Ex Parte Rode et al

Board of Patent Appeals and Interferences

Nov 13, 2008

10294350 (B.P.A.I. Nov. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIRK RODE, THOMAS HELMENKAMP,
and FRED RIECHERT
____________

Appeal 2008-4448
Application 10/294,350
Technology Center
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Decided: November 13, 2008
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Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appeal 2008-4448
Application 10/294,350

Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of pending claims 1, 2, 4-7, and 9-19.1
(Examiner’s Answer entered Nov. 29, 2007, hereinafter “Ans.”). We have
jurisdiction pursuant to 35 U.S.C. § 6(b) (2002).
We REVERSE.
Appellants’ claimed invention is directed to an age-hardening copper
alloy for producing casting molds. (Spec. 4, ll. 14-17). The age-hardening
copper alloy includes 0.4 through 2 weight % cobalt, which is partially
exchangeable for nickel, 0.1 through 0.5 weight % beryllium, a maximum of
0.15 weight % manganese, at least one element of the group including
niobium, tantalum, and vanadium, and where the remainder of the alloy is
copper. (Spec. 4, ll. 19-27). The alloy has an average grain size of 90 µm to
1,500 µm according to ASTM E 112, and an electrical conductivity of
between 30 and 36 Sm/mm2 in the age-hardened state. (Spec. 6, ll. 4-14;
Table 2).
Claim1, the only independent claim on appeal, recites:
1. An age-hardening copper alloy for producing casting molds,
comprising in weight %: 0.4 % through 2 % cobalt, which may
be partially substituted by nickel, 0.1 % through 0.5 %
beryllium, manganese up to 0.15%, at least one element
selected from the group consisting of niobium, tantalum, and
vanadium, and a remainder of copper, wherein the alloy in the
age-hardened state has an average grain size of 90 µm to 1,500
µm as per ASTM E 1222, and an electrical conductivity of
between 30 and 36 Sm/mm2.

1 Claims 3 and 8 have been canceled. (Appeal Brief filed Mar. 9, 2007,
hereinafter “Br.,” 2).
2 We note that the Specification states that the standard used to determine
grain size is ASTM E 112, not ASTM E 122 as recited in claim 1. (Spec. 4,
l. 5; 6, ll. 7 and 8).
2
Appeal 2008-4448
Application 10/294,350

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Guha 4,657,601 Apr. 14, 1987
Nogami 5,798,008 Aug. 25, 1998
Gravemann 6,083,328 Jul. 4, 2000
Lavelaine 6,228,242 B1 May 8, 2001

There are three grounds of rejection under 35 U.S.C. § 103(a) before
us on appeal3: (1) the Examiner rejected claims 1, 6, 11, 13, and 16-18 as
being unpatentable over Gravemann in view of Nogami; (2) the Examiner
rejected claims 2, 4, 5, 7, 9, 10, 12, 14, and 15 as being unpatentable over
Gravemann further in view of Guha; and (3) the Examiner rejected claim 19
as being unpatentable over Lavelaine in view of Gravemann.
The Examiner found that Gravemann teaches the claimed alloy except
for the claimed grain size. The Examiner stated:
Nogami in col. 3; lines 48-58 teaches grain size of Cu alloy
mold should be 0.075 mm or smaller in order to improve
thermal fatigue resistance and intergranular strength in the same
field of endeavor or the analogous metallurgical art. Nogami in
col. 3, lines 48-58 and Table 2 (comparative example) discloses
that grain size could be greater than 0.075 mm but fatigue
resistance and intragranular strength would be lowered.
Nogami discloses larger grain size would reduce fatigue
resistance and intragranular strength but it is well settled that
the teaching of a reference is not limited to preferred
embodiments. All disclosures of prior art, including
unpreferred embodiments, must be considered in determining

3 We do not address the Provisional Obviousness Double Patenting rejections
of claims 1, 2, 4-7, and 9-19 as Appellants have not appealed those
rejections. (Br. 4 and 5).
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Appeal 2008-4448
Application 10/294,350

obviousness. See In re Boe, 148 USPQ 507, 510 (CCPA 1966)
and MPEP §2123.
(Ans. 6).

Appellants contend that Nogami does not disclose an alloy
having the grain sizes within the claimed range and Nogami teaches
away from particle sizes above 0.075 mm. (Br. 6-9).

ISSUE
Based on the contentions of the Examiner and the Appellants, the
issue is: Have Appellants shown error in the Examiner’s determination that
one of ordinary skill in the art would have employed the particle sizes of the
alloys disclosed in the comparative example of Nogami to the alloys of
Gravemann?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.

