Ex Parte Bampton et al

Board of Patent Appeals and Interferences

Sep 1, 2010

10732882 - (D) (B.P.A.I. Sep. 1, 2010)

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.
10/732,882 12/10/2003 Clifford Charles Bampton 67397-011PUS2 6951
54549 7590 09/01/2010
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
09/01/2010 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 CLIFFORD CHARLES BAMPTON
and KUNAG-TSAN K. CHIANG
____________________

Appeal 2009-007048
Application 10/732,882
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, CHUNG K. PAK, and
JEFFREY T. SMITH, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 3, 18 through 34, 43 through
47. Claims 11 through 17 and 35 through 42, the other claims pending in

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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this application, stand withdrawn from consideration by the Examiner. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, an alloy. Claim
1 is illustrative:
1. An alloy in metal matrix composite construct having a high burn
and oxidation resistance consisting essentially of:
about 2.5 to about 6 weight percent aluminum;
about 30 to about 50 weight percent of nickel;
about 3 to 30 weight percent of zinc; and
the balance copper.

The Examiner maintains the following rejections:
1) Claims 20 and 47 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
2) Claims 1-3, 18-34, and 43-47 under 35 U.S.C. § 103(a) over
Kondoh (US 5,972,070, issued Oct. 26, 1999);
3) Claims 1-3, 18-34, and 43-46 under 35 U.S.C. § 103(a) over Takagi
(US 5,004,581, issued Apr. 2, 1991); and
4) Claims 18-34 under 35 U.S.C. § 103(a) over Akutsu (US
5,114,468, issued May 19, 1992).
With respect to rejection (1), we address the rejection with respect to
claims 20 and 47, as argued by Appellants. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to rejection (2), Appellants argue the claims in four
groups: (1) claims 1, 18, and 43; and (2) claim 26; (3) claim 27; and (4)
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claim 47. (App. Br.2 4-6 and Reply Br. 1-3). We address Appellants'
arguments regarding the rejection with respect to every claim in each claim
group, as argued by Appellants. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to rejection (3), Appellants argue the claims in two
groups: (1) claims 1, 18, and 43; and (2) claim 27. (App. Br. 4-6 and Reply
Br. 1-3). We address Appellants' arguments regarding the rejection with
respect to every claim in each claim group, as argued by Appellants. See 37
C.F.R. § 41.37(c)(1)(vii).
With respect to rejection (4), we address the rejection with respect to
claims 18, 26, and 27 only, as argued by Appellants. (App. Br. 7 and Reply
Br. 1-3). See 37 C.F.R. § 41.37(c)(1)(vii).

REJECTION (1)
ISSUE
Did the Examiner err in finding that the later claimed limitation "up to
about 7 weight percent" recited in claims 20 and 47 was not described in the
originally filed disclosure within the meaning of 35 U.S.C. § 112, first
paragraph? We decide this issue in the affirmative.

FINDINGS OF FACT (FF)

1. The Specification discloses that "small amounts of silicon, chromium,
and titanium may . . . be present in the [metal] alloy [i.e., matrix]."
(Spec. ¶¶ [0017] and [0015]).

2 Our reference to the Appeal Brief is to the Appeal Brief received on
January 19, 2009.
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2. In a preferred embodiment, the Specification discloses that
"[g]enerally, the silicon, chromium, and titanium, alone or in
combination, comprise about 2 to about 7 weight percent of the metal
alloy." (Spec. ¶ [0017]).
3. The Specification discloses at Tables I and II a preferred metal alloy
composition having 5 wt % aluminum and the balance copper. (Spec.
¶¶ [0029]-[0033]).
4. The Specification discloses at Tables I and II another preferred metal
alloy composition having, in weight percent, 4.6% nickel, 4%
aluminum, 1% silicon, and the balance copper.
Additional findings of fact may appear in the Analysis that follows.

PRINCIPLE OF LAW
As stated in Ariad Pharms., Inc. v. Eli Lilly and Co.,
the test for sufficiency [of the written description] is whether
the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date. . . .
The term "possession," however, has never been very
enlightening. It implies that as long as one can produce records
documenting a written description of a claimed invention, one
can show possession. But the hallmark of written description is
disclosure. Thus, "possession as shown in the disclosure" is a
more complete formulation. Yet whatever the specific
articulation, the test requires an objective inquiry into the four
corners of the specification from the perspective of a person of
ordinary skill in the art. Based on that inquiry, the specification
must describe an invention understandable to that skilled artisan
and show that the inventor actually invented the invention
claimed.

