Ex Parte Mandigo et al

Board of Patent Appeals and Interferences

May 9, 2012

11588111 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/588,111 10/26/2006 Frank N. Mandigo 6113B-002728/US/COA 1211
28997 7590 05/10/2012
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
05/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK N. MANDIGO, PETER W. ROBINSON, DEREK
E. TYLER, ANDREAS BOEGEL, HANS-ACHIM KUHN, FRANK M.
KEPPELER and JOERG SEEGER
____________

Appeal 2010-012290
Application 11/588,111
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 60-69. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appellants claim a wrought copper alloy consisting essentially of 1-
2.5 wt.% Ni, 0.5-2 wt.% Co, 0.5-1.5 wt.% Si, and optionally up to 1.0 wt.%
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Application 11/588,111

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Ag, Ti, and/or Zr, and up to 0.15 wt.% Mg. The balance of the alloy is Cu
and inevitable impurities. The Ni/Co weight ratio is 0.5-5, while the Ni plus
Co is 1.7-4.3 wt.%. The (Ni+Co)/Si ratio is 3.5-6. The alloy has an
electrical conductivity greater than 40% IACS, a yield strength greater than
95 ksi, a minimum bend radius as a function of thickness (mbr/t) of up to 4t
for good and bad way bend, and an average grain size following
solutionizing at 950oC of 20 microns or less. (Claims 60 and 64).
Representative claims 60 and 64 read as follows:
60. A wrought copper alloy consisting essentially, by weight, of:
from 1% to 2.5% of nickel; from 0.5% to 2.0% of cobalt, with a total nickel
plus cobalt content of from 1.7% to 4.3% and a weight percent ratio of
nickel to cobalt that is from 0.5:1 to 5:1; from 0.5% to 1.5% of silicon with
the weight ratio of (Ni+Co)/Si being between 3.5:1 and 6:1; and the balance
copper and inevitable impurities wherein said wrought copper alloy has an
electrical conductivity in excess of 40% IACS, a yield strength in excess of
95 ksi, a minimum bend radius as a function of thickness, mbr/t of up to 4t
for both good way and bad way bends and an average grain size of 20
microns or less following solutionizing at 950°C.

64. A wrought copper alloy consisting essentially, by weight, of:
from 1% to 2.5% of nickel; from 0.5% to 2.0% of cobalt, with a total nickel
plus cobalt content of from 1.7% to 4.3% and a weight percent ratio of
nickel to cobalt that is from 1.01:1 to 2.6:1; from 0.5% to 1.5% of silicon
with the weight ratio of (Ni+Co)/Si being between 3.5:1 and 6:1; from an
amount effective to improve a combination of yield strength and electrical
conductivity up to 1.0% of silver, titanium, zirconium and combinations
thereof; up to 0.15% of magnesium; and the balance copper and inevitable
impurities wherein said wrought copper alloy has an electrical conductivity
in excess of 40% IACS, a minimum bend radius as a function of thickness,
mbr/t of up to 4t for both good way and bad way bends and an average grain
size of 20 microns or less following solutionizing at 950°C.

The references listed below are relied upon by the Examiner as
evidence of obviousness:
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Fujiwara1 (as transl.) JP 09-020943 Jan. 21, 1997
Hirai (as transl.) JP 11-222641 Aug. 17, 1999

Under 35 U.S.C. § 103(a), the Examiner rejected:
claims 60-64 as unpatentable over Fujiwara; and
claims 65-69 as unpatentable over Fujiwara in view of Hirai.

We will sustain the above rejections for the reasons expressed by the
Examiner in the Answer. The following comments are added for emphasis.
Appellants do not separately argue all claims on appeal under these
rejections, but instead focus their arguments on the limitations of claims 60
and 64 (App. Br. 7-12; Rep. Br. 2-3). For purposes of this appeal, we select
claims 60 and 64 to decide the issues for these rejections. See 37 C.F.R. §
41.37(c)(1)(vii) (“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).

The § 103(a) rejection over Fujiwara
The Examiner found that Fujiwara teaches “the claimed Cu based
alloy composition, grain size, electrical conductivity, yield strength, and
bending property.” (Ans. 4). In addition, the Examiner found that the prior

1 The Examiner’s Answer refers to JP 09-020943 by the given name
of the first inventor, rather than the surname. For consistency, we have
adopted the convention of using the surname of the first named inventor for
both references applied.
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art alloy composition overlaps the claimed ranges for each of the recited
components (id. at 4, 8). The Examiner provided a table comparing the
wt.% range disclosed by Fujiwara and claim 60 of each of the alloy
components (id. at 6). This table shows that the ranges for Ni, Co, and Si
disclosed by Fujiwara substantially overlap each of the claimed ranges for
these components (id.). The Examiner concluded that
it would have been obvious to one of ordinary skill in the art
to select any portion of range, including the claimed range,
from the broader range disclosed in a prior art reference
because the prior art reference finds that the prior art
composition in the entire disclosed range has a suitable
utility.

