Ex Parte Jiang et al

Board of Patent Appeals and Interferences

Feb 12, 2007

10821023 (B.P.A.I. Feb. 12, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GUANGQIANG and ATTILA ANTALFY
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Appeal 2007-0735
Application 10/821,023
Technology Center 1700
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Decided: February 12, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-13. Claim 1 is
illustrative:
1. A component assembly suitable for use in living tissue comprising:
a stainless steel part;
a titanium part; and
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Application 10/821,023

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a filter material comprising at least one nickel foil layer and at least
one titanium foil layer for bonding said stainless steel part to said titanium
part.
The Examiner relies upon the following references as evidence of
obviousness:
Cusano US 3,994,430 Nov. 30, 1976
Chang US 6,722,002 B1 Apr. 20, 2004
Appellants’ claimed invention is directed to an assembly of
components comprising stainless steel and titanium parts bonded together.
A filler material is used for the bonding and comprises at least one nickel
foil layer and at least one titanium foil layer. The assembly can be used in
living tissue.
Appealed claims 1-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chang. Claim 13 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chang in view of Cusano.1
Appellants have not presented separate arguments for any particular
claim against the § 103 rejection of claims 1-12. Accordingly, claims 1-12
stand or fall together.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.

1 The Examiner has withdrawn the rejections based on the admitted prior art.
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Accordingly, we will sustain the Examiner’s rejections for the reasons set
forth in the Answer, and we add the following primarily for emphasis.
We consider first the § 103 rejection of claims 1-12 over Chang. Like
Appellants, Chang discloses a bonding assembly comprising at least one
nickel foil layer and at least one titanium foil layer, e.g., a foil made up of
discrete layers of titanium and nickel, such as a foil of Ni/Ti/Ni (see
Abstract). Also, Chang teaches that the brazing or bonding foils are useful
for brazing components such as Ti and iron-based alloys, which include steel
(see col. 5, ll. 41-43). In addition, Chang expressly discloses that the
Ni/Ti/Ni bonding composite can be bonded to stainless steel (col. 6,
ll. 52-55), and a five-layer bonding composite comprising Ni/Ti/Ni can bond
two sheets of Ti (col. 6, ll. 58-60). Accordingly, since Chang teaches that a
bonding assembly comprising the presently claimed at least one nickel foil
layer and at least one titanium foil layer can be bonded to stainless steel and
titanium, separately, we fully concur with the Examiner that one of ordinary
skill in the art would have found it obvious to use the bonding assembly of
Chang to adhere a stainless steel part to a titanium part. The motivation and
requisite reasonable expectation of success arises from the fact that it was
known in the art that the claimed bonding filler material comprising at least
one nickel foil layer and at least one titanium foil layer bonds well to both
stainless steel and titanium.
Appellants contend that Chang relates to non-analogous art since
“[t]he roll bonding method taught by Chang to form a multi-layer alloy strip
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or foil made up of discrete layers uses a cold-rolling process without
annealing . . . [whereas] appellants teach a brazing method of forming a
component assembly in which a foil filler material is used” (principal Br. 6,
second para.) As noted by the Examiner, however, this argument is not
germane to the subject matter defined by the appealed claims. The appealed
claims define a component assembly, not a method, let alone, specifically, a
brazing method.
Appellants also emphasize that “Chang does not teach bonding of
stainless [steel] to titanium” (principal Br. 6, penultimate para.) However,
while this argument might be effective against a rejection under § 102, the
Examiner properly points out that the rejection is under § 103, and
Appellants have not presented any argument concerning why the relevant
disclosures of Chang would not have made it obvious to use Chang’s
bonding foil to bond stainless steel to titanium.
Appellants also maintain that “Chang conspicuously limits his
teachings to exclude brazing stainless steel to titanium” (principal Br. 6, last
para.). However, Appellants do not cite any specific disclosure in Chang to
support this argument, and our review of the reference finds no such
teaching relevant to the exclusion of bonding stainless steel to titanium.
Appellants also cite Chang at column 8, lines 7-13 for the argument
that “Chang teaches away from the use of titanium” (principal Br. 7, second
para.). However, although Chang discloses several advantages of using
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copper instead of nickel, the reference explicitly teaches that “[t]he choice of
the fraying faces on the multi-layer brazing alloys can be either Cu or Ni”
(col. 8, ll. 7-8). This preference for copper over nickel is not seen as a
teaching away from Ti in the reference multi-layer bonding foil.
As for the Examiner’s separate § 103 rejection of claim 13 over
Chang in view of Cusano, we totally agree with the Examiner that it would
have been obvious for one of ordinary skill in the art, based on the Cusano
disclosure, to provide the bonding materials in particulate form. Also,
Appellants’ Reply Brief does not address the Examiner’s citation of the
acknowledgement made in the Amendment filed on October 3, 2005,
namely, “it is well known to those skilled in the art to apply the bonding
agent/brazing filler metal in the form of foil or in the form of particulate”
(Amend. 5, ll. 10-11).
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the prima facie case of obviousness established by the
Examiner.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2004).
AFFIRMED

clj

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for Scientific Research
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