GRÄNGES AB

Patent Trials and Appeals Board

Jun 9, 2021

2020004329 (P.T.A.B. Jun. 9, 2021)

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. 15/775,447 05/11/2018 Sampath DESIKAN 122631-5013 7919 9629 7590 06/09/2021 Morgan, Lewis & Bockius LLP (WA) 1111 Pennsylvania Avenue, N.W. Washington, DC 20004 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 06/09/2021 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): karen.catalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SAMPATH DESIKAN and MA WEIZENG ____________ Appeal 2020-004329 Application 15/775,447 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s final decision to reject claims 1-12 and 15. We have jurisdiction under 35 U.S.C. § 6(a). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “GRÄNGES AB” as the real party in interest. Appeal Br. 3. Appeal 2020-004329 Application 15/775,447 2 The invention relates to an aluminium alloy brazing sheet with adequate corrosion performance at thin gauge. Spec. 1. Claim 1 illustrates the invention and is reproduced below (formatting added): 1. A brazing sheet comprising a core layer made of a first aluminium alloy, attached to one side of said core layer a sacrificial cladding made of a second aluminium alloy, attached to the other side of said core layer a braze cladding made of a third aluminium alloy, wherein said first aluminium alloy consists of: Si 0.2-1.0 wt% Fe 0.15-1.0 wt% Cu 0.2-0.9 wt% Mn 1.0-1.6 wt% Mg ≤ 0.3 wt% Cr 0.05-0.15 wt% Zr 0.05-0.25 wt% Ti 0.05-0.25 wt% Other elements ≤ 0.05 wt% each and ≤ 0.2 wt% in total Al balance up to 100 wt%; said second aluminium alloy consists of: Si 0.45-1.0 wt% Fe ≤ 0.4 wt% Appeal 2020-004329 Application 15/775,447 3 Cu ≤ 0.05 wt% Mn 1.2-1.8 wt% Ti ≤ 0.10wt% Zn 1.3-5.5 wt% Zr 0.05-0.20 wt% Other elements ≤ 0.05 wt% each and ≤ 0.2 wt% in total Al balance up to 100 wt%; and said third aluminium alloy has a melting point lower than said first and second aluminium alloys. Appellant requests review of the Examiner’s rejection of claims 1-12 and 15 under 35 U.S.C. § 103 as unpatentable over Ando (US 2012/0129003 A1, published May 24, 2012). Appeal Br. 6; Final Act. 2. Appellant presents arguments for independent claim 1 and does not present separate arguments for the remaining dependent claims. See generally Appeal Br. Accordingly, we select claim 1 as representative of the subject matter claimed and decide the appealed ground of rejection based on the arguments Appellant makes in support of the patentability of claim 1. OPINION After review of the respective positions Appellant presents in the Appeal and Reply Briefs and the Examiner presents in the Final Office Action and the Answer, we AFFIRM the Examiner’s rejection of claims Appeal 2020-004329 Application 15/775,447 4 1-12 and 15 under 35 U.S.C. § 103 for essentially the reasons the Examiner presents. We add the following for emphasis. Claim 1 We refer to the Examiner’s Final Office Action for a complete statement of the rejection of claim 1. Final Act. 2-4. Briefly, the Examiner finds that Ando discloses a brazing sheet comprising a core layer made of a first aluminium alloy with a sacrificial cladding made of a second aluminium alloy and a braze cladding made of a third aluminium alloy on opposite sides of the core layer. Id. at 2. The Examiner further finds that Ando teaches aluminium alloy compositions for the core layer and the sacrificial cladding where the amounts for the elemental components of Ando’s alloys overlap the amounts for the same elemental components of the claimed aluminium alloys. Id. at 2-4. Based on this, the Examiner determines that a prima facie case of obviousness exists. See generally Final Act.; Ans. 8. Appellant does not dispute the Examiner’s findings that Ando discloses a brazing material comprising aluminium alloys having compositions that overlap the claimed aluminium alloys. See generally Appeal Br. In fact, Appellant presents Tables showing that the various amounts for the elemental components of Ando’s aluminium alloys and the claimed alloys do overlap. Id. at 8. Instead, Appellant contends that Ando discloses alloys comprising a very broad range of elements with no guidance for selection of the elements and that includes elemental components excluded by transitional claim language “consisting of” used to define the composition of the first and second aluminium alloys. Id. at 7, 9-13. Appeal 2020-004329 Application 15/775,447 5 Appellant’s arguments are not supported in the record and do not point to reversible error in the Examiner’s determination of obviousness. “In cases involving overlapping ranges, [our reviewing court has] consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d at 1330). In such a case, the burden shifts to Appellant to rebut the prima facie obviousness by producing evidence of unexpected properties at the claimed range relative to the prior art range. See In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir. 1997) (when the teachings of a prior art reference discloses a range that touches or overlaps the range recited in the claim, the burden is on applicant to rebut prima facie obviousness, e.g., by showing unexpected properties within the claimed range); 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 particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). In this case, both the Examiner and Appellant pointed to portions of Ando that teach the specific elemental components and amounts used to make the respective aluminium alloys. Final Act. 2-3; Appeal Br. 8. In addition, and contrary to Appellant’s arguments, the Examiner points to portions of Ando that provide specific guidance with respect to the amounts for the components used in making the alloys. Ans. 11-13; Ando ¶¶ 23-32, 37-46. The noted disclosure also shows that Ando is concerned with Appeal 2020-004329 Application 15/775,447 6 making alloys having superior corrosion resistance. See, e.g., Ando ¶ 40. Given these disclosures, Appellant has not explained adequately why one skilled in the art, using no more than ordinary creativity, would not have been capable of arriving at the claimed alloys from Ando’s teachings. