Ex Parte Ward

Board of Patent Appeals and Interferences

May 27, 2010

10488848 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOHN ANDREW WARD
________________

Appeal 2009-005811
Application 10/488,848
Technology Center 1700
________________

Decided: May 27, 2010
________________

Before CHUNG K. PAK, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005811
Application 10/488,848

2
A. Introduction1
John Andrew Ward (“Ward”) timely appeal under 35 U.S.C. § 134(a)
from the final rejection2 of claims 1-3 and 5-17. We have jurisdiction under
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to aluminum alloys said to be
useful for lithographic sheets that are subjected to electrograining in nitric
acid. Conventional suitable alloys are said to be nominally 99.5% pure
aluminum, and to be subject to a relatively narrow range of process
conditions. (Spec. 1, 2d para.) Problems are said to arise due to the
formation of large pits with concomitant large “ungrained plateau areas” that
have not been etched. (Id.). According to the inventor, the claimed alloy
permits a wider range of processing conditions, especially higher current
density and line speed, thereby permitting a faster electrograining process.
The critical features are said to be the amounts of zinc (Zn) and
vanadium (V), and especially the Zn/V ratio. (Spec. 3, 1st and 2d full
paras.)

1 Application 10/488,848, Al Alloy for Lithographic Sheet, filed 17 August
2004 as the National Stage of an International Application filed
11 September 2002, claiming the benefit of an Application filed in the
United Kingdom on 12 September 2001. The specification is referred to as
the “848 Specification,” and is cited as “Spec.” The real party in interest is
listed as Novelis, Inc. (Appeal Brief, filed 18 January 2008 (“Br.”), 1.)
2 Office action mailed 9 January 2007 (“Final Rejection”; cited as “FR”).
Appeal 2009-005811
Application 10/488,848

3
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. An Al alloy suitable for processing into a lithographic sheet,
the alloy having a composition in wt%:
Fe up to 0.4
Si up to 0.25
Ti up to 0.05
Cu up to 0.05
Zr up to 0.005
Cr up to 0.03
Ni up to 0.006
V 0.005 to 0.03
Zn 0.008 to 0.15
Mg up to 0.30
Mn up to 1.5
Unavoidable impurities up to 0.05 wt% each, 0.15 wt%
total
Al balance,
and wherein the Zn/V ratio is at least about 0.6.
(Claims App., Br. 15; indentation and emphasis added.)
The Examiner has maintained the following grounds of rejection:3
A. Claims 1-3 and 5-17 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Asakawa4 and Shoji.5

3 Examiner’s Answer mailed 18 March 2008. (“Ans.”).
4 Yoshihiko Asakawa et al., Aluminum Alloy Sheet for Printing Plate,
JP 09-316582 (1997).
Appeal 2009-005811
Application 10/488,848

4
B. Claims 1-3 and 5-17 stand rejected under
35 U.S.C. § 103(a) in view of Hosono6 and Shoji.
C. Claims 1-3 and 5-17 stand rejected under
35 U.S.C. § 103(a) in view of Yamaguchi7 and Shoji.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Ward argues that Asakawa discloses aluminum alloys that contain
0.04 to 0.10 wt% zinc, but fails to mention alloys containing any amount of
vanadium. (Br., para. bridging 5-6.) Shoji, according to Ward, teaches that
the presence of 0.01 to 0.3 wt% vanadium or nickel improves the thermal
softening-resistant characteristics of aluminum alloys for lithographic
printing. (Id. at 6.) Ward disputes the Examiner’s conclusion that it would
have been obvious to add vanadium to prior art alloys to improve “thermal
softening resistance thereby alloying for surface uniformity” (FR 2; cf.
Ans. 3, last full para.) Ward argues that when two alloys, such as those
taught by Asakawa and Shoji, differ in composition, “the result of simply
adding an element taught as having a particular effect in one, to the alloy of
the other, would not necessarily be predictable, owing to the possibility of

