Ex Parte Pouget et al

Patent Trial and Appeal Board

Jul 26, 2017

13446617 (P.T.A.B. Jul. 26, 2017)

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.
13/446,617 04/13/2012 Gaelle POUGET 2901683-047001 1057
MMWV IP, LLC
7900 Westpark Drive, Suite A100
McLean, VA 22102
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
07/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ mm w vlaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAELLE POUGET and CHRISTOPHE SIGLI
Appeal 2016-006833
Application 13/446,617
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
DEBRA L. DENNETT, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—8, 13—17, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a wrought product comprising an aluminum
alloy. Claim 1 is illustrative:
1. A wrought product comprising an aluminum alloy consisting essentially
of, as a percentage by weight,
Cu Con-: 2.6 - 3.7
Mgcorri 1.5-2.6
Mn: 0.2-0.5
Zr: <0.16
Ti: 0.01-0.15
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Cr < 0.25
Si <0.2
Fe < 0.2
other elements < 0.05
remainder aluminum
wherein Cu corr> - 0.9 (Mg corr) + 4.3 and Cu Con-< - 0.9 (Mg corr) + 5.0
in which Cu corr= Cu - 0.74 (Mn - 0.2) - 2.28 Fe and
Mg corr = Mg - 1.73 (Si - 0.05) for Si > 0.05 and Mg corr = Mg for Si < 0.05;
and wherein said wrought product is aged such that the mechanical
resistance Rp0.2 is a maximum.
The References
References relied upon by the Examiner
Okikawa US 4,845,543 July 4, 1989
Danielou US 2010/0314007 A1 Dec. 16,2010
Rioja US 2011/0056957 A1 Mar. 10, 2011
Reference relied upon by the Appellants
European Standard NF EN 515: Aluminum and aluminum alloys — wrought
products — temper designations 1—16 (AFNOR, Oct. 1993).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1—
3, 13—15, and 19 over Rioja, claims 4—6 and 16 over Rioja in view of
Danielou, and claims 7, 8, and 17 over Rioja in view of Okikawa.
OPINION
We affirm the rejections of claims 1—3, 13—15, and 19 over Rioja and
claims 4—6 and 16 over Rioja in view of Danielou, and reverse the rejection
of claims 7, 8, and 17 over Rioja in view of Okikawa.
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Rejection of claims 1—3, 13—15, and 19 over Rioja
The Appellants argue the claims as a group.1 We, therefore, limit our
discussion to one claim, i.e., claim 1. Claims 2, 3, 13—15, and 19 stand or
fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Rioja discloses an aluminum alloy which compares compositionally to
the Appellants’ recited aluminum alloy as follows:
Element Claim 1 Rioja
Cuc0rr 2.6-3.7 (Spec. 137) 0.7—5.3
MgCorr 1.5—2.6 (Spec. 138) 0.1-2.0
Mn 0.2-0.5 0.05-1.5 (137)
Zr <0.16 <0.5(138)
Ti 0.01-0.15 <0.1(135)
Cr <0.25 < 1-5 (136)
Si <0.2 <0.25 (142)
Fe <0.2 <0.25 (142)
other elements <0.05 <0.15(142)
A1 remainder remainder
Thus, Rioja discloses components and their amounts which either
overlap or encompass the Appellants’ alloy’s components and their amounts.
As stated in In re Peterson, 315 F.3d 1325, 1329—30 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness ....
.... Selecting a narrow range from within a somewhat
broader range disclosed in a prior art reference is no less
obvious than identifying a range that simply overlaps a
disclosed range. In fact, when as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even
1 The Appellants point out what claims 2, 3, 13—15 and 19 recite
(App. Br. 15—18), but that is not a substantive argument for the separate
patentability of those claims. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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more compelling than in cases of mere overlap. [(Citations
omitted.)]
Rioja, therefore, would have rendered the Appellants’ claim 1 ’s aluminum
alloy composition prima facie obvious to one of ordinary skill in the art.
The Appellants’ claim 1 requires that the “wrought product is aged
such that the mechanical resistance Rp0.2 is a maximum.” The Appellants
indicate that this maximum resistance is obtained at peak aging (Spec. 1 54).
Rioja teaches that “[a]s known to those skilled in the art, underaging and the
like means that the aluminum alloy product is aged at a temperature and/or
for a duration that is less than that required to achieve peak strength. Peak
strength and the like means the highest strength achieved by a specific
aluminum alloy product as determined via aging curves” (17). Rioja’s
invention is an aluminum alloy having improved ballistic performance, i.e.,
improved fragment simulation projectile (FSP) resistance (13). Rioja states
that “[b]y underaging, the aluminum alloy products may realize improved
FSP resistance relative to a peak strength aged version of the aluminum
alloy product” (| 10). Rioja, however, discloses a peak strength aged
version of the aluminum alloy product: “A peak strength aged version of the
aluminum alloy is a product that has a similar composition and processing
history, is of similar product form (rolled, extruded, forged), and is of
similar and comparable dimensions as the underaged product, except that the
peak strength aged version of the product is peak aged, whereas the
underaged product is underaged.” (113). Rioja, therefore, would have led
one of ordinary skill in the art, through no more than ordinary creativity, to
make a peak aged version of the aluminum alloy product when peak strength
rather than improved FSP resistance is desired. See KSR Int’l Co. v. Teleflex
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Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”).
The Appellants argue that “a person of ordinary skill in the art would
have had no reason to modify any of the teachings of Rioja in a manner that
would have rendered the claims obvious as Rioja fails to teach or suggest
any specific 2XXX alloy” (App. Br. 9).
Rioja states that “2XXX aluminum alloys are aluminum alloys that
contain copper (Cu) as the main alloying ingredient” (| 27). Rioja’s
disclosure that the 2XXX aluminum alloys in general are suitable (id.)
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to make and use any of them.
The Appellants assert that “Rioja teaches broad ranges of alloy
components and provides no motivation to optimize the ranges of these
components” (App. Br. 11).
Rioja’s disclosure of underaged and peak aged versions of the
aluminum alloy (1 13) would have led one of ordinary skill in the art,
through no more than ordinary creativity, to optimize each version to obtain
