Ex Parte Allely et al

Patent Trial and Appeal BoardMar 4, 2019

14413965 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/413,965 01/09/2015 23280 7590 03/06/2019 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Christian Allely 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 631.1027 9547 EXAMINER KRUPICKA, ADAM C ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 03/06/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN ALLEL Y, ASTRID COFFIGNY-GREGOIRE, LAURENCE DOSDAT, and STEPHANE MOREL Appeal2019-001019 Application 14/413,965 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a Non-Final Action dated November 16, 2017 of claims 8, 9, 12-15, 19, and 26-29. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2019-001019 Application 14/413,965 The invention is directed to an assembly of an aluminum-based part and a part made of steel provided with a coating made of a zinc-aluminum- magnesium alloy, on at least one of the surfaces thereof placed so as to be in contact at least partially with the aluminum-based part. Spec. ,r 1. Claim 8 is illustrative of the subject matter on appeal and is reproduced below: 8. An assembly comprising: an aluminum-based element; and a steel element provided on at least one of the surfaces thereof having a metal coating made of a zinc-aluminum- magnesium alloy including from 2.3% to 3.3% by weight of magnesium, from 3.6% to 3.9% by weight of aluminum, a remainder of the metal coating being zinc and inevitable impurities; the coated surface of the steel element being in at least partial contact with the aluminum-based element. Appellant1 requests review of the following rejections from the Examiner's Final Office Action: I. Claim 8 rejected under 35 U.S.C. Â§ 103 as unpatentable over Strom (EP 2 141 255 Al, published January 6, 2010). II. Claims 8, 9, 12-15, 19, and 27-29 rejected under 35 U.S.C. Â§ 103 as unpatentable over Strom and Shakhpazov (RU 24 70088, published December 20, 2012 and relying on an English machine translation dated October 31, 2017). III. Claims 9, 12-15, 19, and 27-29 rejected under 35 U.S.C. Â§ 103 as unpatentable over Strom and Honda (US 2010/0304183 Al, published December 2, 2010). 1 ARCELORMITTAL INVESTIGACION Y DESARROLLO, S.L. is the Applicant/ Appellant. ARCELORMITTAL is identified as the real party in interest. App. Br. 3. 2 Appeal2019-001019 Application 14/413,965 IV. Claim 26 rejected under 35 U.S.C. Â§ 103 as unpatentable over Strom and Urushihara (US 2009/0011269 Al, published January 8, 2009). V. Claim 26 rejected under 35 U.S.C. Â§ 103 as unpatentable over Strom, Shakhpazov, and Urushihara. OPINION After review of the respective positions provided by Appellant and the Examiner, we affirm the Examiner's prior art rejections of claims 8, 9, 12- 15, 19, and 26-29 for the reasons presented by the Examiner. We add the following for emphasis. Claim 8 (Rejections I and 11}2 Claim 8 is directed to an assembly comprising an aluminum-based element and a steel element, where the steel element has on at least one of the surfaces thereof a metal coating made of a zinc-aluminum-magnesium alloy. The metal coating includes from 3.6% to 3.9% by weight of aluminum. In Rejection I, the Examiner finds Strom teaches an assembly comprising an aluminum-based element and a steel element where a surface of the steel element has a metal coating made of a zinc-aluminum- magnesium alloy that differs from the claimed coating in that Strom's coating has an aluminum content of 0.8 to 3.5 weight percent instead of the 2 Independent claim 8 is the sole claim addressed by Rejection I. See generally App. Br. For Rejection II, Appellant presents arguments only for independent claim 8 and does not argue any dependent claim separately. Id. Accordingly, we select claim 8 as representative of the subject matter addressed by Rejection II and limit our discussion to this claim as well. Claims 9, 12-15, 19, and 27-29 stand or fall with claim 8. 3 Appeal2019-001019 Application 14/413,965 claimed aluminum content of from 3.6% to 3.9% by weight. Non-Final Act. 3; Strom ,r,r 10, 12. The Examiner determines a prima facie case of obviousness exists because the claimed ranges are close. Non-Final Act. 4. The Examiner finds that the aluminum contents of the claimed invention and the prior art provide their respective coatings with good corrosion resistance and surface qualities. Id. Thus, the Examiner concludes that one of ordinary skill in the art would have found it obvious to select an aluminum content from within the values disclosed by Strom including those values which fall so close to the presently claimed range as to have the same properties. Id. In alternate Rejection II, the Examiner additionally relies on Shakhpazov as disclosing a zinc based coating for steel elements comprising 0.84 to 5.24 weight% aluminum and 0.6 to 3.74 weight% magnesium that exhibits increased hardness, corrosion resistance, and quality at a reduced cost and including reduced dross formation. Non-Final Act. 7; Shakhpazov 4. The Examiner determines that it would have been obvious to one skilled in the art to use Shakhpazov's zinc based coating as the zinc coating on Strom's member in view of Shakhpazov's teachings. Non-Final Act. 7. With respect to Rejection I, Appellant argues that the Examiner relied on impermissible hindsight in determining that