Ex Parte ASANO et al

Patent Trial and Appeal Board

Jan 30, 2019

13930685 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/930,685 06/28/2013
23474 7590 02/01/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Mineo ASANO
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.
2204.P0019US 4844
EXAMINER
WALCK, BRIAND
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINEO ASANO and YUSUKE YAMAMOTO
Appeal2018---003214
Application 13/930,685
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
March 20, 2017 decision finally rejecting claims 4 and 5 ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the Applicant UACJ Corporation, which is also identified as
the real party in interest (Br. 1 ).
Appeal2018-003214
Application 13/930,685
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to an aluminum alloy sheet comprising
a 5,000 series aluminum alloy sheet containing 1.0 to 6.0 mass% of
magnesium and an oxide coating (Abstract, Br. 2). The magnesium is
present in a solid solution state in a very uniform concentration, as set forth
in claim 4, which is reproduced below from the Claims Appendix to the
Appeal Brief:
4. An aluminum alloy sheet comprising a 5000 series
aluminum alloy sheet containing 1.0-6.0 mass% of Mg, the Mg
concentration in a solid-solution state that is present in an
outermost surface area of the aluminum alloy sheet varying in a
widthwise direction of the aluminum alloy sheet in the form of
a band having a width of a least 0.05 mm and a difference in the
concentration of Mg between adjacent bands is no more than
0.20 mass%, and an oxide coating provided thereon.
REJECTIONS
I. Claims 4 and 5 are rejected under 35 U.S.C. § I02(b) as anticipated by
or, in the alternative, under 35 U.S.C. § I03(a) as unpatentable over Uesugi. 2
II. Claims 4 and 5 are rejected under 35 U.S.C. § I02(b) as anticipated
by or, in the alternative, under 35 U.S.C. § I03(a) as unpatentable over
Moriyama. 3
2 Uesugi et al., US 2008/0289731 Al, published November 27, 2008.
3 Moriyama et al., JP 09-143602, published June 3, 1997 (both the Examiner
and Appellant refers to the machine translation of record).
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Application 13/930,685
III. Claims 4 and 5 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Kobayashi. 4
The obviousness-type double patenting rejections set forth in the Final
Action were withdrawn by the Examiner in light of a Terminal Disclaimer
filed by Appellant (Ans. 7) and are not, therefore, before us.
DISCUSSION
Rejection I. "A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation." In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)).
Appellant argues that U esugi does not disclose an aluminum sheet with the
claimed uniformity of magnesium concentration, which, according to
Appellant, manifests itself in an aluminum alloy sheet "that exhibits an
excellent surface quality without a band-like streaking pattern" (Br. 2-7).
In this regard, the Examiner finds that
[ r ]egarding the limitation "the Mg concentration in a solid-
solution state that is present in an outermost surface area of the
aluminum alloy sheet varying in a widthwise direction of the
aluminum alloy sheet in a form of a band having a width of
0.05 mm or more, and a difference in the concentration of Mg
between adjacent bands being 0.20 mass% or less," the alloy of
Uesugi exhibits a uniform pattern and good pit uniformity, with
no visible streaks, and is homogenized under the same
conditions as that of the instant specification (Uesugi, para
[0031-0040], Tables 2 and 3). When the structure recited in the
4 Kobayashi et al., EP 2 263 811 Al, published Dec 22, 2010.
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Application 13/930,685
reference is substantially identical to that of the claims, claimed
properties or functions are presumed to be inherent. Where the
claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by
identical or substantially identical processes, a prima facie case
of either anticipation or obviousness has been established (see
MPEP 2112.01 [R-3].) In the instant case, the aluminum alloy
sheet of U esugi would be expected to have the same or similar
properties as the instantly claimed aluminum alloy sheet
because Uesugi discloses the same or substantially the same
composition, structure, and method of manufacturing.
(Final Act. 5).
In response, Appellant provides a detailed explanation of why
U esugi' s method of production of its aluminum alloy sheet differs from the
methods used to produce the claimed alloy sheet (Br. 2-3). In particular,
Appellant argues that Uesugi requires a 60-300 second "hold" for the
product between a rough hot-rolling step and a finish hot-rolling step to
