Ex Parte Mardon et al

Board of Patent Appeals and Interferences

Feb 25, 2011

10728239 (B.P.A.I. Feb. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/728,239 12/03/2003 Jean-Paul Mardon 12928/100021 7506
23280 7590 02/25/2011
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
02/25/2011 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 JEAN-PAUL MARDON,
JEAN SENEVAT, and DANIEL CHARQUET
________________

Appeal 2009-015072
Application 10/728,239
Technology Center 1700
________________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015072
Application 10/728,239

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-7.2 We have jurisdiction under 35 U.S.C. § 6(b).3
The Invention
Appellants’ invention is directed to a zirconium based alloy having a
total content of Cr + V in the amount of 200 to 700 ppm, and a sheathing
tube comprising the zirconium based alloy. Representative independent
claim 1is reproduced below:
1. A zirconium based alloy comprising a zirconium base
and, by weight:
Fe and at least one of the elements selected from the
group consisting of Cr and V, a total of the contents in Fe and
Cr + V being 200 to 700 ppm;
0.8% to 1.3% by weight of niobium;
1100 to 1700 ppm of oxygen;
less than 100 ppm of carbon;
10 to 35 ppm of sulfur;
less than 50 ppm of silicon and;
tin content exceeding zero and being 100 ppm or less in
weight.

2 See 37 C.F.R. § 41.31(a)(1)
3 In rendering this decision we have considered the Appellants’ submission
filed on February 24, 2009. We have also considered the Examiner’s
position as set forth in the Examiner’s Answer dated May 7, 2009, and the
office action mailed August 18, 2008.
Appeal 2009-015072
Application 10/728,239

3
The Examiner relied on the following references in rejecting the
appealed subject matter:
Mardon et al. US 5,648,995 Jul. 15, 1997
Rebeyrolle et al. US 5,832,050 Nov. 3, 1998
Charquet et al. US 6,863,745 B1 Mar. 8, 2005
C.L. Easterday, Zirconium Analysis by Production Control Quantometer,
31 ANALYTICAL CHEMISTRY 1867 (1959).
Appellants seek review of the Examiner’s rejections of claims
1-7 as follows:
I. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Mardon, Easterday and Rebeyrolle.
II. Claims 1-2 stand rejected on the ground of obvious-type double
patenting over claim 9 of U.S. Patent 6,863,745.
OPINION
Rejection I
The dispositive issue for the rejection on appeal is the following:
Did the Examiner err in determining that Mardon describes a
zirconium based alloy having a total content of Cr + V in the amount of 200
to 700 ppm as required by the subject matter of independent claims 1 and 2?
After thorough review of the respective positions provided by
Appellants and the Examiner, we agree with Appellants that the Examiner
has not established that Mardon’s zirconium based alloy is necessarily
comprised of Cr + V in the amount required by the claimed invention and
Appeal 2009-015072
Application 10/728,239

4
therefore does not render the subject matter of independent claims 1 and 2
obvious within the meaning of § 103.
The Examiner found that Mardon describes a zirconium based alloy
that comprises elements in amounts that overlap the alloy of the claimed
invention. The Examiner recognized that Mardon does not specifically
disclose the amounts of chromium, vanadium, and sulfur contained in the
alloy. However, the Examiner asserted that Mardon would contain
chromium and vanadium in amounts required by the claimed invention.
(Ans. 4). Specifically the Examiner states:
[I]t would be expected that the zirconium in the zirconium alloy
disclosed by Mardon et al. (‘995) would contain 20-450 ppm
chromium, 20-50 ppm vanadium and 20-50 ppm tin, as
disclosed by Easterday because Easterday teaches that
chromium and vanadium would be present in zirconium as
impurities (Table 3-4 and page 1867, 1st column, and page
1868, 3rd column).
(Ans. 4). The Examiner asserts that alloys presented in Tables III and IV of
Easterday do not appear to have been manipulated. (Ans. 11).
Appellants argue, and we agree, that Easterday’s description of the
zirconium alloys are not necessarily representative of the zirconium found in
Mardon. (App. Br. 6). Appellants properly recognize that Easterday is
directed to demonstrating the accuracy of direct-reading spectroscopy and
analyzing zirconium samples and that the samples utilized in the test have
been manipulated. (Id.). Easterday specifically discloses (page 1867, 2nd
column) that zirconium alloy standards utilized in the test could have been
modified to adjust the various contents of the elements contained therein.
Contrary to the Examiner’s position, Easterday discloses the samples
exhibited in Tables III and IV were prepared based upon the methods for
Appeal 2009-015072
Application 10/728,239

5
preparing the standards described on page 1867. (See page 1868, 1st
column). Thus, it appears that the samples exhibited in Tables III and IV
could have been modified to adjust the various contents of the elements
contained therein. Consequently, Easterday does not necessarily establish
that Mardon describes a zirconium based alloy having a total content of Cr +
V in the amount of 200 to 700 ppm as required by the subject matter of
independent claims 1 and 2.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Rebeyrolle reference was cited by the Examiner for describing
modifying the sulfur content of the zirconium alloy, not for describing the
amounts of chromium and vanadium. (Ans. 5).
Rejection II
We decline to reach the merits of the obviousness type double
patenting rejection. Appellants have indicated that a terminal disclaimer will
be filed to obviate this rejection. (App. Br. 9). The Examiner should
process the obviousness type double patenting rejection consistent with
MPEP § 804 upon return of the present application to the jurisdiction of the
Examiner.
For the foregoing reasons we reverse the stated prior art rejection.

Appeal 2009-015072
Application 10/728,239

6
DECISION
The 35 U.S.C. §103 rejection of claims 1-7 is reversed.

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).
REVERSED

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