5 Ryo Shoji et al., Aluminum Alloy Supporter for Lithographic Printing
Plate, U.S. Patent 4,822,715 (1989).
6 Shin’ichiro Hosono and Kozo Hoshino, Aluminum Alloy Sheet for Printing
Plate and Method of Manufacture Thereof, JP 08-311592 (1996).
7 Keitarou Yamaguchi, Aluminum Alloy Plate for Planographic Printing
Plate, U.S. Patent 6,555,247 B2 (29 April 2003), based on an application
filed 9 July 2001.
Appeal 2009-005811
Application 10/488,848

5
unforeseen interaction between different elements or between elements
present in different proportions.” (Br. 7.) Moreover, according to Ward, the
overlap between Asakawa’s disclosed V range (0.01-0.3 wt%) and the range
recited in claim 1 (0.005 to 0.03 w%) is very small, with Asakawa’s range
extending up to ten times the amount permitted by the appealed claim. (Id.
at 8.) The purpose of the invention, according to Ward, is not to add
vanadium to aluminum alloys, but to address problems arising from the
presence of vanadium at impurity levels (0.005 to 0.03 wt%). Ward argues
that neither Asakawa nor Shoji recognize this issue. (Id. at 6, last two
paras.) Moreover, neither reference, according to Ward, teaches or suggests
that the ratio of Zn to V is a result effective variable. (Id. at 7, 9.) There is,
Ward concludes, no basis to optimize that ratio, and no basis to conclude
that the claimed subject matter would have been obvious. Ward notes that
similar arguments apply to the rejection over Hosono and Shoji, as Hosono
is silent regarding the presence of V. (Br. 10.)
Ward acknowledges that Yamaguchi mentions vanadium, but stresses
that Yamaguchi notes V only as an impurity along with Cr, Ga, Pb, Ni and
the like, with the total content of impurities being 0.03% or less. (Br. 11,
citing Yamaguchi, col. 5, ll. 20-26.) Apart from the minimization of their
presence implied by the epithet “impurity,” Ward denies that the levels of Zn
and V are recognized in Yamaguchi as result effective variables. (Br. 12.)
Ward also objects (id.) to the Examiner’s conclusion that “it would have
been obvious to replace Zr taught by Yamaguchi with V, because it is prima
facie obvious to substitute equivalents known for the same purpose.”
Yamaguchi, Ward argues, “employs Zr, together with at least one of Sn, In
Appeal 2009-005811
Application 10/488,848

6
and Zn, to enhance the wear resistance of the alumite film.” (Br. 12, citing
Yamaguchi, col. 4, ll. 25-66.) Shoji, “in contrast, employs V to improve
thermal softening resistance.” (Id., citing Shoji, col. 3, ll. 48-53.) Ward
concludes that the absence of evidence establishing the equivalence of V as
a substitute for Zr, and the absence of evidence that the ratio Zn/V was
recognized as a result effective variable, show that the Examiner failed to
establish a prima facie case of obviousness. (Br. para. bridging 12-13.)
The cases cited by the Examiner, such as In re Peterson, 315 F.3d
1325 (Fed. Cir. 2003), generally support the proposition that prior art
disclosures of ranges that overlap ranges recited in a claim, even in a
complex art such as metal alloys. However, the facts of those cases must be
compared with the facts of the case before the Examiner before the legal
conclusion of those cases can be applied. The inquiry into obviousness is
fact-specific and must be conducted on a case-by-case basis. On the facts
placed before the court in Peterson, the court held that “a prior art reference
that discloses a range encompassing a somewhat narrower claimed range is
sufficient to establish a prima facie case of obviousness.” Id. at 1330. The
“somewhat narrower” proviso expressed in Peterson was not insignificant,
as the court noted the absence of “any assertion that the disclosed range was
so broad as to encompass a very large number of possible distinct
combinations” id. at n.1, and the presence of indications that the properties
of alloys could be optimized within the disclosed ranges. Id. at 1330.
In the present case, however, the range for vanadium in alloys
described by Shoji covers, as Ward points out, up to ten times the maximum
amount covered by alloys of claim 1. Moreover, the present case involves
Appeal 2009-005811
Application 10/488,848

