Constellium France

Patent Trials and Appeals Board

Feb 3, 2022

2021005208 (P.T.A.B. Feb. 3, 2022)

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. 14/274,971 05/12/2014 Bernard BES 2901683-290000 1392 84331 7590 02/03/2022 McBee Moore & Vanik, IP, LLC 510 South Market Street Frederick, MD 21701 EXAMINER TAKEUCHI, YOSHITOSHI ART UNIT PAPER NUMBER 1723 NOTIFICATION DATE DELIVERY MODE 02/03/2022 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): docketing@mmviplaw.com smcbee@mmviplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BERNARD BES, HERVE RIBES, CHRISTOPHE SIGLI, and TIMOTHY WARNER Appeal 2021-005208 Application 14/274,971 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 19-27 and 34-40. An oral hearing was 1 In this Decision, we refer to the Specification filed May 12, 2014 (“Spec.”), the Final Office Action dated Oct. 5, 2020 (“Final Act.”), the Appeal Brief filed May 12, 2021 (“Appeal Br.”), the Examiner’s Answer dated July 8, 2021(“Ans.”), the Reply Brief filed Sept. 7, 2021 (“Reply Br.”), and the Declarations Under 37 C.F.R. § 1.132 of Hélène Godin filed Nov. 14, 2019 (“Godin 1”) and Sept. 22, 2020 (“Godin 2”) and Pablo Lorenzino filed Mar. 6, 2017 (“Lorenzino 1”) and Sept. 27, 2017 (“Lorenzino 2”), collectively “Declarations.” 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Constellium Issoire as the real party in interest. Appeal Br. 3. Appeal 2021-005208 Application 14/274,971 2 held by video on January 18, 2022.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to aluminum alloys, particularly aluminum alloys with applications in the aerospace industry. Spec. ¶ 2. According to the Specification, alloys with a low zirconium (Zr) content, preferably less than or equal to about 0.04 wt.%, achieve a high toughness and “an advantageously optimized compromise between static mechanical properties and toughness.” Id. ¶ 14. Regarding silver (Ag), the Specification states “if the silver content is less than about 0.1 wt.%, the mechanical strength obtained may not meet desired properties.” Id. ¶ 29. The Specification further discloses “[t]he silver content should however advantageously be maintained below 0.8 wt.% and preferably below 0.4 wt.%, to avoid an increase of density and for cost reasons.” Id. Claim 19, reproduced below, is illustrative of the subject matter on appeal. 19. An aluminum alloy rolled product comprising (a) from about 2.2 to 2.5 wt.% Cu, (b) from about 1.2 to 1.6 wt.% Li, (c) up to about 0.4 wt.% Ag, (d) from about 0.2 to about 0.4 wt.% Mg, (e) from about 0.2 to about 0.4 wt.% Mn, a content of Fe and Si of less or equal to .05 wt.% each, a content of unavoidable impurities less than or equal to 0.05 3 A transcript of the hearing will be entered into the record in due course. Appeal 2021-005208 Application 14/274,971 3 wt.% each and 0.15 wt.% total, and the alloy being substantially zirconium free, wherein said zirconium is present an amount of not more than about 0.04 wt.%, wherein said product comprises the following properties: (a) Kapp in T-L direction is at least about 143 MPa√rn; (b) Kapp in L-T direction is at least 150 M Pa√m; (c) tensile yield strength in the L direction is at least about 370 MPa; and wherein thickness of the product does not exceed about 0.5 inches. Appeal Br. 38 (Claims Appendix) (disputed elements italicized). Claim 34, the other independent claim pending in this Appeal, is similar to claim 19 but recites “consisting essentially of” instead of “comprising.” Id. at 40-41. ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections. Appeal 2021-005208 Application 14/274,971 4 The Examiner’s rejections rely on the following references: The Examiner maintains the following rejections:4 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 19-27, 34-40 112(a) Written description 19-27, 34-40 103 Cho ’008 19-27, 34-40 103 Young 19-24, 34-40 103 Cho ’174 26, 27 103 Ochoa, Cho ’174 Written Description Rejection The Examiner determines the claim recitation “up to about 0.4 wt.% Ag” lacks written description support in the originally filed application under 35 U.S.C. § 112(a). Final Act. 6. The Examiner determines the Specification does not support Ag in an amount less than 0.1 wt.%. Id. (citing Spec. ¶¶ 8, 9, 15, 31, 36, 62, 67). Appellant does not separately argue 4 In the Final Office Action, the Examiner identifies newly amended claims 34 and 38, from which claim 40 depends, as lacking written description support in the originally filed application for the claim element “up to about 0.4 wt.% Ag.” Final Act. 6. Because independent claim 19 recites the same element and Appellant does not distinguish the recitation in the pending claims, we understand the Examiner’s written description rejection to apply to all of the pending claims. Name Reference Date Young US 4,790,884 Dec. 13, 1988 Cho ’174 US 4,806,174 Feb. 21, 1989 Ochoa US 6,766,984 B1 July 27, 2004 Cho ’008 US 2005/0006008 A1 Jan. 13, 2005 Appeal 2021-005208 Application 14/274,971 5 any claim with respect to this rejection. Appeal Br. 9-11. Therefore, all claims stand or fall together. See 37 C.F.R. § 41.37(c)(1)(iv). According to Appellant, the Examiner erred in finding the Specification fails to support Ag in an amount less than 0.1 wt.% because (1) the Specification indicates Ag content less than 0.1 wt.% is optional and (2) alloy B in Table 2, which does not contain any Ag, meets the toughness and mechanical properties of the claim. Appeal Br. 9. Specifically, Specification paragraph 29 states “if the silver content is less than about 0.1 wt.%, the mechanical strength obtained may not meet desired properties.” Spec. ¶ 29.5 Appellant’s position is that “may not” leaves open the possibility of a lesser silver content and “the disclosure of the Specification considered the possibility of having less than 0.1 wt.% of Ag.” Appeal Br. 10. Similarly, Appellant directs us to Specification paragraph 49 which states the lower strength of alloy B “might be related to the absence of silver in the comparison alloy B.” Spec. ¶ 49; Appeal Br. 10. Appellant contends “this sentence does not unequivocally state that silver is required for the invention.” Appeal Br. 10. Appellant also asserts that the low amount of copper in alloy B compared to alloy D appears to affect the alloy mechanical properties more than the absence of silver based on Table 5. Id. We do not agree with Appellant’s arguments. Rather, we agree with the Examiner that the Specification describes the invention as an alloy having an Ag content. Ans. 22-24. The focus is on the Specification, including the original claims, to discern whether a person of ordinary skill in 5 Appellant also quotes paragraph 27 in the provisional application filed January 30, 2006 for the same statement reflected in Specification paragraph 29. Appeal Br. 10. Appeal 2021-005208 Application 14/274,971 6 the art would recognize that the applicant possessed what is claimed as of the filing date sought. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (“Adequate written description means that the applicant, in the specification, must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.’” (citation omitted)). As the Examiner points out, the originally filed Specification’s disclosure and claims explicitly describe the invention as including Ag. “[T]he present inventors arrived at the present invention directed to an aluminum copper lithium magnesium silver alloy, that is capable of exhibiting high strength without anisotropy, and high toughness.” Spec. ¶ 13; Ans. 23. The Specification’s Table 1 separately lists the “Broad” compositional range for the “invention Alloys” as containing Ag. Spec. ¶ 24 (Table 1). Table 1 is shown below. Table 1 above provides a broad compositional range for the inventive alloy that includes Ag in the range of 0.1-0.8 wt.% and separate ranges labeled “Preferred” and “More preferred” that each have a 0.2 wt.% lower limit for Ag. Id. A person having ordinary skill in the art also would understand at the time the application was filed that the invention includes silver because originally filed independent claims 1 and 11 each recite “from about 0.1 to about 0.4 wt.% Ag.” These affirmative statements of what the inventor considered to be the invention at the time the application was filed Appeal 2021-005208 Application 14/274,971 7 are compelling evidence supporting the Examiner’s written description rejection for Appellant’s claimed range that includes no silver content in the alloy. The Specification also describes example alloy B as comparative to the inventive alloys rather than representative of an embodiment of the invention as Appellant argues. Ans. 23-24; Spec. ¶ 62 (“The inventive example is labeled C. Examples B and D do not include Ag are presented for comparison purposes.”), ¶ 67 (“The strength of the comparison alloy B was lower than that of the alloy according to the invention (C), which might be related to the absence of silver in the comparison alloy B.”). In the Reply Brief, Appellant asserts “there must be a clear disavowal via clear language in order for the specification to limit the claim scope, which is not the case here” because the alloy B example does not include Ag. Reply Br. 4. Appellant contends statements in the Specification regarding the inventive composition containing some amount of Ag are “equivocal and non-limiting statements which simply amount to a preferred embodiment.” Id. at 5. Appellant relies on Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). The problem with Appellant’s argument is that the issue was claim construction rather than written description in Thorner. 