Ex Parte Cheong et alDownload PDFPatent Trial and Appeal BoardApr 17, 201811865526 (P.T.A.B. Apr. 17, 2018) Copy Citation 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 cadanoc@gtlaw.com 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"). 2 Appeal 2016-006771 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 3 Appeal 2016-006771 Application 11/865,526 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 4 Appeal 2016-006771 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. 5 Appeal 2016-006771 Application 11/865,526 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 6 Appeal 2016-006771 Application 11/865,526 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."). 7 Copy with citationCopy as parenthetical citation