Ex Parte Jacinto et al

Patent Trial and Appeal BoardSep 17, 2012

12626205 (P.T.A.B. Sep. 17, 2012)

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. 12/626,205 11/25/2009 Monica A. Jacinto 2019-US-AA;67397-012PUS3 1708 54549 7590 09/17/2012 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER ROE, JESSEE RANDALL ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 09/17/2012 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 MONICA A. JACINTO and DALLIS ANN HARDWICK ____________ Appeal 2011-006034 Application 12/626,205 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006034 Application 12/626,205 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 and 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the claimed subject matter: 1. A burn resistant, high tensile strength alloy, consisting of: 70 to about 75 weight percent nickel; about 10 to about 17 weight percent cobalt; about 6 to about 15 weight percent chromium; about 1 to about 4 weight percent aluminum; about 1 to about 4 weight percent titanium; at least one of carbon, boron, or zirconium; wherein the alloy has a tensile strength of at least about 145,000 pounds per square inch; wherein the alloy is oxidation resistant; and wherein the alloy has an extinguishing threshold pressure of at least about 4,000 pounds per square inch. The Examiner maintains, and the Appellants appeal, the following rejections under 35 U.S.C. § 103(a): 1) claims 1 and 2 as unpatentable over Ballocci (FR 2 534 167, published Apr. 13, 1984, as translated); 2) claims 1 and 2 as unpatentable over Willi (DE 3,428,316, published Appeal 2011-006034 Application 12/626,205 3 Feb. 13, 1986, as translated); 3) claim 1 as unpatentable over Darmara (US 2,809,110, issued Oct. 8, 1957). PRINCIPLES OF LAW “On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted). It is well established that where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). ANALYSIS After thorough review of the respective positions provided by Appellants and the Examiner, we AFFIRM the § 103(a) rejections of claims 1 and 2 based on Ballocci or Willi on appeal for essentially the reasons presented by the Examiner, including the Response to Argument section (Ans., mailed Dec. 20, 2010). We reverse the rejection of claim 1 based on Darmara. We add the following primarily for emphasis. With respect to the rejection based on Darmara, we agree with Appellants that the Examiner has not established a prima face case of obviousness since the maximum amount of nickel in the alloy of Darmara Appeal 2011-006034 Application 12/626,205 4 (64.75%) is well outside the claimed range of 70 to 75% (App. Br. 7). Accordingly, this situation does not fall within the general principle that a prima facie case of obviousness may exist where the prior art and claimed ranges do not overlap but are sufficiently close that one skilled in the art would have expected them to have the same properties, as held in Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). On the other hand, the Appellants do not dispute that Examiner has established a prima facie case of obviousness as to claims 1 and 2 based on either of Ballocci or Willi (App. Br. 3-5). As such, where the Examiner establishes a reasonable basis to conclude that the claimed invention would have been obvious, as here, the burden shifts to the Appellants to rebut the prima facie case by providing evidence of unexpected results, based on comparisons with the closest prior art and commensurate in scope with the claimed subject matter, or a showing that the prior art teaches away from the claimed invention in any material respect. See, e.g., In re Geisler, 116 F.3d at 1469-70; In re Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990). Appellants do not argue that the prior art teaches away from the claimed invention; rather, Appellants only contend that the claimed composition “represents a sweet spot for achieving a particularly desirable combination of strength and burn resistance” (App. Br. 3). To demonstrate unexpected results, Appellants primarily rely upon the Jacinto Declaration, filed February 8, 2010, as well as the data in Table 1 of the Specification (App. Br. 3, 4). Appellants state that the data “tends to show that the claimed composition represents an unexpected compositional sweet spot” (App. Br. 5, emphasis added; see also Reply Br. 3). Appellants urge that the Appeal 2011-006034 Application 12/626,205 5 data is sufficient to show trends and conclude that the claimed composition yields new and unexpected results (App. Br. 4). However, Appellants do not dispute with any specificity the Examiner’s detailed findings that the various tested comparative alloys, upon which Appellants rely upon to show the criticality of the claimed invention, are not sufficient comparative examples because, e.g., the elements are too far outside the claimed range to show criticality, and the comparative examples include many other elements not permitted in the claimed alloy (Ans. 11-19; generally App. Br., Reply Br.). The preponderance of the evidence therefore supports the Examiner’s determination that the submitted evidence does not show that the claimed alloy that “consists of” the recited elements in the claimed ranges exhibits unexpected results compared to those comparative examples (id.). Appellants also do not dispute the Examiner’s finding that inventive Examples 1 and 2 from Table 1 are not commensurate in scope with the claimed alloy because they do not contain one of the elements required by claim 1 (see, e.g., Ans. 15; Reply Br. 2). Accordingly, a preponderance of the evidence supports the Examiner’s determination that Appellants’ showing in the Jacinto Declaration, as well as the data in Table 1, is not sufficient to show unexpected results on this record. See In re Peterson, 315 F.3d at 1330-31 (in order to successfully rebut a prima facie case of obviousness, a showing of unexpected results must be commensurate in scope with the claims); see also, In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with Appeal 2011-006034 Application 12/626,205 6 the claims which the evidence is offered to support.’ In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)” (parallel citation omitted)); see also, In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“[W]e do not feel it an unreasonable burden on appellants to require comparative examples relied on for non- obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables.”). In conclusion, Appellants have not shown reversible error in the Examiner’s obviousness rejection of claims 1 and 2 based on Ballocci or Willi, nor have Appellants overcome these rejections by rebutting the prima facie case with sufficient evidence of unexpected results. Accordingly, we affirm the § 103 rejections of claims 1 and 2 on appeal based on Ballocci or Willi. ORDER We affirm the Examiner’s decision to reject claims 1 and 2 based on Ballocci or Willi. We reverse the Examiner’s rejection of claim 1 based on Darmara. 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 bar