Ex Parte Makino

Board of Patent Appeals and Interferences

Mar 25, 2010

10882088 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHINJI MAKINO
____________

Appeal 2009-006503
Application 10/882,088
Technology Center 1700
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Decided: March 25, 2010
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 5, and 6, all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2009-006503
Application 10/882,088

I. BACKGROUND
The invention relates to an impact absorbing material such as an
automobile bumper reinforcement or impact beam. Claim 1 is illustrative of
the subject matter on appeal:
1. A bumper reinforcement formed by: casting an aluminum
alloy into a billet, the aluminum alloy including 5.6 to 6.6
wt % of zinc, 0.75 to 1.10 wt % of magnesium, 0.10 to
0.25 wt % of copper, 0.05 to 0.20 wt % of manganese,
0.03 to 0.15 wt % of chromium, 0.10 to 0.25 wt % of
zirconium, 0.02 to 0.10 wt % of silicon, 0.05 to 0.17 wt
% of iron, and the balance being aluminum and
unavoidable impurities;

extruding the billet at a speed equal to or more than
4m/min to obtain an extruded shape having a hollow
cross-section, the triple-hollow cross-section being a
hollow quadrangle with two stays therein; and

subjecting the extruded shape to artificial aging so that
0.2% proof stress is in a range of 340 to 385 MPa and an
amount of energy absorption company in cross-sectional
deformation is more than 3200 joule.

The Examiner relies upon the following references in rejecting the
subject matter on appeal:1
Kariatsumari 6,481,690 B2 Nov. 19, 2002
Kaihatsu JP 09-241785A Sep. 16, 1997
Chigusa JP 59-113164A Jun. 29, 1984
Isurugi JP 2002-012107A Jan. 15, 2002

1 We rely upon the English-language translations of the Japanese patent
publications relied upon in rejecting the appealed subject matter provided in
the record.
2
Appeal 2009-006503
Application 10/882,088

Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of JP ‘164, JP ‘785, JP ‘107 and
Kariatsumari.
ISSUE
Appellant has not disputed the Examiner's determination (Ans. 3-7)
that it would've been obvious to a person of ordinary skill in the art to
combine the teachings of JP ‘164, JP ‘785, JP ‘107 and Kariatsumari to form
a bumper reinforcement comprising an aluminum alloy that falls within the
scope of the claimed invention. Rather, in response to the Examiner's
rejection, Appellant relies upon an affidavit from the inventor Makino as
providing evidence that “the proposed combination of references to not
possess the characteristics of the claimed product and, therefore, the claimed
invention is not obvious.” (App.Br. 7)
The issue is: Does the affidavit from the inventor Makino establish
that the combination of JP ‘164, JP ‘785, and JP ‘107 does not possess the
characteristics of the claimed product and, therefore, the claimed invention
is not obvious?2 We answer this question in the negative. Therefore, we
AFFIRM.
We have thoroughly reviewed each of Appellant's arguments for
patentability.3 However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary

2 The Examiner relied upon Kariatsumari for describing the formation of
triple hollow bumper reinforcements from 7xxx series alloys. (Ans. 6).
3 Appellant's arguments (and, therefore, our analysis) principally focus on
independent claim 1. Appellant has not provided substantive separate
arguments addressing the remaining claims.
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Appeal 2009-006503
Application 10/882,088

skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection.
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct.
1727, 1739 (2007). The question to be asked is “whether the improvement
is more than the predictable use of prior art elements according to their
established functions.” Id.
Appellant has not argued that a person of ordinary skill in the art
would not have combined the teachings of JP ‘164, JP ‘785, JP ‘107 and
Kariatsumari as suggested by the Examiner. Consequently, Appellant has
not established that the evidence relied upon by the Examiner does not
establish a prima facie case of obviousness within the meaning of 35 U.S.C.
§ 103. We must now consider anew the issue of obviousness with due
regard for all evidence relevant to the ultimate conclusion. In re Rinehart,
531 F.2d 1048, 1052 (CCPA 1976).
In support of the nonobviousness position, Appellant proffers a
Affidavit under 37 C.F.R. § 1.132 by Shinji Makino, signed on May 22,
2008. 4
According to Appellant, the Makino Affidavit exemplifies that
unexpected results are achieved by the claimed invention. (App. Br. 6;
Reply Br. 3-4).

4 The inventor of the present application is the same as the Declarant.
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Appeal 2009-006503
Application 10/882,088

The Makino Affidavit has been considered. However, the Affidavit is
not persuasive of non-obviousness for the reasons set forth by the Examiner.
(See Ans. 8-12). We agree with the Examiner that the Appellant has not
explained why the comparative evidence presented in the Affidavit is
representative of the cited prior art and/or are the closest examples to the
claimed invention.
Makino ¶¶ 17-19 are reproduced below:
17. Experimental alloys Nos. 1 to 5 were produced based on the
alloy composition disclosed in JP ‘785 referring to the Si content
and the Fe content disclosed in the examples of JP ‘164 so that a
high energy absorption was considered to be obtained, stress
corrosion cracking (SCC) assistance necessary for a bumper
reinforcement was considered to be improved, and extrudability
was considered to be improved (only an extruded product having a
solid cross section is disclosed in JP ‘785).”
18. Specifically, Experimental alloys Nos. 1 to 5 were produced
so that the properties necessary for a bumper reinforcement were
improved within the range of the aluminum alloy is disclosed in
the prior art.
19. The experimental alloys Nos. 1 to 5 listed in the
experimental report were produced under the same conditions as
the examples described in the specification of the present
application.

It is clear from the paragraphs from the Makino Affidavit, reproduced
above, that the experimental alloys were produced with variants from the
cited prior art. Furthermore, Makino Affidavit ¶¶ 26-31 describes the
properties sought to be achieved by the Experimental alloys Nos. 1 to 5.
However, the Declarant has not cited to portions of JP ‘164, JP ‘785 or JP
‘107 that disclose these “desired properties” and the modifications necessary
to achieve such.
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Appeal 2009-006503
Application 10/882,088

Moreover, Appellant has not discussed or explained why the data
presented in the Declaration supports the non-obviousness of the claimed
subject matter. The burden is on Appellant to show why the comparative
data establishes unexpected results. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). Appellant has not shown why this comparison is believed to
be with the closest prior art. See In re Burckel, 592 F.2d 1175, 1179 (CCPA
1979). Furthermore, Appellant must also explain why the showing is
commensurate in scope with the claimed subject matter. See In re Boesch,
617 F.2d 272, 276 (CCPA 1980).
Based on the totality of the record, including due consideration of
Appellant's evidence and arguments, we determine that the preponderance of
evidence weighs most heavily in favor of an obviousness determination for
the claimed subject matter. Accordingly, we affirm the Examiner’s decision
to maintain the obviousness rejection for the reasons stated in the Answer
and above.

Conclusions of Law
For the above stated reasons, Appellant has failed to show error in the
Examiner's conclusion that the claimed subject matter would have been
prima facie obviousness.
Therefore, we sustain the § 103 rejection advanced by the Examiner in
this appeal.
Order

We affirm the decision of the Examiner.

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Appeal 2009-006503
Application 10/882,088

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

tc

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