CONSTELLIUM FRANCE

Patent Trials and Appeals Board

Nov 13, 2020

2020002045 (P.T.A.B. Nov. 13, 2020)

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.
14/434,465 04/09/2015 Joost Michel Van Kappel 2901683-291000 5505
84331 7590 11/13/2020
McBee Moore & Vanik, IP, LLC
7900 Westpark Drive, Suite A100
McLean, VA 22102
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
docketing@mmviplaw.com
eofficeaction@appcoll.com
smcbee@mmviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOOST MICHEL VAN KAPPEL, CEDRIC GASQUERES,
KRISTIN ULLA PIPPIG SCHMID, and
MARIA BELEN DAVO GUTIERREZ
Appeal 2020-002045
Application 14/434,465
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–8, 10, 11, 14, 16–20, and 23–28.2 We

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Constellium Issoire.
Appeal Brief (“Appeal Br.”) filed October 14, 2019, 3.
2 Pending claim 1 has been withdrawn from consideration and is not before
us on appeal. Non-Final Office Action (“Non-Final Act.”) dated March 14,
2019.
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2
have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
October 20, 2020.3
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a method of manufacturing a vacuum
chamber element from an aluminum alloy. Claim 14. Appellant discloses
that vacuum chamber elements are used for the manufacture of integrated
electronic circuits using semiconductors, flat display screens, and solar
panels. Specification (“Spec.”) filed April 9, 2015, 1:12–14.4 These elements
are made by machining and surface treating aluminum alloy plates which,
Appellant teaches, must have certain properties, including ultimate tensile
strength of at least 260 MPa, homogeneity throughout their thickness, low
residual stress, low porosity, and corrosion resistance. Id. at 1:18–31.
Appellant further discloses that the aluminum plates and the surface
treatments can be improved to improve the vacuum chamber element
properties, especially corrosion resistance and mechanical properties
throughout the entire thickness. Id. at 2:13–14.
Claim 14, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
14. Method of manufacturing a vacuum chamber element
wherein said method comprises successively:

3 A written transcript of the oral hearing will be entered into the record upon
its availability.
4 This Decision also cites to the Examiner’s Answer (“Ans.”) dated
November 21, 2019, and the Reply Brief (“Reply Br.”) filed January 16,
2020, and the Declaration under 37 C.F.R. § 1.132 of Joost Van Kappel
(“Decl.”) filed June 13, 2018.
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a. casting a rolling slab made of an aluminum alloy,
comprising in weight%, Si: 0.4–0.6; Mg: 0.4–0.7; Ti : 0.01–<
0.15, Fe: 0.05–0.25; Cu<0.04; Mn< 0.04; Cr: 0.02–< 0.1; Zn<
0.04; other elements< 0.05 each and < 0.15 in total, the rest
aluminum,
b. optionally, homogenizing said rolling slab,
c. rolling said rolling slab at a temperature above 450°C
to obtain a plate having a thickness at least equal to 10 mm,
d. carrying out solution heat treatment of said plate, and
quenching said plate,
e. after solution heat treatment and quenching, stress-
relieving said plate by controlled stretching with permanent
elongation of 1 to 5%,
f. aging the stretched plate,
g. machining the aged plate into a vacuum chamber
element, and
h. surface treatment of the vacuum chamber element,
comprising degreasing and/or pickling, and anodizing at a
temperature of between 10 and 30°C with a solution comprising
100 to 300 g/l of sulfuric acid and 10 to 30 g/l of oxalic acid
and 5 to 30 g/l of at least one polyol to obtain an anodic layer
and hydrating the anodic layer in deionized water at a
temperature of at least 98°C optionally for a period of at least
about 1 hour.

REFERENCES
The Examiner relies on the following prior art:
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Name Reference Date
Treiber US 3,647,649 Mar. 7, 1972
Bartkowski et al.
(“Bartkowski”)
US 5,225,068 July 6, 1993
Magnusen et al.
(“Magnusen”)
US 6,911,099 B2 June 28, 2005
Wada et al. (“Wada”) US 2009/0050485 A1 Feb. 26, 2009
Kamat et al. (“Kamat”) US 2012/0055591 A1 Mar. 8, 2012
Gasqueres (“Gasqueres”) US 2012/0325381 A1 Dec. 27, 2012
Gasqueres (“WO 337”)5 WO 2011/089337 A1 July 28, 2011
Wong CN 1920109 A Feb. 28, 2007

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
I. Claims 10, 11, 25, and 26 under 35 U.S.C. § 112, second
paragraph, as indefinite; and
II. Claims 2–8, 10, 11, 14, 16–20, and 23–28 under 35 U.S.C.
§ 103(a) as unpatentable over Magnusen in view of Kamat,
WO 337, Gasqueres, Wada, Wong, Bartkowski, and Treiber.
OPINION
Rejection I: Indefiniteness
The second paragraph of 35 U.S.C. § 112 requires the specification to
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, second paragraph (2006). The second paragraph of § 112

5 The Examiner finds, without dispute, that Gasqueres is the English
equivalent of WO 337. Ans. 5. As such, the Examiner relies on WO 337 to
maintain the obviousness rejection, but refers to Gasqueres in support of this
obviousness rejection.
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contains two requirements: first, the claim must set forth what the applicant
regards as the invention, and second, it must do so with sufficient
particularity and distinctness, i.e., the claim must be sufficiently definite.
Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
“As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates,
claims are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). Exact precision, however, is not required. The test for determining
the question of indefiniteness may be formulated as whether the claims “set
out and circumscribe a particular area with a reasonable degree of precision
and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, an applicant is required to use language as precise
as the subject matter reasonably permits. Id.
The Examiner determines that each of claims 10, 11, 25, and 26
depends from claim 14 and recites one or more properties of “said plate.”
Ans. 3–4. However, the Examiner determines that it is unclear at what stage
or step of claim 14 the recited property applies to “said plate” or to the
surface treated vacuum chamber element. Id. at 4.
Appellant argues that, depending on the recited property, an ordinary
artisan would know at what stage in the method of claim 14 “said plate” is
referring to. Appeal Br. 9. In particular, Appellant contends that the
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properties of claims 10 and 11 refer to the homogeneity of properties
throughout the plate’s thickness, which makes it suitable for machining. Id.
As such, according to Appellant, an ordinary artisan would know that these
properties refer to “the aged plate which has gone through the step f) of
claim 14, and is ready to be machined.” Id. Similarly, Appellant contends
that claims 25 and 26 recite hydrogen bubble appearance times which are
achieved by anodizing conditions and a homogeneous plate structure. Id.
According to Appellant, an ordinary artisan would know that these hydrogen
bubble appearance times “refer to the plate which has already gone through
machining and surface treatment (including anodizing) step h).” Id.
Appellant’s arguments are not persuasive. Although Appellant
contends that the ordinary artisan would know at what stage in the method
“said plate” refers based on the property recited in claims 10 and 11,
Appellant does not explain why the properties recited in claims 10 and 11
would have been understood to only refer to the aged plate rather than the
quenched plate or the stress-relieved plate. Likewise with regard to claims
25 and 26, Appellant does not explain why the properties recited therein
would have been understood to only refer to the plate after the surface
treatment of step (h) of claim 14, rather than the quenched plate, the stress-
relieved plate, the aged plate, or the vacuum chamber element after step (g)
of claim 14.6 As the Examiner suggests, if “said plate” in claims 10 and 11 is
intended to refer to the plate after the aging step of claim 14, as Appellant
contends, then these claims should refer to “the aged plate.” Further, if “said
plate” in claims 25 and 26 is intended to refer to the vacuum chamber

6 Indeed, the aged plate is machined into a vacuum chamber element in step
(g) and is no longer referred to as a plate in step (h).
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element after step (h) of claim 14, then these claims should refer to “the
surface treated vacuum chamber element.”
Accordingly, we sustain the Examiner’s indefiniteness rejection of
claims 10, 11, 25, and 26.
Rejection II: Obviousness
We review the appealed rejection for error based upon the issues
Appellant identifies, 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
argued claims and each of Appellant’s arguments and evidence, we are not
persuaded of reversible error in the appealed rejection. We offer the
following for emphasis only.
For purposes of this appeal, to the extent that the rejected claims are
separately argued, we will address them separately consistent with 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Claim 14
The Examiner finds that Magnusen teaches a method of
manufacturing 6XXX aluminum alloy products comprising, sequentially,
casting a rolling slab of the aluminum alloy, homogenizing the rolling slab,
rolling the slab at a temperature above 450°C to obtain a plate have a
thickness of at least 10 mm, solution heat treating and quenching the plate,
stress relieving the plate by controlled 1–3% stretching, aging the stretched
plate, and machining the aged plate. Ans. 5–6. The Examiner acknowledges
that Magnusen fails to teach the recited aluminum alloy composition and
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that the aged plate is machined into a vacuum chamber element. Id. at 6.
However, the Examiner finds that Kamat teaches a variety of 6XXX
aluminum alloys and two processes for producing a variety of products. Id.
at 8–9. The Examiner further finds that Gasqueres teaches the manufacture
of 6XXX aluminum alloy products, such as vacuum chamber elements used
in the integrated circuit manufacture, wherein the alloy composition, in wt%,
includes Si: 0.5–1.5, Mg: 0.5–1.5; Fe< 0.3; Cu< 0.2; Mn< 0.8; Cr< 0.10; Ti<
0.15, other elements< 0.05 each and < 0.15 in total, the rest aluminum. Id. at
9–10. The Examiner concludes that it would have been obvious to have used
Magnusen’s process to produce vacuum chamber elements from
Gasqueres’s 6XXX aluminum alloy, wherein Kamat teaches that 6XXX
alloy products, including Gasqueres 381’s alloys, may be manufactured in
processes similar to Magnusen’s. Id. at 10.
The Examiner further acknowledges that Magnusen, as modified in
view of Kamat and Gasqueres, fails to teach surface treating the vacuum
chamber element, comprising degreasing and/or pickling, and anodizing.
