Ex Parte Kernig et al

Patent Trial and Appeal Board

Mar 30, 2017

13278561 (P.T.A.B. Mar. 30, 2017)

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.
13/278,561 10/21/2011 Bernhard Kernig 508896 3695
53609 7590 04/03/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
MORILLO, JANELL COMBS
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
04/03/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNHARD KERNIG,
JOCHEN HASENCLEVER, GERD STEINHOFF,
and CHRISTOPH SETTELE
Appeal 2016-003167
Application 13/278,561
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—7 of Application 13/278,561
under 35 U.S.C. § 103(a) as obvious and provisionally rejected those claims
on the ground of nonstatutory obviousness-type double patenting (OTDP).
Final Act. 2—6, 8—9 (December 4, 2014). Appellants1 seek reversal of these
1 Hydro Aluminium Deutschland GmbH is identified as the real party in
interest. Appeal Br. 2.
Appeal 2016-003167
Application 13/278,561
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’561 Application describes an aluminium alloy, which is used to
produce printing plate supports having improved fatigue strength and heat
resistance. Spec. 1 5. According to the Specification, the alloy provides
these improvements without affecting electrochemical roughening
properties, which are needed for permanent application of photosensitive
layers. Id. at || 3, 5.
Claim 1 is representative of the ’561 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An aluminium alloy for producing lithographic
printing plate supports, the aluminium alloy consisting of the
following alloy components in percent by weight:
Fe < 0.4 %,
0.41 % < Mg < 0.7 %,
0.05 % < Si < 0.25 %,
0.1 % < Mn < 0.6 %,
Cu < 0.04 %,
Ti < 0.1 %,
Zn < 0.1 %,
Cr < 0.003 []%:
the rest being A1 and unavoidable impurities, each in an amount of
0.05 % at most to give a total of 0.15 % at most.
Appeal Br. 15.
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Application 13/278,561
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1—7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Akio.3 Final Act. 4; Ans. 5.
2. Claims 1—7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shoji4 and the Aluminum
Alloys Handbook.5 Final Act. 2; Ans. 2.
3. Claims 1—7 are provisionally rejected for OTDP over claims 1—
6 of copending Application No. 13/278,540. Final Act. 8; Ans.
7.
DISCUSSION
Appellants argue for the reversal of the obviousness rejections to
claims 1—7 on the basis of limitations present in independent claim 1. See
Appeal Br. 5—13; Reply Br. 5—13. We, therefore, limit our analysis to claim
1. Claims 2—7 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1. The Examiner rejected claims 1—7 as obvious over
Akio. Ans. 5. The Examiner found that Akio described an aluminum alloy
2 The Examiner has withdrawn the provisional rejection of claims 1 and 3—7
for OTDP over claims 7—12 of copending Application No. 12/744,173. Ans.
7.
3 JP 2007-070674, published Mar. 22, 2007. We shall follow the Examiner
and Appellants by referring to a machine translation that was made of the
record in this appeal on February 12, 2014.
4 EP 0239995 A2, published Oct. 7, 1987.
5 Henry et al., ASM Specialty Handbook® Aluminum and Aluminum Alloys,
40-46, 646 (J.R. Davis ed., ASM International® 1993) (hereinafter
“Aluminum Alloys Handbook”)
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Application 13/278,561
comprised of the elements in the allegedly inventive alloy. Id. at 5—6.
Furthermore, the amounts of these elements were described as being within
ranges that overlapped the ranges of Appellants’ alloy. Id. The Examiner,
therefore, concluded that there was a prima facie case of obviousness. Id.
at 6.
Appellants argue that the rejection to claims 1—7 under this rejection
should be reversed because the Examiner has not established a prima facie
case of obviousness for two reasons. Appeal Br. 11, 13. According to
Appellants: (1) Akio’s ranges are too broad to render the species of alloying
amounts claimed obvious, id. at 11—13; Reply Br. 11—12, and (2) Akio
teaches alloying constituents that are excluded by claim 1. Appeal Br. 13;
Reply Br. 13.
