Ex Parte Luo et al

Patent Trial and Appeal BoardAug 17, 2016

11749201 (P.T.A.B. Aug. 17, 2016)

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. 11/749,201 05/16/2007 Aihua A. Luo GP-308373-RD-JMC 7781 104102 7590 08/17/2016 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 08/17/2016 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 AIHUA A. LUO and ANIL K. SACHDEV ____________ Appeal 2015-001318 Application 11/749,201 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, JULIA HEANEY, and MONTÉ T. SQUIRE Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner to reject claims 1, 3, 4, 6, 7, and 9–21 of Application 11/749,201. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. BACKGROUND The subject matter on appeal relates to a magnesium based alloy composition. Spec. 1. Appeal 2015-001318 Application 11/749,201 2 Claim 1, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 1. An automotive structural casting consisting essentially of by weight, about 0.8 % to about 1.5 % tin, not less than 6.5% to about 9% aluminum, about 0.25% to about 0.6% manganese, up to about 0.22% zinc, with the balance being substantially all magnesium with trace amounts of silicon, copper, nickel, iron and other ordinarily present elements wherein the automotive structural casting is an instrument panel beam, a steering system support, or a radiator support. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: King et al. US 4,332,864 June 1, 1982 Powell et al. US 6,264,763 B1 July 24, 2001 THE REJECTION Claims 1, 3, 4, 6, 7, and 9–21 are rejected under 35 U.S.C. § 103(a) as unpatentable over King in view of Powell. DISCUSSION Appellants argue that the Examiner has not established a prima facie case of obviousness, essentially for two reasons: (1) a person of ordinary skill in the art would not have had a reason to combine the magnesium alloy disclosed in King with the magnesium-aluminum-calcium alloy disclosed in Powell (App. Br. 6–7; Reply Br. 5); and (2) King and Powell, alone or in Appeal 2015-001318 Application 11/749,201 3 combination, do not disclose the feature “wherein the automotive structural casting is an instrument panel beam, a steering support, or a radiator support.” App. Br. 8–9; Reply Br. 6–7. King describes a magnesium alloy containing constituents of aluminum, zinc, tin, manganese, and “normal impurities.” King 2:12–20. King’s alloy is cast into plates for use as the anode material in an electric cell, particularly of the type using a salt water electrolyte. King 2:36–40, 50–55. The Examiner finds that the weight percentages of the constituents in King’s alloy overlap the weight percentage ranges of aluminum, zinc, tin, and manganese recited in claims 1 and 11. Final Act. 2. Powell describes a family of magnesium-aluminum-calcium-X alloys that are suitable for casting and display creep and corrosion resistance. Powell 2:33–43. Powell specifically discloses silicon, copper, nickel, and iron as impurities in its alloy. Id. at 2:57–66. With respect to claim 1, the Examiner finds that the amounts of silicon, copper, nickel, and iron disclosed in Powell overlap claim 1’s recited “trace amounts”; with respect to claim 11, the Examiner finds that Powell’s impurities would meet claim 11’s requirement of “no greater than about 0.02%.” Final Act. 3. The Examiner determines that it would have been obvious to a person of ordinary skill in the art to include the small amounts of silicon, copper, nickel, and iron disclosed in Powell in the magnesium alloy of King, in order to improve the properties of the alloy as disclosed by Powell. Id. (citing Powell 2:65–66, 4:42–44). On the record before us, the Examiner has not shown that a person of ordinary skill in the art would have had an apparent reason to use the impurities taught by Powell in King’s magnesium alloy. The Examiner does not point to anything in Powell disclosing that the very small amounts of Appeal 2015-001318 Application 11/749,201 4 silicon, copper, nickel, and iron of its magnesium alloy for structural applications would impart usable properties to a magnesium alloy for an electric cell, as disclosed by King. For example, although the Examiner states that King is “a magnesium alloy for use in salt water” (Ans. 4), the Examiner does not provide a reason why a person of ordinary skill in the art would look to Powell’s impurities to provide properties for such an application. Final Act. 3–4; Ans. 3. Indeed, in presenting data on corrosion behavior of its magnesium alloy, Powell teaches the following: Other data in the corrosion tests reaffirm a lesson that has been learned about the effect of iron content on the corrosion rate of Mg. Iron, like Ni and Cu, substantially increases the corrosion rate of AZ and AM alloys. A key to minimizing corrosion of magnesium is to minimize the presence of iron, nickel, and copper. Powell 9:21–26. Thus, in stating a reason to combine King and Powell, the rejection fails to consider the references as a whole, or sufficiently explain why a person of ordinary skill in the art would have had a reason to combine the teachings of the references. Because we conclude the Examiner reversibly erred in this aspect of the obviousness determination, we need not address Appellants’ second argument for reversal, as set forth above. Accordingly, we conclude that the Examiner has not established a prima facie case of obviousness with respect to claims 1 and 11. Our conclusion also applies to dependent claims 3, 4, 6, 7, 9, 10, and 12–21, for which the rejections are also based on a combination of King and Powell. SUMMARY We reverse the rejection of claims 1, 3, 4, 6, 7, and 9–21 as unpatentable under 35 U.S.C. § 103(a). Appeal 2015-001318 Application 11/749,201 5 REVERSED