Ans. 10. The Examiner finds that Wada teaches surface treating a machined
aluminum alloy component, such as a vacuum chamber element, comprising
degreasing and/or pickling, and anodizing to form an anodic film over the
component’s surface which is suitable for use in high-temperature corrosive
environments. Id. at 11. The Examiner also finds that Wada teaches use of
an anodizing solution containing at least one of oxalic acid, formic acid,
sulfamic acid, phosphoric acid, phosphorous acid, boric acid, nitric acid, and
phthalic acid. Id. In addition, the Examiner finds Wong teaches a process for
forming a hard anodic film on aluminum sectional material by anodizing in
an electrolyte solution composed of 250–350 g/l sulfuric acid, 1–3 g/l oxalic
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acid, 10–20 g/l glyoxylic or hydroacetic acid, and 10–20 g/l glycerol or
malonic acid. Id. at 12. The Examiner concludes that it would have been
obvious to have modified Magnusen’s method, as modified in view of
Kamat and Gasqueres, to surface treat the vacuum chamber element by
degreasing and/or pickling to clean the machined aluminum surface,
followed by anodizing to form a hard anodic layer that is resistant to
corrosive environments as Wada suggests. Id. The Examiner further
concludes that it would have been obvious to have performed the anodizing
step, using an anodizing solution including sulfuric acid, oxalic acid, and
glycerol within the amounts recited in claim 14 because Wada teaches
anodizing in an aqueous solution containing oxalic acid is
suitable for forming members to be used in a high-temperature
corrosive atmosphere, wherein [Wong] teaches anodizing in an
electrolyte composed of 250–350 g/1 sulfuric acid, 1–3 g/1
oxalic acid, 10–20 g/1 glyoxylic acid or hydroacetic acid and
10–20 g/1 glycerol.
Id. Although Wong fails to teach that the anodizing solution contains 10–30
g/l oxalic acid, the Examiner determines that this amount does not
patentably distinguish over the prior art because it is merely a change in
concentration and has not been shown to be a difference in kind, rather than
degree. Id.
Still further, the Examiner acknowledges that Magnusen’s method,
modified in view of Kamat, Gasqueres, Wada, and Wong, fails to teach
hydrating the anodic layer in deionized water at a temperature of at least
98°C for at least about 1 hour. Ans. 14. However, the Examiner finds that
Bartkowski teaches compacting an anodic layer formed on an aluminum
alloy part in two process stages, wherein in the first process stage, the part is
treated with a solution of cobalt and nickel fluoride in completely
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desalinated water, and in the second process stage, the part is treated in
completely desalinated water with a coating inhibitor at a temperature of
about 70–98°C for about 50 minutes. Id. The Examiner further finds that
Treiber teaches treatment with hot or boiling water is typically used for clear
(undyed) surfaces, wherein the water is ideally deionized. Id. at 15. The
Examiner concludes that it would have been obvious to further modify
Magnusen’s modified method to include hydrating the anodic layer because
Bartkowski teaches sealing the anodized surface of aluminum alloys
provides harder, more abrasion-resistant surfaces of greater resistivity while
minimizing smut formation, and Treiber teaches doing so ideally requires
deionized water. Id.
Appellant argues that the applied prior art fails to teach the use of a
solution containing 10–30 g/l oxalic acid as recited in claim 14. Appeal Br.
11. In particular, Appellant contends that the ordinary artisan would have no
motivation to change the amount of oxalic acid used in Wong, i.e., 1–3 g/l,
to the recited amount, i.e., 10–30 g/l. Id. Appellant further contends that the
method of claim 1 with the advantageous surface treatment method in
combination with the recited alloy composition “leads to the unexpected and
superior result, in particular in terms of corrosion resistance, homogeneity of
properties throughout the thickness and machinability.” Id.
Appellant’s argument as to the amount of oxalic acid used in the
anodizing solution does not persuasively identify reversible error. We note
that in contrast to the claimed invention, Wong’s solution includes 10–20 g/l
glyoxylic or hydroacetic acid in addition to sulfuric acid, oxalic acid, and
glycerol as recited in claim 14. Moreover, Wada teaches that any of a variety
of acids may be used, alone or in combination, to anodize an aluminum alloy
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vacuum chamber element including oxalic acid, and specifically uses a 25
g/l oxalic acid solution. Wada ¶ 39 and Table 1. Although Appellant
contends that the anodizing solution, including the recited amount of oxalic
acid, yields unexpected and superior results, Appellant fails to direct our
attention to any evidence or persuasive technical reasoning that the amount
of oxalic acid is responsible or critical for such results. Indeed, we are aware
of no evidence comparing anodized elements using different amounts of
oxalic acid, both inside and outside the range of 10–30 g/l. Thus, given that
Wada teaches an amount of 25 g/l oxalic acid may be used, a preponderance
of the evidence supports the Examiner’s position that it would have been
obvious to increase the amount of oxalic acid as taught in Wong with a
reasonable expectation of success.
Appellant next argues that, similar to the holding in In re Waymouth,
499 F.2d 1273 (CCPA 1974), the claimed composition is critical for the
achievement of desired properties, such as corrosion resistance, consistency
of properties, and machinability, whereas Gasqueres teaches a composition
with a much broader range of elements. Appeal Br. 12–13, citing Decl. ¶¶ 5,
6. Appellant contends that while Gasqueres lists a Cr content <0.1, it also
teaches that the absence of Cr is favorable. Id. at 13. As such, Appellant
asserts that the ordinary artisan would be motivated to omit Cr. Id. In
contrast, Appellant teaches that Cr is necessary as the addition of a small
amount has a positive effect on the granular structure. Id. Appellant also
asserts that neither of Gasqueres’ Alloys 11 nor 21 contain Si in the claimed
range, and Alloy 21 contains amounts of Cu, Mn, and Mg outside the
claimed ranges for these elements. Id.
