Ex Parte Clark

Patent Trial and Appeal BoardJun 19, 2017

13495250 (P.T.A.B. Jun. 19, 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. 13/495,250 06/13/2012 Darin Clark CC-5630(A0552US2) 5470 23377 7590 06/21/2017 BAKER & HOSTETLER LLP CIRA CENTRE 12TH FLOOR 2929 ARCH STREET PHILADELPHIA, PA 19104-2891 EXAMINER TOLAN, EDWARD THOMAS ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 06/21/2017 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARIN CLARK Appeal 2015-007548 Application 13/495,250 Technology Center 3700 Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and NATHAN A. ENGELS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Darin Clark (Appellant) appeals under 35 U.S.C. § 134 from the rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2015-007548 Application 13/495,250 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, reproduced below, is illustrative of the claimed subject matter: 1. A method of forming a high strength can end in commercial quantities, comprising the steps of: a. positioning from a coil a sheet of an aluminum alloy having between 3.0% and 4.5% magnesium; b. forming high strength beverage end shells from the aluminum alloy coil in a shell press operating at least at 180 strokes per minute; c. producing at least 4140 shells per minute; whereby, when the seamed can ends are fully aged, the aged ends satisfy a burst pressure specification of a minimum of at least 80 psi and an average of at least 90 psi. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Stodd US 5,491,995 Feb. 20, 1996 Brifcani US 6,065,634 May 23, 2000 Zonker US 6,761,280 B2 July 13, 2004 Fields WO 98/34743 Aug. 13, 1998 REJECTIONS I. Claims 1—7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Brifcani, Zonker, and Stodd. II. Claims 8—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Brifcani, Zonker, Stodd, and Fields. 2 Appeal 2015-007548 Application 13/495,250 ISSUE The issue presented by this Appeal is whether Brifcani suggests “an aluminum alloy having between 3.0% and 4.5% magnesium” as required by claim 1, and by claims 2—15 based on their dependency from claim 1. ANALYSIS When claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such overlap itself provides sufficient motivation to optimize the ranges. See Peterson, 315 F.3d at 1330 (“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. . . ranges is the optimum combination . . . .”). The Examiner finds that “Brifcani discloses aluminum alloy 5182 which has 4.5% magnesium.” Final Act. 2. The Examiner notes that “5182 aluminum alloy is generally known to have about 4.5% magnesium, 0.35% manganese and about 95.2% aluminum.” Id. The Examiner explains that “Applicant’s range of Mg in [0034] (3.0-4.5) is an overlapping range of A1 5182 (4.0-5.0)” and therefor renders the claimed range obvious. Id. (quoting MPEP § 2144.05). The Examiner is correct. Because the prior art disclosed values overlapping the claimed ranges, the “general conditions” of the claim are disclosed. See In reAller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980). 3 Appeal 2015-007548 Application 13/495,250 Despite admitting that Brifcani discloses an overlapping range, Appellant contends that: Even though the specification for 5182 alloy discloses a magnesium content range (4 to 5%) that overlaps the claimed magnesium content range (“between 3.0% and 4.5%”), it was common knowledge in the beverage can industry to specify and use 5182 alloy that had a magnesium content in the upper half the specification’s range — that is, greater than 4.5%. Appeal Br. 3 (emphasis added); see also Reply Br. 2. In support of this contention, Appellant directs our attention to the Declaration (Dec.) of the inventor, Darin Clark, dated March 6, 2014. Id. at 5. In the Declaration Mr. Clark states that: At the time that the invention disclosed in the 250 application was made, one of skill in the art would not have sought to use an aluminum alloy with less than 4.5% magnesium. It was known in the art that using aluminum alloy with a magnesium level of less than 4.5% would result in a beverage can end that was not strong enough and would likely leak at lower pressures relative to beverage can ends made from aluminum alloys with at least 4.5% magnesium. Dec. 2. However, Mr. Clark provides no objective evidence in support of this statement. Moreover, Mr. Clark’s Declaration appears to be little more than a reiteration of Appellant’s arguments in declaration form. Compare Appeal Br. 3^4 to Dec. 1—2. Moreover, an attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Gamer, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it 4 Appeal 2015-007548 Application 13/495,250 determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Opinion testimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.” (citations omitted)). Although there is “no reason why opinion evidence relating to a fact issue should not be considered by an examiner,” In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996), the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations, see Velander, 348 F.3d at 1371; Ashland Oil, 116 F.2d at 294. The lack of supporting evidence in this case causes us to attribute little weight to this Declaration. Also, the fact that the Declarant is the named inventor makes his Declaration self-serving and diminishes credibility. Moreover, we note that Brifcani discloses use of the 5182 aluminum alloy in conjunction with a layer of polyester film. Brifcani 3:44-47. Brifcani further states that “[t]his polyester/aluminum alloy laminate permitted manufacture of a can end with a narrow, and therefore strong reinforcing bead in the cheaper [i.e. having less magnesium] aluminum manganese alloy.” Id. at 46-48. Thus, one skilled in the art would understand Brifcani’s disclosure to pertain to the entire range of magnesium percentages encompassed by 5182 aluminum alloy and not just the top 4.5—5% as argued by Appellant. 5 Appeal 2015-007548 Application 13/495,250 Weighing the evidence of nonobviousness against the evidence of obviousness, we find that the evidence of obviousness outweighs the evidence of obviousness for the reasons discussed supra. Accordingly, Appellant does not apprise us of error in the Examiner’s determination that Brifcani renders the claimed range obvious. DECISION The Examiner’s rejections of claims 1—15 are 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6