Ex Parte WeberDownload PDFPatent Trial and Appeal BoardAug 28, 201412215191 (P.T.A.B. Aug. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KAI WEBER ____________ Appeal 2013-001399 Application 12/215,1911 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 14–16. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 15 is representative of the subject matter on appeal and is set forth below (with text in bold for emphasis ): 15. A copper-zinc alloy, consisting of, in wt.%, 28.0-36.0% Zn, 0.5–1.5% Si, 1.5–2.5% Mn, 0.2–1.0% Ni, 1 According to Appellant, the Real Party in Interest is Wieland-Werke AG. Br. 1. Appeal 2013-001399 Application 12/215,191 2 0.5-1.5% Al, 0.1–1.0% Fe and, optionally, up to 0.1% Pb, up to 0.2% Sn, up to 0.1% P and up to 0.08% S, with the balance being Cu and inevitable impurities, with hard phases of different size distribution and β-phase inclusions, the hard phases comprising mixed silicides of iron-nickel-manganese, incorporated in an α-matrix and, after a post-processing step which involves at least hot-forming or cold-forming and further annealing steps, the alloy structure comprises β-phase inclusions of up to 45 vol.%, mixed silicides of Fe-Ni-Mn up to 20 vol.% and the remainder being an α-phase, and the ratio Rp0.2/Rm of the values for the yield point and tensile strength of the alloy lies between 0.5 and 0.95. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Fukizawa et al. (hereinafter “JP ’741”) JP 56127741 Oct. 6, 1981 Iwamura et al. (hereinafter “JP ’143”) JP 57076143A May 13, 1982 Kunio et al. (hereinafter “JP ’570”) JP 9316570A Dec. 9, 1997 Gaag et al. (hereinafter “Gaag”) DE 102005059391 A1, equiv.to US 2008/0240973 A12 June 14, 2007 THE REJECTIONS 1. Claims 14–16 are rejected under 35 U.S.C. § 103 as unpatentable over Gaag or JP ’570 in view of JP ’143. 2 Hereinafter citations to Gaag will be to US 2008/0240973 A1. Appeal 2013-001399 Application 12/215,191 3 2. Claims 14–16 are rejected under 35 U.S.C. § 103 as unpatentable over JP ’741. ANALYSIS Appellant argues claims 14–16 as a group, relying on limitations in claim 15 and presenting no argument for separate patentability of dependent claims 14 or 16. App. Br. 3–5. Therefore, claims 14–16 stand or fall together, and we need not address claims 14 or 16 separately from claim 15. 37 C.F.R. § 41.37(c)(iv). Both the claimed invention and the cited prior art relate to copper-zinc (brass) alloys for friction applications, such as bearings, clutches and synchronizer rings, where the alloy possesses high strength and wear resistance. Spec. 1; Gaag ¶ 3; JP ’570 (Abstract); JP ’143 (Abstract); JP ’741 (Abstract). The Examiner finds that Appellant’s claimed alloy would have been obvious in view of the cited references. As detailed below, Appellant fails to demonstrate error in the Examiner’s obviousness rejections. Rejection 1 over Gaag or JP ’570 in view of JP ’143 Appellant does not challenge the Examiner’s finding that Gaag and JP ’570 each disclose the claimed Cu-Zn alloy composition, Answer 3, instead arguing that the claimed silicides content, β-phase content and tensile properties are not taught by Gaag or JP ’570. App. Br. 3–4. Regarding the silicides content, we agree with the Examiner’s finding that the claimed amount of “up to 20 vol.%” is met by each of Gaag and JP ’570. Answer 3, 9, 12. Appellant identifies no error in the Examiner’s Appeal 2013-001399 Application 12/215,191 4 findings that paragraph 16 of Gaag and paragraphs 16 and 20 of JP ’570 teach to add Fe, Ni, Mn, and Si to form intermetallic phases/compounds/silicides in order to improve wear resistance of a Cu-Zn alloy. Answer 8-9, citing and quoting Gaag ¶ 16; id. at 12–13, citing and quoting JP ’570 ¶¶ 16, 20 (machine translation). As noted by the Examiner, this teaching is reinforced by JP ’143, which discloses the addition of iron group metals (which includes Fe and Ni) to improve the granularity of Mn- Si intermetallic compounds in a brass alloy and contribute to improved strength, toughness, and wear resistance. JP ’143 (Abstract); Answer 9. Appellant fails to address these disclosures of Gaag, JP ’570, and JP ’143, making no attempt to distinguish the claimed “mixed silicides of Fe-Ni-Mn” from the intermetallic phases/compounds disclosed in Gaag, JP ’570, and JP ’143. The cited references disclose the addition of silicides for the same purpose as taught by Appellant: to improve wear resistance of the brass alloy. Compare Gaag ¶ 16; JP ’570 ¶ 16; and JP ’143 (Abstract) with Spec. 4, 9. The teachings of these references are sufficient to demonstrate that silicides content is a result-effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result- effective.”). Appellant shows no criticality to the claimed upper limit of 20 vol.%. Indeed, Appellant’s Specification attributes improved wear resistance to the “high content” of silicides, without suggesting any reason for keeping the amount below 20 vol.