7
not merely ranges of V and Zn, but the ratio of Zn/V. In this regard, it is
notable that Shoji mentions Zn only as an inevitable impurity, along with Ga
and Cr, the total content of which should be no more than 0.05%. Against
this backdrop, the Examiner has not come forward with any credible
evidence indicating that a person having ordinary skill in the art would have
recognized any relation between the relative amounts of Zn and V on any
property of aluminum alloys. As Ward argues, it is not obvious to optimize
an unrecognized variable. Cf. Application of Antonie, 559 F.2d 618, 620
(CCPA 1977) (“This case, in which the parameter optimized was not
recognized to be a result-effective variable, is another exception [to the
general rule that optimization of a result-effective variable is obvious].”)
These weaknesses in the Examiner’s rejections are magnified by the
complete absence of disclosure of vanadium as a component in the alloys
described by Asakawa and by Hosono. The Examiner has not come forward
with argument and supporting facts that make credible the proposition that a
person having ordinary skill in the art would have deliberately added an
amount of V at the lowermost end of amounts suggested by Shoji as being
useful, and simultaneously controlled the amount of Zn in relation to the
amount of V within the range recited in claim 1.
Similar issues arise in the rejection over Yamaguchi and Shoji. As
Ward points out, Yamaguchi describes alloys in which zirconium and at
least one of Sn, In, and Zn must be present to provide a uniform, wear-
resistant alumite film upon degreasing treatment. (Yamaguchi, col. 4,
ll. 25-55.) Thus, zirconium is required at 0.004 to 0.1% (id. at col. 4, l. 25),
more preferably 0.01% to 0.05%, with at least one of Sn, In, and Zn at 0.004
Appeal 2009-005811
Application 10/488,848

8
to 0.02% (id. at col. 5, ll. 6-7). Yamaguchi mentions vanadium, however,
only in characterizing “avoidable impurities,” which are said to include Cr,
Ga, Pb, V, Ni and the like. (Id. at ll. 20-23.) According to Yamaguchi, the
total amount of the avoidable impurities should be maintained at less
than 0.03%. (Id. at ll. 20-26.) Thus, Yamaguchi does not support the
Examiner’s position that the substitution of V for Zr would have been
regarded as the substitution of equivalent elements.
In this regard, the teachings of Shoji, that V and Ni are equivalents, in
that they may be substituted for one another, do not appear to extend to Zr.
The two classes of alloys described by Shoji in the summary of the invention
(Shoji at col. 3, ll. 5-19) illustrate the apparent distinction between Zr and
the other two metals. In both classes of alloys, 0.01 to 0.3 wt. % of “V
and/or Ni” may be present. But no Zr is mentioned in the first alloy, in
contrast to the second alloy, which is said to contain “0.01% to 0.3 wt. % of
Zr and/or 0.05 to 2 wt. % of Mn.” (Id.) The second alloy suggests a distinct
chemical role for Zr, and weighs against the substitutional equivalence of Zr
and V in the alloys described by Shoji. Moreover, Shoji describes zinc only
as an “inevitable impurity” along with Ga and Cr. (Id. at col. 4, ll. 8-9.) The
only teaching as to the amount of Zn is that, along with the other inevitable
impurities, to total content should not be more than 0.05% of the alloy. (Id.
at ll. 9-11.)
We conclude that that a prima facie case for the optimization of a
component required in the claimed alloy, but regarded as an impurity in at
least one of every reference relied on for evidence of unpatentability, has not
been established.
Appeal 2009-005811
Application 10/488,848

9
C. Order
We REVERSE the rejection of claims 1-3 and 5-17 under
35 U.S.C. § 103(a) in view of the combined teachings of Asakawa and Shoji.
We REVERSE the rejection of claims 1-3 and 5-17 under
35 U.S.C. § 103(a) in view of Hosono and Shoji.
We REVERSE the rejection of claims 1-3 and 5-17 under
35 U.S.C. § 103(a) in view of Yamaguchi and Shoji.
REVERSED

kmm

CHRISTOPHER C DUNHAM
COOPER & DUNHAM
1185 AVENUE OF THE AMERICAS
NEW YORK, NY 10036