598 F. 3d 1336, 1351 (Fed. Cir. 2010) (en banc).
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ANALYSIS AND CONCLUSION
The Examiner finds that the "up to about 7 weight percent" limitation
required by claims 20 and 47 lacks literal support in the written description
and therefore contains subject matter that was not described in the
Specification in such a way as to reasonably convey to one of ordinary skill
that Appellants had possession of the later claimed limitation at the time the
application was filed (Ans. 4). We disagree.
The Specification discloses that "small amounts of silicon, chromium,
and titanium may . . . be present in the alloy," which in one embodiment
may include silicon, chromium, and titanium, alone or in combination,
comprise about 2 to about 7 weight percent of the metal alloy. (FF 1 and 2).
In addition, the Specification at Tables I and II discloses two preferred
metal alloy compositions: one having 5 wt % aluminum and the balance
copper and the other having 4.6 wt % nickel, 4 wt % aluminum, 1 wt %
silicon, and the balance copper. (FF 3 and 4). Since each of these preferred
metal alloy compositions has a weight percent totaling 100 wt %, each of
these preferred metal alloy compositions has 0 wt % silicon, chromium,
and/or titanium.
Thus, because the Specification, as originally filed, exemplifies
preferred compositions having 0 wt % silicon, chromium, and/or titanium,
together with its broad disclosure of metal alloys having small amounts of
silicon, chromium, and titanium and having silicon, chromium, and titanium,
alone or in combination, comprise about 2 to about 7 weight percent of the
metal alloy, we find that one of ordinary skill in the art reading Appellants'
disclosure as a whole would have understood Appellants' claimed invention
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as including a metal matrix composite material comprising a metal alloy
consisting essentially of a material "selected from the group consisting of
silicon, chromium, titanium, and combinations thereof, …present in an
amount up to about 7 weight percent" as required by claim 20 or a metal
matrix composite consisting of a metal matrix having "up to about 7 weight
percent of at least one element selected from silicon, chromium, titanium,
and combinations thereof" as required by claim 47. See Ariad, 598 F.3d at
1351; In re Wertheim, 541 F.2d 257, 265 (CCPA 1976)( the disclosure of a
range of an ingredient, together with specific examples showing specific
amounts of the same, can provide written descriptive support for a new
range of the same under 35 U.S.C. 112, first paragraph). Contrary to the
Examiner’s position (Ans. 4), literal support for the claim features are not
required.
Therefore, it follows that the Examiner erred in finding that the later
claimed limitation "up to about 7 weight percent" recited in claims 20 and 47
was not described in the originally filed disclosure within the meaning of 35
U.S.C. § 112, first paragraph.
Accordingly, we reverse the Examiner's § 112, first paragraph,
rejection of claims 20 and 47 as failing to comply with the written
description requirement.

Rejections (2) and (3)
ISSUE
Did the Examiner err in determining that Kondoh and Takagi
individually would have rendered obvious the inventions recited in claims 1,
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18, and 43 within the meaning of § 103? We decide this issue in the
negative.

PRINCIPLES OF LAW
When a claim employs the transitional term "comprising," it is
interpreted as not precluding the presence of additional ingredients and/or
steps, which are not recited. In re Baxter, 656 F.2d 679, 686-87 (CCPA
1981).
When a claim employs the limitation “consisting of,” it is interpreted
as excluding any additional ingredients and/or steps not specified in the
claim. In re Gray, 53 F.2d 520, 521-22 (CCPA 1931).
"[T]he phrase 'consisting essentially of' limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition." In re Herz, 537 F.2d 549, 551-52
(CCPA 1976) (emphasis omitted) (quoting In re Janakirama-Rao, 317 F.2d
951 (CCPA 1963)). Appellants have the burden of showing that the
additional ingredients taught by the prior art reference affect the basic
and novel characteristic of the claimed invention. See In re De Lajarte,
337 F.2d 870, 873-74 (CCPA 1964).
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
"[A] prima facie case of obviousness exists when the claimed range
and the prior art range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same properties." In
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re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (emphasis omitted); see
also Titanium Metals v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
As stated in Ex parte Obiaya:

The test of obviousness under 35 U.S.C. § 103 is not the
express suggestion of the claimed invention in any or all of the
references, but what the references taken collectively would
suggest to those of ordinary skill in the art presumed to be
familiar with them. . . . The fact that appellant has recognized
another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.

