Ex Parte Oskarsson et alDownload PDFPatent Trial and Appeal BoardJun 29, 201612574477 (P.T.A.B. Jun. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/574,477 10/06/2009 9629 7590 07/01/2016 MORGAN LEWIS & BOCKIUS LLP (WA) 1111 PENNSYLVANIA A VENUE NW WASHINGTON, DC 20004 FIRST NAMED INVENTOR Anders Oskarsson 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. 011815-5002-01 8199 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 07/01/2016 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): patents@morganlewis.com karen.catalano@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDERS OSKARSSON, HANS-ERIK EKSTROM, RICHARD WESTERGARD, and STIAN TANGEN Appeal2014-009864 Application 12/574,477 Technology Center 1700 Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and JENNIFER R. GUPTA, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. § 134(a) from a final decision of the Primary Examiner to reject claims 1- 13, 18, 19, and 21-27.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellants state that the Real Party in Interest is "GRANGES SWEDEN AB (formerly SAPA HEAT TRANSFER AB)" (Appeal Brief3 (filed June 4, 2014) (hereinafter "Appeal Br.")). 2 Appeal Br. 6; Final Office Action 1 (delivered electronically on November 13, 2013) (hereinafter "Final Act."); Advisory Action 1-2 (delivered electronically on February 14, 2014). Appeal2014-009864 Application 12/574,477 BACKGROUND The subject matter on appeal relates to a sagging resistant aluminum strip that may be used for producing heat exchanger fins (Specification 1, 11. 11-14 (hereinafter "Spec.")). Claim 1, the representative independent claim on appeal, is reproduced from pages 21-22 of the Appeal Brief (Claims Appendix (hereinafter "Claims App.")), with key limitations indicated in italicized text, as follows: 1. A sagging resistant strip produced by a) casting a melt comprising: 0.3-1.5 wt% Si, :S0.5 wt %Fe, :S0.3 wt% Cu, 1.0-2.0 wt% Mn, :S0.5 wt% Mg, :S4. 0 wt %Zn, :S0.3 wt% each of dispersoid forming elements from group IVb, Vb, or VIb, and unavoidable impurity elements, each at most 0.05 wt%, in a total amount of at most 0.15 wt%, the rest aluminum, to obtain an ingot; b) preheating the resulting ingot at a temperature of less than 550°C to form dispersoid particles; c) hot rolling to obtain a strip, d) cold rolling the strip obtained in step c) with a total reduction of at least 90%, resulting in a strip having a first proof stress value; e) followed by a heat treatment to the delivery temper to soften the material by a tempering without any recrystallisation of the strip alloy, in such a way that a strip is obtained having a second proof stress value which is 10-50% lower than the first proof stress value (obtained directly after cold rolling in step d), and lying in the 0.2% proof stress range of 100-200 MP a; wherein the sagging resistant strip has a 0.2% proof stress value after brazing of at least 60 MPa and a sagging 2 Appeal2014-009864 Application 12/574,477 resistance of S.3 5 mm when measured on a 0 .10 mm thick strip using a cantilever beam length of 60 mm. THE REJECTIONS The Examiner rejected the claims under 35 U.S.C. § 103(a) as follows: I. Claims 1-9 and 24-27 as being unpatentable over Shoji et al. (hereinafter "Shoji")3 in view of Fujiyoshi et al. (hereinafter "Fujiyoshi")4 (Examiner's Answer 2--4 (delivered electronically on July 15, 2014) (hereinafter "Ans."); Final Act. 2-4); II. Claims 10-13 as being unpatentable over Shoji in view of Fujiyoshi, and further in view of Burger et al. (hereinafter "Burger")5 (Ans. 5; Final Act. 5); and III. Claims 18, 19, and 21-23 as being unpatentable over Shoji in view of Fujiyoshi, and further in view of Dokou et al. (hereinafter "Dokou")6 (Ans. 4-5; Final Act. 4-5). DISCUSSION The Examiner stated that "it appears that the alloys taught in the prior art would necessarily or inherently have the claimed properties" (Ans. 7); and, that "[s]ince [the] [A]ppellant[s] ha[ve] not provided any factual evidence to show otherwise, [the] [A ]ppellant[ s'] argum[ en ]t is not found convincing" (id.). The Appellants, however, relied upon rebuttal evidence in the Declaration under 37 C.F.R. § 1.132 dated November 22, 2012 (hereinafter 3 JP, 2002-161323, published June 4, 2002. 4 JP, 06-184688, published July 5, 1994. 5 US 2006/0105193 Al, published May 18, 2006. 6 JP, 04-066292, published March 2, 1992. 3 Appeal2014-009864 Application 12/574,477 "Declaration") and in the Specification (Spec. 10-11, Table 1; 12, Table 3) "to rebut the finding of inherency" (Appeal Br. 5, 7, 15-16) and to show that "the claimed properties are not strictly composition dependent but also very process dependent[] and neither Shoji nor Fujiyoshi disclose the processing steps disclosed in the Application" (id. at 7 (emphasis omitted)). Therefore, the Examiner is incorrect in stating that the Appellants failed to provide any factual evidence. When an applicant comes forward with rebuttal evidence, the PTO must consider such evidence before making a conclusion of obviousness. In re Sullivan, 498 F.3d 1345, 1352 (Fed. Cir. 2007) ("Whether the composition would have been obvious cannot be determined without considering evidence attempting to rebut the prima facie case."); In re Rinehart, 531F.2d1048, 1052 (CCPA 1976) ("When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over."); In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) ("[T]he PTO must consider comparative data in the specification in determining whether the claimed invention provides unexpected results."). Regardless of the merits or the sufficiency of the proffered evidence, the Examiner's failure to properly acknowledge, consider, and evaluate the evidence in the Answer and/or the Final Action constitutes reversible error. Sullivan, 498 F.3d at 1352-1353.7 7 We decline to review and consider the sufficiency of the proffered evidence in the first instance as this is best done through the "give and take" between the Examiner and the Appellants in an examination setting, where the Appellants may, if necessary, choose to undertake additional experimental testing for submission to the PTO. 4 Appeal2014-009864 Application 12/574,477 SUivIIvIAR Y For these reasons, the Examiner's final decision to reject claims 1-13, 18, 19, and 21-27 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation