U.S.C. § 103(a) as unpatentable over von Asten.
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s decision rejecting claims 1—6 and 14
under § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9 As with Rejection I, Appellants’ arguments addressing this rationale are
untimely and we deem them waived. Rep. Br. 13.
12