Ex Parte Gaag

Patent Trial and Appeal BoardSep 26, 2012

11857662 (P.T.A.B. Sep. 26, 2012)

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. 11/857,662 09/19/2007 Norbert Gaag 21532 1326 23389 7590 09/27/2012 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER IP, SIKYIN ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 09/27/2012 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 NORBERT GAAG ____________ Appeal 2011-008349 Application 11/857,662 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2011-008349 Application 11/857,662 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6.1 Claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. An article of manufacturing comprising: a slide bearing constituted of a copper zinc alloy, said alloy consisting essentially of, in percent by weight, 59- 73% copper, 2.7 - 8.5% manganese, 1.5-6.3% aluminum, 0.2-4% silicon, 0.2-3% iron, 0-2% lead, 0-2% nickel, 0- 0.4% tin, residual zinc, at least one of P and Cr, wherein said P is present in an amount of less than or equal to 0.03% and said Cr is present in an amount of less than or equal to 0.05%, and unavoidable impurities, and said alloy having a microstructure including an alpha and beta mixed crystal matrix that includes 60-85% alpha phase. The Examiner maintains and Appellant’s request review of the following rejection (App. Br. 6): I. Claims 1-3, 7, 8, 12, 13 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over Niimi, U.S. 3,773,504 or DE 1205285 (DE ‘285). II. Claims 1-17 stand finally rejected under 35 U.S.C. § 103 as unpatentable over Ruchel, U.S. 4,676,848 or British Patent No. 2049727 (GB ‘727) in view of Niimi et al. or DE ‘285. OPINION We have thoroughly reviewed the Examiner’s rejections and Appellant’s arguments there against. We affirm the Examiner’s rejections for the reasons presented by the Examiner. We add the following. 1 According to Appellant, claims 18-20 have been canceled. (App. Br. 2). Appeal 2011-008349 Application 11/857,662 3 Appellant’s claimed invention relates to a copper zinc alloy which is suitable for use as sliding bearings. (Spec. 3). According to Appellant, “the present invention relates to a new use, e.g., as a slide bearing, for an old alloy that is disclose within DE 29 19 478 C2 (DE ‘478).” (App. Br. 7). Appellant further states: In DE ‘478, the alloy is used as a synchronizing ring alloy. Appellant observes that in col. 2, line 52 of DE ‘478 there is mentioned that the Cu-Zn alloy, which also has the claimed microstructure, has a high friction coefficient (e.g., hohe Reibungswerte). Although high friction coefficients are acceptable for an alloy in use as a synchronizing ring, such high friction coefficients were not acceptable for an alloy in use as a slide bearing since slide bearings generally require low friction coefficients. Hence, one skilled in the art would refrain from using an alloy having such a microstructure in connection with slide bearings. Reference is made to paragraphs 0007-0009 of the present application. Therefore, without any ex post knowledge, one skilled in the art would discard alloys having the microstructure as presently claimed as a slide bearing material. The Appellant of the instant application, however, unexpectedly found that despite the high friction coefficients, the claimed alloys can be used as a slide bearing, and the claimed alloys when used as a slide bearing meet all the requirements imposed on a material for slide bearings, particularly at elevated temperatures. (Id.) It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, cannot impart patentability to claims to the known composition.”); In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974) (intended use of an old composition does not render composition claim patentable); In re Zierden, 411 F.2d 1325, 1328, (CCPA Appeal 2011-008349 Application 11/857,662 4 1969) (“[M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.”); In re Hack, 245 F.2d 246, 248, (CCPA 1957) ("the grant of a patent on a composition or a machine cannot be predicated on a new use of that machine or composition"); In re Benner, 174 F.2d 938, 942, (CCPA 1949) (“no provision has been made in the patent statutes for granting a patent upon an old product based solely upon discovery of a new use for such product”). Accordingly, Appellant’s contention that his Cu-Zn alloy will be used as a slide bearing does not have patentable weight if the structure is already known, regardless of whether it has ever been used in any way in connection with a slide bearing. Moreover, Appellant acknowledges that the requirements of a slide bearing for new engines have changed for modern engines. Appellant specifically states “the properties of the CuZn31 Si 1 alloys no longer meet the requirements that are imposed on materials for sliding bearings in modern engines, for instance, diesel engines.” (Spec. 1). Thus, a person of ordinary skill in the art who was designing a slide bearing for a modern engine would look to Cu-Zn alloys, including known Cu-Zn alloys, which would have the properties suitable for such a purpose. Under these circumstances, we find no error in the Examiner’s obviousness determination. ORDER The Examiner obviousness rejections 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)(1)(iv). Appeal 2011-008349 Application 11/857,662 5 AFFIRMED tc