Ex Parte ASANO et al

Patent Trial and Appeal Board

Oct 15, 2018

13864777 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/864,777 04/17/2013
23474 7590 10/17/2018
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Mineo ASANO
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.
2204.P0016US 8983
EXAMINER
WALCK, BRIAND
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
10/17/2018 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINEO ASANO and YUSUKE YAMAMOTO
Appeal2018-000020
Application 13/864, 777 1
Technology Center 1700
Before ROMULO H. DELMENDO, A VEL YN M. ROSS, and BRIAND.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 3 and 5-8. We have jurisdiction. 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE2
Appellants describe the invention as relating to an aluminum alloy
sheet that does not exhibit a band pattern after anodization. Appeal Br. 2. In
1 According to Appellants, the real party in interest is Sumitomo Light Metal
Industries, Ltd. Appeal Br. 1.
2 In this Decision, we refer to the Final Office Action dated November 2,
2016 ("Final Act."), the Appeal Brief filed March 29, 2017 ("Appeal Br."),
Appeal2018-000020
Application 13/864,777
particular, the Specification explains that anodized aluminum sheets are
useful for automotive parts and outer panels for consumer electronics but
often show a band-like streak. Spec. 1. Appellants propose eliminating the
streak by, for example, use of a peritectic element along with the aluminum,
homogenization of the aluminum ingot at specific times and temperatures,
and shot blasting the sheet metal followed by polishing with phosphoric and
sulfuric acid. Id. at 3--4, 8, 10. Claim 5, reproduced below with emphasis
added to certain key recitations and formatting added for readability, is the
only independent claim on appeal and is illustrative of the claimed subject
matter:
5. An aluminum alloy sheet that
exhibits a surface quality after anodization in that the
occurrence of a band pattern after anodization is prevented,
the aluminum alloy sheet comprises at least one of O.001-
0 .1 mass% of Ti and 0.0001-0.4 mass% of Cr as a peritectic
element that undergoes a peritectic reaction with aluminum, and
aluminum,
the concentration of the peritectic element in a solid-
solution state that is present in an outermost surface area of
the aluminum alloy sheet varying in a widthwise direction of
the aluminum alloy sheet in a form of a band having a width
of at least 0.05 mm and a difference in the concentration of
the peritectic element between adjacent bands is no more
than 0.008 mass%,.
the Examiner's Answer dated July 31, 2017 ("Ans."), and the Reply Brief
filed September 28, 2017 ("Reply Br.").
2
Appeal2018-000020
Application 13/864,777
Appeal Br. 11 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Uesugi et al.
("U esugi")
Moriyama et al.
("Moriyama")
US 2008/0289731 Al Nov. 27, 2008
JP409I43602A June 3, 1997
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 3, 5, and 6 under 35 U.S.C. § I02(b) as
anticipated by Uesugi, or in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Uesugi. Ans. 2.
Rejection 2. Claims 3 and 5-8 under 35 U.S.C. § 102(b) as
anticipated by Moriyama, or in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Moriyama. Id. at 4.
ANALYSIS
Rejection 1. The Examiner rejects claim 5 as anticipated by, or in the
alternative, as unpatentable as obvious over Uesugi. Ans. 2. In particular,
the Examiner refers to Alloy A of U segi as referenced in Table 1. The
Examiner finds that Uesugi teaches an aluminum sheet having titanium in an
amount overlapping recited amount of claim 5. Id. The Examiner finds that
the structure recited in the references is the same as in the claims and that
claim 5 's recited uniformity characteristic-"the concentration of the
peritectic element ... form of a band having a width of at least 0.05 mm or
3
Appeal2018-000020
Application 13/864,777
more, and a difference in the concentration of the peritectic element between
adjacent bands being 0.008 mass%"-is therefore inherent. Ans. 3.
Our reviewing court has held that where "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." In re Best, 562 F.2d 1252, 1255
(CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.").