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). See also In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). Appellant’s argument that Ando discloses alloys comprising elemental components in its alloys that are excluded by the use of the transitional language “consisting of” is unavailing. Appeal Br. 7, 9-13. As the Examiner explains in the Answer and as acknowledged by Appellant, the argued elemental components excluded by the claim (such as V. Mg, and Cr, depending on the specific alloy) are optional elements for Ando’s alloys, which means that they are not required to be present. Ans. 10-11; see also Ando ¶ 32 (“If necessary, at least one of the elements Mg, Ti, Zr, Cr and V may be contained in the core material.”). Similarly, Appellant’s arguments that Ando’s amounts for some elemental components are broader than the claimed ranges for the same elements is also unavailing. Appeal Br. 9-13. As the comparison Tables in Appellant’s Brief shows, Ando’s range of amounts for elemental components Si, Fe, Cu, and Mn completely encompasses the claimed range of amounts for these elemental components. Appeal Br. 8; see also Ans. 9 (where the Examiner correctly notes that “the amount of overlap between Appeal 2020-004329 Application 15/775,447 7 that of Ando and that of the claimed composition can be considered to be substantial overlap”). Our reviewing court has held that “[w]here the ‘claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap.’” In re Harris, 409 F.3d at 1341 (quoting In re Peterson, 315 F.3d at 1330). Thus, Appellant’s argument does not identify reversible error. Moreover, Appellant’s arguments focuses on some of Ando’s embodiments that may include elemental components not required by the claimed invention or have higher or lesser amounts of some of the recited elemental components. That is, Appellant asserts Ando is not evidence against the claimed invention because some of Ando’s embodiments are outside the scope of the alloys recited in independent claim 1. However, it is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellant. Ans. 4. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is not limited to its examples). The disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Given that Ando’s alloys are directed to aluminium alloys for use in brazing sheets (Ando ¶¶ 1, 11-14), Appellant Appeal 2020-004329 Application 15/775,447 8 has not explained adequately why these argued embodiments limit Ando’s broader disclosure of alloys that encompass the claimed invention. Appellant contends that experimental data presented in Table 1 of the Specification demonstrates that inventive brazing material D shows adequate resistance against pitting corrosion as compared to comparative materials A- C. Appeal Br. 15; Spec. 7 (Table 1). When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on the Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art is an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant must establish the unexpected results with factual evidence; attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results with evidentiary support must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); see also In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We have considered Appellant’s evidence and agree with the Examiner’s analysis that the evidence is insufficient to show nonobviousness. Ans. 14-15. First, it is unclear whether the showing that Appellant relies upon compares the inventive brazing material to the closest prior art (Ando). While Appellant contends that “all materials A through D fall under the Appeal 2020-004329 Application 15/775,447 9 general disclosure of alloy compositions in Ando,”2 Appellant has not established that these tested materials are in fact representative of Ando’s brazing materials. Appeal Br. 15. In addition, Table 1 in the Specification only shows a single inventive example (brazing material D) used to demonstrate unexpected results. Spec. 7. Appellant does not explain why this single inventive example is representative of the broad range of compositions encompassed by claim 1. Further, Appellant indicates that the inventive brazing material D only shows adequate resistance against pitting corrosion as compared against the comparative brazing materials. Appellant directs us to not no portions in the Specification or the Appeal Brief explaining why an adequate improvement is unexpected. Thus, on this record, Appellant has not explained adequately why one of ordinary skill in the art would have found the evidence relied upon unexpected or why that evidence is reasonably commensurate in scope with the claims. Appellant contends the Examiner has not articulated the bases for one of ordinary skill in the art to arrive at the claimed alloys from Ando’s broad general genus. Appeal Br. 17-20. This argument does not persuade us of reversible error for the reasons we give above. Further, we agree with the Examiner’s finding that there is substantial overlap between the elemental components of Ando’s alloys and the claimed alloys. Ans. 13-14; see Appeal Br. 8. That is, both Ando and the claimed invention are directed to a broad range of alloys based on the 2 We note that Appellant’s statement includes inventive brazing material D as falling under the general disclosure of alloy compositions in Ando. Appeal 2020-004329 Application 15/775,447 10 recited amounts for the elemental components. Thus, Appellant has not explained adequately why one skilled in the art would consider Appellant’s claimed alloy compositions to be a species of Ando’s disclosed alloy compositions. We note that Appellant does not address the Examiner’s reasoning in the Reply Brief. Accordingly, we affirm the Examiner’s prior art rejection of claims 1- 12 and 15 for the reasons the Examiner presents and we give above. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-12, 15 103 Ando 1-12, 15 TIME PERIOD FOR RESPONSE 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)(iv). See 37 C.F.R. § 1.136(a) AFFIRMED