Ex Parte Song

Board of Patent Appeals and Interferences

Apr 23, 2012

10770893 (B.P.A.I. Apr. 23, 2012)

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.
10/770,893 02/03/2004 Shihong Gary Song EH11083U; 67097-022 1084
26096 7590 04/24/2012
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
KESSLER, CHRISTOPHER S
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/24/2012 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 SHIHONG GARY SONG
____________

Appeal 2010-012287
Application 10/770,893
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012287
Application 10/770,893

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Shihong Gary Song, the Appellant, seeks our review under 35 U.S.C.
§ 134(a) of a final rejection of claims 1-16 and 26-29.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to a dispersion-strengthened aluminum alloy
suitable for elevated temperature applications. Specification (“Spec.”) 2, ¶
7. According to the Appellant, the claimed aluminum alloys provide
substantial cost savings in addition to weight savings when used to replace
titanium or steel parts in gas turbine engines. Spec. 11, ¶ 45.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An aluminum alloy comprising:
approximately 1.0 to 20.0% by weight of a first rare earth
element selected from the group consisting of ytterbium and
gadolinium;
a plurality of insoluble particles formed of said first rare
earth element;
approximately 0.1 to 10.0% by weight of at least one
second rare earth element selected from the group consisting of
gadolinium, erbium and yttrium if said first rare earth element is
ytterbium or the group consisting of ytterbium, erbium and
yttrium if said first rare earth element is gadolinium, wherein a
combined weight of the first rare earth element and the at least
one second rare earth element is greater than 10.0% by weight;
and

1 Appeal Brief filed March 5, 2010, hereinafter “App. Br.,” at 2; Final Office
Action mailed April 2, 2009.
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Application 10/770,893

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at least one minor alloy element comprising copper, zinc,
silver, magnesium, tin, titanium, cobalt or calcium, wherein a
balance of the aluminum alloy is aluminum.
App. Br. 7 (Claims App’x).
The Examiner rejected claims 1-16 and 26-29 under 35 U.S.C.
§ 103(a) as follows:
I. Claims 1-4, 10-13, and 26-29 as unpatentable over
Watson2;
II. Claims 1-5, 7, 8, 10-16, and 27-29 as unpatentable
over Higashi3;
III. Claims 1-3, 7-12, 15, 16, 26, and 27 as
unpatentable over EP ’9114; and
IV. Claims 5 and 6 as unpatentable over Watson in
view of Higashi.
Ans. 3-8.

REJECTIONS I & IV
ISSUE
The Appellant has argued claims 1-4, 10-13, and 26-29 together. Br.
4. Therefore, we select claim 1 as representative and confine our discussion
to this selected claim. 37 C.F.R. § 41.37(c)(1)(vii). In addition, the
Appellant has relied on the same arguments for both Rejections I and IV.
Br. 6. Therefore, our decision as to Rejection I controls the outcome of
Rejection IV.

2 U.S. Patent 6,248,453 B1 issued June 19, 2001.
3 U.S. Patent 4,713,216 issued December 15, 1987.
4 European Patent Application 0570911 A1 published November 24, 1993.
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Application 10/770,893

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The Examiner found that although Watson describes a preferred
aluminum alloy containing Sc, “[i]t would have been obvious to replace Sc
with Er and Yb” in view of other teachings found in the reference. Ans. 3-4.
The Appellant contends that “the use of scandium is required in
Watson, not an option or mere preferred embodiment.” App. Br. 4.
According to the Appellant, “Watson does not therefore suggest that erbium,
ytterbium and scandium are equivalents that can be freely substituted for one
another.” Id.
Thus, a dispositive issue is:
(1) Did the Examiner err in concluding that a person of ordinary
skill in the art would have been prompted to substitute Yb and Er for Sc in
view of Watson’s teachings?

DISCUSSION
We find no merit in the Appellant’s contention that the Examiner
erred. As correctly found by the Examiner, Ans. 3, Watson explicitly
teaches that the aluminum alloy can include a metal X “selected from the
group consisting of Sc, Er, Lu, Yb, Tm and U, and mixtures thereof.” Col.
6, ll. 9-19. Contrary to the Appellant’s belief, Watson teaches an aluminum
alloy containing Sc as an example or a preferred embodiment. Col. 1, ll. 51-
55; col. 2, ll. 5-11. It is well established that a reference is good for all it
fairly teaches a person having ordinary skill in the art, even when the
teaching is a cursory mention. E.g., In re Mills, 470 F.2d 649, 651 (CCPA
1972).
For these reasons, we sustain Rejections I and IV.