227 USPQ 58, 60 (BPAI 1985).

ANALYSES, FINDINGS, AND CONCLUSIONS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except for those findings that we expressly overturn or
set aside in the Analysis that follows.

Rejections (2) and (3): claims 1, 18, and 43
Appellants argue that the transitional phrase "consisting essentially
of" recited in claims 1, 18, and 43 excludes unclaimed ingredients, such as
Takagi's iron and Kondoh's lead, because they would change the
fundamental character of Appellants' composition, which is burn and
oxidation resistance. (App. Br. 4). Specifically, Appellants argue that the
Takagi's and Kondoh's additional ingredients would change the fundamental
character of Appellant's composition "[since Takagi's] iron (Fe) contributes
to dispersion strengthening . . . [and Kondoh's] element lead (Pb) . . .
influences lubricity." (App. Br. 4).
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In addition, Appellants rely on the Sinclair article as evidence to show
that "[t]he additional elements iron (Fe) and lead (Pb) that are present in
the compositions of Takagi or Kondoh are detrimental to burn resistance . . .
Therefore . . . inclusion of iron (Fe) and lead (Pb) into the claimed
composition would materially change the burn characteristics." (App. Br. 4-
5).
It is well settled that "the phrase 'consisting essentially of' limits the
scope of a claim to the specified ingredients and those that do not materially
affect the basic and novel characteristic(s) of a composition." See Herz, 537
F.2d at 551-52. In addition, Appellants have the burden of showing that the
additional ingredients taught by the prior art reference affect the basic and
novel characteristics of the claimed invention. See De Lajarte, 337 F.2d at
873-74.
In our case, the Specification discloses that "[t]he present invention
relates to metal matrix composites . . . that exhibit high strength, good burn
resistance, and good resistance to high temperature oxidation." (Spec. ¶
[0014]).
Thus, any additional ingredients not recited in claims 1, 18, and 43
that do not materially affect such basic and novel characteristic (i.e., good
burn and oxidation resistance) are not excluded by the transitional phrase
"consisting essentially of."
Therefore, while Takagi teaches (Takagi, col. 3, ll. 31-45) that its iron
contributes to providing a dispersion strengthened copper alloy and Kondoh
teaches (Kondoh, col. 3, ll. 50-55 and col. 9, ll. 28-46) that its lead
influences the lubricity of the copper alloy, Appellants do not direct us to
any credible evidence or provide any persuasive explanation to show that
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Kondoh's lead or Takagi's iron materially affects the basic and novel
characteristics of the alloy required by claims 1, 18, and 43 (i.e., good burn
and oxidation resistance). Appellants also have not persuasively explained
or directed us to any credible evidence that establishes the content of
Kondoh's lead or Takagi's iron results in an alloy in metal matrix composite
construct having a high burn and oxidation resistance as required by the
subject matter of claim 1, 18, or 43.
Indeed, Kondoh teaches using lead powder in an amount ranging from
0.5 to 3 wt % in its copper alloy. (Kondoh, col. 3, ll. 50-55). Takagi teaches
using iron in an amount ranging from 4 to 30 wt % in its copper alloy.
(Takagi, col. 3, ll. 34-39). Appellants have not shown how the use of any of
the disclosed amounts of lead and copper, including the amounts toward the
lower limits of either ranges, affects the basic and novel characteristics of
the alloy required by claims 1, 18, and 43. Accordingly, Appellants'
arguments are unpersuasive of reversible error.
With respect to Appellants' reliance (App. Br. 4) on the Sinclair article
as evidence to show that "[t]he additional elements iron (Fe) and lead (Pb)
that are present in the compositions of Takagi or Kondoh are detrimental to
burn resistance." While the Sinclair article shows that elemental iron and
elemental lead individually have a low threshold pressure, which is said to
indicate poor burn resistance, Appellants have not alleged, much less shown,
how the addition of the elemental iron or elemental lead, in the amounts
disclosed by Takagi and Kondoh, to any of the alloys required by claims 1,
18, and 43 materially affects their basic and novel characteristics.
Indeed, as correctly stated by the Examiner, "[A]ppellants fail to
provide factual evidence to substantiate their position that adding iron to
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[the] claimed composition would materially influence burn resistance."
(Ans. 10) (emphasis added).
Thus, it follows that the Examiner did not err in determining that
Kondoh and Takagi individually would have rendered obvious the
inventions recited in claims 1, 18, and 43 within the meaning of § 103.
Accordingly, we sustain the Examiner's decision to reject claims 1-3,
18-25, and 43-46 under 35 U.S.C. § 103(a) over Kondoh and claims 1-3, 18-
26, and 43-46 under 35 U.S.C. § 103(a) over Takagi.