Strom's aluminum content range was sufficiently close to establish a prima facie case of obviousness. App. Br. 5; Reply Br. 2--4. Citing In re Patel, 566 F. App'x 1005 (Fed. Cir. 2014), Appellant further argues that the Examiner did not identify any teaching in Strom that shows that the end points of Strom can be flexibly applied, did not show that the end points of Strom are not meaningful, and did not show that one of skill in the art would have known to discard the limits set by Strom. App. Br. 5, 9; see Patel, 566 F. App'x at 1009 (holding 4 Appeal2019-001019 Application 14/413,965 that a reference disclosing a range of 0.5 to 25 weight percent cannot establish a prima facie case of obviousness of a range of 26 to 80 weight percent "because the ranges do not overlap and the prior art does not teach that a broader range would be appropriate."). Absent this evidence, Appellant contends that Strom does not render the "from 3 .6% to 3 .9% by weight of aluminum" recited in claim 8 obvious. App. Br. 6. Appellant additionally argues that the fact that both the amounts provided for by the claimed invention and by the prior art provide the coating with good corrosion resistance and surface qualities is insufficient to establish obviousness of the claimed aluminum content over Strom's range. App. Br. 10. Appellant's arguments do not persuade us of Examiner error. As the Examiner notes, the higher value of 3.5% by weight aluminum for Strom's metal coating falls so close to the lower value of 3.6% by weight aluminum of the claimed metal coating that one skilled in the art would have reasonably expected the respective metal coatings to have the same properties. Non-Final Act. 4; Ans. 9-10. While Appellant argues that there is no teaching in Strom that shows that the end points of Strom can be flexibly applied, did not show that the end points of Strom are not meaningful, and did not show that one of skill in the art would have known to discard the limits set by Strom (App. Br. 5, 9), we note that paragraph 12 of Strom describes the metal coating as a "ZnMg based alloy coating [that] can for instance be a zinc alloy containing 0.8 - 3.5 weight% aluminium [sic, aluminum] and 0.8 - 10.0 weight% magnesium" (emphasis added). Thus, Strom is describing a preferred metal coating for the disclosed assembly. This disclosure would suggest to one skilled in the art that the 5 Appeal2019-001019 Application 14/413,965 end points, and particularly, the upper end point, of Strom's aluminum content range are not critical and, thus, one of skill in the art would have reasonably expected similar behavior above 3.5 wt.% aluminum for the same purpose Strom discloses. With respect to Rejection II, Appellant argues Shakhpazov does not provide a reason for one of ordinary skill in the art to select the Al and Mg in the amounts recited in instant claim 8 and modify Strom accordingly. App. Br. 17-18. We are also unpersuaded of Examiner error by this argument. Appellant's arguments do not adequately address the rejection the Examiner presents. As the Examiner explains, Shakhpazov discloses zinc-based coatings for the protection of steel where the coatings comprise 0.84 to 5.24 weight% aluminum and exhibit increased hardness and corrosion resistance. Non-Final Act. 7; Shakhpazov 4. Shakhpazov also discloses that [t]he low plasticity of the coating, caused by the insufficient aluminum content in the melt, reduces the moldability of the resulting coated material, since with sufficiently deep drawing required for the manufacture of certain automotive as well as certain building components, microcracks appear in the coating, which reduce the corrosion resistance of the coating. Shakhpazov 2. Thus, based on this disclosure, one skilled in the art would have reasonably expected that increasing the aluminum content in Strom's metal coating, to the extent taught by Shakhpazov, would have resulted in a suitable moldable metal coating for Strom's assembly and that the improved metal coating would have a desirably improved corrosion resistance. Given these disclosures, Appellant has not distinguished the claimed invention from the teachings of Strom alone or in combination with 6 Appeal2019-001019 Application 14/413,965 Shakhpazov. Therefore, Appellant's arguments do not point to error in the Examiner's conclusion of obviousness. Appellant contends that the data from Tables 1 (inventive Sample 3) and 2 (inventive Sample 4) of the Specification unexpectedly show that coatings having the claimed amounts of magnesium and aluminum have improved corrosion resistance and galvanic coupling resistance. App. Br. 12-13; Spec. ,r,r 37-38. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F .2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims 7 Appeal2019-001019 Application 14/413,965 on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). After weighing Appellant's evidence in support of patentability, we agree with the Examiner's determination that a preponderance of the evidence weighs in favor of obviousness. Ans. 11-13. We first note that it is not clear that the showing distinguishes the claimed invention from the closest prior art (Strom). Further, as both Appellant and the Examiner recognize, the data shown in Tables 1 and 2 are for a single inventive coating composition having 3.7% aluminum and 3.0% of magnesium. Ans. 13; App. Br. 12. Appellant has not adequately explained why this single composition is representative of the broad scope of Ag alloy compositions claimed so as to provide an adequate basis to support a conclusion that other embodiments falling within the claim will behave in the same manner. Thus, the showing is not reasonably commensurate in scope with the claim. Further, even if the data is considered, we agree with the Examiner's determination that one of ordinary skill in the art can only observe from this data that the combined increase in magnesium and aluminum results in an increase in corrosion protection under a particular set of testing conditions and, thus, provides an insufficient basis for concluding unexpected improvement for the claimed aluminum content because the effect of the aluminum and magnesium cannot be separated. Ans. 12. On this record, Appellant has not adequately explained why the evidence shows the claimed aluminum content would have been unexpected 8 Appeal2019-001019 Application 14/413,965 by one of ordinary skill in the art and that the testing is reasonably commensurate in scope with the claims. Accordingly, we affirm the Examiner's prior art rejections of claim 8 (Rejection I) and of claims 8, 9, 12-15, 19, and 27-29 (Rejection II) for the reasons presented by the Examiner and given above. 9 Appeal2019-001019 Application 14/413,965 Claim 9 (Rejection 111}3 Claim 9 requires the metal coating to include one or more additional elements selected from among Si, Sb, Pb, Ti, Ca, Mn, Sn, La, Ce, Cr, Ni or Bi. Recognizing that Strom does not disclose the additives of claim 9, the Examiner finds Honda discloses Pb, Sb, Si, Sn, Mn, Ni, Cr, Ca, Ti, and Bi as known additives for zinc-aluminum-magnesium corrosion resistant coatings that are applied to steel elements useful in automobile construction. Non- Final Act. 5; Honda ,r 132. The Examiner concludes the one of ordinary skill in the art would have found it obvious to add one or more of the elements disclosed by Honda to Strom's zinc based coating to improve the corrosion resistance and workability of Strom's zinc-magnesium coatings for steel sheets in view of Honda's teachings. Appellant argues that Honda would not lead one skilled in the art to the claimed aluminum content. App. Br. 15. Appellant further argues that there is no reason why one of ordinary skill in the art would replace the ZnMg coating of Strom with the ZnAlMgSi coating of Honda because Strom does not desire the formation of Mg2Si as desired in Honda. Id. at 16. Appellant's arguments are unpersuasive because they are premised on a combination where Strom's metal coating is replaced by Honda's metal coating. However, that is not the rejection presented by the Examiner. Non- Final Act. 5; Ans. 13. The rejection clearly states that the combination is 3 For Rejection III, Appellant does not argue any claim separate from the other. See generally App. Br. Accordingly, we select claim 9 as representative of the subject matter addressed by Rejection III and limit our discussion to this claim. Claims 12-15, 19, and 27-29 stand or fall with claim 9. 10 Appeal2019-001019 Application 14/413,965 modifying Strom's metal coating in view of the teachings of Honda. Thus, Appellant's arguments do not point to error in the Examiner's conclusion of obviousness. Accordingly, we affirm the Examiner's prior art rejection of claims 9, 12-15, 19, and 27-29 for the reasons presented by the Examiner and given above. Claim 26 (Rejections VI and V) 4 Claim 26 requires that the coated surface of the steel element is in at least partial contact with the aluminum-based element via a layer of adhesive or sealant having a thickness of less than 5mm. The Examiner finds Strom discloses that it is known to use sealants to join aluminum and zinc coated steels but does not disclose a specific material or material thickness. Non-Final Act. 6; see Strom ,r 3. The Examiner finds Urushihara, directed to an assembly made from steel and aluminum elements, discloses joining of aluminum and steel sheet materials using an organic coating in a thickness of approximately 0.1 to 10 Âµm to suppress corrosion resulting from the joining of dissimilar metals. Non- Final Act. 6; Urushihara ,r,r 1,202,203,211. The Examiner determines that it would have been obvious to one skilled in the art to use Urushihara's organic coating between the aluminum and steel sheets of Strom's assembly to suppress corrosion from contact of dissimilar metals. Non-Final Act. 7. 4 We address both rejections together because the Examiner relies on the reference to Urushihara in both rejections to address the claim's limitations. Non-Final Act. 6, 8-9. 11 Appeal2019-001019 Application 14/413,965 Appellant's arguments for these rejections are premised on Strom or Strom in combination with Shakhpazov not rendering the subject matter of claim 8 obvious to one skilled in the art. App. Br. 16-17, 19. However, this is not the case for the reasons given above. Therefore, Appellant has not pointed to error in the Examiner's determination of obviousness for this rejection. Accordingly, we affirm the Examiner's prior art rejections of claim 26 for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejections of claims 8, 9, 12-15, 19, and 26- 29 under 35 U.S.C. Â§ 103 are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12