Here, Appellants have provided proof, by a preponderance of the
evidence, that the embodiment of Uesugi the Examiner relies on would not
have claim 5 's recited uniformity characteristic. In particular, Appellants
prepared a "Sample 1" using the homogenization conditions and material 3 of
Uesugi. Appeal Br. 7; July 1, 2016, Declaration ofYusuke Yamamoto 2
("Yamamoto Declaration"). Table 2-24 of the Yamamoto Declaration
3 The copper content tested is 0.0164% rather than Uesugi's 0.0162%, but
the evidence does not indicate this difference is significant.
4 The Yamamoto Declaration refers to data for the anodized sheet being in
Table 3, but this is apparently a typographical error. Id. at 3--4. Table 3
provides data related to rejection 2 and Moriyama. Id. at 6-7. Table 2-2 is
the third table provided by the declaration and provides data regarding the
"[d]ifference in concentration of Ti in solid-solution state (anodized sheet)."
Id. at 6. The second and third columns of Table 2-2 refer to an "unanodized
sheet," but this also appears to be a typographical error because column 4
refers to an anodized sheet and because the Yamamoto Declaraton's
narrative refers to the third table discussing data after anodization. Id. at 3-
4, 6.
4
Appeal2018-000020
Application 13/864,777
provides data for the final anodized sheet (i.e., the product state relevant to
claim 5's recited characteristic). The data shows that Sample 1 has a 0.012
mass% difference in Ti concentration between adjacent bands. Id. at 6. The
Declaration also supports that Appellants prepared samples 3 and 4
according to the patent application's process and that these samples exhibit a
difference in Ti concentration between adjacent bands of 0.004 and 0.003
mass%. Id. at 6, 9. The Declaration further supports that these samples also
differed from the Uesigi aluminum sheet before anodization. Id. at 5, Table
2-1. The Declaration states that the evidence presented demonstrates that
"the processes disclosed in the cited references cannot achieve the
advantageous effects of the present invention and produce an aluminum
alloy sheet according to the present invention." Id. at 9; see also Appeal
Br. 7-8.
The Examiner raises two objections to the sufficiency of the evidence
presented by Appellants. Ans. 5---6. First, the Examiner states that
Yamamoto Declaration's comparative alloy is not the same as the alloy of
Uesugi because Uesugi "explicitly states that Uesugi alloy A does not
exhibit streaking." Ans. 6. ( citing Uesugi). Uesugi indicates that its
Specimen 1, Alloy A was "Good" meaning that streaks were not observed
with the naked eye. Uesugi ,r 38, Table 3. The Yamamoto Declaration
presents evidence that is contrary to U esugi as to whether the U esugi
anodized aluminum has streaks visible to the naked eye. Yamamoto
Declaration 3--4, Table 2-2.
We need not weigh relative merits of these two points of evidence,
however, because claim 5 's recitations do not directly depend on visibility of
streaks to a naked eye. Rather, claim 5 recites a more specific uniformity
5
Appeal2018-000020
Application 13/864,777
characteristic-limiting the variance of the peritectic element across
adjacent bands. Uesugi does not directly address whether or not the
uniformity characteristic recited by claim 5 is met. Appellants present
evidence that U esugi' s Specimen 1, Alloy A does not meet the recited
characteristic, and thus, a preponderance of the evidence supports
Appellants' position.
The Examiner also explains that the Yamamoto Declaration does not
consider bands with a width of 0.05 mm and therefore does not establish that
such bands have a Ti content5 of less than 0.20 mass%. Ans. 6-7. The
Examiner appears to take the position that claim 5 is satisfied if the anodized
aluminum sheet has any adjacent bands (with width 0.05 mm or more) with
difference in peritectic element concentration less than or equal to 0.008
mass%. Under this claim interpretation, Appellants could only establish
Uesugi falls outside of claim 5 by affirmatively proving that a Uesegi
product has no such bands at any measured width of 0.05 mm or more.