669 F.3d at 1365. The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test alone, however, is not always sufficient to meet the written description requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Rather, “the written description requirement is satisfied by the Appeal 2021-005208 Application 14/274,971 8 patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). It is not sufficient that the claimed feature can be developed from, computed from, or otherwise ascribed to the originally filed application. See Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (“It is ‘not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device.’” (citation omitted)). Appellant’s assertion that the Specification’s comparative alloy B, which contains no Ag, can be viewed as an alternative embodiment because “[t]he strength and toughness properties for Alloys B and C [the inventive alloy] are fairly comparable” (Appeal Br. 10) is not supported by the Specification itself. The Specification distinguishes alloy B from alloy C on the basis of one being comparative and the other an inventive example. Spec. ¶ 44. See Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1327 (Fed. Cir. 2000) (Examples in a patent specification that possessed the claimed ratio in a pharmaceutical formulation failed to provide written description support for the claimed ratio where the written disclosure did not direct a skilled artisan to the claimed ratio.). There is nothing in the written description of the Specification that conveys to a skilled artisan that any of the itemized components listed in Table 1 for Appellant’s “aluminum copper lithium magnesium silver alloy” are optional components. Spec. ¶¶ 13, 24. Moreover, for written description support of a claimed range, more clarity than specific examples is required. Indivior UK Ltd. v. Dr. Reddy’s Labs. Appeal 2021-005208 Application 14/274,971 9 SA, No. 2020-2073, Slip Op. 4-5 (Fed. Cir. Nov. 24, 2021) (“A description sufficient to satisfy the requirement of the law requires a statement of an invention, not an invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention.”). The preponderance of the evidence in this appeal record therefore supports the Examiner’s conclusion that the claimed subject matter does not have written description support in the Specification. Accordingly, we affirm the Examiner’s written description rejection of the claims reciting “up to about 0.4 wt.% Ag” under 35 U.S.C. § 112(a) for the above reasons and those provided by the Examiner. Obviousness over Cho ’008 The Examiner rejects claims 19-27 and 34-40 under 35 U.S.C. § 103 over Cho ’008. The Examiner finds Cho ’008 discloses an alloy with overlapping ranges as shown in the below charts comparing the prior art composition to independent claims 19 and 34 as well as claims 20-25 and 38. Final Act. 7. The Examiner finds Cho teaches the same utility (aircraft wing or parts) and that the sheet product exhibits improved properties in virtually any thickness range including less than 3 inches, which overlaps the claimed range. Id. at 8. Regarding the recited properties in independent claims 19 and 34, the Examiner finds Cho ’008’s composition is substantially identical made by a substantially identical process, therefore the claimed properties would be expected. Id. at 9. Appeal 2021-005208 Application 14/274,971 10 Appellant does not dispute the claimed ranges overlap with the cited prior art, but argues the prior art ranges are broader than the claimed ranges and that the Examiner failed to articulate why a person having ordinary skill in the art would have selected the claimed ranges from the broader teachings. Appeal Br. 12.6 Appellant points out that Cho ’0087 contains examples in which the Li content is 2.2 and 2.3 wt.% and the Zr content is 0.09, 0.12, and 0.13 wt.%. Id. at 14-16. Appellant asserts that the claimed properties are not inherent in the prior art composition. Id. at 16-18. Appellant’s argument is not persuasive of error because there is no dispute that the claimed ranges overlap with Cho ’008’s ranges. Appellant’s assertion that the prior art composition would not be expected to have the 6 The Appeal Brief refers to claim 1, however, claim 1 has been cancelled. Compare Appeal Br. 12 with Appeal Br. 38 (Claims Appendix). We understand Appellant’s references to claim 1 to be a typographical error when referring to independent claim 19. 7 Appellant refers to Cho ’008 in the Appeal Brief as Cho 1 and Cho ’174 as Cho 2. Appeal Br. 8. Appeal 2021-005208 Application 14/274,971 11 claimed properties is not persuasive of error because Appellant does not adequately explain why Cho ’008 would not be expected to have the claimed properties in view of compositions and processes being substantially similar. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and its properties are inseparable”); Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (“If Pereira discloses the very same methods, then the particular benefits must naturally flow from those methods even if not recognized as benefits at the time of Pereira's disclosure.”). Once the Examiner establishes a substantially identical chemical composition, the burden shifts to the Appellant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Having identified the pertinent disclosures, the Examiner has established a prima facie case of obviousness of the rejected claims over Cho ’008. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). Broad ranges disclosed by prior art compositions invite routine experimentation to discover optimum values. Cf. Genetics Institute LLC v. Novartis Vaccines and Diagnostics Inc., 655 F.3d Appeal 2021-005208 Application 14/274,971 12 1291, 1306 (Fed. Cir. 2011). In addition, Cho ’008’s example compositions do not limit Cho ’008’s disclosure. “It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Once a prima facie case of unpatentability has been established as the Examiner has done on the cited record in this appeal, Appellant may introduce evidence and arguments to counter the prima facie case. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. Oetiker, 977 F.2d at 1445. Appellant asserts unexpected results have been established by (1) Examples B-D compared to Example A in the Specification, (2) Lorenzino 1 and Lorenzino 2 which show sample 32 has a better balance of high yield strength and high fracture toughness compared to samples 35 and 36, which Appellant asserts are according to the prior art teachings, and (3) Godin 1 and Godin 2 which show alloy X (representative of the Specification’s alloy B without silver) has unexpectedly higher toughness than alloy Y (representative of the prior art examples without silver). Appeal Br. 18-25. Appellant asserts that the Examiner’s position that the evidence does not demonstrate marked improvement or unexpected results for the claimed range is not supported by the evidence because Specification Examples C and B were compared to Examples A and D, Lorenzo 1 and 2 compares sample 32 with samples 35 and 36, Godin 1 compares sample X with sample Y, and Godin 2 tests inventive sample 2654-33 to show samples within the claimed ranges meet the claimed mechanical and toughness properties. Id. at 25-28. Appeal 2021-005208 Application 14/274,971 13 Appellant has not established that the outer limits of its claimed range for Zr provide unexpected results compared to the closest prior art range because (1) Appellant does not identify the closest prior art and (2) only Godin 1 compares the asserted inventive composition to a sample reflective of two of the three cited prior art references. Although Lorenzino 1 and Lorenzino 2 state that Alloys 35 and 36 are representative of alloys taught by Young and Cho ’174, the composition of those alloys include 0.3 wt.% Ag. Lorenzino 1 ¶ 10; Lorenzino 2 ¶ 4. Neither Young nor Cho ’174 disclose Ag content in the alloy. Young 2:32-48; Cho ’174 3:65-4:13. Thus, Lorenzino 1 and Lorenzino 2 do not provide a comparison with the prior art.8 Godin 2 also does not provide a comparison, only a single composition that falls within all of the claimed ranges. Thus, we focus on the arguments and evidence based on Godin 1. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). 8 In the Reply Brief, Appellant contends that even though Young and Cho ’174 do not contain Ag, the inclusion of Ag in samples 35 and 36 make them closer to the composition of sample 32. Reply Br. 9. Appellant’s argument does not adequately address how modification of the prior art compositions would be expected to affect the performance of the prior art compositions. Appeal 2021-005208 Application 14/274,971 14 Godin 1 identifies the composition of representative prior art “alloy Y” compared to Examples in Young and Cho ’174 in the table below. Godin 1 ¶ 5. Neither Godin 1 nor the Appeal Brief identify the closest prior art. Nor do any of the Declarations or the Appeal Brief explain why Cho ’008, which discloses 0.2-0.8 wt.% Ag content, is not compared or selected as the closest prior art. Godin 1 paragraph 7 provides the following thicknesses and tensile test results for the examined alloys. Claim 19 recites “tensile yield strength in the L direction is at least about 370 MPa” and thickness “does not exceed about 0.5 inches.” Neither Godin 1 nor the Appeal Brief address the tensile yield strength in the L direction performance of the representative prior art sample, which appears to perform better than the inventive alloy in this respect. Godin 1 paragraph 9 provides the following resistance to crack results. Claim 19 recites “Kapp in T-L direction is at least 143 MPa√m” and Appeal 2021-005208 Application 14/274,971 15 “Kapp in L-T direction is at least 150 MPa√m.” It is not apparent whether data for the latter property is provided in Godin 1. Godin 1 paragraph 12 observes “alloy X presents a higher toughness than alloy Y” and “[s]heets produced according to alloy X presents an improvement of 12% over sheets made of alloy Y.” The difference between data points 124 and 139 in the preceding chart for one measurement, Kapp (MPa√m), is 12%. Following the statement regarding the 12% difference in one measurement, Godin 1 concludes without explanation in paragraph 13 in totality: “This result was unexpected for me.” Godin 1’s conclusion based on a single measurement for one data point is insufficient to establish an unexpected result because it fails to explain what would have been expected and why the 12% difference in a single measurement is significant and not merely a tradeoff with respect to another desired property. Godin 1 fails to explain why the higher toughness value for alloy Y would not have been expected in view of alloy Y’s lower tensile strength.9 The known relationship in these properties is that toughness decreases as strength increases. Cho ’174 1:58-59. 