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Appellant’s argument as to aluminum alloy composition does not
persuasively identify reversible error. Initially, we note that there is no
dispute that Gasqueres discloses a 6XXX aluminum alloy composition
whose elemental composition ranges encompass and/or overlap the claimed
elemental composition ranges. This fact alone is sufficient to demonstrate
obviousness of the claimed aluminum alloy composition. A prima facie case
of obviousness arises when the ranges of a recited composition overlap the
ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003). “[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption of
obviousness.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1322 (Fed. Cir. 2004).
Moreover, where the prior art discloses a range, and the claimed
invention falls within that range, the burden shifts to Appellant to establish
that (1) the prior art taught away from the claimed invention, In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997); (2) there were new and unexpected
results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990); or (3) there are other pertinent secondary considerations,
Galderma Laboratories v. L.P. Tolmar, Inc., 737 F.3d 731 (Fed. Cir. 2013).
Here, Appellant’s argument and evidence fails to carry this burden.
Although Gasqueres may prefer the absence of Cr, this fact does not negate
Gasqueres teaching that Cr may be present up to 0.1 wt%. 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
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art reference’s disclosure is not limited to its examples). For the same
reason, Appellant’s focus on Gasqueres’ Alloys 11 and 21 is equally
unpersuasive because Gasqueres’ disclosed ranges for Si, Cu, Mn, and Mg
all overlap the claimed ranges for these elements.
Appellant next argues that there is no reason to turn to Magnusen
because Magnusen is directed to improving alloy properties for aerospace
applications, rather than for vacuum chamber elements. Appeal Br. 13–14.
Appellant contends that Magnusen desires improved fatigue crack growth
rate and reduced occurrence of reduced density features, whereas the
invention desires improved corrosion resistance, consistency/homogeneity of
properties throughout the element’s thickness, and machinability. Id. at 14.
As such, Appellant asserts that the ordinary artisan attempting to improve
vacuum chamber elements would not be motivated to turn to Magnusen’s
teachings for aerospace applications. Id. Appellant further contends that
Magnusen is directed to different 6XXX alloys than the claimed
compositions, and only mentions Alloy 6013. Id. Appellant asserts that the
ordinary artisan would realize that Magnusen’s process parameters are
specific to Alloy 6013, and not directly applicable to just any 6XXX alloy.
Id., citing Decl. ¶ 4.
Appellant’s argument that an ordinary artisan would not turn to the
teachings of Magnusen to manufacture a vacuum chamber element is
unpersuasive of reversible error. This argument is tantamount to arguing that
Magnusen is non-analogous prior art. A reference is analogous art if it is
either in the field of the applicant’s endeavor, or is reasonably pertinent to
the particular problem with which the inventor was concerned. In re Kahn,
441 F.3d 977, 987 (Fed. Cir. 2006). However, Magnusen is in the same field
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of endeavor as Appellant in that both are directed to the manufacture of parts
from cast 6XXX aluminum alloy.
Moreover, Magnusen is reasonably pertinent to the particular problem
with which the Inventors were concerned, in that Magnusen teaches a
process for manufacture of 6XXX aluminum alloy parts. In this regard,
Appellant has not shown that Magnusen’s process for the manufacture of
such parts for aerospace applications differs materially from the claimed
method of claim 14 for the manufacture of 6XXX aluminum alloy vacuum
chamber parts. In addition, Magnusen’s process is not limited to exemplified
Alloy 6013, but rather teaches that the process can improve 6XXX alloys
generally. Magnusen 2:64 (“the 6XXX alloy product”); 4:26–27 (“core of
6013 or other 6XXX alloy”); 4:45–46 (“because 6XXX alloys are
considered to have good corrosion resistance”); 6:35 (“alloy 6013 or other
6XXX alloy”); see also 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 Examiner also finds, without dispute, that Kamat teaches a
similar process to Magnusen’s to produce parts in a wide variety of
industries from any 6XXX aluminum alloy, including alloys of both
Magnusen and Gasqueres. Ans. 8–10; Kamat ¶¶ 104, 129. As the Examiner
finds (Ans. 26), although Magnusen fails to teach a 6XXX aluminum alloy
as recited in claim 14, both Kamat and Gasqueres teach alloys within the
scope of claim 14. Thus, at a minimum, the ordinary artisan would be
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directed to use Magnusen’s process for producing 6XXX aluminum alloy
products such as those of Gasqueres because Kamat teaches that alloys of
both Magnusen and Gasqueres may be produced in a similar process.
Similar to the above argument regarding Magnusen, Appellant also
argues that there is no reason to combine seven references, only two of
which relate to the manufacture of vacuum chamber elements, because they
disclose other features which could not be combined and contradict the
claimed method. Appeal Br. 15. In particular, Appellant contends that not
only are Magnusen and Gasqueres directed to different fields and different
compositions, Gasqueres teaches omitting a rolling step, as it leads to a cut
in cost, while maintaining high mechanical characteristics and low levels of
residual stresses. Id. at 16, citing Decl. ¶ 5. Appellant also contends that the
ordinary artisan would have been motivated to pick and choose different
concentrations and compounds for the anodizing solution from the teachings
of the remaining references, “all of which comprise different compounds and
different concentrations of the compounds and teach different methods for
different purposes in different fields.” Id. at 17. Appellant asserts that
Wada’s alloys contain at least 0.1 wt% Mn and only mentions anodization
with an electrolyte solution containing oxalic acid. Id. Appellant asserts that
Wong fails to teach or suggest that the anodization can be carried out on a
6XXX alloy and only has 1–3 g/l oxalic acid. Id. at 18. Appellant also
asserts that neither Bartkowski nor Treiber teaches their treatments may be
used on a 6XXX alloy. Id. As such, Appellant urges that nothing would have
prompted adaptation of Magnusen’s method to incorporate all four
references in a predictable manner to arrive at the claimed invention. Id.