%. Spec. 4, 9. In the absence of evidence of criticality, it would have been obvious to optimize the amount of silicides in the alloy of JP ’570 within Appellant’s claimed range. In re Appeal 2013-001399 Application 12/215,191 5 Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[Discovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art.”). Regarding the β-phase content, we agree with the Examiner’s finding that the claimed maximum of 45 vol.% is met either by Gaag in view of JP ’143 or by JP ’570. Answer 3, 13. Appellant identifies no error in the Examiner’s finding that the presence of a β-phase is evidenced by the teaching of JP ’143 that “Zn and Al elements would increase [the] β-phase in [a] Cu-Zn alloy.” Answer 9; JP ’143 (Abstract.) We note that Gaag, like JP ’143, teaches a Cu-Zn alloy that contains Al, thus supporting a reasonable expectation that Gaag likewise has a β-phase. See Gaag ¶¶ 15-16. Appellant also does not challenge the Examiner’s finding that, as a matter of common knowledge, Cu-Zn alloys have α, β and mixed phases. Answer 9- 10 (citing ASM Handbook). Regarding Appellant’s claimed upper limit of “up to 45 vol.%,” the Examiner directs our attention to the disclosure of JP ’570 that “the amount of beta phases in metallic structure is controlled to ≤ 30% . . . [.]” Answer 13, quoting JP ’570 (Abstract.) Appellant fails to address this disclosure of JP ’570, which teaches an amount of β-phase alloy (up to 30%) that overlaps Appellant’s claimed range (up to 45 vol.%). We therefore agree with the Examiner that Appellant’s claimed upper limit is met by JP ’570. 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.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . These cases have consistently held that in such a situation, the applicant must show that the Appeal 2013-001399 Application 12/215,191 6 particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). Alternatively, because JP ’143 teaches the presence of α- and β-phases for the same purposes as Appellant (strength, toughness and wear resistance), compare JP ’143 with Spec. 9–10, it would have been obvious for one of ordinary skill in the art to optimize the β-phase content – a result-effective variable -- within Appellant’s claimed range. In re Applied Materials, Inc., 692 F.3d at 1295; In re Boesch, 617 F.2d at 276. Regarding the tensile properties, we agree with the Examiner that the brass alloy taught by Gaag or JP ’570 is identical or substantially identical to that claimed by Appellant and that the cited disclosures are sufficient to shift the burden to Appellant to provide evidence that the prior art product does not possess Appellant’s claimed tensile properties. Answer 5. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where . . . the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Appellant makes no attempt to show that the alloy taught by Gaag or JP ’570 does not possess Appellant’s claimed tensile properties. Appellant’s failure of evidence is alone sufficient to affirm the rejection. In addition, however, the Examiner relies on JP ’143’s disclosure that a sample brass alloy had a tensile strength of 84.5 kg/sq.mm and elongation of 12.4%. Answer 3–4; JP ’143 (Abstract.) According to the Examiner, one of ordinary skill in the art would reasonably expect the alloy of Gaag or JP ’570 to have substantially the same properties as disclosed in JP ’143, in view of the overlapping composition, microstructure and Appeal 2013-001399 Application 12/215,191 7 disclosed utilities of the alloys. Id. The Examiner provides the following supplemental reasoning in support of the rejection: [B]ecause [of] the tensile strength and low elongation of the Cu-Zn alloy composition, the yield strength would be close to tensile strength and overlaps claimed yield to tensile strength ratio. Furthermore, the ratio for the yield point and tensile strength is convention[al] because it is known in the art of cited prior arts that yield strength is less than tensile strength. Said ratio is always less than 1. . . . The ratio of yield point to tensile strength for more brittle alloy is inevitabl[y] falling within the recited ratio 0.5 to 0.95%. It is common knowledge to ordinary skill artisan of cited prior arts that low elongation means alloy is more brittle; thus, yield strength is more close to tensile strength. Answer 13 (internal quotes omitted); see also id. at 4. Appellant provides no response to the Examiner’s rationale, which we agree supports a finding that Appellant’s claimed tensile properties would have been obvious to one of ordinary skill in the art. Instead of challenging the Examiner’s reasoning, Appellant argues that the Examiner’s combination of references does not show prima facie obviousness because the claimed microstructure and tensile properties are due to the claimed processing steps (hot-forming, cold-forming and/or further annealing). We agree with the Examiner that the causal relationship argued by Appellant is not supported by the Specification. Answer 14, citing