either optimum FSP resistance or optimum peak strength.
The Appellants assert, in view of European Standard NF EN 515
which shows that the T6 temper provides the peak age maximum tensile
strength (p. 10, Fig. 2), that “the tensile properties are different between
underaged temper taught by Rioja and peak age temper” (Reply Br. 5).
The assertion is not convincing in view of Rioja’s disclosure that the
2XXX alloys can have T6 temper (| 30).
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Thus, the wrought product claimed in the Appellants’ claim 1 would
have been prima facie obvious to one of ordinary skill in the art over Rioja.
The Appellants assert, in reliance upon the Declaration under
37 C.F.R. § 1.132 of Gaelle Pouget (| 6), that in their Specification’s
Table 1, the about 15% higher yield stress of alloys A-l and C-l which have
compositions within the Appellants’ claims, compared to alloys B-l and D-l
which have compositions within Rioja’s ranges but outside the Appellants’
claims, is an unexpected result (App. Br. 12—15).
We have begun anew and determined that for the following reasons
the totality of the evidence supports a conclusion of obviousness of the
Appellants’ claimed invention. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976).
First, it is not enough for Appellants to show that the results for the
Appellants’ invention and the comparative examples differ. The difference
must be shown to be an unexpected difference. See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Pouget merely asserts that the result of the comparison of alloys A-l and C-l
to alloys B-l and D-l “was surprising and unexpected to me” (Decl. 1 6).
Pouget does not set forth what would have been expected by one of ordinary
skill in the art and explain how the results differ from what such a person
would have expected.
Second, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants’ claim 1 encompasses
ranges of numerous components, but the Appellants’ evidence includes only
two compositions. We find in the evidence of record no reasonable basis for
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concluding that the great number of materials encompassed by Appellants’
claims would behave as a class in the same manner as the particular
materials tested. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re
Susi, 440 F.2d 442, 445^46 (CCPA 1971). The Appellants’ counsel’s
assertion that “the results section has compared a sufficient number of tests
both inside and outside the claimed range to show the criticality of the
claimed range, and one of ordinary skill in the art would be able to
determine a trend in the exemplified data which would allow the artisan to
reasonably extend the probative value thereof’ (App. Br. 15) cannot take the
place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we conclude that the alloys claimed in the Appellants’
claims 1—3, 13—15, and 19 would have been obvious to one of ordinary skill
in the art over Rioja.
Rejection of claims 4—6 and 16 over Rioja in view of Danielou
The Appellants assert that each of claims 4—6 and 16 is separately
patentable, but the Appellants rely upon the same argument with respect to
each of those claims (App. Br. 18—22). We therefore limit our discussion to
one of those claims, i.e., claim 4. Claims 5, 6 and 16 stand or fall with that
claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 4 depends from claim 1 and requires that the “wrought product
is a plate or a profile having a grain structure which is substantially
unrecrystallized.”
The Appellants assert that “Rioja teaches methods of aging aluminum
alloys to improve ballistics performance whereas Danielou is directed to
alloys ‘useful in the aerospace industry. ’ . . . The alloys described in
Danielou and Rioja have applicability to different final products and a
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person of ordinary skill in the art would not have looked to Danielou for an
‘unrecrystallized’ structure, especially given the ballistic-based compositions
described in Rioja” (App. Br. 19).
Rioja does not disclose that the alloy is recrystallized. Moreover, the
Appellants state that “[i]n the first embodiment of the process according to
the invention no significant cold working is carried out. . . . Such a cold
working step would be likely to lead to a recrystallized structure which is
undesirable within the framework of the invention for worked products in
the form of plates or profiles” (Spec. 1 59). Rioja discloses that cold
working is optional (118) and, therefore, indicates that the alloy can be
unrecrystallized.
Hence, we affirm the rejection of claims 4—6 and 16.
Rejection of claims 7, 8, and 17 over Rioja in view of Okikawa
Claim 7 requires that the “wrought product is a wire or bar or screw or
bolt or rivet having a substantially recrystallized grain structure.” Claims 8
and 17 depend from claim 7.
Okikawa discloses a semiconductor device comprising an
aluminum-based bonding wire “which has been recrystallized by annealing
it at temperatures in a range, for example, from the recrystallization point of
an aluminum alloy to this recrystallization point plus 150° C.” (col. 15,
11. 13-16).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to make the aluminum
product of Rioja et al. into a wire with substantially recrystallized grain
structure (up to 100%), as taught by Okikawa et al. (Column 15, lines 9-18),
with expected success, since the use of conventional materials to perform
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their known functions in a conventional process is obvious[.] In re Raner,
134 USPQ 343 (CCPA 1962)” (Ans. 5).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR, 550 U.S. at 418. The Examiner’s vague assertion that
“the use of conventional materials to perform their known functions in a
conventional process is obvious” does not provide such an apparent reason.
We, therefore, reverse the rejection of claims 7, 8, and 17.
DECISION/ORDER
The rejections under 35 U.S.C. § 103(a) of claims 1—3, 13—15, and 19
over Rioja and claims 4—6 and 16 over Rioja in view of Danielou are
affirmed. The rejection under 35 U.S.C. § 103(a) of claims 7, 8, and 17 over
Rioja in view of Okikawa is reversed.
It is ordered that the Examiner’s decision 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).
AFFIRMED-IN-PART
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