Ex Parte Allely et al

Patent Trial and Appeal Board

Mar 4, 2019

14413965 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/413,965 01/09/2015
23280 7590 03/06/2019
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Christian Allely
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
631.1027 9547
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN ALLEL Y, ASTRID COFFIGNY-GREGOIRE,
LAURENCE DOSDAT, and STEPHANE MOREL
Appeal2019-001019
Application 14/413,965
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a Non-Final Action
dated November 16, 2017 of claims 8, 9, 12-15, 19, and 26-29. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 14/413,965
The invention is directed to an assembly of an aluminum-based part
and a part made of steel provided with a coating made of a zinc-aluminum-
magnesium alloy, on at least one of the surfaces thereof placed so as to be in
contact at least partially with the aluminum-based part. Spec. ,r 1. Claim 8
is illustrative of the subject matter on appeal and is reproduced below:
8. An assembly comprising:
an aluminum-based element; and
a steel element provided on at least one of the surfaces
thereof having a metal coating made of a zinc-aluminum-
magnesium alloy including from 2.3% to 3.3% by weight of
magnesium, from 3.6% to 3.9% by weight of aluminum, a
remainder of the metal coating being zinc and inevitable
impurities;
the coated surface of the steel element being in at least
partial contact with the aluminum-based element.
Appellant1 requests review of the following rejections from the
Examiner's Final Office Action:
I. Claim 8 rejected under 35 U.S.C. § 103 as unpatentable over
Strom (EP 2 141 255 Al, published January 6, 2010).
II. Claims 8, 9, 12-15, 19, and 27-29 rejected under 35 U.S.C.
§ 103 as unpatentable over Strom and Shakhpazov (RU 24 70088, published
December 20, 2012 and relying on an English machine translation dated
October 31, 2017).
III. Claims 9, 12-15, 19, and 27-29 rejected under 35 U.S.C. § 103
as unpatentable over Strom and Honda (US 2010/0304183 Al, published
December 2, 2010).
1 ARCELORMITTAL INVESTIGACION Y DESARROLLO, S.L. is the
Applicant/ Appellant. ARCELORMITTAL is identified as the real party in
interest. App. Br. 3.
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IV. Claim 26 rejected under 35 U.S.C. § 103 as unpatentable over
Strom and Urushihara (US 2009/0011269 Al, published January 8, 2009).
V. Claim 26 rejected under 35 U.S.C. § 103 as unpatentable over
Strom, Shakhpazov, and Urushihara.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we affirm the Examiner's prior art rejections of claims 8, 9, 12-
15, 19, and 26-29 for the reasons presented by the Examiner. We add the
following for emphasis.
Claim 8 (Rejections I and 11}2
Claim 8 is directed to an assembly comprising an aluminum-based
element and a steel element, where the steel element has on at least one of
the surfaces thereof a metal coating made of a zinc-aluminum-magnesium
alloy. The metal coating includes from 3.6% to 3.9% by weight of
aluminum.
In Rejection I, the Examiner finds Strom teaches an assembly
comprising an aluminum-based element and a steel element where a surface
of the steel element has a metal coating made of a zinc-aluminum-
magnesium alloy that differs from the claimed coating in that Strom's
coating has an aluminum content of 0.8 to 3.5 weight percent instead of the
2 Independent claim 8 is the sole claim addressed by Rejection I. See
generally App. Br. For Rejection II, Appellant presents arguments only for
independent claim 8 and does not argue any dependent claim separately. Id.
Accordingly, we select claim 8 as representative of the subject matter
addressed by Rejection II and limit our discussion to this claim as well.
Claims 9, 12-15, 19, and 27-29 stand or fall with claim 8.
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Application 14/413,965
claimed aluminum content of from 3.6% to 3.9% by weight. Non-Final Act.
3; Strom ,r,r 10, 12. The Examiner determines a prima facie case of
obviousness exists because the claimed ranges are close. Non-Final Act. 4.
The Examiner finds that the aluminum contents of the claimed invention and
the prior art provide their respective coatings with good corrosion resistance
and surface qualities. Id. Thus, the Examiner concludes that one of ordinary
skill in the art would have found it obvious to select an aluminum content
from within the values disclosed by Strom including those values which fall
so close to the presently claimed range as to have the same properties. Id.
In alternate Rejection II, the Examiner additionally relies on
Shakhpazov as disclosing a zinc based coating for steel elements comprising
0.84 to 5.24 weight% aluminum and 0.6 to 3.74 weight% magnesium that
exhibits increased hardness, corrosion resistance, and quality at a reduced
cost and including reduced dross formation. Non-Final Act. 7; Shakhpazov
4. The Examiner determines that it would have been obvious to one skilled
in the art to use Shakhpazov's zinc based coating as the zinc coating on
Strom's member in view of Shakhpazov's teachings. Non-Final Act. 7.
