Ex Parte Song

Patent Trial and Appeal Board

Aug 23, 2017

12957259 (P.T.A.B. Aug. 23, 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.
00133/0006US 1821
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
12/957,259 11/30/2010
41939 7590 08/23/2017
JEANNE E. LONGMUIR
2836 CORYDON ROAD
CLEVELAND HEIGHTS, OH 44118
Inho Song
08/23/2017 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 INHO SONG
Appeal 2016-000920
Application 12/957,259
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
April 17, 2014 decision finally rejecting claims 1—6 (“Final Act.”). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Moen Incorporated (Appeal
Br. 3).
Appeal 2016-000920
Application 12/957,259
CLAIMED SUBJECT MATTER
Appellant’s invention is a brass alloy which is said to have improved
copper corrosion resistance and machinability (Abstract). Details of the
claimed invention are set forth in representative claims 1—4, which are
reproduced below from the Claims Appendix of the Appeal Brief:
1. An uncoated copper (Cu) corrosion resistant, machinable
brass alloy consisting essentially of 69-79 %, by weight of
copper (Cu); 2 to 4 %, by weight, of silicon; 1 to 3 %, by
weight, of tin; 0.01 to 1 %, by weight, of lead (Pb); and the
remaining %, but less than 20 %, by weight, of zinc (Zn).
2. An uncoated copper (Cu) corrosion resistant, machinable
brass alloy consisting essentially of 69-79 %, by weight, of
copper (Cu); 2 to 4 %, by weight, of silicon; 1.5 to 2.5 %, by
weight, of tin; 0.01 to 1 %, by weight, of lead (Pb); and the
remaining %, but less than 20 %, by weight, of zinc (Zn).
3. An uncoated copper (Cu) corrosion resistant, machinable
brass alloy consisting essentially of 69-79 %, by weight, of
copper (Cu); 2 to 4 %, by weight, of silicon; 2 to < 6 %, by
weight, of tin; 0.01 to 1%, by weight of lead (Pb), and the
remaining %, but less than 35 %, by weight, of zinc (Zn).
4. A plumbing product manufactured from a low lead (Pb),
uncoated machinable brass alloy having lead (Pb) in an amount
ranging from 0.01 to 1 % by weight, and tin (Sn) in an amount
ranging from 1 to 6 % by weight, such that the plumbing
product is resistant to copper (Cu) corrosion, and has a thin wall
which is under pressure during use, which use includes the
passage of water.
REJECTIONS
I. Claims 1—6 are rejected under 35U.S.C. § 112,11, as failing to
comply with the written description requirement because the term “uncoated” is
not supported by the original disclosure.
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Application 12/957,259
II. Claims 1—3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsumura.2
III. Claims 1—6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over De Jarlais.3
IV. Claims 1—6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oishi.4
DISCUSSION
Rejection I. To satisfy the written description requirement of § 112,
the Specification—including the drawings and the originally filed claims—
must allow a person of ordinary skill in the art to recognize that the inventor
invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989). “[T]he purpose of the written description requirement is to ‘ensure
that the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.”’ Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1353—54 (Fed. Cir. 2010) (enbanc) (quoting Univ. of
Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)).
“[T]he test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.”
Ariad, 598 F.3d at 1351. “[T[he claimed subject matter need not be
described An haec verba’ in the original specification in order to satisfy the
written description requirement.” In re Wright, 866 F.2d 422, 425 (Fed. Cir.
2 Matsumura, JP 53106652 A, published September 16, 1978.
3 De Jarlais, US 6,383,643 Bl, issued May 7, 2002.
4 Oishi, US 2005/0247381 Al, published November 10, 2005.
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Application 12/957,259
1989) (emphasis added). Rather, “[t]he specification as originally filed must
convey clearly to those skilled in the art the information that the applicant
has invented the specific subject matter later claimed.” Id. at 424 (quoting
In re Smith, 481 F.2d 910, 914 (CCPA 1973)).
The Examiner bases the written description rejection on a finding that
the Specification is silent with regard to the presence or absence of a coating
(Ans. 8). Appellant argues that the Specification makes no mention of the
alloy disclosed therein being coated, and that the discussion of 1 8 of the
Specification suggests that the invention is directed to an uncoated alloy.
Based on the record before us, we find that the preponderance of the
evidence supports reversal of the written description rejection. A person of
skill in the art reviewing the Specification would have understood that the
inventor had invented an uncoated alloy, as the Specification makes no
mention of a coating and suggests direct contact between the alloy and the
water supply (see, e.g., Spec. 11 8, 9).
Thus, we find that Appellant has demonstrated reversible error in the
written description rejection.
Rejections II and III. The Examiner finds that the claims and the
cited art disclose compositions containing components in the following
amounts, by wt% (Ans. 5):
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Appeal 2016-000920
Application 12/957,259
Element Claim 1 Claim 2 Claim 3 Claim 4 Matsumura
(Abstract)
De Jarlais
(claims 9, 11)
Oishi
(122)
Cu 69-79 69-79 69-79 Not
specified
balance 78-91 70-80
Si 2-4 2-4 2-4 Not