(Id. at 5). In support of this conclusion, the Examiner cited to In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima face case of obviousness”).
(Id.).
Appellants argue that Fujiwara requires the presence of Zn, Mn, and
P, and that these components are excluded by claim 60 through the use of
the transitional phrase “consisting essentially of” (App. Br. 6-9; Rep. Br. 2).
Appellants further argue that because Ni is optional in Fujiwara’s alloy
system, this alloy is totally different from that claimed (App. Br. 10; Rep.
Br. 2). Appellants also argue that Fujiwara’s alloy doesn’t meet the claimed
Ni/Co nor (Ni+Co)/Si ratios, and that these ratios are critical to meet the
claimed alloy properties. (App. Br. 10-12; Rep. Br. 2-4, 9).
We are not persuaded of reversible error in the Examiner’s
obviousness determination.
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It is axiomatic that, in proceedings before the PTO, claims in
an application are to be given their broadest reasonable
interpretation consistent with the specification and that claim
language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art.

In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citation omitted). This
complements the judicially created test for determining the scope of a claim
using the transitional phrase “consisting essentially of”. “By using the term
‘consisting essentially of,’ the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.” PPG
Indus. Inc. v. Guardian Indus. Corp, 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Therefore, in construing the phrase “consisting essentially of” in Appellants'
claims, it is necessary and proper to determine whether the claims and
Specification reasonably support a construction that would include or
exclude additives such as the Zn, Mn, and P.
Initially, we note that the claims positively list “inevitable impurities”
as an ingredient of the claimed alloy (claims 60 and 64). In addition, the
claimed alloy may include up to 1.0 wt.% of one or more of Ag, Ti, and Zr
(Spec. paras. [0020], [0042], and [0043]; claim 64). In order to construe the
meaning of “inevitable impurities”, we turn to the Specification to determine
what these may be and whether these or other ingredients may be present
without materially affecting the basic and novel properties of the invention.
The Specification broadly states that the inventive alloys “may contain other,
unspecified, elements in amounts not effective to materially change a basic
property of the alloy and still be within the scope of the claims” (Spec. para.
[0044]). The claimed alloys “will likely contain certain inevitable
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impurities” (id.). Among these “inevitable impurities”, the Specification
lists Zn up to a maximum of 0.5%, Mn less than 0.1%, and P less than
0.04%, inter alia (id. paras. [0045], [0048], and [0050]). Accordingly,
Appellants’ argument with regard to the scope of the claims under the
transitional phrase “consisting essentially of” is contrary to the expressed
teachings of their own Specification and the intent of the claims as would be
understood by one of ordinary skill in the art.
Appellants argue that both Fujiwara and the Specification confirm that
Zn, Mn, and P would materially affect the alloy properties (App. Br. 7-9;
Rep. Br. 2). Appellants state that because Fujiwara teaches a purpose for
Mn, Zn, and P, and each of Fujiwara’s example alloys that achieves the
desired strength and conductivity properties includes Zn and at least P or Zr,
these ingredients “affect the basic and novel properties of the alloy, and thus
are excluded from the appealed claims” (App. Br. 7-9; Rep. Br. 2). As a
result, Appellants conclude that removal of these ingredients would “undo”
Fujiwara’s alloys “and would be contrary to its teachings” (Rep. Br. 2).
We disagree with the premise that merely because the prior art has a
reason to add Zn, Mn, and at least P or Zr, that these ingredients must
necessarily be affecting the basic and novel properties of the invention. As
pointed out above, the fact that Appellants’ own disclosure permits these
ingredients within the scope of the claims is alone sufficient rebuttal to this
premise. Moreover, the basic and novel properties of the invention here are
the claimed electrical conductivity, yield strength, minimum bend radius,
and average grain size, none of which appear to be deleteriously affected by
any of these ingredients in the amounts disclosed by Fujiwara. Finally, the
burden is on Appellants to establish that any ingredient not listed in these
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claims does in fact materially affect the basic and novel properties of the
claimed invention. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
Appellants have not met this burden.
In addition, Appellants mischaracterize the Examiner’s rejection over
Fujiwara. The Examiner is not proposing that it would have been obvious to
remove Zn, Mn, or P from Fujiwara’s alloys. Rather, the Examiner’s
rejection is based on the Examiner’s conclusion that the presence of these
ingredients in Fujiwara’s alloys is within the scope of the claims, by virtue
of the transitional phrase “consisting essentially of”. The Examiner has
properly construed the claim scope to permit inclusion of these ingredients.
We turn next to Appellants’ argument that Fujiwara’s alloy system is
different from that claimed because Ni is optional in the Fujiwara system
(App. Br. 10; Rep. Br. 2). The Examiner found that Fujiwara has two claims
that each list Ni as an ingredient of the Cu-based alloy, wherein the amount
of Ni substantially overlaps the claimed amount (Ans. 7). The Examiner
then stated that Appellants’ argument is inconsistent with this express prior
art teaching (id.). We share the Examiner’s view as Appellants have failed
to rebut this finding.
We turn next to Appellants’ argument that the “claims are directed to
a small subrange of the stated composition, and do not cover a single
example [from Fujiwara]” (App. Br. 10). Appellants argue that Fujiwara
fails to teach or suggest the claim recitations that “total nickel plus cobalt
content is between 1.7% and 4.3%; the weight percent ratio of nickel to
cobalt is between 0.5:1 and 5:1; and the weight ratio of (Ni+Co)/Si is
between 3.5:1 and 6:1” (id.). In particular, Appellants state that
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[b]ased upon the teachings of [Fujiwara] and the prior art as a
whole, it was not predictable that the Ni:Co and (Ni + Co)/Si
ratios were relevant to the claimed properties, or that
controlling these ratios as claimed results in superior
properties only achieved by others with additional alloying
elements.

