Ex Parte Kernig et al

Patent Trial and Appeal Board

Mar 6, 2018

13112588 (P.T.A.B. Mar. 6, 2018)

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.
13/112,588 05/20/2011 Bernhard Kernig 508626 7794
53609 7590 03/08/2018
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
03/08/2018 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
following e-mail address(es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNHARD KERNIG,
JOCHEN HASENCLEVER, HENK-JAN BRINKMAN,
GERD STEINHOFF, and CHRISTOPH SETTELE
Appeal 2017-005231
Application 13/112,58s1
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 1—5 and 7—10.
We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
1 Appellants identify Hydro Aluminium Deutschland GmbH as the real party
in interest. Appeal Br. 2.
2 Our Decision refers to Appellants’ Specification (Spec.) filed May 20,
2011, Appellants’ Appeal Brief (Appeal Br.) filed June 30, 2016, the
Examiner’s Answer (Ans.) notice emailed Dec. 1, 2016, and Appellants’
Reply Brief (Reply Br.) filed Feb. 1, 2017.
Appeal 2017-005231
Application 13/112,588
The subject matter on appeal relates to an aluminum strip for the
production of lithographic printing plate supports from an aluminum alloy
(see, e.g., claim 1). The inventors disclose that lithographic printing plate
supports have to meet increasingly stringent technical requirements because
printing machines must make larger numbers of prints. Spec. 13.
Specifically, the printing plate supports must be as large as possible but are
clamped transverse to the rolling direction of the printing machine, which
makes the flexural fatigue strength of the supports important. Id. In
addition, good roughening behavior and heat resistance must be maintained.
Id. The inventors disclose an aluminum strip that allows the production of
printing plate supports with improved flexural fatigue strength transverse to
a rolling direction without affecting tensile strength (before or after
annealing) or roughening properties. Id. 16.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.3 The limitation at issue is italicized.4
1. Aluminium strip for the production of lithographic
printing plate supports from an aluminium alloy with a
thickness of 0.15 mm to 0.5 mm, characterised in that the
aluminium alloy comprises the following alloy components in
3 Appeal Br. 16.
4 In this Decision we use both spellings of “aluminum” and “aluminium”
(for instance, the claims use the latter) but recognize that each spelling refers
to the same material.
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Application 13/112,588
weight per cent:
0.4% < Fe < 1.0%,
0.31% < Mg < 1.0%,
0.07% < Si < 0.25%,
Mn < 0.25%,
Cu < 0.04%,
Ti < 0.1%,
Cr < 0.01%,
the remainder being A1 and unavoidable impurities,
individually at most 0.05% and totalling at most 0.15%,
wherein the aluminium strip has an as-rolled tensile strength
Rm of less than 200 MPa, and after an annealing process at a
temperature of280 °C for 4 minutes a tensile strength Rm of
more than 140 MPa.
REJECTIONS ON APPEAL5
I. Claims 1—5, 7, and 8 as being unpatentable under
35 U.S.C. § 103(a) over Rooy;6 and
II. claims 9 and 10 as being unpatentable under
35 U.S.C. § 103(a) over Rooy in view of Shoji.7
B. DISCUSSION
Rejection I
Claims 1—5, 7, and 8 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Rooy.
5 The non-statutory obviousness type double patenting rejections of claims
1—5 and 7—10 have been withdrawn by the Examiner. Ans. 6.
6 Rooy et al., US 4,818,300, issued Apr. 4, 1989 (“Rooy”).
7 Shoji et al., EP 0 239 995 A2, published Oct. 7, 1987 (“Shoji”).
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Application 13/112,588
The Examiner finds Rooy discloses an aluminum alloy for a lithoplate
having a composition of 0.55-0.75% Fe, 0.4—0.7% Mg, 0.055-0.085% Si,
< 0.20% Mn, < 0.20% Cu, < 0.05% Ti, and < 0.10% Cr. Ans. 2. The
Examiner finds this composition overlaps the composition recited in claim 1
and this constitutes a prima facie case of obviousness. Id. The Examiner
finds Rooy discloses a final strip thickness of 0.012 inch (0.3 mm), which
falls within the thickness range recited in claim 1. Id. at 3. The Examiner
further finds the strip of Rooy would exhibit the tensile strength values
recited in claim 1 because the strip of Rooy has a composition that overlaps
the composition recited in claim 1, the strip of Rooy is processed in
substantially the same way, and has a final thickness within the range recited
in claim 1. Id. at 3^4.