Spec. 4–5. Furthermore, as noted by the Examiner, the claimed processing steps – hot-forming, cold-forming and further annealing – are disclosed by JP ’570. Answer 14, citing JP ’570 ¶ 22. Patentability cannot be premised on what is known in the art. Moreover, Appellant concedes in the Reply Brief that the references cited by the Examiner “present a showing Appeal 2013-001399 Application 12/215,191 8 of prima facie obviousness under 35 USC 103(a).” Reply Br. 2. Finally, Appellant’s attempt to show unexpected results is unconvincing. App. Br. 4–5; Reply Br. 2–3. Tables 1-3 of Appellant’s Specification show the composition and mechanical properties of three alloys that Appellant asserts are “within the scope of the present claims.” App. Br. 4; Spec. 11–12. These tables make no comparison with Gaag, JP ’570 or any other prior art and therefore fail to show unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (to show unexpected results, applicant must establish: “that there actually is a difference between the results obtained through the claimed invention and those of the prior art”) (citation omitted). Appellant’s Rule 132 Declaration purports to compare an alloy that corresponds to the claimed invention (SX1) with two other alloys (SB8 and S40). Decl. 1–8. However neither of Appellant’s comparative alloys is representative of JP ’570, which is the closest prior art cited by the Examiner. SB8 contains no Mn, which is a required component of both the alloy disclosed in JP ’570 and the claimed alloy. JP ’570 (Abstract.) According to the Declaration, S40 has a “high beta-phase content of approximately 90-100%,” Decl. 1, which is outside the maximum beta phase content disclosed in JP ’570 (up to 30% -- Abstract) and farther from the claimed range (up to 45 vol.%) than JP ’570. Accordingly, Appellant’s Declaration fails to show improved results, as compared with JP ’570. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“an applicant relying on comparative tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art”). Furthermore, Appellant has not provided evidence showing that the results of the comparison would have been unexpected. In re Freeman, 474 F.2d at 1324 Appeal 2013-001399 Application 12/215,191 9 (to show unexpected results, applicant must establish: “that the difference actually obtained would not have been expected by one skilled in the art at the time of invention”); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”). Rejection 2 over JP ’741 Appellant does not challenge the Examiner’s finding that JP ’741 discloses the claimed Cu-Zn alloy composition, Answer 5, instead arguing that the claimed silicides content, β-phase content, α-phase and tensile properties are not taught. App. Br. 5. Regarding the silicides content, Appellant fails to address JP ’741’s teaching of a brass alloy containing Mn-Si intermetallic compounds, with the addition of Ni and Fe to improve the fineness and shape of the grains, which provides good abrasion resistance and toughness. JP ’741 (Abstract); see Answer 5 (citing JP ’741’s disclosure of intermetallic compounds.) For the reasons discussed above, it would have been obvious for one of ordinary skill in the art to optimize the silicides content within Appellant’s claimed range. In re Applied Materials, Inc., 692 F.3d at 1295; In re Boesch, 617 F.2d at 276. Regarding the β-phase content and α-phase, Appellant fails to address the Examiner’s assertion that JP ’741 discloses that Al promotes beta phase formation. Answer 5, 16; see JP ’741 at 3 (English translation.)3 We note that JP ’741 further discloses that Ni promotes α-phase formation. JP ’741 3 The Examiner cites JP ’741 at page 3, top left column, which appears to be a reference to the original Japanese version of JP ’741, which is in column format. The disclosure referred to by the Examiner can be found at page 3 of the English translation of JP ’741. Appeal 2013-001399 Application 12/215,191 10 at 4. For the reasons discussed above, it would have been obvious for one of ordinary skill in the art to optimize the β-phase content within Appellant’s claimed range. Answer 9–10. In re Applied Materials, Inc., 692 F.3d at 1295; In re Boesch, 617 F.2d at 276. Regarding the tensile properties, the brass alloy taught by JP ’741 is identical or substantially identical to that claimed by Appellant, and Appellant has failed to meet his burden to provide evidence that the prior art product does not possess Appellant’s claimed tensile properties. In re Best, 562 F.2d at 1255. Furthermore, the Examiner’s supplemental reasoning quoted above applies equally to JP ’741, which discloses a brass alloy having a tensile strength and low elongation. Appellant fails to show how the test data of record shows nonobviousness or unexpected results, as compared with JP ’741. CONCLUSION OF LAW AND DECISION The rejections are 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)(1). AFFIRMED cdc Copy with citationCopy as parenthetical citation