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Appellant’s argument that an ordinary artisan would not have been
motivated to combine the teachings of the seven references as the Examiner
proposes fails to identify reversible error. Initially, we note that the
Examiner provides reasons for combining the references in the rejection.
Further, although teaching the omission of the rolling step, Gasqueres not
only recognizes that a rolling step as in Magnusen is known, but merely
teaches that the rolling step may be omitted to cut production costs, without
sacrificing mechanical properties. We note that Declarant states that he
would not have combined the preferred composition of Gasqueres (such as
composition 11) to Magnusen’s method because this composition “was
designed particularly for a method without a rolling step.” Decl. ¶ 5.
However, Declarant fails to provide either evidentiary support or persuasive
technical reasoning for this statement. Also, as discussed above, Gasqueres
is not limited to the preferred composition (such as Alloy 11). Therefore, we
are not persuaded that Gasqueres suggests that the rolling step must be
omitted in order to successfully produce the vacuum chamber element.
Turning to the remaining references, we note that Gasqueres teaches
that the usual anodizing processes may be performed on the machined
6XXX aluminum alloy plates to produce corrosion resistant anode layers.
Gasqueres ¶ 36. We also note that Wada, though not specifically naming
6XXX aluminum alloys, teaches anodizing aluminum alloys containing both
Si and Mg. Wada ¶ 11. Moreover, Wong teaches an anodizing electrolyte
solution that may be applied to aluminum sectional materials, without
restriction to any particular alloy composition. Wong also teaches that the
aluminum part may be degreased before anodizing and sealed after
anodizing. Similarly, Bartkowski and Treiber each teach their treatments
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may be applied to aluminum or aluminum alloy components, without
restriction to any particular alloy composition. Thus, for the reasons given
by the Examiner, a preponderance of the evidence supports the Examiner’s
proposed combination with a reasonable expectation of success.
Appellant further argues that the evidence in the Specification and the
Van Kappel Declaration demonstrates that the claimed invention, with the
claimed alloy composition and the claimed manufacturing process for a
vacuum chamber element, provides an unpredictable and surprising effect in
terms of improved corrosion resistance, homogeneity of properties
throughout the element’s thickness, and machinability. Appeal Br. 19–24. In
particular, Appellant contends that inventive alloys were compared to
Gasqueres’ Alloy 11 and 21. Id. at 19–20. Appellant asserts that the
breakdown voltage of alloys made according to the inventive method is
nearly doubled and the bubble test results are improved by a factor of 50
compared to Gasqueres products. Id. at 20–21. Appellant concludes that the
comparison alloys would not have reached the isotropic and homogeneous
grain size throughout the thickness or the bubble test results. Id. at 21.
Appellant also contends that the Specification discloses that inventive
Alloy A is more isotropic and homogeneous throughout its thickness than
reference Alloys B–D, which Appellant asserts are comparable to
Gasqueres’ alloys. Appeal Br. 21. Appellant contends that Alloy A also has
a lower level of internal stresses and higher bubble test times when anodized
according to the invention. Id. at 21–22. Appellant also contends that,
although only a single inventive example was tested, comparative alloys B–
D, as well as Gasqueres’ Alloys 11 and 21, having higher and lower
elemental amounts than claimed, were also tested. Id. at 24. Therefore,
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Appellant submits that the Specification evidence and the Van Kappel
Declaration provide a sufficient number of tests such that the ordinary
artisan would be able to determine a trend in the data. Id.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469–70 (Fed. Cir. 1997). The evidence of unexpected results
also must also be reasonably commensurate with the scope of the claims.
Peterson, 315 F.3d at 1330–31 (explaining that applicant may overcome a
prima facie case of obviousness by showing unexpected results but the
showing of unexpected results “must be commensurate in scope with the
claims which the evidence is offered to support” (internal quotes and citation
omitted)). “If an applicant demonstrates that an embodiment has an
unexpected result and provides an adequate basis to support the conclusion
that other embodiments falling within the claim will behave in the same
manner, this will generally establish that the evidence is commensurate with
scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011).
Having fully reviewed and considered Appellant’s evidence set forth
in the Specification and in the Van Kappel Declaration, we agree with the
Examiner that this evidence is insufficient to establish unexpected results for
the claimed invention. We first note that Appellant merely compared a
single alloy composition, Alloy A, within the broader ranges of claim 14’s
alloy composition, and Appellant has not persuasively demonstrated why
this single composition is commensurate in scope with claim 14. Spec. 11–
12, Table 1. Alloys B–D are all within the scope of Gasqueres’ alloy
composition ranges. Id. However, Appellant discloses that only Alloys A–C
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were processed the same, i.e., homogenized at a temperature higher than
540°C and hot rolled to a thickness of 35 mm, whereas Alloy D was
homogenized at a temperature higher than 575°C and hot rolled to a
thickness of 20 mm. Id. at 12:2–5. Moreover, Appellant discloses stress
profile data, bubble test data, and breakdown voltages only for Alloys A–C.
Id. at 15:4–5 and 16, Table 4.7
Although Appellant argues that the breakdown voltage of Alloy A
according to the inventive method and composition is nearly doubled,
Appellant fails to explain which Alloy and process combination the
breakdown voltage was compared to in arriving at that alleged result.
