Ex Parte Wang et al

Patent Trial and Appeal Board

Feb 28, 2017

12552510 (P.T.A.B. Feb. 28, 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.
12/552,510 09/02/2009 Yar-Ming Wang P006882-R&D-MJL 4765
104102 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
WITTENBERG, STEFANIE S
ART UNIT PAPER NUMBER
1756
MAIL DATE DELIVERY MODE
03/01/2017 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 YAR-MING WANG, YEN-LUNG CHEN,
and HONG-HSIANG KUO
Appeal 2016-000611
Application 12/552,510
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1,11, and 17 of Application
12/552,510 under 35 U.S.C. § 112,11 as failing to comply with the written
description requirement. Final Act. 3 (Oct. 22, 2014). The Examiner also
rejected claims 1—15, 17, 18, and 21—26 under 35 U.S.C. § 103(a) as
obvious. Final Act. 4—18. Appellants1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 General Motors LLC is identified as the real party in interest. Appeal
Br. 4.
Appeal 2016-000611
Application 12/552,510
BACKGROUND
The ’510 Application relates to a method of forming an anodized
aluminum-silicon alloy work piece having reduced surface roughness and
improved oxide coating thickness uniformity. Spec. 11.
Claim 1 is representative of the ’510 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief with
language relevant to the appeal in bold:
1. A method for forming an anodized aluminum-silicon
alloy work piece comprising:
providing a cast aluminum-silicon alloy substrate material
having a plurality of silicon particles;
wherein said cast aluminum-silicon alloy substrate material
comprises a cast hypoeutectic, eutectic, or hypereutectic
aluminum-silicon alloy substrate material;
applying a friction stir processing treatment to said cast
aluminum-silicon alloy substrate material to reduce an
average particle size of said plurality of silicon particles to
about 2 micrometers while increasing a size uniformity of
said plurality of silicon particles; and
subsequently anodizing said cast aluminum-silicon alloy
substrate material to form a uniform oxide coating layer on said
cast aluminum-silicon alloy substrate material.
Appeal Br. 21 (Claims App.) (emphasis added).
REJECTION
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 11, and 17 are rejected under 35 U.S.C. § 112,11,
for failure to comply with the written descritption requirement. Final Act. 3.
2. Claims 1—8, 11, 12, and 21—23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hosoya (2007/064129,
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Application 12/552,510
pub. March 15, 2007) (hereinafter “Hosoya”) in view of either Wang et al.
(US 5,884,600, iss. March 23, 1999) (hereinafter “Wang”) or Zhang (CA
2,479,032 Al, pub. March 13, 2006) (hereinafter Zhang), and further in view
of Ma et al. (Ma, Z.Y. et al., “Microstructural Modification of As-Cast Al-
Si-Mg Alloy by Friction Stir Processing,” Metallurgical and Materials
Transactions A, 37A (Nov. 2006), 3323—3336) (hereinafter “Ma”). Id. at 4—
11.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hosoya in view of Wang or Zhang, and further in
view of Ma and Mishra (Mishra, R.S., Ma, Z.Y., “Friction Stir Welding And
Processing,” Materials Science and Engineering R 50 (2005), 1—78)
(hereinafter “Mishra”). Id. at 11—13.
4. Claims 10, 13—15, 17 and 24—26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hosoya in view of Wang
or Zhang, and further in view of Ma and Kuo et al. (US 7,166,205 B2, iss.
Jan. 23, 2007) (hereinafter “Kuo”). Id. at 13—17.
5. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hosoya in view of Wang or Zhang, and further in
view of Ma and Kuo and Mishra. Id. at 17—18.
DISCUSSION
Rejection 1. The Examiner rejected claims 1,11, and 17 for failure to
comply with the written description requirement. Final Act. 3.
Claims 1 and 11 require a friction stir processing treatment “to reduce
an average particle size of said plurality of silicon particles to about 2
micrometers.” Appeal Br. 21, 23 (Claims App.). Similarly, claim 17
requires a process that “reduces an average particle size of said plurality of
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Application 12/552,510
silicon particles within said wrought microstructure to about 2 micrometers.”
Id. at 24.
The Specification as filed describes a process where particles are
reduced to “an average particle size of 2 micrometers or less.” Spec. 134.
Appellants argue that this teaching includes “particle [ ] sizes ranging from
slightly above to below 2 micrometers i.e. about 2 micrometers.” Appeal
Br. 13. The Examiner determines that an average is a single value, albeit of
multiple values, and that the Specification allows only for values at and
below 2 micrometers. Answer 19.
We construe the limitation at issue — “average particle size . . .to about
2 micrometers” in order to determine if it is supported by the written
description. See Atlantic Research Marketing Systems, Inc. v. Troy, 659
F.3d 1345, 1354 (Fed. Cir. 2011) (“[CJlaim construction is inherent in any
written description analysis”) (quoting In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011)). “[T]he