recrystallize the surface of the product (Br. 3, citing Uesugi ,r 27). Appellant
explains that the process to make the claimed aluminum alloy sheet does not
include this step (Br. 4 ). Appellant also explains that the process to make
the claimed aluminum alloy sheet requires homogenization at a temperature
less than the solidus temperature and at a temperature equal to or higher than
the solidus temperature -50°C for more than three hours to obtain the ingot,
whereas U esugi 's process uses a shorter time for temperatures in this range
or lower temperatures within this time range (id.).
Appellant provides evidence in the form of two Rule 132 Declarations
which report attempts to replicate Uesugi's Alloy D (which was the example
relied on by the Examiner). This evidence showed that Alloy D had band-
like streaking patterns, and also greater differences in magnesium
concentrations than allowed in the claims (Br. 5-7). According to
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Application 13/930,685
Appellant, this showed that the structure ofUesugi did not meet the
requirements of claim 4, in particular the claimed uniformity of magnesium
concentration (Br. 6-7).
Appellant's arguments are persuasive of reversible error. The
Examiner does not dispute the evidence set forth in the Declarations, but
finds it unpersuasive because the Declarants did not measure the distribution
of magnesium concentrations in exactly the same way as set forth in the
claim (Ans. 7-8). The Examiner also argues that because the Declarations
reported streaking in the Uesugi alloy it must have differed from Uesugi's
preparation because Uesugi reported no streaking (Ans. 8). Neither of these
arguments are sufficient to sustain the rejection.
With regards to the Uesugi's statement that its alloy does not display
streaking, while the Declarations report streaking in the alloy prepared
according to Uesugi's method, Appellant explains that the streaking reported
in the Declarations was observed using microscopic examination, while the
observations reported in Uesugi were with the naked eye (Br. 6-7). The
Examiner does not dispute this explanation (see Uesugi ,r 38).
As for the Examiner's statements that the method by which the
distribution of magnesium concentrations differs between the evidence in the
Declarations and the claims, we note that the rejection relies on a
presumption that U esugi' s structure is the same as the claimed aluminum
alloy sheet because the claimed and prior art products are allegedly produced
by identical or substantially identical processes (Final Act. 5). However,
Appellant has provided an undisputed explanation of how the production
method for the claimed product differs from U esugi' s method of production,
and has also provided factual evidence that the different methods of
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Application 13/930,685
production produce different structures. This is sufficient to overcome the
prima facie case of anticipation.
The Examiner makes no separate findings in support of the
obviousness rejection. Accordingly, we reverse both the anticipation and
obviousness rejections over Uesugi.
Rejections II and III.
The reasoning provided for the § 102/§ 103 rejections over Moriyama
and Kobayashi is similar to the rejections over Uesugi (i.e. overlapping
range of components and a determination that a similar method of
manufacture creates a prima face case of anticipation/obviousness).
Appellant presents arguments and evidence in the form of the Rule 132
Declarations which again are sufficient to overcome those rejections,
essentially for the same reasons as discussed above in connection with
Uesugi. That is, Appellant has explained how the manufacturing methods
shown in the prior art differ from those set forth in the Specification, and has
also shown that they produce a product with different properties than those
of the claimed materials.
Accordingly, we reverse the anticipation/obviousness rejections over
both Moriyama and Kobayashi.
CONCLUSION
We REVERSE the rejection of claims 4 and 5 under 35 U.S.C. § 102(b)
as anticipated by Uesugi and the rejection of claims 4 and 5 under 35 U.S.C. §
103(a) as unpatentable over Uesugi.
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Application 13/930,685
We REVERSE the rejection of claims 4 and 5 under 35 U.S.C. § I02(b)
as anticipated by Moriyama and the rejection of claims 4 and 5 under 35
U.S.C. § I03(a) as unpatentable over, Moriyama.
We REVERSE the rejection of claims 4 and 5 under 35 U.S.C. § I02(b)
as anticipated by Kobayashi and the rejection of claims 4 and 5 under 35
U.S.C. § I03(a) as unpatentable over, Kobayashi.
REVERSED
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