Appellants contend that the Examiner has not demonstrated that the
material disclosed by Rooy would exhibit the tensile strengths recited in
claim 1 because the Examiner cites Shoji for a disclosure of a hot rolling
thickness in the rejection of claims 9 and 10 and this demonstrates the
process disclosed by Rooy is not substantially identical to Appellant’s
process. Appeal Br. 5—6; Reply Br. 7—10. Appellants further assert that
various examples in Shoji demonstrate that similar compositions can exhibit
very different mechanical properties and that similar mechanical properties
can be exhibited by different compositions. Appeal Br. 6—8. In addition,
Appellants contend Rooy does not disclose the tensile properties for its alloy
or whether the processed alloy is in an as-rolled state or annealed state.
Appeal Br. 7—9; Reply Br. 5—7.
These arguments are unpersuasive. Where the claimed and prior art
products are identical or substantially identical, or are produced by identical
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Application 13/112,588
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Once the
Examiner provides a reasonable basis to believe that the characteristic is
inherent, the burden shifts to the applicant to prove that the prior art products
do not necessarily possess the characteristics of his claimed product. Best, at
1254-55 {discussing In re Swinehart, 439 F.2d 210 (CCPA 1971) and In re
Ludtke, 441 F.2d 660 (CCPA 1971)).
Here, the Examiner determines claim 1 does not require a strip in both
the as-rolled and annealed conditions with both recited tensile strengths
values, but rather merely requires the material to be capable of the tensile
strength values recited in claim 1. Ans. 6—7. We agree that claim 1 does not
require the aluminum strip to be in both the as-rolled and annealed
conditions but recites an aluminum strip that exhibits the claimed tensile
strength values under the recited conditions (i.e., when as-rolled or when
annealed, as recited in claim 1).
The Examiner further determines Rooy discloses an aluminum alloy
that overlaps the claimed compositional range. Id. at 7. We agree because
the composition disclosed at column 4, lines 1—14, of Rooy includes ranges
overlapping those recited in claim 1. The Examiner finds Rooy discloses a
final strip thickness of 0.012 inch (0.3 mm), which falls within the thickness
range recited in claim 1, and that the strip of Rooy is for the same intended
purpose. Id. at 3, 7. The disclosure of Rooy also supports these findings.
Rooy 1:5-7, 2:65-68, 4:53-54.
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The Examiner further finds Rooy discloses a substantially identical
process as Appellants’, which includes casting, homogenizing, hot rolling,
and cold rolling to a final thickness. Ans. 7. Rooy discloses its material is
cast, homogenized, and hot and cold rolled. Rooy 2:65—68, 3:5—14. With
regard to a hot rolling thickness, the Examiner finds that Rooy discloses hot
rolling to a suitable gauge and therefore discloses general guidelines for that
parameter. Ans. 7—8. Rooy’s disclosure supports this finding as well. Rooy
3:10-14. In view of this general guideline provided by Rooy, one of
ordinary skill in the art would have been able to determine such suitable hot
rolling thicknesses to perform the process disclosed by Rooy. The
determination of obviousness must take into account not only the teachings
within the references, but the knowledge of the ordinary artisan. In re
Samour, 571 F.2d 559, 562 (CCPA 1978); see also In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (In an obviousness assessment, skill is presumed
on the part of the artisan, rather than the lack thereof.). Moreover, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSRInt'l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Furthermore, the Examiner finds Rooy discloses its strip has an as-
rolled strength of 179 MPa (26,000 psi) in the as-rolled condition. Ans. 9.
Rooy discloses “a 5XXX alloy suitable for use in making a lithoplate by a
method of this invention has a typical ultimate strength of 26,000 psi, yield
strength of 24,000 psi and elongation of 6%.” Rooy 4:56—59. As discussed
above, Rooy discloses a process in which the aluminum alloy is cold rolled
(i.e., in the as-rolled condition). Therefore, Rooy expressly discloses its
alloy can achieve the as-rolled strength recited in claim 1.
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Given that the composition, processing, final thickness, as-rolled
tensile strength, and intended use of Rooy’s material are substantially
identical to Appellants’, one would have had a reasonable basis to believe
that Rooy’s strip would possess the properties of Appellants’ strip, including
a tensile strength of more than 140 MPa when subjected to the anneal recited
in claim 1. Thus, the Examiner has set forth a prima facie case of
obviousness and the burden has shifted to Appellants to prove that Rooy’s
strip does not necessarily possess the characteristics of the claimed product.
Appellants assert that Appellants’ processing and Rooy’s are not
substantially identical and provides a table at pages 8—9 of the Reply Brief to
support this argument. However, the table illustrates how Rooy’s process
includes the same steps of casting, homogenization, hot rolling, and cold
rolling; that Rooy’s specific parameters can overlap Appellants’ (i.e.,
homogenization temperature); and the final thickness disclosed by Rooy
falls within Appellant’s claimed range. As discussed above, although Rooy
does not disclose a hot rolling thickness, Rooy discloses a suitable one can
be used and it would have been within the skill of a practitioner in the art to
determine such a thickness. Further, the anneal listed in the table for cold
rolling in Appellants’ process is described as optional. See Spec. 121.
