Ex Parte Coffin et al

Patent Trial and Appeal BoardMay 22, 2018

14730306 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 141730,306 06/04/2015 66376 7590 05/24/2018 ALLEGHENY TECHNOLOGIES INCORPORATED 1000 SIX PPG PLACE PITTSBURGH, PA 15222-5479 Scott Coffin 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. TWC-2208DIV2/l 10551DIV2 1252 EXAMINER WALCK, BRIAND ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 05/24/2018 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): maria.dunn@atimetals.com A TIDocketing@atimetals.com uspatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT COFFIN and ARNEL M. FAJARDO Appeal2017-008262 Application 14/730,306 Technology Center 1700 Before JEFFREY T. SMITH, A VEL YN M. ROSS, 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 the Examiner's decision to twice reject claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. The claimed invention produces zirconium metal by reacting zirconium tetrachloride with a magnesium reductant and separating at least a portion of the zirconium metal from the reaction products. Spec. i-f 11. The Specification recognizes the basic process of reacting a magnesium reductant with zirconium tetrachloride to obtain zirconium metal as a typical process based on a well-known adaptation of the Kroll reduction process. Appeal2017-008262 Application 14/730,306 Id. i-fi-1 4, 7, 9. The Specification also recognizes the importance of eliminating impurities from the zirconium metal, particularly impurities contained in the magnesium reductant. Id. i-fi-1 4--7. Thus, the claimed method uses a magnesium reductant having reduced levels of impurities. Spec. i-fi-18-9. Independent claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method of producing zircomum metal, the method compnsmg: reacting zirconium tetrachloride with magnesium reductant, wherein the magnesium reductant comprises greater than 1000 up to 3000 ppm zirconium, 0 to 0.007 weight percent aluminum, and no more than 50 ppm hafnium, to provide reaction products compnsmg zirconium metal and magnesium chloride salt; and separating at least a portion of the zirconium metal from the reaction products. Appellant 1 requests review of the Examiner's rejection of claims 1-7 under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Kwon (US 4,668,287, issued May 26, 1987) and Shoji (JP H02-47237 A, published February 16, 1990, and relying on an English language translation provided by Appellant on November 18, 2015). App. Br. 3; Non-Final Act. 4--7. 1 ATI PROPERTIES, INC. is the Applicant/Appellant. ATI Properties LLC is identified as the real party in interest. App. Br. 1. 2 Appeal2017-008262 Application 14/730,306 OPINION Prior Art Rejection After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner's prior art rejection of claims 1-7 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner. We add the following for emphasis. Claim l2 The Examiner finds Kwon discloses a method of producing zirconium metal comprising the steps of reacting zirconium tetrachloride with a magnesium reductant to provide reaction products comprising zirconium metal and magnesium chloride salt and separating at least a portion of the zirconium metal from the reaction products. Non-Final Act. 4; Kwon Abst., col. 3, 1. 32---col. 4, 1. 61. The Examiner finds Kwon does not disclose using a magnesium reductant comprising greater than 1000 up to 3000 ppm zirconium. Non-Final Act. 4. The Examiner finds that Shoji discloses a purified magnesium formulation that can have 3000 ppm zirconium and unavoidable impurities, including aluminum, within a range of less than 0.1 %. Non-Final Act. 4; Shoji 3--4. The Examiner determined that it would have been obvious to one skilled in the art to use Shoji's magnesium formulation in place of Kwon's magnesium formulation because Kwon teaches that any commercial magnesium with less than 100 ppm is a suitable 2 Appellant presents arguments only for independent claim 1. App. Br. 12. Accordingly, we limit discussion to this claim as representative of the subject matter before us for review on appeal. Claims 2-7 stand or fall with independent claim 1. 3 Appeal2017-008262 Application 14/730,306 as the magnesium reductant in the method of Kwon and the magnesium of Shoji can have less than 100 ppm. Non-Final Act. 4; Kwon col. 3, 11. 