First, Appellants argue that Akio allows for greater than twice as
much Fe, Mg, Si, and Cu, and five times as much Zn than what is recited in
claim 1. Appeal Br. 12. The Examiner, however, has identified a prior art
reference that sets forth the elements used in the claimed alloy and in ranges
that overlap the ranges set forth the claimed ranges. This is sufficient to
create a prima facie case of obviousness. See In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (a prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art). This prima facie case of obviousness can be overcome if
Appellants show either (1) that the prior art teaches away from the claimed
invention or (2) that there are new and unexpected results relative to the
closest prior art. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1322 (Fed. Cir. 2004) (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
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Application 13/278,561
Appellants have not directed our attention to any such teaching or
unexpected results. Thus, we conclude that the Examiner properly found the
claimed elemental composition to be prima facie obvious.
Appellants further argue that claim 1 is not obvious over the
disclosure of Akio because “‘[t]he fact that a claimed species or subgenus is
encompassed by a prior art genus is not sufficient by itself to establish a
prima facie case of obviousness.’” Appeal Br. 11 (citing In re Baird, 16
F.3d 380, 382 (Fed. Cir. 1994)). Baird, however, is distinguishable from
this case. The Baird court rested its decision on an inference that the cited
reference taught away from the particular species within the reference’s
generic disclosure that the Examiner relied upon. Baird, 16 F.3d at 382—83.
Akio neither teaches away from the claimed amounts of Fe, Mg, Si, Cu, and
Zn, see generally Akio, nor contains any description that would have
supported an inference that the claimed amounts were disfavored.
Appellants’ reliance on Baird, therefore, is misplaced.
Second, Appellants argue that Akio cannot render claim 1 obvious
because the claim recites the closed transitional phrase “consisting of’ and
does not recite any of Pb, In, Sn, and Ga. Appeal Br. 13; Reply Br. 13.
According to Appellants, Akio expressly teaches that one or more of Pb, In,
Sn, and Ga is/are added to an aluminum alloy in addition to the alloy
constituents claimed. Appeal Br. 13; Reply Br. 13.
Appellants’ arguments are not persuasive. As the Examiner found,
Akio does not teach or suggest that any of these elements are mandatory
alloy constituents. Ans. 10 (citing Akio Table 1; Tflf 28—34; claim 1).
Thus, we affirm Rejection 1.
Rejection 2. The Examiner rejected claims 1—7 as obvious over the
combination of Shoji and the Aluminum Alloys Handbook. Ans. 2. The
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Examiner found that Shoji described an aluminum alloy comprised of the
elements in the allegedly inventive alloy. Id. at 2—3. Furthermore, the
amounts of these elements were described as being within ranges that
overlapped the ranges of Appellants’ alloy. Id. Thus, the Examiner
concluded that there was a prima facie case of obviousness. Id. at 4.
The Examiner further found that Shoji “teaches the presence of 0.01—
0.3% V and/or Ni, which is within the impurity range of V and/or Ni for
commercial purity aluminum, and[,] therefore[,] not excluded by the
‘consisting of’ transitional phrase . . . .” Id. at 3. With respect to V, the
Examiner found that the Aluminum Alloys Handbook “clearly identifies V
as a typical impurity in commercial aluminum ... in an amount up to 0.02%
V” with a “minimum V ... of 0.01% . . . .” Id.', see Aluminum Alloys
Handbook 45. The Examiner concluded that the applied prior art teaches
that “an overlap clearly exists” with the claimed range of unavoidable
impurities. Ans. 3.
Appellants argue that the rejection to claims 1—7 under this rejection
should be reversed because the Examiner has not established a prima facie
case of obviousness for four reasons. Appeal Br. 5—6, 8, 10. According to
Appellants: (1) claim 1 recites a closed transitional phrase, yet Shoji teaches
the addition of Zr, V, and/or Ni, which is/are excluded by claim 1, id. at 5—6,
(2) Examiner has erred in concluding that Ni and V fall under the claimed
“‘unavoidable impurities,”’ Appeal Br. 6—8; Reply Br. 5—8, (3) the applied
prior art teaches a genus of Cr content that is too broad to render the claimed
species of Cr content obvious, Appeal Br. 8—10; Reply Br. 8—9, and (4) Shoji
does not recognize Cr as a result-effective variable which would have been
selected for optimization to meet the claimed Cr content. Appeal Br. 10—11;
Reply Br. 10—11.
