Ex Parte Fanning

Patent Trial and Appeal BoardAug 25, 2014

12790502 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/790,502 05/28/2010 John Fanning 14685.031 1693 110407 7590 08/25/2014 BGL/Detroit P.O. BOX 10395 Chicago, IL 60610 EXAMINER YANG, JIE ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 08/25/2014 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 ____________ Ex parte JOHN FANNING ____________ Appeal 2012-011674 Application 12/790,502 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellant appeals from the Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1-8 as unpatentable over Tetjukhin (RU 2 122 040 C1 published Nov. 20, 1998). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellant claims a titanium alloy consisting essentially of, inter alia, 5.3 to 5.7 weight percent aluminum (sole independent claim 1). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A titanium alloy consisting essentially of, in weight %, 5.3 to 5.7 aluminum, 4.8 to 5.2 vanadium, 0.7 to 0.9 iron, 4.6 to 5.3 molybdenum, 2.0 to 2.5 chromium, and 0.12 to 0.16 Appeal 2012-011674 Application 12/790,502 2 oxygen and optionally one or more additional elements selected from N, C, Nb, Sn, Zr, Ni, Co, Cu and Si wherein each additional element is present in an amount of less than 0.1 % and the total content of additional elements is less than 0.5 weight %, and the balance titanium. The Examiner finds that Tetjukhin discloses a titanium alloy having the claim 1 ingredients in concentration ranges which overlap the claimed ranges including 4.0-6.3 weight percent aluminum which overlaps Appellant's claimed 5.3-5.7 weight percent aluminum (see, e.g., Ans. 4-5). The Examiner concludes that it would have been obvious to select from the Tetjukhin 4.0-6.3 aluminum range values which fall within the 5.3-5.7 aluminum range of claim 1 (id. at 5). Appellant contests the Examiner's finding and conclusion by submitting argument (App. Br. two full paras. at 8 and para. bridging 8-9) and evidence (1st Fanning Declaration under 37 C.F.R. Â§ 1.132 at paras. 15- 26) that one with an ordinary level of skill in this art (1) would have recognized the weight percent aluminum range for Tetjukhin's titanium alloy is 2.2-3.8 rather than the erroneously disclosed 4.0-6.3 range relied upon by the Examiner and accordingly (2) would not have found it obvious to provide the titanium alloy of Tetjukhin with aluminum in the 5.3-5.7 range defined by claim 1. The above noted argument and evidence are persuasive. See In re Yale, 434 F.2d 666, 668-69 (CCPA 1970) ("Since it is an obvious error, it cannot be said that one of ordinary skill in the art would do anything more than mentally disregard CF(3) CF(2) CHClBr as a misprint."), cited by Appellant (App. Br. 11-12). Appeal 2012-011674 Application 12/790,502 3 We perceive no convincing merit in the Examiner's unembellished response that "there is no persuasive evidence to show that [Tetjukhin] does not intently disclose the composition ranges: 4.0-6.3wt%Al" (Ans. 8). Moreover, we disagree with the Examiner that a 4.0-6.3 aluminum range for the Tetjukhin alloy is supported by the corresponding range disclosed in a discussion of the Tetjukhin alloy in US Patent 6,800,243 (id.). As correctly explained by Appellant, the 4.0-6.3 range disclosed in the '243 patent is merely a repetition of the obviously erroneous range disclosed in the Tetjukhin reference (App. Br. para. bridging 10-11). The decision of the Examiner is reversed. REVERSED bar