Ex Parte Dorward et al

Patent Trials and Appeals BoardMar 25, 2019

13867682 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/867,682 04/22/2013 86602 7590 Yancy IP Law, PLLC 5904 Jane Way Alexandria, VA 22310 03/25/2019 FIRST NAMED INVENTOR Ralph Dorward 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. 9004.P300US 4973 EXAMINER MORILLO, JANELL COMBS ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 03/25/2019 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 Exparte RALPH DORWARD, PAUL JOHN AINSWORTH, FLORENCE A. BALDWIN, PHILIPPE LASSINCE, ZHENGDONG LONG, ROBERT A. MATUSKA, ROY AUSTIN NASH, RAYMOND D. PARKINSON, and TIMOTHY ALLEN TAYLOR Appeal2018-003895 Application 13/867 ,682 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-39 of Application 13/867 ,682 under 35 U.S.C. Â§ 103(a) as obvious. Final Act. 2-5 (mailed June 9, 2017). Appellant seeks reversal of the rejection pursuant to 35 U.S.C. Â§ 134(a). 1 We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons set forth below, we affirm. 1 Kaiser Aluminum Fabricated Products, LLC is identified as the applicant and real party in interest. Appeal Br. 1. Appeal2018-003895 Application 13/867,682 BACKGROUND The '682 Application describes ultra-thick high strength aluminum alloy products and methods for making such products, which are used in aerospace structures. Spec. ,r 2. Claim 1 is representative of the '682 Application's claims and is reproduced below from the Claims Appendix to the Appeal Brief (paragraphing added): 1. An ultra-thick high strength aluminum alloy product for use in making aerospace structural components, comprising: 7.6 to 8.4 wt.% Zn 1.9 to 2.3 wt.% Mg 1. 5 to 2 .1 wt. % Cu one or more elements selected from the group consisting of up to 0.13 wt. % Zr, up to 0.2 wt. % Sc, and up to 0.2 wt. % Hf, with the balance Al, incidental elements and impurities, wherein said aluminum alloy product for use in making aerospace structural components is a 2-10 inches thick plate product that has a minimum yield strength of [75 ksi- 0.8x(thickness in inch-3.94inch)] in LT direction and [76 ksi- 0.8x(thickness in inch-3.94 inch)] in L direction. Appeal Br. 21 (Claims App.). REJECTION On appeal, the Examiner maintains the following rejection: 1. Claims 1-39 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Xiong. 2 Final Act. 2; Answer 2. 2 US 2011/0297278 Al, published Dec. 8, 2011. 2 Appeal2018-003895 Application 13/867,682 DISCUSSION Rejection 1. With respect to the independent claims, we select claim 1 as representative. 3 7 C.F .R. Â§ 41.3 7 ( c )( 1 )(iv). Accordingly, we limit our discussion to claim 1 with the understanding that it applies with equal force to the other independent claims on appeal. Appellant makes separate arguments for reversal of this rejection with respect to dependent claims 15, 16, 32, 33, 38, and 39 (Appeal Br. 19) and dependent claims 10, 11, 30, 31, 36, and 37. Reply Br. 2-3. We address Appellant's arguments regarding claim 1 and the separately argued dependent claims in tum. Claim 1. In rejecting claim 1, the Examiner found that Xiong teaches an Al-Zn alloy product, which is suitable for aerospace structural components, comprising the claimed elements in wt. % amounts that overlap the claimed wt.% ranges. Answer 2-3 (citing Xiong Abstract; ,r,r 5, 27, 32). The Examiner further found that Xiong' s alloy can be manufactured at a 1.2-14.2 in. thickness, which overlaps the claimed thickness of 2-10 in. Answer 2-3 (citing Xiong ,r 37). The Examiner found that Xiong teaches a process of: direct-chill casting ingots, homogenizing 450-480[0JC [for] 12--48 hrs., working by: forging, rolling, or extruding at a preheated temperature of 3 80- 450[0JC, solution heating 450-480[0JC [for] 1-12 hr[s]. (at claim 57, etc.), cold water quenching to room temperature [0081 ], stretching 1-5% [0082], artificially aging at a first stage of: 110-115 [0JC for 6-15 hr[ s]., artificially aging at a second stage of: 155-160[0JC [for] 6-24 h[rs.] (at claim 58, etc.), which overlaps the process steps and parameters as presently claimed. Answer 4. Although the Examiner found that Xiong does not exemplify an alloy with the claimed Zn, Mg, Cu, and Zr ranges, the Examiner found that 3 Appeal2018-003895 Application 13/867,682 Xiong's Example 1 alloy comprises these elements in amounts "close to the claimed ranges." Id. at 3; see also id. at 2. The Examiner further found that the yield strength property of Xiong' s Example 1 alloy, at 220 mm in thickness, meets the minimum yield strength in the L direction recited in claim 1. Id. at 3; see Xiong