The Examiner's interpretation of claim 5 is unreasonably broad. The
Examiner interprets the claim's uniformity characteristic recitation
backwards. Appellants' Specification emphasizes that the purpose of the
disclosed aluminum sheet components and preparation process is to
eliminate streaking by achieving uniformity. See, e.g., Spec. passim. Given
this context, we construe claim 5 as requiring an aluminum sheet whereby,
for any arbitrarily selected adjacent bands having a width of at least 0.05
mm, the difference in the concentration of the peritectic element between
5 The Examiner refers to Mg content (Ans. 6-7), but we presume this is a
typographical error. Claim 5 does not require magnesium, and it is Uesugi's
distribution of a peritectic element (per claim 5 either titanium or chromium
and, in Uesugi, titanium (Ans. 2)) that is at issue.
6
Appeal2018-000020
Application 13/864,777
adjacent bands is no more than 0.008 mass%. Construction of claim 5 in
this way is consistent with the recited uniformity characteristic being an
empirical way of describing a lack of streaks. Under the proper
construction, the existence of any adjacent bands (with width of at least 0.05
mm) differing in concentration by more than 0.008 mass% would make an
aluminum sheet fall outside the scope of claim 5.
Likewise, given the Specification's context, we construe claim 5 's
recitation of "adjacent" as referring to bands that share a common border.
This construction is consistent with the Specification because selection of
bands that are near but not next to each other would not necessarily correlate
to a lack of streaking.
The evidence presented by Appellants, as explained above, establishes
by a preponderance of the evidence that, for at least one width greater than at
least 0.05 mm 6, the Examiner relies upon an embodiment of Uesugi that that
does not meet the uniformity characteristic recitation of claim 5. We
therefore do not sustain this rejection based on anticipation. Because the
Examiner does not provide a rationale for modifying Uesugi to meet this
characteristic and does not explain how Uesugi otherwise suggests
6 We agree with the Examiner that the Yamamoto Declaration is unclear
regarding what width of band was measured. The Examiner, however, does
not dispute that the measurements included at least two adjacent bands with
width greater than 0.05 mm. See Ans. 6 (interpreting the declaration as
selecting 5 bands with a 10mm range such that the average band width is 2
mm). Also, the Yamamoto Declaration, although unclear, suggests that the
width measured was 10mm. See Yamamoto Declaration 3 ("[ t ]he resulting
sheet material sample was subjected to linear analysis in an arbitrary five
areas having a length of 10 mm in the widthwise direction" ( emphasis
added)). In any event, the preponderance of the evidence indicates that the
width measured was greater than 0.05 mm.
7
Appeal2018-000020
Application 13/864,777
modification that would meet this characteristic, we also do not sustain the
Examiner's altemati ve obviousness rejection.
Rejection 2. The Examiner rejects claims 3 and 5-8 under 35 U.S.C.
§ 102 as anticipated by Moriyama, or in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Moriyama. Ans. 4. The Examiner finds that
Moriyama teaches overlapping composition as claim 5 and the same
homogenization conditions as the Specification. Id. at 4--5. The Examiner
thus reasons that the uniformity characteristic, discussed above with respect
to condition 1, would necessarily be met. Id.
Appellants provide evidence that if the procedure of Moriyama is
followed, the concentration of titanium is adjacent bands will be 0.019 such
that the Moriyama aluminum sheet is not within the scope of claim 5.
Appeal Br. 8-9; Yamamoto Declaration 6-8, Table 3-2.
The Examiner's response is similar to the Examiner's response to
argument against Uesugi. The Examiner states, "A showing that there exists
two bands of undisclosed widths (average width of 2 mm) with a difference
in Mg content in excess of 0.20 mass% does not provide evidence that there
does not exist at least one band of 0.05 mm which has a difference in Mg
content between adjacent bands of less than 0.20 mass%." Ans. 8. For the
reasons explained above with respect to Uesugi, the Examiner's explanation
is based on an erroneous construction of claim 5 and therefore does not
adequately address Appellants' evidence. The Examiner also does not
present a reason why a person of skill in the art would have modified
Moriyama to reach claim 5. We therefore do not sustain this rejection.
8
Appeal2018-000020
Application 13/864,777
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 3 and 5-8.
REVERSED
9