Ex Parte Syed et al

Patent Trial and Appeal Board

Feb 14, 2013

11899420 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/899,420 09/06/2007 Tofail Ansar Syed 8627-1714 8143
48003 7590 02/14/2013
BRINKS HOFER GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
TAKEUCHI, YOSHITOSHI
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
02/14/2013 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 PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte TOFAIL ANSAR SYED, JAMES M. CARLSON,
SHANE CARR, PAUL DEVEREUX, DONNCHA HAVERTY,
SHAY J. LAVELLE and TIM MCGLOUGHLIN
______________

Appeal 2011-012908
Application 11/899,420
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
DEBORAH KATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1-17.
We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2010).
An oral hearing was held January 25, 2013.
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a nickel-titanium alloy
(claim 1) which can be used to manufacture medical devices (claim 11), and
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is representative of the claims on appeal:
1. A nickel-titanium alloy comprising:
nickel at a concentration of from about 34 at.% to about 60 at.%;
titanium at a concentration of from about 34 at.% to about 60 at.%;
at least one rare earth element at a concentration of from about 0.1
at.% to about 15 at.%,
wherein the at least one rare earth element is selected from the group
consisting of La, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, Ac,
Th, Pa, and U.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-10 over Kaneko
(EP 0 783 040 A1), and claims 11-17 over Solingen (US 2003/0193314 A1)
and Kaneko. App. Br. 10; Ans. 4, 6.
Appellants rely on Chan-Yeol Seo et al. (Seo), Effect of Ti and Zr
additions on the characteristics of AB5-type hydride electrode for Ni-MH
secondary battery, INT’L J. HYDROGEN ENERGY 28 (2003) 317-327.
Appellants do not argue any particular claim with respect to the first
ground of rejection and rely on the same arguments with respect to the
second ground of rejection. App. Br. 11-18, 18-19. Thus, we decide this
appeal based on representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
OPINION
We are of the opinion Appellants have not established that the
Examiner erred in concluding that one of ordinary skill in the art would have
been led by Kaneko to nickel-titanium alloys falling within claim 1. Ans.
4-5, 8-12; App. Br. 11-18; Reply Br. 1-7.
We determine representative claim 1 specifies any nickel-titanium
alloy comprising at least nickel (Ni) in the range of about 34 to 60 at.%;
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3
titanium (Ti) in the range of about 34 to 60 at.%; and at least one or a
mixture of rare earth elements in the range of about 0.1 to 15 at.%, wherein
the rare earth elements within that range are selected from the specified
group of rare earth elements. We determine that the transitional term
“comprising” opens claim 1 to include alloys containing at least the
specified elements and any additional elements, including additional rare
earth elements, in the range of 0 to 35.9 at.% based on the specified at.%
ranges of Ni, Ti, and rare earth(s) in the composition. See Spec., e.g.,
¶¶ 0069, 0080. See, e.g., In re Crish, 393 F.3d 1253, 1257 (Fed. Cir.
2004)(“[I]t is well-established that “‘[c]omprising’ is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.’” (quoting Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
Cir. 1997)); Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553,
1555 (Fed. Cir. 1995) (“The claimed composition is defined as comprising -
meaning containing at least - five specific ingredients.”); In re Baxter,
656 F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers in the
reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
We find that Kaneko would have disclosed to one of ordinary skill in
the art a rare earth metal-nickel-base hydrogen absorbing alloy having the
composition specified by the formula (R1-xLx)(Ni1-yMy)z, wherein R is
specified as one of the rare earth elements La, Ce, Pr or Nd, or mixtures
thereof; L is specified as one of the rare earth elements Gd, Tb, Dy, Ho, Er,
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Tm, Yb, Lu, Y and Sc,1 and the alkaline earth elements Mg or Ca, or
mixtures thereof; M is specified as one of 17 elements, including Al, Co,
Mn and Ti, or mixtures of the 17 elements; and the atomic ratios of the
elements, including Ni, in (R1-xLx) and (Ni1-yMy)z are specified by the ranges
0.05 ≤ x ≤ 0.4, 0 ≤ y ≤ 0.5, 3.0 ≤ z < 4.5. Kaneko abstract, 3:34-42,
4:40 to 5:3.