Indeed, Appellant boxes in the breakdown voltages of 2.0 and 2.3 for Alloy
A anodized in a Type II process at both 35 and 50 µm target layers,
respectively. We note that breakdown voltages for Alloys B and C were
even higher than for Alloy A when anodized in a Type II process, and
comparable when anodized in a Type I process. As such, Appellant’s
breakdown voltage data in the Specification is not persuasive of unexpected
results.
Further, although Appellant argues that the bubble test results of
Alloy A according to the inventive method and composition improved by a
factor of 50, Appellant fails to explain which alloy and process combination
the bubble test results were compared to in arriving at this alleged result.

7 Appellant discloses a bubble test comparison between a 102 mm thick
Alloy A plate and a 100 mm thick 6061 alloy plate (Spec. 17:6–15), but does
not discuss this comparison in either the Declaration or the Appeal and
Reply Briefs. Further, we note that Appellant neither discloses the 6061
alloy plate’s composition nor how it was produced. Accordingly, we need
not further address this comparative data on its merits.
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Again, Appellant boxes in the bubble test results of 2400 and 3000 for Alloy
A anodized in a Type II process at both 35 and 50 µm, respectively. We note
that bubble test results for Alloy C when anodized in a Type II process is
greater than for Alloy A at 35 µm. As such, Appellant’s bubble test data in
the Specification is not persuasive of unexpected results.
In addition, although Appellant asserts that Specification Table 3
shows that Alloy A has a more isotropic and homogeneous grain size
throughout its thickness that Alloys B–D, we note that Appellant fails to
establish that these results would have been unexpected to those skilled in
the art. Moreover, contrary to Appellant’s assertion, although the anisotropy
indices, AIl, for Alloy A are lower at all positions than any of Alloys B–D,
we note that the Δ ll (90°) is actually lower for Alloy D than for Alloy A. These
results indicate that Alloy D, while more anisotropic, is more homogeneous
throughout its thickness than Alloy A. As such, Appellant’s anisotropic and
homogeneity data in the Specification is not persuasive of unexpected
results.
Finally, turning to the Van Kappel Declaration, Declarant states that
when compared to Gasqueres’ Alloys 11 and 21, Alloy A has a breakdown
voltage that is about doubled and bubble tests results that are improved by a
factor of 50. Decl. ¶ 6. However, we note that Declarant’s breakdown
voltage and bubble test data for Alloys 11 and 21 are the result of anodizing
these alloys in a Type I process, rather than a Type II process. Id. Thus,
Appellant does not present test data comparing Gasqueres’ alloys to Alloy
A, all processed in the same way, thus preventing any conclusion that the
claimed alloy composition yields unexpected results. Although Appellant
appears to contend that it is the combination of the claimed alloy
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composition and the claimed process that yields unexpected results,
Appellant’s Specification and Declaration evidence is insufficient to
demonstrate that it is the combination of composition and process, rather
than composition or process, that yields unexpected results. In particular, we
note that Declarant states that he would not have reached the unexpected
results if he had tried Alloys 11 or 21. Id. ¶ 5. However, with regard to the
process, and in particular the surface treatment, Declarant merely states that
this surface treatment provides unexpected results without presenting any
data in support thereof. Id. ¶ 7. Therefore, we conclude, as did the Examiner,
that Appellant’s Specification and Declaration evidence fails to demonstrate
unexpected results commensurate in scope with the claims. Appellant’s
evidence regarding unexpected results does not outweigh the evidence
supporting the Examiner’s obviousness position.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 14. Consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2018), because
Appellant does not separately argue dependent claims 2, 4–8, 14, 17, 23, and
24, we likewise sustain the Examiner’s obviousness rejection as to these
dependent claims.
Claims 10, 11, 25, and 26
Claim 10 depends from claim 14 and further requires that the plate has
a variation in the thickness of the average linear intercept length in the plane
L/ST less than 30% “and/or” an anisotropy index at mid-thickness less
than 3.
Claim 11 depends from claim 14 and further requires that the plate has
a thickness of 10–60 mm and a density of stored elastic energy Wtot of less
than 0.04 kJ/m3.
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Claim 25 depends from claim 14 and further requires that the plate has
a variation of hydrogen bubble appearance times in a 5% hydrochloric acid
solution between ½ thickness and the surface of less than 20%.
Claim 26 depends from claim 14 and further requires that the plate
has, at mid-thickness, a hydrogen bubble appearance time in a 5%
hydrochloric solution greater than 1800 minutes at a thickness of 10–60 mm
or at least 180 minutes on the surface at a thickness greater than 60 mm.
The Examiner finds that the Magnusen combination teaches similar
steps as claimed, and determines that “[s]imilar processes can reasonably be
expected to yield products which inherently have the same properties.” Ans.
14; see also id. at 37–40.
Appellant argues that the Examiner “has not met its high burden of
providing a basis to reasonably support that the alleged properties and
process necessarily flows from the composition taught by combining 7
references.” Appeal Br. 26, citing Par Pharm., Inc. v. TWI Pharm., Inc., 773
F.3d 1186, 1195 (Fed. Cir. 2014). Appellant contends that because
Gasqueres discloses a broad composition without any motivation to select
the claimed composition and the Specification states that its improved
properties are due to the claimed composition, the Examiner fails to even
demonstrate that the seven combined prior art references teach or suggest the
claimed product, much less meet this high burden of providing a basis to
reasonably support that the characteristics of claim 10 necessarily flow from
the composition as taught by the prior art. Id. at 27. Appellant also contends
that Alloy A has a lower level of internal stresses within the claimed range,
while Alloys B–D do not. Id. at 29–30.