PTO must give claims their broadest reasonable construction consistent with
the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
The claim requires an average particle size of “about two
micrometers.” The term “about” is a word of degree. When a “word of
degree” is used, one must determine whether the patent provides “some
standard for measuring that degree.” Enzo Biochem, Inc. v. Applera Corp.,
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Application 12/552,510
599 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Seattle Box Co. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)).
Here claim 9, which depends indirectly from claim 1, requires that the
silicon particles have an average particle size of “about 1.4 micrometers
after said friction stir processing treatment.” Appeal Br. (Claim App. 23).
Under the rule of claim differentiation, the “about 2 micrometers” of claim 1
must be construed broadly enough to encompass the “about 1.4
micrometers” of dependent claim 14. See 35 U.S.C. § 112 (d) (“[A] claim in
dependent form shall contain a reference to a claim previously set forth and
then specify a further limitation of the subject matter claimed.”); In re
Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (“Claims of narrower scope
can be useful to clarity the meaning of broader, independent claims under
the doctrine of claim differentiation.”). Giving the claims their broadest
reasonable interpretation, one may thus infer that the “about 2 micrometers”
limitation includes a similar range greater than 2 micrometers. Answer 9.
The Specification discloses a coating having “silicon particles with an
average particle size of 2 micrometers or less,” Spec. 134, but does not
describe a size range exceeding 2 micrometers. Given the scope of “about 2
micrometers” implied by claim 9, we find no error in the Examiner’s
determination that claims 1,11, and 17 go beyond the cited portion of the
Specification and fail to comply with the written description requirement.
Rejection 2. The Examiner rejected claims 1—8, 11, 12, and 21—23 as
obvious over Hosoya in view of Wang or Zhang and further in view of Ma.
Final Act. 4—11. Appellants argue that the Examiner has not shown that the
cited combination discloses an “average particle size of said plurality of
silicon particles to about 2 micrometers while increasing a size uniformity of
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Application 12/552,510
said plurality of silicon particles,” and therefore has failed to establish a
prima facie case of obviousness. Appeal Br. 13.
In regard to what showing must be made to establish a prima facie
case, the Federal Circuit has offered guidance as follows:
The Patent and Trademark Office (“PTO”) satisfies its
initial burden of production by adequately explaining] the
shortcomings it perceives so that the applicant is properly
notified and able to respond. In other words, the PTO carries its
procedural burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132, in “notifying] the applicant
... [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as
may be useful in judging of the propriety of continuing the
prosecution of [the] application.” 35 U.S.C. § 132. That section
“is violated when a rejection is so uninformative that it prevents
the applicant from recognizing and seeking to counter the
grounds for rejection.
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations omitted).
The Final Rejection cited to Ma for its teaching regarding particle size
and uniformity. Specifically, in regard to uniformity, the Examiner found
that “Ma teaches that FSP resulted in significant breakup of acicular Si
particles and aluminum dendrites and subsequently created a uniform
distribution of smaller broken Si particles in the aluminum matrix.” Final
Act. 6 (emphasis added). Similarly, in regard to particle size, the Examiner
found that “[i]n table 3, Ma teaches that the size of the A1 cast may go from
approximately 16 microns to two microns after undergoing FSP (i.e. about 2
micrometers).” Id. (emphasis added).
Given the specificity of the Examiner’s findings, we are not persuaded
that the rejection was so uninformative that it prevented Appellants from
recognizing and responding to the grounds for rejection.
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Rejections 3—5. Appellants present the same arguments in support of
Rejections 3—5 as for Rejection 2. As such argument was not found
persuasive, these rejections are sustained for the reasons set forth above.
In sum, we find that the Examiner’s fact finding and reasoning, as set
forth in the Final Office Action and the Answer, are supported by a
preponderance of the evidence and sufficient to establish a prima facie case
of obviousness as to claims 1—15, 17, 18, and 21—26. Appellants’ arguments
fail to identify error in the Examiner’s obviousness determination.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1,
11, and 17 for failure to comply with the written description requirement and
the rejections of claims 1—15, 17, 18, and 21—26 as obvious.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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