Ex Parte Cheong et al

Patent Trial and Appeal Board

Apr 17, 2018

11865526 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/865,526 10/01/2007
8840 7590 04/19/2018
ARCONIC INC.
C/O GREENBERG TRAURIG, LLP
500 CAMPUS DRIVE
SUITE400
FLORHAM PARK, NJ 07932
FIRST NAMED INVENTOR
Soonwuk Cheong
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.
07-0022 (102232) 5472
EXAMINER
JOHNSON, JONATHAN J
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
gtipmail@ gtlaw .com
clairt@gtlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOONWUK CHEONG, ROBERTO J. RIOJA,
PAUL E. MAGNUSEN, CAGATA Y Y ANAR, DIRK C. MOOY,
GREGORY B. VENEMA, and EDWARD LLEWELLYN
Appeal2016-006771
Application 11/865,526
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1-5, 7-12, and 20-31 under 35
1 Our decision refers to the Specification (Spec.) filed October 1, 2007, the
Examiner's Final Office Action dated August 3, 2015, Appellants' Appeal
Brief (Appeal Br.) filed December 28, 2015, the Examiner's Answer (Ans.)
dated April 28, 2016, and Appellants' Reply Brief (Reply Br.) filed June 24,
2016.
2 According to Appellants, the real party in interest is Alcoa Inc. Appeal Br.
3.
Appeal 2016-006771
Application 11/865,526
U.S.C. § 103(a) as unpatentable over Yanagawa3 in view ofDixon. 4 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to "aluminum alloy products having a
recrystallized micro structure containing relatively high amounts of brass
texture relative to Goss texture" (Spec. i-f 2).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. An aluminum alloy product comprising:
a 2xxx aluminum alloy;
(a) wherein the aluminum alloy is recrystallized and
comprises at least 60% recrystallized grains;
(b) wherein at least some of the recrystallized grains have
a texture, and wherein at least some of these recrystallized
grains have a brass texture;
( c) wherein the recrystallized grains having the brass
texture comprise the largest fraction of the recrystallized grains
having texture;
( d) wherein an area fraction of the brass texture is at least
10%; and
( e) wherein the 2xxx series aluminum alloy product
exhibits a tensile yield strength and fracture toughness
combination that is least equivalent to a compositionally
equivalent unrecrystallized alloy product of the same product
form and of similar thickness and temper.
3 JP 08-325663 A, published December 10, 1996 ("Yanagawa"). The
Examiner relies on the English language machine translation provided by the
Japan Patent Office.
4 US 2007/0128463 Al, published June 7, 2007 ("Dixon").
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Application 11/865,526
Independent claim 20 recites a recrystallized 2199 series aluminum
alloy sheet product whose brass texture amount exceeds the Goss texture
amount and the area fraction of brass texture is at least 10%, wherein the
sheet product has a thickness not greater than 0.35 inches, an LT tensile
yield strength of at least 370 MPa, and a T-L fracture toughness (Kapp) of at
least 80 MPa(mYz). Remaining independent claim 21 similarly recites a
recrystallized 2xxx aluminum alloy product having at least 60%
recrystallized grains, and whose brass texture comprises the largest fraction
of recrystallized grains having texture and the area fraction of brass texture
is at least 10%.
ANALYSIS
The Examiner finds Yanagawa teaches a recrystallized aluminum
alloy having at least 60% recrystallized grains and brass and Goss textures,
wherein the brass texture is the largest fraction of at least 10% (Ans. 2). The
Examiner acknowledges that Yanagawa fails to teach that the aluminum
alloy is a 2xxx series (id.). For this limitation, the Examiner finds Dixon
teaches 2xxx aluminum alloys, particularly 2199 series, which exhibit
excellent toughness and fatigue resistance (id.). The Examiner concludes it
would have been obvious "to incorporate the 2199 series aluminum alloy of
Dixon et al. into the alloy of Yanagawa et al. in order to obtain an aluminum
alloy with excellent toughness and fatigue resistance" (id. at 3). Further, the
Examiner finds that because Yanagawa in view of Dixon teach a
recrystallized aluminum alloy with the same or substantially similar
composition and crystallographic structure as the alloy of claim 1, the
ordinary artisan would have expected the Yanagawa and Dixon alloy to have
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the same or substantially similar mechanical properties including tensile
yield strength, T-L fracture toughness, and peak R-value (id.).
Initially, Appellants argue that the Examiner's statement of
obviousness is unclear because the Examiner's statement incorporates the
Dixon alloy into Yanagawa's alloy (Appeal Br. 6-9; Reply Br. 2--4). While
there is merit to Appellants' arguments in this regard and, unfortunately, the
Examiner perpetuated this issue by repeating this statement from the Final
Office Action (Final Act. 3--4) into the Examiner's Answer (Ans. 3--4), it is
clear from the record that the obviousness rejection is based on modifying
Yanagawa by substituting Dixon's 2xxx aluminum alloy into Yanagawa's
process (in contrast to Yanagawa's alloy) (Ans. 4 ("one skilled in the art
would have been motivated to extend the process of Yanagawa to a 2[xxx]
alloy"); 5 ("one skilled in the art to expect the process of Yanagawa et al.
would[] extend to 2[xxx] alloys")). Indeed, Appellants recognize that the
correct statement of obviousness is based on substitution of Dixon's alloy
into Yanagawa's process (Appeal Br. 7 ("it would be obvious to process the
2199 alloy of Dixon according to Yanagawa in order to obtain improved
properties"); 10 ("the skilled person would not immediately consider the