9 In the Reply Brief, Appellant contends the data provided to support patentability of the claims is sufficient because the parent application was found to have sufficient data to “reveal trends in the results.” Reply Br. 11; see Appeal Br. 27 (“Just as found by the Board in [the parent application], Appeal 2021-005208 Application 14/274,971 16 Accordingly, we do not accord significant weight to the conclusion in Godin 1 because it lacks adequate support. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”); In re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) (affidavits reciting conclusions and few facts to buttress said conclusions fail in their purpose). Appellant’s arguments in support of claims 20-27 and 34-39 being separately patentable are not persuasive of error because they rely on the same arguments presented for claim 19. Appeal Br. 29-36. Appellant additionally asserts that claim 34’s recitation “consisting essentially of” excludes “the presence of other materials . . . set forth in the cited references that do not materially affect the basic and novel characteristics of the claimed invention.” Appeal Br. 34. Appellant’s assertion does not accurately reflect the proper interpretation of “consisting essentially of.” The claim term “consisting essentially of” is used to indicate, for example, that “the invention necessarily includes the listed ingredients and is open to unlisted Appellant’s demonstration of substantially improved results (in the Lorenzino Declarations and the Godin Declarations) should suffice to establish unexpected results in the absence of evidence to the contrary.”). We agree with the Examiner that this argument is not persuasive of error where the applied art differs from that in the parent case. Ans. 62. Moreover, Appellant does not indicate the parent application involved the same declarations and data cited in this Appeal record. Appeal 2021-005208 Application 14/274,971 17 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). Appellant bears the burden of: (1) showing the basic and novel characteristics of their claimed invention, and (2) establishing how those characteristics would be materially changed by any allegedly excluded component of an applied reference. See In re DeLajarte, 337 F.2d 870, 873 74 (CCPA 1964). Appellant has not made such a showing. Accordingly, we affirm the rejection of claims 20-27 and 34-39 for the same reasons discussed above in connection with claim 19. Because Appellant does not separately address claim 40, the claim stands or falls with claim 38 from which it depends. See 37 C.F.R. § 41.37(c)(1)(iv). In sum, we affirm the Examiner’s rejection of claims 19-27 and 34-40 under 35 U.S.C. § 103 over Cho ’008. Obviousness over Young The Examiner rejects claims 19-27 and 34-40 under 35 U.S.C. § 103 over Young. The Examiner finds Young discloses an alloy with overlapping ranges as shown in the below charts comparing the prior art composition to independent claims 19 and 34 as well as claims 20-25, 38, and 39. Final Act. 12-13. The Examiner finds Young teaches the same utility (aircraft wing or parts) and that it would have been obvious to a person having ordinary skill in the art to optimize the component concentrations to optimize the physical properties and/or microstructure. Id. at 13. The Examiner finds Young teaches thicknesses of 0.1 to 0.25 inch (sheet), 0.25 to 6.0 inches (plate), and 0.010 to 0.249 inch or 0..030 to 0.10 inch (other types of airplane sheet parts), which overlaps the claimed range. Id. at 14. Appeal 2021-005208 Application 14/274,971 18 Regarding the recited properties in independent claims 19 and 34, the Examiner finds Young’s composition is substantially identical made by a substantially identical process, therefore the claimed properties would be expected. Id. at 14-15. Appellant does not dispute that the claimed ranges overlap with Young’s ranges. Appeal Br. 12 (“Young and Cho 1 and 2 references set forth compositions which overlaps that of the claimed composition”). The Examiner having established a substantially identical chemical composition, the burden shifts to the Appellant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255. Appellant’s patentability arguments with respect to Young are the same arguments directed to the Examiner’s