Table 2, ,r 100. Appellant argues that the rejection of claim 1 as unpatentable over Xiong should be reversed because: (1) Xiong's aluminum alloy products must have Zn, Mg, Cu, and Zr in amounts that satisfy specific conditions, which are incompatible with the claimed alloy composition ranges (Appeal Br. 12-13); (2) the claimed industrial scale plate products are used to make aerospace structural components, but the properties of Xiong' s aluminum alloy products are not applicable to such use due to quench sensitivity effects seen in smaller scale laboratory conditions (id. at 13-14 ( citing Xiong Table 2)); (3) the claimed properties are not inherent in Xiong's aluminum alloy products because of differences in manufacturing scale and "precise manufacturing process control, in particular hot-rolling" (Appeal Br. 18; see generally id. at 14--20); and (4) Xiong does not teach or suggest the claimed yield strength in the LT direction. Id. at 19. Appellant's arguments are not persuasive. First, we are not persuaded by argument (1) because the Declaration of named inventor Robert A. Matuska under 37 C.F.R. Â§ 1.132 ("Matuska Declaration") does not support Appellant's position. For example, Appellant argues that Xiong "teaches that only the alloys that ... meet the claimed Zn, Mg, Cu, and Zr in expressions (a}-( c) will have the superior combination of strength and damage tolerance, and exhibit homogeneous and consistence performance on the surface, at various depths under the surface, and in the core of the product." Appeal Br. 13; see 4 Appeal2018-003895 Application 13/867,682 also Xiong Abstract; ,r 27. According to Appellant, Table 1 of the Matuska Declaration demonstrates that "the Zr levels as presently claimed would be outside the Zr required by expression ( c ). " Appeal Br. 13. We, however, agree with the Examiner that Table 1 of the Matuska Declaration lists alloys with Zr wt. % limits, e.g., 0.113, 0.118, 0.124, and 0.128, that overlap the claimed range ofup to 0.13 wt.%. Matuska Deel. 2, Table 1; Answer 6. Appellant also points to Table 2 of the Matuska Declaration as showing that, "[ w ]ith respect to the Zn, Mg, and Cu levels presently claimed, the ... calculated maximum and minimum amounts fixed by expressions (b) and ( c) would produce either: 1) limits outside of those claimed; or 2) nonsensical limits as maximum amounts would be lower than minimum amounts." Appeal Br. 13. The first alloy listed comprises 1.9 wt. % Mg, 1.5 wt.% Cu, and 7.6 wt.% Zn and allegedly contains "Zn Limits [that] are outside revised claims 1 & 9." Matuska Deel. 5, Table 2. As the Examiner found, however, "a Zn amount of 7 .6[ wt. ]% meets expressions (a) & (b) of Xiong, and falls within the claimed alloying ranges." Answer 7. We, furthermore, agree with the Examiner that Xiong teaches an alloy comprising 1.9 wt. % Mg, 1.5 wt. % Cu, and 7 .6 wt. % Zn and that these amounts of Mg and Cu also fall within the presently claimed ranges. Id.; see also Xiong Abstract; ,r 27. Therefore, we are not persuaded that Xiong's aluminum alloy products must have Zn, Mg, Cu, and Zr in amounts that are incompatible with the claimed alloy composition ranges. Second, Appellant proffers the Declaration of named inventor Zhengdong Long under 37 C.F.R. Â§ 1.132 ("Long Declaration") in support of arguments (2) and (3). The Long Declaration alleges distinguishing features of the claimed subject matter based on industrial scale production, which is said to effect quench sensitivity. See generally Long Deel. 1-7; see 5 Appeal2018-003895 Application 13/867,682 also Appeal Br. 8-9. The limitations of claim 1, however, are silent with respect to any requisite industrial scale production or quench sensitivity. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of Appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). With regard to Appellant's argument (3) that the claimed subject matter's "precise control of composition and process (inter alia, hot-rolling) allows to reduce quench sensitivity" (Appeal Br. 17) ( emphasis added), we are not persuaded because Xiong renders such a composition and process obvious. As the Examiner found, "Xiong teaches [a] ... hot working ( such as hot rolling) starting temperature of 380-450Â°C (Xiong at cl. 56)," which overlaps the "hot rolling" temperature range recited in instant claims 21 and 25 "of 399 to 443Â°C (750 to 830Â°F)." Answer 9, 10. Therefore, Appellant's arguments (1}-(3) fail to identify reversible error in the Examiner's findings that Xiong teaches an alloy product (and a method for manufacturing such an alloy product) comprising