(Id. at 12).
Appellants have failed to persuade us that the comparison evidence in
the Specification demonstrates criticality in the claimed ranges for Ni, Co,
and Si, or any other component of the claimed alloy composition. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (noting the burden of analyzing
and explaining data to support an argument of unexpected results rests on
party asserting it). For example, Fujiwara’s example alloys have yield
strengths, electrical conductivities, bend radius, and grain size within the
desired ranges. (See Fujiwara Table 3). Appellants have failed to establish
any causal relationship between the claimed Ni, Co, and Si amounts or
ratios, and the desired properties claimed. In this regard, we note that
Appellants have not directed us to any evidence that demonstrates that yield
strength, electrical conductivity, bend radius, or grain size unexpectedly
depends on the claimed ranges and ratios of Ni, Co, and Si. See In re Dunn,
349 F.2d 433, 439 (CCPA 1965) (“we do not feel it an unreasonable burden
on appellants to require comparative examples relied on for non-obviousness
to be truly comparative”). Simply, Appellants have not established any
criticality to the claimed ranges and ratios of Ni, Co, and Si which
substantially overlap the prior art ranges and ratios.
In their Reply Brief, Appellants submit a new argument relying on
Figure 5 and Example 4, including Spec. para. [0083], in a further attempt to
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establish this criticality. (Rep. Br. 3-4). We note that Figure 5 and Example
4 were not earlier relied on and argued in Appellants’ Brief. In addition,
Appellants’ Reply Brief also introduces the new argument that
the criticality was established in the Response filed August 14, 2008,
where applicants established (by reference to declarations submitted
in the parent application) that the alloys of JP0920943 do not have the
properties stated therein, that applicant's claimed alloys have superior
properties to those of JP0920943, and that the compositional
differences, including the Ni:Co and (Ni+Co)/Si ratios are responsible
for these differences.

(Id. at 9). Initially, consideration by the Board of new arguments (and/or
evidence) presented for the first time in the Reply Brief that could have been
presented earlier would “vitiate the force of the requirement in Board Rule
37(c)(1)(vii) that ‘[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is shown.”’
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[a]ny
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived”); see also Optivus Tech., Inc. v. Ion Beam
Appl'ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“an issue not raised by an
appellant in its opening brief . . . is waived”) (internal citation and quotation
marks omitted).
Here, Appellants have not shown good cause for the delay in
presenting arguments which rely on Figure 5 and Example 4 as well as the
declarations filed in the parent Application. Accordingly, these new
arguments are waived in this appeal and we decline to consider these new
arguments based on Figure 5 and Example 4, or the parent Application
declarations.
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In sum, we determine that, based on a review of the entire record
before us, a preponderance of the evidence favors the Examiner’s conclusion
of obviousness based upon Fujiwara.

The § 103(a) Rejection over Fujiwara in view of Hirai
We note that Fujiwara has been discussed at length above. We do not
find it necessary to repeat these discussions here to the extent that
Appellants repeat arguments advanced earlier regarding this reference. We
turn instead to Appellants’ arguments regarding Hirai and the Examiner’s
conclusion of obviousness based on the combination of Fujiwara in view of
Hirai. In particular, Appellants argue that it would not have been obvious to
add Ag to Fujiwara’s alloy in view of Hirai (Rep. Br. 4). This argument also
is newly raised in the Reply Brief. Appellants do not provide any showing
of good cause for the delay in bringing forth this argument for the first time
in the Reply Brief. Accordingly, under Borden, supra, this argument is
waived on appeal and we decline to consider it.
Accordingly, we sustain the § 103(a) rejection over Fujiwara in view
of Hirai.
Conclusion
The decision of the Examiner is affirmed.

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).
AFFIRMED

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