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Appellant’s arguments as to dependent claims 10, 11, 25, and 26 fail
to identify reversible error. As discussed above, a preponderance of the
evidence supports the Examiner’s position that the proposed combination of
prior art would result in a process as claimed using an alloy composition as
claimed. Because the properties recited in these dependent claims are a
direct result of performing the recited method steps of claim 14 on an alloy
composition as also recited in claim 14, those skilled in the art would have
reasonably expected that the proposed combination, which would perform
the same method steps on the same alloy composition, would necessarily
produce a product having the claimed properties.
Moreover, we note that claim 10 recites two properties in either the
conjunctive or the alternative, i.e., “and/or.” Appellant discloses that Alloy
D, which Appellant acknowledges corresponds to an alloy composition
within Gasqueres’ teaching, has a variation in the thickness of the average
linear intercept length in the plane L/ST less than 30%, i.e., 10%. Spec. 13,
Table 3.
Further, Appellant discloses that Alloy B, which Appellant
acknowledges corresponds to an alloy composition within Gasqueres’
teaching, has a density of stored elastic energy Wtot of 0.04 kJ/m3. Spec.
15:4. Also, Appellant does not disclose a density of stored elastic energy
value for Alloy D. Although claim 11 recites a density of stored elastic
energy Wtot of less than 0.04 kJ/m3, the value for Alloy B is sufficiently
close to this range such that those skilled in the art would have reasonably
expected alloy compositions within Gasqueres would have the property of
claim 11.
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With regard to claim 25, we note that Appellant’s Alloy A has a
variation of hydrogen bubble appearance times in a 5% hydrochloric acid
solution between ½ thickness and the surface of just over 20% ((2900-
2400)/2400=0.208) for a target layer thickness of 35 µm. Spec. 16, Table 4.
Therefore, we agree with the Examiner that the claimed properties are
the natural result of the combination of elements explicitly disclosed in the
prior art. Par Pharm., 773 F.3d at 1195–96.
Accordingly, we sustain the obviousness rejection of claims 10, 11,
25, and 26.
Claim 3
Claim 3 depends from claim 14 and further requires a Cr content of
0.02–0.04 wt.%.
The Examiner finds that Gasqueres teaches a vacuum chamber
element comprising a 6XXX aluminum alloy composition whose Cr content
is less than 0.10, which overlaps the amount recited in claim 3 and,
therefore, establishes a prima facie case of obviousness. Ans. 43.
Appellant argues that an ordinary artisan would not be motivated to
select a Cr content within the claimed range because Gasqueres teaches that
the absence of Cr is favorable. Appeal Br. 33. Appellant also reiterates the
assertion of unexpected results, in particular for Alloy A, whose Cr content
is 0.02 wt.%. Id.
For the same reasons discussed above, Appellant’s evidence is
insufficient to establish unexpected results. Further as discussed above, there
is no dispute that Gasqueres discloses 6XXX aluminum alloy compositions
whose elemental ranges overlap those claimed, including the Cr content of
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claim 3. In such circumstances, absent a persuasive showing of unexpected
results, a prima facie case of obviousness exists. Peterson, 315 F.3d at 1329.
Claims 20, 23, 27, and 28
Claim 20 depends from claim 14 and further requires that the alloy
composition consists essentially of, in weight %, Si: 0.4–0.6; Mg: 0.4–0.7;
Ti : 0.01–<0.15, Fe: 0.05–0.25; Cu<0.04; Mn<0.04; Cr: 0.02–<0.1; Zn<0.04;
other elements <0.05 each and < 0.15 in total, the rest aluminum.
Claim 23 depends from claim 14 and further requires that the alloy
composition consists of, in weight %, Si: 0.4–0.6; Mg: 0.4–0.7; Ti : 0.01–
<0.15, Fe: 0.05–0.25; Cu<0.04; Mn<0.04; Cr: 0.02–<0.1; Zn<0.04; other
elements <0.05 each and < 0.15 in total, the rest aluminum.
Claim 27 depends from claim 14 and further requires casting a rolling
slab consisting essentially of an aluminum alloy, comprising, in weight %,
Si: 0.4–0.6; Mg: 0.4–0.7; Ti : 0.01–<0.15, Fe: 0.05–0.25; Cu<0.04;
Mn<0.04; Cr: 0.02–<0.1; Zn<0.04; other elements <0.05 each and < 0.15 in
total, the rest aluminum.
Claim 28 depends from claim 14 and further requires casting a rolling
slab consisting essentially of an aluminum alloy, consisting of, in weight %,
Si: 0.4–0.6; Mg: 0.4–0.7; Ti : 0.01–<0.15, Fe: 0.05–0.25; Cu<0.04;
Mn<0.04; Cr: 0.02–<0.1; Zn<0.04; other elements <0.05 each and < 0.15 in
total, the rest aluminum.
Appellant argues that “[t]he transitional phrase ‘consisting of’ in the
claim would exclude the presence of the other materials/elements within the
alloy.” Appeal Br. 34. Appellant also argues that “[t]he transitional phrases
‘consisting essentially of’ in the claim would exclude the presence of other
materials (besides the claimed elements) in the aluminum alloy set forth in
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26
the cited references that do not materially affect the basic and novel
characteristics of the claimed invention.” Id.; see also id. at 35, 36.
