Rajeev G. Kamat et al.

Patent Trials and Appeals BoardSep 4, 2019

14470712 - (D) (P.T.A.B. Sep. 4, 2019)

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. 14/470,712 08/27/2014 Rajeev G. Kamat 12-0312UTL 9066 8840 7590 09/04/2019 ARCONIC INC. C/O GREENBERG TRAURIG, LLP 500 CAMPUS DRIVE SUITE 400 FLORHAM PARK, NJ 07932 EXAMINER ZHENG, LOIS L ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): cadanoc@gtlaw.com clairt@gtlaw.com gtipmail@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAJEEV G. KAMAT, JOHN M. NEWMAN, RALPH R. SAWTELL, and JEN C. LIN1 ____________ Appeal 2018-007539 Application 14/470,712 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as applicant of record, Arconic Inc. Appeal Br. 2. Appeal 2018-007539 Application 14/470,712 2 Appellants request our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 8–12. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 8 is illustrative of Appellants’ subject matter on appeal and is set forth below: 8. A method comprising: (a) receiving an aluminum alloy body, wherein the aluminum alloy body is at its final gauge, wherein the aluminum alloy body comprises 0.1 - 2.0 wt. % silicon and 0.1 - 3.0 wt. % magnesium, where at least one of the silicon and the magnesium is the predominate alloying element of the aluminum alloy body other than aluminum, wherein the aluminum alloy body was prepared by solutionizing, and then cold working, wherein the cold working induced at least 25% cold work in the aluminum alloy body, thereby achieving the final gauge and then first thermally treating to achieve a first predetermined selected condition; (b) second thermally treating the aluminum alloy body; (i) wherein the second thermally treating step is accomplished to achieve a second predetermined selected condition, and such that the aluminum alloy body realizes a higher tensile yield strength over a reference version of the aluminum alloy body in the T6 temper; (ii) wherein the LT tensile yield strength of the aluminum alloy body is at least 50 ksi after the second thermally treating step. The Examiner relies on the following prior art references as evidence of unpatentability: Bergsma US 5,961,752 Oct. 5, 1999 Mirzakhani et al. “Tensile Properties of AA6061 in Different Designated Precipitation Hardening and Cold Working”, Procedia Engineering, vol. 10, pg. 136–140, 12/2011 (hereafter “Mirzakhani”). Appeal 2018-007539 Application 14/470,712 3 THE REJECTIONS2 1. Claims 8–12 are rejected under pre-AIA 35 U.S.C. § 103(a)3 as being unpatentable over Mirzakhani in view of Bergsma. Final Act. 6–7. 2. Claims 8–12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8–12 of copending Application No. 14/473,141. Final Act. 4–5. 3. Claims 8–12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8–12 of copending Application No. 14/476,184. Final Act. 5. ANALYSIS For purposes of this appeal, we address separately argued claim 8, and the remaining claims stand or fall with the argued claim 8, consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2017). 2 On pages 3–5 of the Final Office Action, the Examiner sets forth 4 provisional double patenting rejections of claims 8–12. On page 4 of the Answer, the Examiner withdraws 2 of them because the respective co-pending applications applied are now abandoned. It is noted that Appellants do not appeal any of the provisionally rejected double patenting rejections. Appeal Br. 3. Therefore, with regard to the remaining provisional double patenting rejections (Rejections 2 and 3, infra), involving co-pending application number 14/473,141 (now US Pat. No. 9,926,620) and co-pending application number 14/476,184, we summarily affirm these rejections. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). 3 The Examiner mistakenly refers to the rejection as a § 102 rejection on page 6 of the Final Action and on page 2 of the Answer; however, we view this as harmless error in view of the fact that the statement of the rejection indicates that the rejection is an obviousness rejection (see especially page 7 of the Final Action), and Appellants also understand the rejection as being an obviousness rejection. Appeal Br. 3. Appeal 2018-007539 Application 14/470,712 4 We review the appealed rejection for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellants identify reversible error. Thus, we reverse the Examiner’s rejection, with the following emphasis. We begin with the relevant teachings of Mirzakhani. As explained by Appellants on page 5 of the Appeal Brief and on page 3 of the Reply Brief, Mirzakhani teaches 4 types of process regimes, as follows: The Examiner acknowledges that process regime types 1)–3) of Mirzakhani do not meet the instant claims (as explained by Appellants on page 2 of the Reply Brief). Ans. 4. The Examiner relies upon process 4) of Mirzakhani for teaching the claimed process. Id. Appellants disagree that process 4) of Mirzakhani teaches the claimed process for the reasons presented on pages 3–5 of the Appeal Brief and as reiterated on pages 2–3 of the Reply Brief. Appellants argue that the instant claims require: (a) receiving an aluminum alloy body, wherein the aluminum alloy body is at its final gauge . . . wherein the aluminum alloy body was prepared by solutionizing, and then cold working, wherein the cold working induced at least 25% cold work in the aluminum alloy body, thereby achieving the final Appeal 2018-007539 Application 14/470,712 5 gauge and then first thermally treating to achieve a first predetermined selected condition . . .” Reply Br. 3. Appellants submit that the fourth processing type of Mirzakhani, on the other hand, requires cold rolling to an intermediate gauge, and then pre-aging (a first thermal treatment), and then cold rolling again, to achieve the final gauge, and then aging again (as second thermal treatment) (illustrated below): Appellants submit that such processing is excluded by the pending claims because claim 8 requires that prior to the first aging step, the aluminum alloy body is at its final gauge. Appeal Br. 6. Appellants argue that this is not the case with processing type (4) of Mirzakhani, where the alloy body is at an intermediate gauge prior to the first aging (see above illustration). Reply Br. 3. The Examiner responds by stating that because claim 8 includes the word “comprising”, claim 8 allows for the presence of additional steps such as the first cold working step and the pre-aging step as taught by Mirzakhani. Ans. 4–5. However, we are persuaded by Appellants’ reply made on page 4 of the Reply Brief. Therein, Appellants state that the Examiner’s analysis ignores the plain language of the claims. Appellants explain that using the word “comprising” does not allow the Examiner to ignore the clear requirement of the claims that the aluminum is solutionized and then cold worked to reach its final gauge, and then first thermally treated, after which the second thermally treating step is accomplished. Reply Br. 4. We agree. The additional cold rolling step after the first pre-aging step (first thermal treatment) in Mirzakhani does not satisfy step (a) of claim 1, because the aluminum alloy is not at its final gauge after the pre-aging step and prior to the final aging step Appeal 2018-007539 Application 14/470,712 6 (the second thermally treating step in claim 1) due to the second cold rolling step in Mirzakhani. Spectrum Intern., Inc. v. Sterilite Corp., 164 F. 3d 1372, 1379–1380 (holding the word “comprising” cannot be used to abrogate claim limitations); see also, Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed. Cir. 2001 (“[t]he open-ended transition ‘comprising’ does not free the claim from its own limitations.”). In view of the above, we reverse Rejection 1. DECISION Rejection 1 is reversed. Rejections 2 and 3 are summarily affirmed (see footnote 2, supra). TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). ORDER AFFIRMED