45-55. Appellant principally argues that Shoji's aluminum content in the disclosed magnesium formulation does not overlap the aluminum content of the claimed purified magnesium formulation (0 to 0.007 weight percent). App. Br. 8. According to Appellant, Shoji discloses that the aluminum content in its magnesium formulation can be as high as 0 .1 wt.% and as low as 0.02 wt%, based on Example 1, where the 0.02 wt.%, amount that is almost three times greater than the upper limit of the aluminum level recited in the present claims. Id. at 9. Thus, Appellant argues Shoji actually teaches an aluminum content of 0.02 up to 0.1 wt.% and therefore clearly teaches away from the claimed invention. Id. We are unpersuaded by these arguments. It is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellant. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered." (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1(CCPA1982) (explaining that a prior art reference's disclosure is not limited to its examples). As noted by the Examiner, Shoji discloses a magnesium having unavoidable impurities, including Al, within a range of less than 0.1 %. Non-Final Act. 4; Shoji 4. Therefore, Shoji's magnesium formulation can have zero or very little aluminum. Cf In re Mochel, 470 F.2d 638, 640 ( CCP A 1972) (explaining that the term "up to" includes zero as a lower limit). While Appellant contends that the lower level of Shoji's range for 4 Appeal2017-008262 Application 14/730,306 the aluminum content is 0.02% based on Example 1 (App. Br. 9; Shoji 6 (Table 1 )), Appellant has not directed us to any portion of Shoji that supports this contention. Further, Appellant has not adequately explained how the preferred embodiment of the cited art detracts from its broader teaching of an aluminum content of less than 0.1 weight %. Appellant has not adequately shown that Shoji's aluminum content range of less than 0.1 weight percent does not overlap the claimed range of 0 to 0.007 weight percent. Moreover, the broader disclosure of Shoji would guide one of ordinary skill to a magnesium formulation having the claimed aluminum content. The prior art discloses a desire to minimize impurities that would have guided an ordinary artisan to optimize the magnesium formulation by minimizing the impurities to avoid impairing the formulation and, thus, predictably achieve a magnesium formulation that exhibits high purity attributes. Shoji 4; In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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."); see In re Aller, 220 F.2d 454, 456-58 (CCPA 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation"). Appellant's arguments do not persuade us otherwise. Moreover, as discussed above, the basic process for making zirconium metal by reacting a magnesium reductant with zirconium tetrachloride is known. Further, the Examiner provided a reasonable basis for one skilled in the art to combine the cited art with a reasonable expectation that using 5 Appeal2017-008262 Application 14/730,306 Shoji's magnesium formulation as a reductant in Kwon's method would result in a suitable zirconium metal. In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success."). Appellant has not adequately disputed this. In the Reply Brief, Appellant argues that data in the Specification demonstrates the criticality of the 0 to 0.007 wt.% aluminum content recited in the claims. Reply Br. 3; Spec. i-f 24, Table 3 and Figure 1. We have considered the portions of the Specification noted by Appellant. However, Appellant has not explained why the data demonstrate unexpected results. Appellant, at most, has provided mere attorney arguments and such arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). Appellant additionally argues that Kwon does not disclose or teach a magnesium reductant including greater than 1000 up to 3000 ppm zirconium. App. Br. 8. However, the Examiner's rejection is based on the combined teachings of Kwon and Shoji and the Examiner is relying on Shoji's magnesium formulation comprising 3000 ppm zirconium for this feature. Non-Final Act. 4; Shoji 3--4. It is well established that the obviousness inquiry does not ask "whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the 6 Appeal2017-008262 Application 14/730,306 primary reference."). Appellant's argument is unavailing because it does not address the rejection presented by the Examiner. Accordingly, we affirm the Examiner's rejection of claims 1-7 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. DECISION The Examiner's prior art rejection of claims 1-7 under 35 U.S.C. Â§ 103(a) is affirmed. 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 7