These arguments are not persuasive because Appellant neither
identifies any other materials present in Gasqueres alloy compositions nor
explains with any particularity how such other materials, if present,
materially affect the basic and novel characteristics of the claimed invention. 
In re Herz, 537 F.2d 549, 551-52 (CCPA 1976) (“it is necessary and proper
to determine whether [the] specification reasonably supports a construction”
that would exclude or include particular ingredients). Appellant has the
burden of showing that any materials not specifically claimed, but taught in
the applied prior art, would materially affect the basic and novel
characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 874
(CCPA 1964). Further, materials that are not disclosed in the Specification
as detrimental to the desired properties of a claimed composition are not
construed as materially affecting the basic and novel characteristics of a
claimed invention. Herz, 537 F.2d at 551-52; see also PPG Indus. v.
Guardian Indus. Corp., 156 F.3d 1351, 1354–57 (Fed. Cir. 1998) (Patentee
“could have defined the scope of the phrase ‘consisting essentially of’ for
purposes of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so.”).
Claim 16
Claim 16 depends from claim 14 and further requires that the at least
one polyol is selected from ethylene glycol, propylene glycol, and glycerol.
The Examiner finds that Wong teaches the inclusion of glycerol in the
anodizing electrolyte solution. Ans. 48.
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Appellant submits that the further defined polyol renders the claim
more commensurate in scope with the unexpected results set forth in the
Specification. Appeal Br. 36.
However, for the reasons discussed above, Appellant’s evidence is
insufficient to establish unexpected results. Further, we note that Appellant
does not direct our attention to any evidence that the selected polyol itself is
responsible for unexpected results. Appellant merely discloses comparing
the effect of 15 g/l glycerol with Alloy A only. Spec. 17, Table 5. In this
regard, we note that the inclusion of 10–20 g/l glycerol in the anodizing
solution was known as evidenced by Wong.
Claim 18
Claim 18 depends from claim 14 and further requires that the
hydration is carried out in two steps, a first step of a duration of at least 10
min at a temperature of 20 to 70°C and a second step of a duration of at least
about 1 hour at a temperature of at least 98°C.
The Examiner finds that Bartkowski teaches a two step hydration of
anodized surfaces of aluminum alloys to obtain a harder, more abrasive-
resistant surface of greater resistivity, wherein the first step has a duration of
at least 10 min at a temperature of 30°C and the second step has a duration
of at least 50 minutes at a temperature of about 98°C. Ans. 49.
Appellant argues that Bartkowski’s first step is not a hydration step,
but an oxide layer compaction step. Appeal Br. 37. Appellant further
contends that the claimed method, with the two hydration steps, yields
superior and unexpected results as set forth in the Specification and
Declaration. Id.
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However, for the reasons discussed above, Appellant’s evidence is
insufficient to establish unexpected results. As the Examiner finds,
Bartkowski teaches that the two steps, including compaction, are part of a
sealing method. Ans. 49. As the Examiner also finds (id. at 48), Appellant
describes the hydration alternatively as sealing. Appellant fails to explain
with any particularity how Bartkowski’s first step differs from the first
hydration step recited in claim 18. Therefore, Appellant’s arguments fail to
identify reversible error with regard to the Examiner’s obviousness rejection
of claim 18.
Claim 19
Claim 19 depends from claim 14 and further requires that the anodic
layer thickness is 20–80 µm.
Appellant argues that although Wada teaches an anodic layer
thickness range overlapping the range recited in claim 19, Bartkowski is
directed to compacting such layers that are relatively thin, i.e., 10–20 µm.
Appeal Br. 38. Appellant further contends that the claimed method, with the
claimed anodic layer thickness, yields superior and unexpected results as set
forth in the Specification and Declaration. Id.
However, for the reasons discussed above, Appellant’s evidence is
insufficient to establish unexpected results. Further, Appellant fails to
explain with any particularity why the teachings of Wada and Bartkowski
are incompatible, especially since Bartkowski’s anodic layer thickness range
is encompassed by Wada’s range. Moreover, we note that Bartkowski’s
range overlaps the claimed range or is sufficiently close so as to establish a
prima facie case of obviousness. Peterson, 315 F.3d at 1329. Therefore,
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Appellant’s arguments fail to identify reversible error with regard to the
Examiner’s obviousness rejection of claim 19.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject Claims 10,
11, 25, and 26 under 35 U.S.C. § 112, second paragraph, as indefinite, and to
reject claims 2–8, 10, 11, 14, 16–20, and 23–28 under 35 U.S.C. § 103(a) as
unpatentable over Magnusen in view of Kamat, Gasqueres 337, Gasqueres
381, Wada, Wong, Bartkowski, and Treiber is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10, 11, 25,
26
112, ¶ 2 Indefiniteness 10, 11, 25,
26

2–8, 10, 11,
14, 16–20,
23–28
103(a) Magnusen, Kamat,
Gasqueres 337,
Gasqueres 381,
Wada, Wong,
Bartkowski, Treiber
2–8, 10, 11,
14, 16–20,
23–28

Overall
Outcome
2–8, 10, 11,
14, 16–20,
23–28

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). See 37
C.F.R. 1.136(a)(1)(iv).
AFFIRMED