1. Appellants’ Specification does not teach that the claimed
“average” grain size of 90 µm to 1,500 µm excludes grain sizes of
75 µm or less. (See Spec. 6, ll. 4-14; 9, ll. 1-29).
2. Claim 1 must contain grain sizes of more than 75 µm in order to
satisfy the claimed grain size range. (See Spec. 6, ll. 4-14; 9, ll. 1-
29).
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Application 10/294,350

3. Gravemann describes that copper-based chromium-zirconium
alloys must be reworked after about 100 minutes to remove surface
cracks. (Col. 1, ll. 39-50).
4. Gravemann states:
The object of the present invention is to make available a
material for manufacturing casting rolls, casting roll shells and
casting wheels, which is insensitive to the stress of changing
temperatures at pouring rates of above 3.5 meter/min, or which
demonstrates a high resistance to fatigue at the working
temperature of the casting rolls.
(Col. 2, ll. 20-35).

5. Nogami describes that copper-based chromium-zirconium alloys
often crack due to thermal fatigue when used for long periods of
time. (Col. 1, ll. 11-28).
6. Nogami describes a method for producing copper alloy materials
for molds that are highly resistant to thermal fatigue and are hardly
cracked. (Abstract).
7. Nogami discloses a comparative example where an alloy having a
non-uniform grain size of 80 to 200 µm exhibits cracking as a
result of thermal fatigue. (Col. 5, l. 51 – col. 6, l. 31).
8. Nogami states:
The grains constituting the copper alloy mold of the present
invention shall have a grain size of 0.075 mm or smaller. If
not, that is, if the grain size is larger than 0.075 mm, the copper
alloy mold could hardly have sufficient fatigue resistance. In
addition, the intergranular area of the alloy increases with the
increase in the grain size to thereby worsen the balance between
the intragranular strength and the intergranular strength of the
alloy with the result that the thermal fatigue resistance of the
mold is significantly lowered.
(Col. 3, ll. 49-58).
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PRINCIPLES OF LAW
As the Court in KSR stated, “[o]ften, it will be necessary for a court to
look to interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.
To facilitate review, this analysis should be made explicit. See In re Kahn,
441 F.3d 977, 988 (CA Fed. 2006) (“[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., 127 S. Ct.
1727, 1740-41 (2007).
A reference is not limited to the disclosed preferred embodiments.
See Merck & Co., Inc v. Biocraft Laboratories, Inc 874 F.2d 804, (Fed.
Cir.), cert. denied, 493 U.S. 975 (1989). However, in the case where a
reference specifically criticizes an alternative, the reference teaches away
from that alternative. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed….”). When references teach away from the claimed combination, it
is improper to combine them in an obviousness rejection. In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983).

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ANALYSIS
Appellants rely on similar arguments for each ground of rejection.
Therefore, we limit our discussion to the Examiner’s rejection of claims 1, 6,
11, 13, and 16-18 as being unpatentable over Gravemann in view of
Nogami.
In order for the cited prior art to render the claimed alloys obvious, the
Examiner must provide an apparent reason why one of ordinary skill in the
art would have selected the particle sizes of Nogami’s comparative example
to apply to Gravemann’s alloys. Both Gravemann and Nogami are directed
to overcoming the deficiencies of the prior art copper-based chromium-
zirconium alloys to produce alloys that are resistant to fatigue at high
working temperatures. Nogami teaches copper alloys having a grain size of
75 µm or smaller. Nogami warns that if the grain size exceeds 75 µm, the
thermal fatigue resistance of the resulting mold would be significantly
lowered. Indeed, Nogami’s comparative example shows that an alloy
having a non-uniform grain size of 80 to 200 µm exhibits cracking as a
result of thermal fatigue. The Examiner’s states that all disclosures of the
prior art must be considered in determining obviousness, but has failed to
articulate a sufficient reason why one of ordinary skill in the art would have
selected the claimed particle sizes for Gravemann’s alloys when Nogami
expressly criticizes that alloys having grain sizes above 75 µm are
susceptible to thermal fatigue.

CONCLUSION
Appellants have shown reversible error in the Examiner’s determination
that one of ordinary skill in the art would have employed the particle sizes of
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the alloys disclosed in the comparative example of Nogami to the alloys of
Gravemann.

ORDER
We reverse the Examiner’s decisions to reject under 35 U.S.C. §
103(a), claims 1, 6, 11, 13, and 16-18 as being unpatentable over Gravemann
in view of Nogami; claims 2, 4, 5, 7, 9, 10, 12, 14, and 15 as being
unpatentable over Gravemann further in view of Guha; and claim 19 as
being unpatentable over Lavelaine in view of Gravemann.
REVERSED

tc

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