specified
0.1-3 0.001^1.2 1.8—3.5
Sn 1-3 1.5-2.5 2—<6 1-6 0.1-12 0.01-6 0.3—3.5
Pb 0.01-1 0.01-1 0.01-1 0.01-1 0.1-2 0.005-8 0.2—0.4
Zn Balance,
but <20
Balance,
but <20
Balance,
but <35
Not
specified
0.1-25 2-16 Balance
The Examiner finds that because the range of components in the
claims overlaps with the compositions of the prior art, a prima facie case of
obviousness exists with regard to claims 1, 2, and 3 (Final Act. 4, citing In re
Petersen, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003).
With regard to Rejection I over Matsumura, Appellant argues that
because Matsumura is directed to a welding rod, which requires very
different properties than a composition used in plumbing fixtures, it is non-
analogous art (Appeal Br. 8). Appellant also argues that Matsumura is not
concerned with corrosion resistance, or machinability (id.). Appellant also
seems to suggest that the claimed ranges offer unexpectedly good
machinability and anti-corrosive properties (Appeal Br. 8—9).
These arguments are not persuasive. First, as noted by the Examiner
(Ans. 6), claims 1—3 are composition claims. Accordingly, that
Matsumura’s intended use of its composition is as a welding rod is not
pertinent to the rejection. As noted above, the claimed compositions would
have been obvious in view of the disclosure of Matsumura in view of the
overlapping ranges of the components. Therefore, it would have been
expected that Matsumura’s compositions would have the corrosion
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Application 12/957,259
resistance and machinability properties recited in the preambles of claims 1,
2, and 3. We address the unexpected results argument below.
With regard to the rejection over De Jarlais, Appellant argues that
because De Jarlais teaches a coated product, it cannot render obvious the
uncoated compositions of claims 1—6 (Appeal Br. 10-11). However, as
noted by the Examiner, De Jarlais teaches the production of the alloy before
the coating process (see De Jarlais 2:44—3:38), and this intermediate product
would have rendered obvious the compositions of claims 1—3. Thus, we
affirm the rejection of claims 1—3 over De Jarlais.
However, claims 4—6 are directed to plumbing products. De Jarlais is
clearly directed to plumbing products which comprise coated alloys
(Abstract). The Examiner has not provided a persuasive explanation of why
a person of ordinary skill in the art would have modified the coated
plumbing products of De Jarlais to remove the coating. Accordingly, we
reverse the rejection of claims 4—6 over De Jarlais.
In connection with the rejection over Oishi, Appellant argues that
“Oishi fails to provide any specific or limited ranges — but merely alternative
ranges of alternative elements” (Appeal Br. 11). However, as set forth
above, Oishi discloses a composition with components present in ranges
which overlap the claimed ranges, which makes out a prima facie case of
obviousness. That Oishi does not explicitly “understand or consider the
possibility of copper corrosion in a low lead, zinc, and silicon brass alloy”
(Appeal Br. 12) does not rebut the prima facie case, for the reasons set forth
above.
Appellant also attempts to rely on a Declaration from the inventor in
order to show unexpected results (Appeal Br. 12). The burden rests with
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Appellant to establish (1) that the alleged unexpected results presented as
being associated with the claimed invention are, in fact, unexpected, (2) that
the comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
In this instance Appellant has not provided an explanation of what is
in the Song Declaration (and did not provide it as an attachment the Appeal
Brief). Moreover, the Declaration does not provide a comparison of the
claims to the closest prior art (i.e., the third embodiment of Oishi’s
invention, as described in 122). Instead, the Declaration describes the
properties of certain commercially available alloys which are said to be
manufactured in accordance with the Oishi patent, but without setting forth
their composition.
Accordingly, the Song Declaration is not sufficient to overcome the
rejection over Oishi (or over De Jarlais or Matsumura).
Finally, in the Reply Brief, Appellant suggests for the first time that
the additional elements which might be present in the prior art compositions
would have rendered the claimed compositions non-obvious because of the
use of the “consisting essentially of’ transition phrase (Reply Br. 1). These
arguments were raised for the first time in the Reply Brief, without a
persuasive explanation of why they were not raised in the Appeal Brief and,
therefore, have not been considered. 37 C.F.R. § 41.41(b)(2).
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CONCLUSION
We REVERSE the rejection of claims 1—6 under 35 U.S.C. § 112,11,
as failing to comply with the written description requirement because the
term “uncoated” is not supported by the original disclosure.
We AFFIRM the rejection of claims 1—3 under 35 U.S.C. § 103(a) as
being unpatentable over Matsumura.
We AFFIRM the rejection of claims 1—3 under 35 U.S.C. § 103(a) as
being unpatentable over De Jarlais.
We REVERSE the rejection of claims 4—6 under 35 U.S.C. § 103(a) as
being unpatentable over De Jarlais.
We AFFIRM the rejection of claims 1—6 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oishi.
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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