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Application 13/278,561
First, Appellants further argue that Shoji’s alloys include “at least one
of the alloying constituents] Zr, V, or Ni[, which are] obligatory to provide
the thermal softening resistance.” Appeal Br. 6 (citing Shoji 4:37—45).
Appellants’ arguments are not persuasive.
With respect to Zr, Shoji does not teach or suggest that Zr is a
mandatory alloy constituent. Rather, Shoji discloses that Zr is optional. See
Shoji Abstract (“In addition [to Shoji’s mandatory alloy constituents], 0.01—
0.3 wt. % ofZr and/or 0.05—2 wt. % of Mn may be contained” (emphasis
added)).
Second, with respect to V and Ni, Appellants argue that the Examiner
reversibly erred in finding that “Shoji’s lower limit of 0.01 % V or Ni fall
within the claimed range of unavoidable impurities.” Appeal Br. 6.
Appellants further argue that the Aluminum Alloy Handbook “specifically
refers to Ni as an addition” and that such added constituents cannot teach or
suggest an unavoidable impurity. Id. at 7.
Appellants’ arguments are not persuasive. As the Examiner found,
Shoji explicitly requires the presence of at least one of V and Ni as an alloy
constituent. Ans. 3, 8; see Shoji 3:47-48 (“0.01 to 0.3 wt. % of V and/or
M” (emphasis added). With respect to V, we agree with the Examiner that
the Aluminum Alloys Handbook clearly identifies V as a typical impurity in
commercial aluminum. Ans. 3. There is no dispute that the Handbook
discloses that such an impurity is present in an amount ranging from 10 to
200 ppm (up to 0.02 wt. %).6 Id.; Appeal Br. 8. Furthermore, we discern no
6 To the extent that Appellants’ argue that “V does not constitute an
‘unavoidable’ impurity” because the Aluminum Alloy Handbook teaches
that V “may be precipitated out in particular alloys,” Reply Br. 6, Appellants
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reversible error in the Examiner’s reasonable determination that the applied
prior art teaches an overlap with the claimed range of unavoidable
impurities. Ans. 3.
“[T]he existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.” Peterson, 315 F.3d at 1330. Appellants have not met this burden.
Appellants do not argue that the claimed ranges provide unexpected results
relative to the prior art. Woodruff, 919 F.2d at 1578.
Third, with respect to Cr, Appellants rely on arguments substantially
similar to argument (1) urging reversal of Rejection 1. Compare Appeal Br.
8—10; Reply Br. 8—9 with Appeal Br. 11—13; Reply Br. 11—12. For the
reasons set forth above, we are not persuaded by Appellants’ arguments.
Fourth, Appellants further argue that Shoji indicates that the presence
of Cr in amounts that are relatively higher than the claimed amount results in
‘“no problems.’” Appeal Br. 10; see Shoji 5:10-12. Therefore, according to
Appellants, Shoji does not recognize Cr amount as a result-effective
variable. Appeal Br. 10. Appellants’arguments are not persuasive.
Our reviewing court’s predecessor has held that a variable must be
art-recognized as result-effective before it can be deemed to be subject to
routine optimization. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).* * * * * 7 On
do not point to any evidence in the record demonstrating V’s precipitation
from the particular alloy disclosed in the closest prior art, i.e., Shoji’s alloy,
See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d
731,743 (Fed. Cir. 1983).
7 The continuing viability of Antonie’s reasoning has been called
questionable in view of the Supreme Court’s decision in KSR Int’l Inc. v.
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the record before us, the prior art establishes that addition of Cr results in
increased quench sensitivity, increased strength, and yellow color to an
anodic film. Ans. 10 (citing Aluminum Alloys Handbook 41).
Thus, we affirm Rejection 2.
Rejection 3. The Examiner provisionally rejected claims 1—7 for
OTDP over claims 1—6 of copending Application No. 13/278,540. Final
Act. 8; Ans. 7.
Appellants do not argue the OTDP rejection of claims 1—7. See
Appeal Br. 13—14. Thus, we summarily affirm the OTDP rejection of claims
1-7.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1—7
of the ’561 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
Teleflex Inc., 550 U.S. 398, 421 (2007). Ex parte Tatebe, Appeal 2011-
006176, 2012 WL 253455 at *6 (BPAI January 23, 2012). We, however,
remain bound by Antonie until it is overruled.
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