Kaneko would have disclosed that an alloy of any combination of
elements as specified by the formula and processed by the disclosed method
to have the specified crystalline structure, would function as a rare earth
metal-nickel-base hydrogen absorbing alloy, which can be used in, among
other things, compositions for preparing anodes for nickel-hydrogen
rechargeable batteries. Kaneko abstract, 2:5-7, 3:1-54, 7:33 to 8:7. Kaneko
would have disclosed that the method of producing the alloy includes
particular heat treatment conditions using a roll casting device which imparts
a certain surface roughness. Kaneko 3:47-52.
Kaneko would have disclosed that each of R, L and M can be a single
element or a mixture of elements, disclosing preferences for elements and
amounts thereof. Kaneko 4:40 to 5:34. Kaneko would have disclosed that
the 4 rare earth element(s) R can preferably be used in certain amounts, and
“[a]lternatively, misch metal may be used.” Kaneko 4:48-51. Kaneko
would have further disclosed that the M elements can be mixed in a
“combination of more than one element. The combination of more than one
element may suitably be made depending on the properties of each metal.”

1 See, e.g., Lanthanides, 14 KIRK-OTHMER ENCYCLOPEDIA OF CHEMICAL
TECHNOLOGY 1091 (4th ed., John Wiley & Sons. 1995) (“The rare earths
comprise lanthanides, yttrium, . . . and scandium.”).
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Kaneko 5:4-5. Kaneko would have disclosed the specific properties
imparted by each of the M elements, including Ti, and the preferred atomic
“mixing ratio” of that M element “represented by y, i.e. the atomic ratio of
M when (Ni+M) is 1,” when two or more M elements are mixed in an alloy
composition of the specified formula and the alloy is prepared by the
disclosed method. Kaneko 5:5-34.
Kaneko would have disclosed specific compositions which have
mixtures of each of the 4 R rare earth elements, mixtures of the M elements
Al, Co, Mn and Fe along with the M elements B, Mo, W and Cu, and a
single element for L which is either a rare earth element or an alkaline earth
element. Kaneko 5:37-6:22, Tables 1-1, 2-1, 3-1.
The Examiner determines that one of ordinary skill in the art routinely
following the teachings of Kaneko would have reasonably selected an alloy
composition in which elements R and L are rare elements and mixtures of
rare-earth elements as specified, and element M is specifically Ti. The
Examiner finds that the at.% ranges of rare earth elements R and L, the
element Ni and the M element Ti in the atomic ratios of (R1-xLx) and
(Ni1-yMy)z as specified by ranges 0.05 ≤ x ≤ 0.4, 0 ≤ y ≤ 0.5, 3.0 ≤ z < 4.5 in
Kaneko’s formula, overlap with the at.% ranges of the same elements
specified in claim 1. Ans. 4-5, 8-11. The Examiner submits the findings in
tables in the Answer, wherein “REE” denotes L elements (table at note 1,
page 4, and pages 8-9) and the rare earth elements R and L are combined
(table at 4-5 and 9).
We cannot agree with Appellants that the express teachings of Kaneko
would have dissuaded one of ordinary skill in the art from selecting Ti from
the elements specified for formula member M and using this element in the
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disclosed alloys in the at.% range specified in claim 1, as the Examiner
contends. App. Br. 11-16. We fail to find that one of ordinary skill in the
art would have found that Kaneko’s disclosure of specific elements for each
of R, L and M, combined in at.% ranges based on the specific ranges
0.05 ≤ x ≤ 0.4, 0 ≤ y ≤ 0.5, 3.0 ≤ z < 4.5 in Kaneko’s formula is so broad
that alloys having the properties disclosed by Kaneko would have been
arrived at only by undue experimentation, as Appellants contend. App. Br.
11-12, 14-15.
Indeed, we find one of ordinary skill in the art would have recognized
that all of the R elements and almost all of the L elements are rare earth
elements. See above pp. 3-4. Thus, in order to arrive at a rare earth
metal-nickel-base hydrogen absorbing alloy following the teachings of
Kaneko, one of ordinary skill in the art would have had to select only at least
one of the 17 M elements, each of which are disclosed by Kaneko to form an
alloy with rare earth elements and Ni in the specified at.% by the disclosed
method that has the disclosed properties.
Appellants’ contention respecting Kaneko’s preferences for selecting
the amount “y” of each of the M elements, including Ti, misconstrues
Kaneko’s disclosure at page 5, lines 5-34. App. Br. 12-13. Indeed,
Kaneko’s guidance is directed to “[t]he combination of more than one
element . . . depending on the properties” of each of the M elements, and the
disclosed preferred atomic “mixing ratio” of each M element applies when
used in “combination” with other M elements. See above p. 4. Thus,
Kaneko would have reasonably taught that the full range of 0 ≤ y ≤ 0.5
applies when only one M element is used in the alloy.
