11345169 (B.P.A.I. Aug. 15, 2011)

Ex Parte Langan

Board of Patent Appeals and InterferencesAug 15, 2011

11345169 (B.P.A.I. Aug. 15, 2011)

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. 11/345,169 02/01/2006 Timothy Langan STTI 66316 9256 29694 7590 08/16/2011 PIETRAGALLO GORDON ALFANO BOSICK & RASPANTI LLP ONE OXFORD CENTRE, 38TH FLOOR 301 GRANT STREET PITTSBURGH, PA 15219-6404 EXAMINER MORILLO, JANELL COMBS ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 08/16/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TIMOTHY LANGAN ________________ Appeal 2011-001387 Application 11/345,169 Technology Center 1700 ________________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-9, 14, 15, 21, and 37. Claims 11-13, 17, 18, and 22-36 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1 and 37 are illustrative: 1. A wrought aluminum alloy comprising from 0.5 to 10 weight percent Zn, from 0.1 to 10 weight percent Mg, from 0.01 to 2 weight percent Sc, at least 0.01 weight percent of at least one alloying addition selected from Ag and Sn, and the balance aluminum and incidental impurities, wherein the Ag alloying addition comprises up to 1 weight percent and the Sn alloying Appeal 2011-001387 Application 11/345,169 2 addition comprises up to 0.5 weight percent of the alloy, the alloy is substantially free of Cu, Mn, Cr, V, Ni and Mo, and the alloy is in a T7 temper with an unrecrystallized grain structure. 37. A wrought aluminum alloy comprising from 0.5 to 10 weight percent Zn, from 0.1 to 10 weight percent Mg, from 0.01 to 2 weight percent Sc, from 0.01 to 0.5 weight percent Sn, and the balance aluminum and incidental impurities. The Examiner relies upon the following references as evidence of obviousness (Ans. 3): Kramer 6,524,410 B1 Feb. 25, 2003 Denzer 2005/0269000 A1 Dec. 08, 2005 Aluminum and Aluminum Alloys, in ASM Speciality Handbook 45 (J.R. Davis & Ass. eds., 1993) (hereafter “Aluminum”). Appellant’s claim 1 on appeal is directed to an aluminum/zinc/magnesium alloy comprising Sc, and at least one of Ag and Sn. The alloy is substantially free of Cu and Cr, and is in a T7 temper with an unrecrystallized grain structure. Appealed claim 37 defines an aluminum/zinc/magnesium alloy comprising Sc and Sn, with no recitation of temper and grain structure. Appealed claims 1-9, 14, 15, 21, and 37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kramer in view of “Aluminum” and Denzer. We have thoroughly reviewed the respective positions advanced by Appellant and the Examiner. In so doing, we find that the Examiner has not established a prima facie case of obviousness for the subject matter defined by claims 1-9, 14, 15 and 21. We concur with the Examiner, however, that the alloy defined by claim 37 would have been obvious to one of ordinary Appeal 2011-001387 Application 11/345,169 3 skill in the art within the meaning of § 103. Accordingly, the Examiner’s decision is affirmed-in-part. We consider first the rejection of claim 1 and the claims dependent thereon. As acknowledged by the Examiner, Kramer does not teach the addition of Ag or Sn to the alloy, nor that the alloy is processed by a T7 temper and has an uncrystallized grain structure. While we agree with the Examiner that “Aluminum” evidences the obviousness of adding Ag or Sn to the aluminum/zinc/magnesium alloy of Kramer, the Examiner has not established the obviousness of processing the Kramer alloy in a T7 temper to have unrecrystallized grain structure. Although Denzer discloses aluminum aerospace alloys in a T7 temper having an unrecrystallized grain structure, Kramer is directed to alloys for a bicycle frame in a T4 or a T6 temper (col. 1, ll. 36-50). The Examiner has not adequately explained why it would have been obvious for one of ordinary skill in the art to modify the processing of an alloy used for bicycle frames in accordance with the processing used for an aerospace alloy, particularly since the aerospace alloy contains 1-3 weight percent Cu whereas Appellant’s alloy is substantially free of Cu and Kramer’s alloy may comprise zero percent Cu. We now turn to the rejection of claim 37. As noted above, claim 37 does not recite any temper or grain structure for the aluminum/zinc/magnesium alloy. The claim does recite as little as 0.01 weight percent Sn, and we agree with the Examiner that it would have been obvious for one of ordinary skill in the art to include Sn in the aluminum/zinc/magnesium alloy of Kramer for the benefit taught by “Aluminum”, namely, to act as a sacrificial anode in salt water. Appellant’s argument that there is no teaching in “Aluminum” that “both Ag and Sn Appeal 2011-001387 Application 11/345,169 4 could be added to an alloy” is not persuasive (Br. 5, penultimate para.). As pointed out by the Examiner, claim 37 does not require any Ag in the alloy. In conclusion, based on the foregoing, the Examiner’s § 103 rejection of claim 37 is sustained, and the § 103 rejection of claims 1-9, 14, 15, and 21 is reversed. The Examiner’s decision rejecting the appealed claims is affirmed-in-part. 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). AFFIRMED-IN-PART ssl