Therefore, Appellants have not demonstrated that Rooy would not possess
the claimed annealed strength. As discussed above, Rooy expressly
discloses the claimed as-rolled strength.
Appellants further argue the ranges for the content of Cr, Zn, and Cu
are species that are not disclosed by the broad genus ranges disclosed by
Rooy. Appel Br. 11—12; Reply Br. 10—11. Here, the Examiner finds the
composition disclosed by Rooy overlaps that claimed by Appellants. Ans. 2,
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5, 9. Rooy discloses a composition that includes a maximum Cr amount of
0.10%, a maximum Cu amount of 0.20%, and a maximum Zn amount of
0.25% (Rooy 4:1—14), which overlaps the ranges recited in the claims.
Appellants’ argument that the ranges disclosed by Rooy are broad and
encompass a large number of possible species (Reply Br. 11), and thus do
not demonstrate obviousness for the claimed ranges, is unpersuasive because
the case law cited by Appellants regard different fact patterns. Specifically,
In re Baird was concerned with a formula containing “a broad range of
variables and thus encompasses a large number of different diphenols,”
which was estimated as “more than 100 million different diphenols.” 16
F.3d 380, 381—82 (Fed. Cir. 1994). In re Jones was directed to the
obviousness of a claimed salt in view of a genus of salts disclosed by the
prior art. 958 F.2d 347, 349 (Fed. Cir. 1992). Here, obviousness of the
claimed composition is predicated upon the overlap of numerical values
disclosed by the prior art and those recited in the claims, not upon a general
formula with variables or upon the disclosure of a class encompassing
various species. A prima facie case of obviousness arises when the ranges
of a claimed composition overlap the ranges disclosed in the prior art. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).8 Moreover, some of the
ranges recited by Rooy (e.g., those of Fe, Mg, Mn, and Ti) fall completely
within the range recited in claim 1, which one may interpret as an indication
that the alloy of Rooy is a species of the claimed composition.
8 In addition, Appellants’ arguments regarding the ASM International
reference cited in the Advisory Action (Appeal Br. 12—14) are unpersuasive.
The compositional ranges of Rooy demonstrate obviousness of the claimed
compositional ranges.
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In addition, Appellants argue criticality for the recited tensile strength
values, that the claimed strip possesses improved transverse flexural fatigue
strength without sacrificing roughening properties or burdening
manufacturing of the material, and that recited ranges for Cu, Cr, and Zn
contents are critical to roughening properties. Appeal Br. 9-11.
To the extent Appellants are asserting unexpected results for the
claimed strip, the Examiner determines the asserted results are not
commensurate in scope with the claimed ranges. Ans. 9—10. See In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980). For instance, inventive examples 11—14 disclosed
in Appellants’ Specification have Mg percentages of 0.31, 0.37, 0.43, and
0.45 (Spec. 125, Table 1) but the claimed range is more than 0.31% to
1.0%. In another example, inventive examples 11—14 disclosed in
Appellants’ Specification have Fe percentages of 0.46, 0.46, 0.43, and 0.61
(id.) but the claimed range is more than 0.4% to 1.0%.
The Examiner further finds Appellants have not compared the
asserted unexpected results with the closest prior art (i.e., Rooy). Ans. 9-10.
Appellant compares the inventive examples in the Specification with two
comparative examples, VI and V2 (id.), but not with Rooy’s aluminum strip.
“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
In addition, Appellants do not establish unexpected results via factual
evidence. Attorney argument does not suffice. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir, 1997) (attorney argument is not the kind of factual
evidence that is required to rebut a prima facie case of obviousness); see also
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In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994) (“Mere argument or
conclusory statements in the specification does not suffice.”).
Based on the foregoing, Appellants’ asserted evidence of unexpected
results is entitled to little weight. A preponderance of the evidence supports
the Examiner’s obviousness determination for claim 1. Appellants do not
argue claims 2—5, 7, and 8 separately from claim 1. Appeal Br. 9, 14.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 1—5, 7, and 8.
Rejection II
Claims 9 and 10 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Rooy in view of Shoji.
For claims 9 and 10, Appellants merely reiterate the arguments set
forth in support of the patentability of claim 1 and contend Shoji does not
remedy the deficiencies of Rooy discussed with regard to the rejection of
claim 1. Id. at 14. For the reasons set forth above, there are no deficiencies
in the rejection of claim 1 that require curing by Shoji.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 9 and 10.
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C. DECISION
The decision of the Examiner is 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
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