We are also unconvinced by Appellants’ contention that Kaneko does
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not exemplify an alloy containing Ti because Kaneko’s teachings are not
limited to preferred embodiments. App. Br. 16. See, e.g., In re Lamberti,
545 F.2d 747, 750 (CCPA 1976) (“The fact that neither of the references
expressly discloses asymmetric dialkyl moieties is not controlling; the
question under 35 U.S.C. 103 is not merely what the references expressly
teach, but what they would have suggested to one of ordinary skill in the art
at the time the invention was made.”).
We are of the view that the format used by Kaneko to describe the
disclosed rare earth metal-nickel-base hydrogen absorbing alloy is the same
format used by Appellants in the Specification and claim 1 to describe the
claimed nickel-titanium alloy (see above p. 3), and we find that Seo uses the
same format to describe alloys. Seo abstract. Thus, contrary to Appellants’
position, Kaneko’s art-recognized format describes a finite set of alloys by
specifying the elements in at.% ranges without requiring further
modification for selection of an alloy or alloys having the disclosed
properties. We note that this art-recognized format has also been
consistently recognized in this respect by our reviewing court and one of its
predecessor courts. Indeed, we know of no authority to the contrary and
none has been cited by Appellants. See, e.g., In re Harris, 409 F.3d 1339,
1341-44 (Fed. Cir. 2005), and cases cited therein; In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003), and cases cited therein (“The normal desire
of scientists or artisans to improve upon what is already generally known
provides the motivation to determine where in a disclosed set of percentage
ranges is the optimum combination of percentages.”); In re Boesch, 617 F.2d
272, 276 (CCPA 1980); Titanium Metals Corp. of Am. v. Banner, 778 F.2d
775, 783 (Fed. Cir. 1985) (“proportions [of metal content in alloys] are so
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close that prima facie one skilled in the art would have expected them to
have the same properties); cf., e.g., Takeda Chem. Indus., Ltd. v.
Alphapharm Party, Ltd., 492 F.3d 1350, 1356-357 (Fed. Cir. 2007) (The
“test for prima facie obviousness for chemical compounds[, requiring ‘a
showing that the ‘prior art would have suggested making the specific
molecular modifications necessary to achieve the claimed invention,’] is
consistent with the legal principles enunciated in KSR.”) (quoting In re
Deuel, 51 F.3d 1552, 1558 (Fed Cir. 1995).
Accordingly, we are of the opinion that Kaneko’s disclosure of
specific elements in specific at.% ranges which result in alloys having the
disclosed properties is not analogous to the disclosure of a very broad genus
of substances in a reference that provides no teachings which would have
directed one of ordinary skill in the art to select particular moieties necessary
to arrive at the claimed compounds, as was the case in In re Baird, 16 F.3d
380, 382-83 (Fed. Cir. 1994), on which Appellants rely. App. Br. 12, 15-16.
We are also unconvinced that Appellants have carried the burden of
establishing that the evidence in Seo based on Seo’s LM-Ni-Al-Co-Mn-M
system alloys, wherein M in this system AB5-type alloy is Ti or Zr, would
have been recognized by one of ordinary skill in the art as pertinent to
Kaneko’s alloys such that one of ordinary skill in the art would have been
led away from Kaneko’s alloys containing the M element Ti at an at.% of
y = 0.5, as Appellants contend. App. Br. 16-17; Reply Br. 5-6. Indeed, we
find that Seo’s tested AB5-type LM-Ni-Al-Co-Mn-M system alloys differ at
least from the alloys of Kaneko in that Kaneko’s alloys can have different
rare earth elements R, have the additional rare earth element(s) L, and the M
element is solely Ti as relied on by the Examiner, that is, the M elements Al,
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Co, and Mn are not present.
In this respect, we find that Seo would have disclosed to one of
ordinary skill in the art that the tested AB5-type LM-Ni-Al-Co-Mn-M
system alloys are “AB5-type intermetallic compounds . . . prepared by
arc-melting in an argon atmosphere,” and “[t]he composition of a
stoichiometric compound (LMNi3.6Al0.4Co0.7Mn0.3)My (LM = La-rich
mischmetal, M = Ti, Zr; y = 0.0, 0.02, 0.05, 0.1, 0.2, 0.3) with a hexagonal
CaCu5 structure was varied by stoichiometric and nonstoichiometric addition
of Ti or Zr,” but would not have disclosed the amount of “LM.” Seo
abstract, 318-19 (2. Experimental procedure 1st¶), 326 (right col. 1st¶). See
Ans. 11-12. We find that Seo does not reference Kaneko. Seo 327.