With respect to Rejection I, Appellant argues that the Examiner relied
on impermissible hindsight in determining that Strom's aluminum content
range was sufficiently close to establish a prima facie case of obviousness.
App. Br. 5; Reply Br. 2--4. Citing In re Patel, 566 F. App'x 1005 (Fed. Cir.
2014), Appellant further argues that the Examiner did not identify any
teaching in Strom that shows that the end points of Strom can be flexibly
applied, did not show that the end points of Strom are not meaningful, and
did not show that one of skill in the art would have known to discard the
limits set by Strom. App. Br. 5, 9; see Patel, 566 F. App'x at 1009 (holding
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that a reference disclosing a range of 0.5 to 25 weight percent cannot
establish a prima facie case of obviousness of a range of 26 to 80 weight
percent "because the ranges do not overlap and the prior art does not teach
that a broader range would be appropriate."). Absent this evidence,
Appellant contends that Strom does not render the "from 3 .6% to 3 .9% by
weight of aluminum" recited in claim 8 obvious. App. Br. 6. Appellant
additionally argues that the fact that both the amounts provided for by the
claimed invention and by the prior art provide the coating with good
corrosion resistance and surface qualities is insufficient to establish
obviousness of the claimed aluminum content over Strom's range. App. Br.
10.
Appellant's arguments do not persuade us of Examiner error. As the
Examiner notes, the higher value of 3.5% by weight aluminum for Strom's
metal coating falls so close to the lower value of 3.6% by weight aluminum
of the claimed metal coating that one skilled in the art would have
reasonably expected the respective metal coatings to have the same
properties. Non-Final Act. 4; Ans. 9-10. While Appellant argues that there
is no teaching in Strom that shows that the end points of Strom can be
flexibly applied, did not show that the end points of Strom are not
meaningful, and did not show that one of skill in the art would have known
to discard the limits set by Strom (App. Br. 5, 9), we note that paragraph 12
of Strom describes the metal coating as a "ZnMg based alloy coating [that]
can for instance be a zinc alloy containing 0.8 - 3.5 weight% aluminium
[sic, aluminum] and 0.8 - 10.0 weight% magnesium" (emphasis added).
Thus, Strom is describing a preferred metal coating for the disclosed
assembly. This disclosure would suggest to one skilled in the art that the
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end points, and particularly, the upper end point, of Strom's aluminum
content range are not critical and, thus, one of skill in the art would have
reasonably expected similar behavior above 3.5 wt.% aluminum for the
same purpose Strom discloses.
With respect to Rejection II, Appellant argues Shakhpazov does not
provide a reason for one of ordinary skill in the art to select the Al and Mg in
the amounts recited in instant claim 8 and modify Strom accordingly. App.
Br. 17-18.
We are also unpersuaded of Examiner error by this argument.
Appellant's arguments do not adequately address the rejection the Examiner
presents. As the Examiner explains, Shakhpazov discloses zinc-based
coatings for the protection of steel where the coatings comprise 0.84 to 5.24
weight% aluminum and exhibit increased hardness and corrosion resistance.
Non-Final Act. 7; Shakhpazov 4. Shakhpazov also discloses that
[t]he low plasticity of the coating, caused by the insufficient
aluminum content in the melt, reduces the moldability of the
resulting coated material, since with sufficiently deep drawing
required for the manufacture of certain automotive as well as
certain building components, microcracks appear in the coating,
which reduce the corrosion resistance of the coating.
Shakhpazov 2. Thus, based on this disclosure, one skilled in the art would
have reasonably expected that increasing the aluminum content in Strom's
metal coating, to the extent taught by Shakhpazov, would have resulted in a
suitable moldable metal coating for Strom's assembly and that the improved
metal coating would have a desirably improved corrosion resistance.
Given these disclosures, Appellant has not distinguished the claimed
invention from the teachings of Strom alone or in combination with
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Shakhpazov. Therefore, Appellant's arguments do not point to error in the
Examiner's conclusion of obviousness.
Appellant contends that the data from Tables 1 (inventive Sample 3)
and 2 (inventive Sample 4) of the Specification unexpectedly show that
coatings having the claimed amounts of magnesium and aluminum have
improved corrosion resistance and galvanic coupling resistance. App. Br.
12-13; Spec. ,r,r 37-38.
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
Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
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 supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
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on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After weighing Appellant's evidence in support of patentability, we
agree with the Examiner's determination that a preponderance of the
evidence weighs in favor of obviousness. Ans. 11-13.
We first note that it is not clear that the showing distinguishes the
claimed invention from the closest prior art (Strom).
Further, as both Appellant and the Examiner recognize, the data
shown in Tables 1 and 2 are for a single inventive coating composition
having 3.7% aluminum and 3.0% of magnesium. Ans. 13; App. Br. 12.
