Ex Parte Gupta et al

Patent Trial and Appeal BoardJul 21, 2015

11935439 (P.T.A.B. Jul. 21, 2015)

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. 11/935,439 11/06/2007 Anil K. Gupta P000316 7911 60770 7590 07/21/2015 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER YANG, JIE ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 07/21/2015 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 ANIL K. GUPTA, ARUN M. KUMAR, PALLE RAMARAO, ANIL K. SACHDEV, AIHUA A. LUO, and RAJA K. MISHRA ____________ Appeal 2013-008001 Application 11/935,4391 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the decision2 of the Primary Examiner rejecting claims 1–4, 9–11, and 21–25. Final Act. 2–6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. OPINION Appellants’ invention “generally relates to processed magnesium alloy compositions exhibiting improved ductility at room temperature.” 1 According to Appellants, the Real Parties in Interest are General Motors Company and GM Global Technology Operations LLC. Appeal Br. 2. 2 Final Office Action, mailed October 16, 2012 (“Final Act.”). Appeal 2013-008001 Application 11/935,439 2 Spec. ¶ 2. Claim 1, reproduced below, is representative of the appealed subject matter: 1. A method of processing a magnesium-cerium alloy to improve its ductility at room temperature, the method comprising: providing a magnesium alloy billet that, consists essentially of from about 0.2 to 0.5 weight percent of cerium and the balance essentially magnesium, the billet being shaped with a predetermined straight-line axis for hot deformation; and deforming the magnesium alloy billet by a single extrusion step along the predetermined axis at a temperature of at least 300°C to form an extruded workpiece, wherein the extrusion ratio is in the range of 10:1 to 60:1, the extruded workpiece having a room temperature ductility, as measured by total elongation in a tensile test, at least double that of a similarly-tested, like-shaped billet of pure magnesium subjected to the same hot deformation process and tested under like test conditions. Appeal Br. 18. The Examiner rejected claims 1–3, 9, and 10 under 35 U.S.C. § 103(a) as obvious over the combination of Bae3 and Barnett.4 The Examiner also rejected claims 4 and 11 under 35 U.S.C. § 103(a) as obvious over the combination of Bae, Barnett, and Foerster,5 and claims 21–25 under 35 U.S.C. § 103(a) as obvious over the combination of Bae, Barnett, and Luo.6 3 Bae, WO 2006/095999 A1, published Sept. 14, 2006. 4 M.R. Barnett, M.D. Nave, and C.J. Bettles, Deformation Microstructures and Textures of Some Cold Rolled Mg Alloys, 386 MATERIALS SCI. & ENG’G A 205–211 (2004). 5 Foerster, US 3,231,372, issued Jan. 25, 1966. 6 Luo et al., US 2005/0194072 A1, published Sept. 8, 2005. Appeal 2013-008001 Application 11/935,439 3 Although Appellants argue each of the Examiner’s rejections separately, those arguments all take only one form: the Examiner failed to make out a prima facie case of unpatentability because the person of ordinary skill in the art would have had no reason to combine Bae and Barnett, and, with respect to the claims rejected over combinations that include additional references, those additional references do not remedy the lack of a reason to combine Bae and Barnett. Appeal Br. 12–15. These arguments do not persuade us that the Examiner committed harmful error in rejecting Appellants’ claims. First, we note that the Examiner stated a reason to combine Bae and Barnett. The Final Office Action refers the reader to a Non-Final Office Action7 for an explanation of the rejections. Final Act. 2–3. In the earlier Office Action, the Examiner found that “it would have been obvious to one of ordinary skill in the art . . . to choose [the alloy taught by Barnett] in the process of [Bae] because [Barnett] teaches that Mg-0.2 wt% Ce alloy is a hot-deformed and cold-rollable alloy.” Non-Final Act. 4 (citing Barnett, Abstract, 206). The Examiner further developed this finding in the Final Office Action, finding that Barnett “teaches hot . . . deformations of Mg- Ce . . . alloy” and Bae “teaches applying . . . hot-extruding to obtain wrought Mg-alloy plates,” meaning that a person of ordinary skill in the art would have expected success in using the Barnett alloy in the Bae process “because both Bae . . . and Barnett . . . teach hot-deformation [of] the Mg-based alloy.” Final Act. 5 (citing Bae ¶¶ 12–23; Barnett, Abstract, 206). The Examiner also noted that Barnett “teaches that the Mg-0.2Ce alloy is considerably more rollable than pure Mg” and that this “provide[s] good 7 Non-Final Office Action, mailed June 7, 2012 (“Non-Final Act.”). Appeal 2013-008001 Application 11/935,439 4 motivation for combining Barnett . . . with Bae.” Answer 8 (citing Barnett, 211). Thus, according to the Examiner, because Bae teaches a hot- deformation process for magnesium alloys, and because Barnett teaches that a particular magnesium alloy performs better than pure magnesium under hot deformation, it would have been obvious to a person of ordinary skill in the art to use Barnett’s alloy in Bae’s hot-deformation process. Against these findings, Appellants argue that (1) Bae does not teach or suggest the claimed alloy, (2) Barnett does not teach or suggest the claimed extrusion process, and (3) because neither Bae nor Barnett teaches or suggests a reason to combine its teachings with the teachings of the other reference, there is no reason to combine them. Appeal Br. 9–12. Neither of the first two arguments is persuasive, because there is no requirement that either reference teach the entirety of the claimed invention. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As for Appellants’ third argument, we are not persuaded of any error by the Examiner, because there is no requirement that either reference explicitly teach or suggest a reason to combine it with the other reference. Such a requirement would run contrary to the holding in KSR Int’l Co. v. Teleflex Inc. that rejected the rigid requirement of demonstrating a teaching, suggestion, or motivation to combine the references in order to show obviousness. 550 U.S. 398, 419 (2007). Instead, rejections on obviousness Appeal 2013-008001 Application 11/935,439 5 grounds must be supported by “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As discussed above, the Examiner articulated a reason to combine Bae and Barnett, and that reasoning has a rational underpinning supported by the evidence of record. Accordingly, we do not agree with Appellants that the Examiner erred in relying on the combination of Bae and Barnett in any of the rejections of Appellants’ claims. ORDER The Examiner’s rejections of claims 1–3, 9, and 10 under 35 U.S.C. § 103(a) as obvious over the combination of Bae and Barnett; of claims 4 and 11 under 35 U.S.C. § 103(a) as obvious over the combination of Bae, Barnett, and Foerster; and of claims 21–25 under 35 U.S.C. § 103(a) as obvious over the combination of Bae, Barnett, and Luo 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). AFFIRMED cdc