We find that “mischmetal” is well known in the art as a mixture of the
rare earth elements Ce, La, Nd and Pr in various amounts that can contain
small amounts of other rare earth metals. We find Seo describes “LM” as
“La-rich mischmetal” but does not disclose the composition thereof. Seo
abstract.
We find Kaneko would have disclosed to one of ordinary skill in the
art that a known “anode for a nickel-hydrogen rechargeable battery which is
currently produced . . . is mainly produced with an AB5 type alloy which has
a light rare earth elements such as La, Ce, Pr, Nd, or a mixture of these
elements (Mm (misch metal)) in A-site, and Ni, Co, Mn, and/or Al in B-
site,” and has certain drawbacks. Kaneko 2:8-17. Kaneko would have
distinguished the disclosed rare earth metal-nickel-base hydrogen absorbing
alloys from the known AB5 type alloys. Kaneko 3:8-33
Indeed, we, like the Examiner, found Kaneko would have disclosed
that rare earth element R in the formula is one or more of La, Ce, Pr and Nd
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10
in the at.% in combination with rare earth and alkaline earth metal
element(s) L in the relationship (R1-xLx) specified by the range
0.05 ≤ x ≤ 0.4, and that the element M can be solely Ti. We found that
Kaneko would have disclosed that the alloy is prepared by a particular
method using a roll casting deice with certain heat treatment conditions
using a roll casting deice,. See above pp. 3-5.
Thus, Seo’s AB5-type LM-Ni-Al-Co-Mn-M system alloys prepared by
an arc-melting process are materially different from Kaneko’s rare
earth metal-nickel-base hydrogen absorbing alloys relied on by the Examiner
which contain additional rare earth element(s) L, the M element Ti and not
the mixture of Al, Co and Mn, and are prepared by a different process.
On this record, we find that Appellants have not established that one
of ordinary skill in the art would have considered that Seo’s tested AB5-type
LM-Ni-Al-Co-Mn-M system alloys prepared by an arc-melting process are
sufficiently similar to Kaneko’s rare earth metal-nickel-base hydrogen
absorbing alloys which contain at least one additional rare earth element L
and different element(s) M, and are prepared by certain heat treatment
conditions using a roll casting deice, and particularly the alloys which
contain Ti as the sole element M as relied on by the Examiner, for the results
of Seo’s experiments to teach away from the claimed alloys within Kaneko’s
disclosure. App. Br. 16-17; Reply Br. 5-7. Indeed, in response to the
Examiner’s position that Seo’s disclosure is based in part on “a very specific
set of compositions [(LMNi3.6Al0.4Co0.7Mn0.3Tiy wherein y = 0.0, 0.02, 0.05,
0.1, 0.2, 0.3)],” Appellants contend that “[a]ll of the alloys disclosed by both
Kaneko and Seo are AB5-type alloys that require [Ni] and one or more rare
earth elements, where [Ti] is an optional dopant,” without submitting
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evidence or argument which support the contention in view of the evidence
in Kaneko and Seo, the latter not referencing the former. Advisory action
mailed December 28, 2010, at 3 (see Ans. 11-12); App. Br. 17 (original
emphasis omitted). We find no teaching in Seo which specifically criticizes
the teachings of Kaneko. Cf. In re Young, 927 F.2d 588, 591-92 (Fed. Cir.
1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (specific
evaluation of teachings of one reference in another reference must be
considered for what the combined teachings of the references would have
suggested to one of ordinary skill in the art).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Kaneko
with Appellants’ countervailing evidence of and argument for
nonobviousness, including reliance on Seo, and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-10 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
Turning now to the ground of rejection of claims 11-17 over Solingen
and Kaneko, Appellants rely on the same position with respect to Kaneko,
pointing out that Solingen “does not remedy the deficiencies of Kaneko.”
App. Br. 18. Accordingly, we affirm the ground of rejection of claims 11-17
under 35 U.S.C. § 103(a) over Solingen and Kaneko for the reasons we set
forth with respect to Kaneko.
The Primary Examiner’s decision 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).
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AFFIRMED
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