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REJECTION II
ISSUE
The Examiner found that Higashi teaches an aluminum alloy
containing 0.5 to 10% by weight of one or more rare earth elements
including Gd, Er, Yb, and Y and that the disclosed contents are “a close
approximation” of the Appellant’s claimed range. Ans. 4-5.
The Appellant argues that “Higashi teaches away from using an
amount of rare earth elements that is greater than 10wt%.” App. Br. 5.
Thus, a dispositive issue is:
(2) Does Higashi teach away from using rare earth elements at an
amount such as 10.1% by weight?

DISCUSSION
Again, we are not persuaded by the Appellant’s argument. The
Appellant does not assert that Higashi does not describe a value such as
10.0% by weight. Higashi’s disclosed content for the rare earth elements of
10.0% by weight is sufficiently close to 10.1% by weight – a value within
the Appellant’s claimed range – and thus creates a prima facie case of
obviousness. Cf. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed.
Cir. 1985) (claimed alloy of 0.3% Mo, 0.8% Ni, and balance titanium would
have been obvious over two titanium alloys in the prior art having 0.25%
Mo-0.75% Ni and 0.31% Mo-0.94% Ni).
Higashi does teach:
[I]f the content is less than 0.5%, the desired resistance to stress
and corrosion will not be achieved, whereas if it exceeds 10%,
the resistance thereto remains the same, thereby wasting the
elements. On the contrary crystallization occurs in a rather
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rough state in the alloy, thereby reducing the strength. The
content of rare earth elements is preferably limited to 0.5 to
10.0%.
Col. 2, ll. 44-51 (emphasis added).
That disclosure in Higashi, however, does not indicate that a content
such as 10.1% by weight would be unusable. Quite the contrary, Higashi’s
explicit teaching that the content “is preferably limited to 0.5 to 10.0%”
would have suggested to one of ordinary skill in the art that an amount
slightly greater than 10.0% by weight, such as 10.1% by weight, would
provide a useful alloy, although it may not be the most preferred amount.
See, e.g., Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed.
Cir. 2005).
Therefore, we affirm the Examiner’s rejection on this ground.

REJECTION III
ISSUE
Regarding the recited “at least one minor [alloy] element,” the
Examiner relied on ASM SPECIALTY HANDBOOK®: ALUMINUM AND
ALUMINUM ALLOYS 639 (J.R. Davis ed. 1993) (hereinafter “ASM”) to
show that the alloy in EP ’911 would inherently contain “Mg (or Cu[,] Zn,
Ag, Mg, Sn, Ti, Co, Ca).” Ans. 6.5
The Appellant argues that ASM “does not explicitly state that all the
listed elements would be necessarily be [sic] present in an aluminum alloy.”
App. Br. 6.

5 “[E]xtrinsic evidence may be considered when it is used to explain, but not
expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d
388, 390 (Fed. Cir. 1991).
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Thus, a dispositive issue is:
(3) Does ASM teach that all the elements listed in ASM would be
present in an aluminum alloy?

DISCUSSION
We find the Appellant’s argument unpersuasive. It is undisputed that
trace elements in the form of impurities, if present in the aluminum alloy of
EP ’911, would be considered a “minor alloy element,” as recited in claim 1.
ASM discloses that at least some of the elements recited in claim 1 as a
“minor alloy element” would necessarily be present in prior art aluminum
alloys. Specifically, Table 1 of ASM provides evidence that Cu, Mg, Ti, and
Zn are in fact present in pure aluminum. Thus, the Examiner has presented
sufficient evidence to show that the aluminum alloy of EP ’911 would
reasonably appear to contain the same impurities. The Appellant has offered
no evidence to the contrary.
Therefore, we sustain the Examiner’s rejection.

DECISION
The Examiner’s decision to reject claims 1-16 and 26-29 is affirmed.

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)(iv).
AFFIRMED

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