the claimed elements in wt. % ranges that overlap the claimed wt. % ranges. Answer 2- 3 (citing Xiong Abstract; ,r,r 5, 27, 32). As the Federal Circuit has explained, where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: (1) That the prior art taught away from the claimed invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) that there are new and unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (emphasis added); see also In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1080 n.7 (Fed. Cir. 6 Appeal2018-003895 Application 13/867,682 2012) (explaining that a two-part, burden-shifting inquiry is appropriate in the prosecution context); Tyco Healthcare Group LP v. Mut. Pharm. Co., 642 F.3d 1370, 1372-73 (Fed. Cir. 2011) (quoting Iron Grip Barbell). In cases where the relevant comparison between the claimed invention of prior art involves overlapping ranges, the Federal Circuit has "consistently held that even a slight overlap in range establishes a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Brandt, 886 F.3d 1171, 1177-78 (Fed. Cir. 2018) (abutting ranges); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (overlap only at end points). In this case, the Examiner has properly established a prima facie case of obviousness, and Appellant has not presented sufficient evidence or argument to rebut that case. 3 Third, Appellant's argument (4) is unpersuasive that Xiong does not teach or suggest the claimed yield strength in the LT direction. Appeal Br. 19. It is well established that when claimed and prior art products are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d 1252, 1256 (CCPA 1977). 3 To the extent that Appellant argues that the claimed subject matter provides on a full industrial scale unexpected results of high mechanical properties, we agree with the Examiner that is it not clear that such properties are commensurate in scope with claim 1. Answer 9; See Self, 671 F.2d at 1348. 7 Appeal2018-003895 Application 13/867,682 Appellant has not met this burden. The record is silent as to any persuasive technical reasoning or evidence demonstrating that Xiong's alloy, which includes elements in wt. % amounts within the claimed alloying ranges and is formed by a process substantially identical to that described in the Specification, 4 would not have resulted in an alloy possessing the claimed yield strength in the LT direction. See Answer 4 (finding that Xiong teaches the subject matter of method claims 19--25). Rather, we agree with the Examiner that "substantially the same properties are inherently expected" for Xiong's alloy and the alloy product recited in claim 1. Answer 3. Claims 15, 16, 32, 33, 38, and 39. Appellant argues that Xiong does not teach or suggest any claimed mechanical properties of minimum short transverse SCC. Appeal Br. 19. For the reasons set forth above, we agree with the Examiner that, the the absence of persuasive evidence to the contrary, the record supports a finding that Xiong's alloy would have possessed substantially the same properties recited in claims 15, 16, 32, 33, 38, and 39, including mechanical properties of minimum short transverse SCC. See Best, 562 F.2d at 1256; see also Answer 5. 4 Appellant argues that Xiong's process is not substantially identical to that described in the Specification because, inter alia, Xiong teaches a combined process of free forging and rolling. Appeal Br. 19 ( emphasis added) ( citing Xiong ,r 78). Appellant's argument, however, is unpersuasive because Xiong explicitly discloses that "one or more [hot working] deformation processing procedures are carried out by means selected from the group consisting of forging, rolling, extruding, and any combination thereof." Xiong ,r 52; see also Answer 4. 8 Appeal2018-003895 Application 13/867,682 Claims 10, 11, 3 0, 31, 3 6, and 3 7. Appellant's Reply Brief contains, for the first time, specific arguments tied to the limitations recited in claims 10, 11, 30, 31, 36, and 37. Reply Br. 2-3. These arguments are untimely. We, therefore, will not entertain them. Ex parte Nakashima, 93 USPQ2d 1834 (BP AI 2010) (informative) ( explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause."). For the reasons set forth above and in the Answer, we are not persuaded by any of Appellant's arguments for reversal of the obviousness rejection of claims 1-39. 37 C.F.R. Â§ 4I.37(a)(l)(iv). We, therefore, affirm Rejection 1. DECISION For the reasons set forth above, we affirm the 35 U.S.C. Â§ 103(a) rejection of claims 1-39 of the '682 Application. 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 9