Rejection (2): Claim 26
Appellants argue that "in the composition of Kondoh, the hard
particles are the reinforcing agent . . . [t]herefore, interpreting the matrix as a
reinforcing agent is contrary to the explicit teachings of the Kondoh
reference." (App. Br. 5). In addition, Appellants argue that "[t]he matrix of
Kondoh is neither an additive nor a reinforcement to another material. In
fact, hard particles are added to the matrix to reinforce the matrix." (App.
Br. 6).
The Examiner, however, relies on Kondoh's hard particles and not on
Kondoh's matrix to meet the reinforcing agent feature required by claim 26.
In this regard, the Examiner finds and Appellants do not specifically dispute
that "the claimed about 55 volume percent reinforcing agent . . . has about
32.8 wt.% according to [the Examiner's] calculation. Kondoh discloses hard
particles [in the range of] 10-30 wt.%." (Compare Ans. 11 with App. Br. 4-
6 and Reply Br. 2-3) (footnote omitted) (emphasis added).
Thus, since the claimed reinforcing agent's lower portion of the range
(i.e., "about 55 to about 85 volume percent"), which is calculated to have a
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lower limit of about 32.8 wt %, is close to the upper portion of Kondoh's
range (i.e., 10-30 wt %), a person of ordinary skill would have reasonably
expected that the properties achieved by using slightly more hard particles
than the particles range disclosed by Kondoh would have been the same or
similar to those imparted by the claimed range. Consequently, it would have
been obvious to one of ordinary skill to employ an amount of hard particles
(reinforcing agent) within the claimed range. See Peterson, 315 F.3d at
1329; see also Titanium, 778 F.2d at 783.
Appellants argue that the Examiner has not provided any evidentiary
support that Kondoh’s disclosed range is so close to the claimed range that
one of ordinary skill in the art would view these values as being substantially
identical (Reply Br. 2). Appellants further argue that having almost 3 wt.%
more of the reinforcing agent would appear to provide a greater reinforcing
effect than the range in the cited references (Reply Br. 2).
However, in reference to our above discussion, the Examiner’s
evidence is based on the fact that the claimed range is close to the range
disclosed by Kondoh. In other words, the proximity of the lower limit of the
claimed range and the upper limit of Kondoh’s range of reinforcing agent
are close enough such that one of ordinary skill would have expected them
to have the same properties.
Thus, the burden shifted to Appellants to produce evidence to rebut
that prima facie case. Appellants' mere argument that 3 wt.% more of the
reinforcing agent would appear to have a greater reinforcing effect than the
range in the cited references is insufficient to rebut the Examiner’s prima
facie case.
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Accordingly, we sustain the Examiner's decision to reject claim 26
under 35 U.S.C. § 103(a) over Kondoh.

Rejections (2) and (3): Claim 27
Appellants argue that
[t]he burden is on the Examiner to establish inherency, and the burden
is on the Examiner to show that the reference compositions would
inevitably or invariably always have the claimed burn resistance. In
this case, as evidenced by the Sinclair article discussed above, not all
compositions are burn resistant. Therefore, the reference compositions
would not automatically have the claimed burn resistance.

(App. Br. 6).
With respect to the Appellants' argument that "the burden is on the
Examiner to show that the reference compositions . . . have the claimed burn
resistance," in reference to our above discussion, the Examiner determines
and Appellants do not specifically dispute that since Kondoh and Takagi
individually teach metals having amounts in ranges that overlap the ranges
of the same metals described in Appellants' Specification, it would have
been obvious to arrive at the alloy composition having amounts of metals
within the ranges described in Appellants' specification. (Compare Ans. 6
with App. Br. 6 and Reply Br. 1-3; see Spec. ¶ [0017] and Table 1; see also
Peterson, 315 F.3d at 1330). Thus, it would have been obvious to a person
of ordinary skill in the art following the teachings of Kondoh and Takagi to
arrive at a metal composition having components in amounts specified by
the claims. As such, the claimed property (i.e., the threshold burn resistance
required by claim 27) would have naturally flowed from following the
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suggestion of Kondoh and Takagi. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.
Pat. App. & Int. 1985).
Accordingly, we sustain the Examiner's decision to reject claims 27-
34 under 35 U.S.C. § 103(a) over Kondoh and claims 27-34 under 35 U.S.C.
§ 103(a) over Takagi.