obviousness rejection over Cho ’008. Appeal Br. 12-29. Similarly, Appellant’s arguments directed to claims 20-27 and 34-39 are the same arguments directed to the Examiner’s obviousness rejection over Cho ’008. Appeal Br. 29-36. Because we are not Appeal 2021-005208 Application 14/274,971 19 persuaded of error as to the Examiner’s rejection of claim 19 as obvious over Cho ’008, we likewise find these arguments unpersuasive with respect to the Examiner’s obviousness rejection over Young for the same reasons. Because Appellant does not separately address claim 40, the claim stands or falls with claim 38 from which it depends. See 37 C.F.R. § 41.37(c)(1)(iv). In sum, we affirm the Examiner’s rejection of claims 19-27 and 34- 40 under 35 U.S.C. § 103 over Young. Obviousness Over Cho ’174 The Examiner rejects claims 19-24 and 34-40 under 35 U.S.C. § 103 over Cho ’174. Final Act. 16. The Examiner finds Cho ’174 discloses an alloy with overlapping ranges as shown in the below charts comparing the prior art composition to independent claims 19 and 34 as well as claims 20- 24, 38, and 39. Id. at 16-17. The Examiner finds Cho ’174 teaches the same utility (use in aircraft members) and that it would have been obvious to a person having ordinary skill in the art to optimize the component concentrations to optimize the physical properties and/or microstructure, particularly because Cho ’174 teaches each of Li, Cu, Mg, Mn, and Zr is result-effective on the physical properties and/or microstructure. Id. at 17-18 (citing Cho ’174 4:14-5:6). The Examiner finds Cho ’174 teaches thicknesses of 0.1-0.25 inch (sheet) and 0.25-10 inches (plate) for use in aircraft members, which overlaps the claimed range. Id. at 18. Regarding the recited properties in independent claims 19 and 34, the Examiner finds Cho ’174’s composition is substantially identical made by a substantially identical process, therefore the claimed properties would be expected. Id. at 19. Appeal 2021-005208 Application 14/274,971 20 Appellant does not dispute that the claimed ranges overlap with Cho ’174’s ranges. Appeal Br. 12 (“Young and Cho 1 and 2 [Cho ’174] references set forth compositions which overlaps that of the claimed composition”). The Examiner having established a substantially identical chemical composition, the burden shifts to the Appellant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255. Appellant’s patentability arguments with respect to Cho ’174 are the same arguments directed to the Examiner’s obviousness rejection over Cho ’008. Appeal Br. 12-29. Similarly, Appellant’s arguments directed to claims 20-24 and 34-39 are the same arguments directed to the Examiner’s obviousness rejection over Cho ’008. Appeal Br. 29-36. Because we are not persuaded of error as to the Examiner’s rejection of claim 19 as obvious over Cho ’008, we likewise find these arguments unpersuasive with respect to the Examiner’s obviousness rejection over Cho ’174 for the same reasons. Appeal 2021-005208 Application 14/274,971 21 Because Appellant does not separately address claim 40, the claim stands or falls with claim 38 from which it depends. See 37 C.F.R. § 41.37(c)(1)(iv). In sum, we affirm the Examiner’s rejection of claims 19-24 and 34- 40 under 35 U.S.C. § 103 over Cho ’174. Obviousness Over Ochoa and Cho ’174 Claims 26 and 27 each depend from claim 19 and recite “[an] aircraft fuselage panel” and “[an] aeronautical structural member,” respectively, comprising the aluminum alloy product of claim 19. The Examiner rejects claims 26 and 27 under 35 U.S.C. § 103 over Ochoa in view of Cho ’174. Final Act. 20. The Examiner finds Ochoa teaches aircraft stiffeners and structural panels made of aluminum and determines it would have been obvious to use Cho ’174’s aluminum alloy with optimized fracture toughness and strength properties for use in aircraft members. Id. at 21. As discussed above in connection with the obviousness rejections over Cho ’008, Young, and Cho ’174, Appellant contends the Examiner’s rejection of dependent claims 26 and 27 should be reversed for the same reasons discussed above in connection with claim 19. Appeal Br. 33. Because we are not persuaded of error as to the Examiner’s findings with respect to claim 19, we likewise find these arguments unpersuasive with respect to the Examiner’s obviousness rejection over the combination of Ochoa with Cho ’174 for the same reasons. Summary In summary, we affirm all of the Examiner’s rejections of claims 19- 27 and 34-40 under 35 U.S.C. §§ 103 and 112(a) for the above reasons. Appeal 2021-005208 Application 14/274,971 22 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 19-27, 34- 40 112(a) Written description 19-27, 34- 40 19-27, 34- 40 103 Cho ’008 19-27, 34- 40 19-27, 34- 40 103 Young 19-27, 34- 40 19-24, 34- 40 103 Cho ’174 19-24, 34- 40 26, 27 103 Ochoa, Cho ’174 26, 27 Overall Outcome 19-27, 34- 40 TIME PERIOD FOR RESPONSE 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