Ex Parte No Data

Board of Patent Appeals and Interferences

Jul 9, 2007

90005589 (B.P.A.I. Jul. 9, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRAMATOME ANP
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Appeal 2006-0009
Reexamination Control 90/005,589
Patent 5,940,464
Technology Center 3600
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Decided: July 9, 2007
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Before RICHARD E. SCHAFER, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REHEARING
The Appellant requests rehearing of a Decision on Appeal dated
May 12, 2006, affirming the rejection of claims 1-4 under 35 U.S.C.
§ 103(a) as unpatentable over Sabol.
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A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Appeal 2006-0009
Reexamination Control 90/005,589
Patent 5,940,464

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Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing except as permitted by 37 C.F.R. § 41.52(a)(2) and (3). See 37
C.F.R. § 41.52(a)(1) (2006).
The claimed invention is directed to a tube of zirconium-base alloy
containing 0.2% to 0.6% tin.1 Sabol discloses a tube of zirconium alloy
comprising “up to 1.5 percent tin.” Sabol, col. 2, ll. 8-14.
The Appellant argues that Sabol does not suggest an amount of tin
below 1.0 percent. The Appellant argues that the Board misapprehended or
overlooked statements in Sabol emphasizing that zirconium alloys
containing 1.0 percent tin exhibit improved corrosion resistance. See Sabol,
col. 4, ll. 9-11; see also Sabol, col. 1, l. 56-col. 2, l. 5. Pointing to Table I,
the Appellant also argues that Sabol does not provide any experimental data
for a zirconium alloy having a tin concentration below 1.0 percent. See
Request 3-4.
The Board did not misapprehend or overlook any teachings in Sabol.
The Board correctly pointed out that a reference is not limited to a preferred
embodiment or a specific example but rather must be considered for all that
it expressly teaches and fairly suggests to one having ordinary skill in the
art. In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
Sabol expressly states that the disclosed alloys contain “up to 1.5 percent
tin” and “the minimum amount [of tin and a third alloying element] present
would be that sufficient to give the desired corrosion resistance in the

1 The term “containing” is open-ended. Mars Inc. v. J.J. Heinz Co., 377 F.3d
1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004).
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Appeal 2006-0009
Reexamination Control 90/005,589
Patent 5,940,464

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articles produced therefrom.” Sabol, col. 2, ll. 8-4 and col. 2, ll. 54-63.
Based on these teachings, one of ordinary skill in the art would have
understood that the amount of tin (as well as an amount of a third alloying
element) in the disclosed alloy is related to the “desired corrosion
resistance.”
The Board correctly found that “nothing in Sabol suggests that an
amount of tin as low as 0.6% would not provide the ‘desired corrosion
resistance.’ ” Decision 7. This is especially true where the desired corrosion
resistance can also be adjusted by adding an amount of a third alloying
element. The Appellant has not directed us to any evidence establishing
otherwise.
The Appellant also argues that the Board incorrectly interpreted the
phrase “up to 1.5 percent tin” as including no tin. See Decision 6 (agreeing
with the examiner that “up to” includes zero). The Appellant argues that the
alloys disclosed in Sabol must contain some amount of tin to provide the
“desired corrosion resistance.” See Request 2.
The Appellant did not present this argument in its Brief. Therefore, it
is not entitled to consideration on rehearing. See 37 C.F.R. § 41.52(a)(1)
(2006). Suffice it to say that the Board found that Sabol would have
suggested an alloy having some amount of tin, i.e., an amount of tin within
the claimed range of 0.2% to 0.6% tin. To the extent that the Board did find
that the range of tin disclosed in Sabol includes no tin, it is not necessary to
address this finding on rehearing.

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Appeal 2006-0009
Reexamination Control 90/005,589
Patent 5,940,464

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Conclusion
The Appellant’s request for rehearing has been granted to the extent
that the “DECISION ON APPEAL” dated May 12, 2006, has been
reconsidered in light of the Appellant’s arguments. However, the request is
denied because we decline to modify the decision in any respect. 5
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2006).
8 REHEARING DENIED

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Thomas M. Coester
BLAKELY, SOKOLOF, TAYLOR & ZAFMAN, LLP
12400 Wilshire Boulevard
Seventh Floor
Los Angeles, California 90025

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