Rejection (2): Claim 47
Appellants argue that "[t]he Examiner does not appear to have
considered that the 'consisting of' language closes the claim
to the specified elements except for impurities ordinarily associated
therewith." (App. Br. 6). Thus, it appears that Appellants argue that
Kondoh's additional metals (e.g., Kondoh's elemental lead) are excluded by
Appellants' "consisting of" limitation recited in claim 47. We disagree.
As is apparent from claim 47, the transitional phrase "consisting of"
limits the claimed metal matrix composite to the metal matrix and
reinforcing fibers recited in claim 47. Appellants, by virtue of employing
the phrase “having” in claiming the metal matrix permit the presence of the
additional, unrecited metals to be part of the metal matrix that compose the
claimed metal matrix composite.
Thus, we concur with the Examiner that claim 47, as a whole, does
not exclude Kondoh's additional metals (e.g., Kondoh's elemental lead).
Accordingly, we sustain the Examiner's decision to reject claim 47
under 35 U.S.C. § 103(a) over Kondoh.

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Rejection (4)

Claims 18 and 27
With respect to claim 18, Appellants argue that "[Akutsu's] oxygen
influences wear resistance by forming hard oxides . . . Appellant's
composition is intended for oxidation resistance. Therefore, the oxygen of
Akutsu would change the fundamental character of Appellant's composition
by promoting rather than resisting oxidation." (App. Br. 7). In reference to
our above discussion, Appellants have not shown that Akutsu's oxygen
would materially affect the basic and novel characteristics of the alloy (i.e.,
oxidation resistance) required by claim 18. Accordingly, Appellants'
argument is unpersuasive of reversible error.
With respect to claim 27, Appellants argue that the rejection "should
be withdrawn for the same reasons stated above under sections II and III."
(App. Br. 7). These arguments were not found persuasive for the reasons set
forth above in response to the rejections under sections (2) and (3).
Accordingly, we sustain the Examiner's decision to reject claims 18-
25 and 27-34 under 35 U.S.C. § 103(a) over Akutsu.

Claim 26
With respect to claim 26, Appellants argue that the "[A]kutsu
reference also does not disclose an amount of reinforcing agent that overlaps
the claimed amount of reinforcing agent of 'about 55 to about 85 volume
percent.' Akutsu discloses at most 15 vol % (col. 1, lines 63-65) of
reinforcing agent." (App. Br. 7). We agree.

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The Examiner states that "the area ratio recited by Akutsu overlaps the
claimed volume ratio." (Ans. 7). However, none of the portions of Akutsu
relied upon by the Examiner teaches a volume percent range that overlaps
the claimed range of about 55 to about 85 volume percent. Nor does the
Examiner explain how any of the portions of Akutsu relied upon by the
Examiner teaches a volume percent range that overlaps the claimed range.
Since the Examiner does not direct to our attention or explain how any
portion of Akutsu teaches a volume percent range of reinforcing agent that
overlaps the claimed range, we reverse the Examiner's decision to reject
claim 26 under 35 U.S.C. § 103(a) over Akutsu.

ORDER
In summary,
1) The § 112, first paragraph rejection of claims 20 and 47 is reversed;
2) The § 103(a) rejection of claims 1-3, 18-34, and 43-47 over
Kondoh is affirmed;
3) The § 103(a) rejection of claims 1-3, 18-34, and 43-46 over Takagi
is affirmed;
4) The § 103(a) rejection of claims 18-25 and 27-34 over Akutsu is
affirmed; and
5) The § 103(a) rejection of claim 26 over Akutsu is reversed.

Accordingly, the decision of the Examiner is affirmed.

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TIME PERIOD
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)(2009).
AFFIRMED

cam

CARLSON, GASKEY &
OLDS/PRATT & WHITNEY
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009