Ex Parte Weber

Patent Trial and Appeal Board

Aug 28, 2014

12215191 (P.T.A.B. Aug. 28, 2014)

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.
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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.
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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
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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
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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
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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
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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
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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
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(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.
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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

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