2199 alloy applicable to the process of Yanagawa")). Accordingly, the error
in the Examiner's statement of the conclusion of obviousness is harmless
error.
However, Appellants further argue, inter alia, that the Examiner failed
to consider Appellants' arguments and evidence of nonobviousness (Appeal
Br. 11 ). In particular, Appellants urge that Appellants provided evidence
that the ordinary artisan would not have processed Dixon's 2199 series
aluminum alloy using Yanagawa's process because there is an inverse
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Application 11/865,526
relationship between the formability or Erichsen values desired by
Yanagawa and strength desired by Dixon (id. at 12, citing the Magnusen
Declaration, 5 i-fi-f 15, 16). Given this inverse relationship, Appellants contend
that the ordinary artisan would have expected processing of Dixon's alloy
according to Yanagawa's process would result in lower tensile yield strength
and fracture toughness (id. at 13-14, citing the Magnusen Declaration,
i-fi-f 17, 19). Moreover, Appellants urge that they provided evidence that
Yanagawa's process would not result in the microstructure of the claims
because Yanagawa's process does not have two recrystallization anneals (id.
at 14--15, citing the Magnusen Declaration, i125).
Appellants' argument and evidence of nonobviousness are persuasive
of reversible error in the Examiner's rejection. We note the Examiner
discounts Appellants' arguments and evidence as mere unsupported
argument of counsel, particularly the Magnusen Declaration, on the basis
that Declarant Magnusen "repeatedly alleged 'it is my opinion' (e.g.,
paragraphs 16 and 25), that extending the process of Yanagawa to a 2[xxx]
alloy would 'likely' behave differently from claimed" (Ans. 6). However,
although Declarant is a named inventor in this application, the Examiner
does not dispute that Dr. Magnusen is an expert in this art whose opinion is
entitled to some weight. In re Lindell, 385 F.2d 453, 456 (CCPA 1967)
(Although an affiant's or declarant's opinion on the ultimate legal issue is
not evidence in the case, "some weight ought to be given to a persuasively
supported statement of one skilled in the art on what was not obvious to
5 Declaration under 37 C.F.R. § 1.132 of Dr. Paul Magnusen, filed October
9, 2014.
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him."). The key, however, is that the statements must be persuasively
supported by evidence. In re Altenpohl, 500 F .2d 1151, 115 8 ( CCP A 197 4)
(lack of factual support rendered an affidavit of little probative value in
overcoming obviousness rejection). In the end, we must consider the nature
of the matter sought to be established as well as the strength of the opposing
evidence in assessing the probative value of expert opinion. In re Oelrich,
579 F.2d 86, 91(CCPA1978).
Here, Declarant states that there exists an inverse relationship between
formability or Erichsen values and strength, citing to EP 0480402 Al,
published April 15, 1992, for support (Magnusen Declaration i-fi-f 16, 17).
The Examiner does not challenge that such an inverse relationship exists, but
rather that Appellants fail to explain how the alloy of the EP 0480402 Al
publication reflects the alloy of Yanagawa in view of Dixon (Ans. 5). In
doing so, the Examiner misses the point of the evidence that those skilled in
the art would have known such an inverse relationship existed. Appellants
need not provide actual evidence that Yanagawa's process would lower the
tensile yield strength and fracture toughness of a 2xxx aluminum alloy
below that of the unrecrystallized 2xxx aluminum alloy where, as in this
case, evidence is provided that the ordinary artisan would have reasonably
expected this to be the case. 6
6 Appellants' arguments regarding the differences between 5xxx, 6xxx, and
2xxx aluminum alloys (Appeal Br. 10-11, Magnusen Declaration i-fi-f 12-16)
have not escaped our notice. While we recognize that, to the trained
metallurgist, the differences between these alloys may be so well-known that
nothing further need be said, we are constrained to rely on the evidence of
record, or matters susceptible of Official Notice. Cf In re Mayne, 104 F.3d
1339, 1344 (Fed. Cir. 1997) ("Even were it obvious to a practitioner of the
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Finally, we note that the Examiner fails to respond to Appellants'
evidence that Yanagawa's process would not result in the microstructure of
the claims because Yanagawa's process does not have two recrystallization
anneals. In this regard, we note Appellants' Specification demonstrates that
a single recrystallization anneal is insufficient to produce a recrystallized
2xxx series aluminum alloy product having a texture whose largest fraction
is brass texture of at least 10% as recited in each of independent claims 1,
20, and 21 (Spec. Table 1 ).
Accordingly, we are persuaded by Appellants' arguments and
evidence that the ordinary artisan would not have processed Dixon's 2xxx
aluminum alloy according to Yanagawa's process because of the expectation
that doing so would have resulted in an alloy of reduced, rather than
increased, strength, and would not have produced the recited amount of
brass texture.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1-5, 7-12, and 20-31 under 35 U.S.C. § 103(a) as unpatentable over
Yanagawa in view of Dixon is reversed.
REVERSED
art [that the BGH or HGH would have been expected to be inactive when
fused to similar, recognized enterokinase cleavage site], applicants have the
burden to provide the PTO with evidence showing that such is the case.").
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