Ex Parte Luo et al

Patent Trial and Appeal Board

Aug 16, 2016

13194079 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/194,079 07 /29/2011 AihuaA. Luo
104102 7590 08/16/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P00427 6-CIP-R&D-MJL 9212
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
MAILDATE DELIVERY MODE
08/16/2016 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 AIHUA A. LUO and ANIL K. SACHDEV
Appeal2015-008216
Application 13/194,079
Technology Center 1700
Before ROMULO H. DELMENDO, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) of a decision of the
Examiner finally rejecting claims 1-8, 10-18, and 20. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The subject matter on appeal relates to a magnesium-aluminum-tin
(Mg-Al-Sn) based cast alloy suitable for structural applications. Spec. 2.
1 Appellants identify General Motors LLC as the real party in interest. App.
Br. 4.
Appeal2015-008216
Application 13/194,079
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cast alloy consisting essentially of:
Al present in an amount of about 6.5 wt% to about 9.0 wt%;
Sn present in an amount of about 1. 0 wt% to about 3. 0 wt%;
Ce present in an amount of about 0 wt% to about 1. 0 wt%;
Y present in an amount of about 0 wt% to about 1.0 wt%; and,
Mg comprising a balance of the alloy minus an amount of
minor and trace elements wherein Mg is present at an amount
of greater than about 85 wt%.
THE REJECTION
Claims 1-8, 10-18, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Das. 2
DISCUSSION
Appellants present argument for independent claims 1 and 11 as a
group, and do not present argument for separate patentability of the
dependent claims. App. Br. 10. Therefore, we limit our discussion to claims
1 and 11 as a group.
Having considered the evidence presented in this Appeal and each of
Appellants' contentions, we are not persuaded that Appellants identify
reversible error in the rejection. Accordingly, we affirm for the reasons
expressed in the Final Rejection mailed October 29, 2014 (hereinafter "Final
Act.") and the Answer. We add the following primarily for emphasis.
The Examiner finds that Das discloses a magnesium alloy
composition comprising by atomic weight 0-11 % Al, 0.5-4% Sn, 0-4% Y,
2 Das et al., US 4,675,157, issued June 23, 1987 ("Das").
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Appeal2015-008216
Application 13/194,079
Ce and ivln, and balance of ivlg and impurities, wherein the ranges disclosed
in the prior art overlap the elemental ranges of the compositions recited in
claims 1 and 11. Final Act. 2-3 (citing Das Abstract and claim 10). In view
of the transitional phrase "consisting essentially of' recited in the claims, the
Examiner further finds no evidence that additional elements of Das's alloy,
such as Zn and Mn, would materially affect the basic and novel
characteristics of Appellants' claimed invention. Id. at 3. See PPG Indus.,
Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (claim
term "consisting essentially of' indicates that "the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.")
Appellants argue that inclusion of Zn and Mn as disclosed by Das
would have a material effect on the basic and novel characteristics of the
alloy recited in claims 1and11. App. Br. 9-10. Appellants, however, offer
no evidence that such ingredients would affect the characteristics of their
claimed alloy. Id. Rather, Appellants point only to Das's disclosure. Id.;
Reply Br. 4--5. This does not meet Appellants' burden of showing that the
ingredients not specifically claimed, but taught in Das, would materially
affect the basic and novel characteristics of the claimed invention. In re De
Lajarte, 337 F.2d 870, 874 (CCPA 1964). Thus, we find no reversible error
in the Examiner's determination that claims 1 and 11 would have been
obvious in view of Das.
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Appeal2015-008216
Application 13/194,079
ORDER
For the reasons given above, it is ORDERED that the decision of the
Examiner to reject claims 1-8, 10-18, and 20 is 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).
AFFIRMED
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