Appellant has not adequately explained why this single composition is
representative of the broad scope of Ag alloy compositions claimed so as to
provide an adequate basis to support a conclusion that other embodiments
falling within the claim will behave in the same manner. Thus, the showing
is not reasonably commensurate in scope with the claim.
Further, even if the data is considered, we agree with the Examiner's
determination that one of ordinary skill in the art can only observe from this
data that the combined increase in magnesium and aluminum results in an
increase in corrosion protection under a particular set of testing conditions
and, thus, provides an insufficient basis for concluding unexpected
improvement for the claimed aluminum content because the effect of the
aluminum and magnesium cannot be separated. Ans. 12.
On this record, Appellant has not adequately explained why the
evidence shows the claimed aluminum content would have been unexpected
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by one of ordinary skill in the art and that the testing is reasonably
commensurate in scope with the claims.
Accordingly, we affirm the Examiner's prior art rejections of claim 8
(Rejection I) and of claims 8, 9, 12-15, 19, and 27-29 (Rejection II) for the
reasons presented by the Examiner and given above.
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Claim 9 (Rejection 111}3
Claim 9 requires the metal coating to include one or more additional
elements selected from among Si, Sb, Pb, Ti, Ca, Mn, Sn, La, Ce, Cr, Ni or
Bi.
Recognizing that Strom does not disclose the additives of claim 9, the
Examiner finds Honda discloses Pb, Sb, Si, Sn, Mn, Ni, Cr, Ca, Ti, and Bi as
known additives for zinc-aluminum-magnesium corrosion resistant coatings
that are applied to steel elements useful in automobile construction. Non-
Final Act. 5; Honda ,r 132. The Examiner concludes the one of ordinary
skill in the art would have found it obvious to add one or more of the
elements disclosed by Honda to Strom's zinc based coating to improve the
corrosion resistance and workability of Strom's zinc-magnesium coatings
for steel sheets in view of Honda's teachings.
Appellant argues that Honda would not lead one skilled in the art to
the claimed aluminum content. App. Br. 15. Appellant further argues that
there is no reason why one of ordinary skill in the art would replace the
ZnMg coating of Strom with the ZnAlMgSi coating of Honda because Strom
does not desire the formation of Mg2Si as desired in Honda. Id. at 16.
Appellant's arguments are unpersuasive because they are premised on
a combination where Strom's metal coating is replaced by Honda's metal
coating. However, that is not the rejection presented by the Examiner. Non-
Final Act. 5; Ans. 13. The rejection clearly states that the combination is
3 For Rejection III, Appellant does not argue any claim separate from the
other. See generally App. Br. Accordingly, we select claim 9 as
representative of the subject matter addressed by Rejection III and limit our
discussion to this claim. Claims 12-15, 19, and 27-29 stand or fall with
claim 9.
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modifying Strom's metal coating in view of the teachings of Honda. Thus,
Appellant's arguments do not point to error in the Examiner's conclusion of
obviousness.
Accordingly, we affirm the Examiner's prior art rejection of claims 9,
12-15, 19, and 27-29 for the reasons presented by the Examiner and given
above.
Claim 26 (Rejections VI and V) 4
Claim 26 requires that the coated surface of the steel element is in at
least partial contact with the aluminum-based element via a layer of adhesive
or sealant having a thickness of less than 5mm.
The Examiner finds Strom discloses that it is known to use sealants to
join aluminum and zinc coated steels but does not disclose a specific
material or material thickness. Non-Final Act. 6; see Strom ,r 3. The
Examiner finds Urushihara, directed to an assembly made from steel and
aluminum elements, discloses joining of aluminum and steel sheet materials
using an organic coating in a thickness of approximately 0.1 to 10 µm to
suppress corrosion resulting from the joining of dissimilar metals. Non-
Final Act. 6; Urushihara ,r,r 1,202,203,211. The Examiner determines that
it would have been obvious to one skilled in the art to use Urushihara's
organic coating between the aluminum and steel sheets of Strom's assembly
to suppress corrosion from contact of dissimilar metals. Non-Final Act. 7.
4 We address both rejections together because the Examiner relies on the
reference to Urushihara in both rejections to address the claim's limitations.
Non-Final Act. 6, 8-9.
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Appellant's arguments for these rejections are premised on Strom or
Strom in combination with Shakhpazov not rendering the subject matter of
claim 8 obvious to one skilled in the art. App. Br. 16-17, 19. However, this
is not the case for the reasons given above.
Therefore, Appellant has not pointed to error in the Examiner's
determination of obviousness for this rejection.
Accordingly, we affirm the Examiner's prior art rejections of claim 26
for the reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 8, 9, 12-15, 19, and 26-
29 under 35 U.S.C. § 103 are affirmed.
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)(l )(iv).
AFFIRMED
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