Ex Parte Baumann

Board of Patent Appeals and Interferences

Aug 16, 2012

10755632 (B.P.A.I. Aug. 16, 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.
10/755,632 01/12/2004 Stephen Baumann 06-0561 1072
8840 7590 08/16/2012
INTELLECTUAL PROPERTY
ALCOA TECHNICAL CENTER, BUILDING C
100 TECHNICAL DRIVE
ALCOA CENTER, PA 15069-0001
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
08/16/2012 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 STEPHEN BAUMANN
________________

Appeal 2010-000269
Application 10/755,632
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN and
MICHELLE R. OSINSKI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1-17 under 35 U.S.C. § 103(a) as being 3
unpatentable over Kawahara (US 6,620,265 B2, issued Sep. 16, 2003) and 4
Doko (US 6,660,108 B2, issued Dec. 9, 2003). The Examiner has 5

1 The Appellant identifies the real party in interest as Alcoa Inc.
Appeal No. 2010-000269
Application No. 10/755,632

withdrawn claims 18-28 from consideration. We have jurisdiction under 35 1
U.S.C.§ 6(b). 2
We REVERSE. 3
Claim 1 is illustrative 4
1. A finstock comprising: 5
an aluminum alloy comprised of 6
about 0.7-1.2% Si, 7
greater than 2.0 to about 2.4% Fe, 8
about 0.6-1.0% Mn, 9
up to about 0.5% Mg, 10
up to about 2.5% Zn, 11
up to about 0.10% Ti, and 12
up to about 0.05% In, 13
with the remainder comprising Al and 14
tolerable Impurities, 15
wherein the aluminum alloy when cast into an 16
alloy strip and reduced by cold rolling produces a 17
finstock that is substantially free of breakage. 18
Independent claims 10 and 14 include an aluminum alloy having the same 19
composition as that of claim 1. The percentages recited in claim 1 are 20
understood to be weight percentages. (See Spec. 3, ll. 27-28). The 21
Specification states that the term “‘up to about,’ as employed herein, 22
explicitly includes, but is not limited to, the possibility of zero weight-23
percent of the particular alloying component to which it refers.” (Spec. 3, ll. 24
28-30). 25
Kawahara describes a heat exchanger assembled by brazing 26
corrugated fins 2 into an array positioned between flat tubes 1. (Kawahara, 27
col. 1, ll. 16-20 and fig. 1). Kawahara additionally describes fabricating an 28
Appeal No. 2010-000269
Application No. 10/755,632

aluminum alloy fin material by casting an ingot sheet of “aluminum alloy 1
comprising 2
more than 0.6% by mass, and 1.8% by mass or less, of Mn, 3
more than 1.2% by mass, and 2.0% by mass or less, of Fe, and 4
more than 0.6% by mass, and 1.2% by mass or less, of Si, 5
with the balance being Al and inevitable impurities,” 6
and then cold rolling the ingot sheet to prepare the fin material. (Id., col. 4, 7
l. 54-col. 5, l. 13). The Examiner correctly finds that the ranges of all the 8
components described by Kawahara overlap ranges recited in claim 1 with 9
one exception: While Kawahara describes a fin material made from an 10
aluminum alloy including 2.0% or less iron, claim 1 recites an alloy 11
including greater than 2.0 to about 2.4% iron. (See Ans. 4; see also App. Br. 12
6). 13
Kawahara teaches that most if not all of the iron (Fe) content of the 14
aluminum (Al) based alloy crystallizes as an intermetallic compound during 15
the casting step. (Kawahara, col. 9, ll. 64-66). The addition of excess 16
amounts of manganese (Mn) to the alloy decreases heat conductivity. 17
(Kawahara, col. 9, ll. 47-50). The iron reacts with the manganese and 18
silicon (Si) in the material during casting to form an Al‒Mn‒Fe‒Si-series 19
intermetallic phase, thereby decreasing the amount of manganese and silicon 20
dissolved as a solid solution in the aluminum alloy matrix. (Kawahara, col. 21
9, ll. 17-21 and col. 9, l. 66 – col. 10, l. 2). On the other hand, increased iron 22
content promotes the formation of a relatively fine grain structure within the 23
fin material when the fin material is brazed during assembly of the heat 24
exchanger. The fine grain structure permits brazing material to diffuse along 25
Appeal No. 2010-000269
Application No. 10/755,632

the crystal grain boundaries, thereby decreasing the droop resistance of the 1
material. (Kawahara, col. 1, ll. 50-59). 2
Doko describes fabricating an aluminum alloy fin material by casting 3
an aluminum alloy comprising: 4
more than 0.1 wt % but 3 wt % or less of Ni; 5
more than 1.5 wt % but 2.2 wt % or less of Fe; 6
1.2% or less of Si; 7
at least one component selected from the group consisting of 4 8
wt % or less of Zn, 0.3 wt % or less of In and 0.3 wt % or 9
less of Sn; and, if necessary, 10
0.3 wt % or less of Mn, 11
the balance being Al and unavoidable impurities; 12
and then cold rolling in which annealing at 250° C to 500° C is conducted 13
two or more times midway in the cold rolling process. (Doko, col. 2, l. 62 – 14
col. 3, l. 13). The Examiner correctly finds that the ranges of all the 15
components of the alloy described by Doko overlap ranges recited in claim 1 16
with one exception: while Doko describes a fin material made from an 17
aluminum alloy including 0.3% or less of manganese, claim 1 recites an 18
alloy including about 0.6-1.0% Mn. (See Ans. 4; see also App. Br. 11). 19
Doko teaches that “Mn may be added to improve mechanical strength, but 20
only a slight amount of addition would greatly lower the thermal 21
conductivity. Consequently, 0.3 wt % or less of Mn should be added, but it 22
is preferable not to add Mn from the viewpoint of thermal conductivity.” 23
(Doko, col. 5, ll. 25-29). 24
“[R]ejections on obviousness grounds cannot be sustained by mere 25
conclusory statements; instead, there must be some articulated reasoning 26
with some rational underpinning to support the legal conclusion of 27
Appeal No. 2010-000269
Application No. 10/755,632

obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(quoted in 1
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). The Examiner 2
cites Titanium Metal Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) 3
for the rule that “a prima facie case of obviousness exists where the claimed 4
ranges and prior art ranges do not overlap but are close enough that one 5
skilled in the art would have expected them to have the same properties.” 6
(Ans. 4-5, quoting MANUAL OF PATENT EXAMINING PROCEDURE § 2144.05). 7
The difference between the range of manganese content in the aluminum 8
based alloy described by Doko, namely, 0.3% or less, is not so close to the 9
range recited in claim 1, namely, about 0.6-1.0%, as to immediately suggest 10
that one of ordinary skill in the art would have expected the claimed and 11
described alloys to have the same properties. The Examiner does not 12
persuasively explain why one of ordinary skill in the art might have held 13
such an expectation. 14
Furthermore, Kawahara teaches that: 15
the Al‒Fe-series compound crystallizes at an early 16
stage when the Fe content exceeds 2.0% by mass, 17
thereby decreasing the self-corrosion resistance. 18
These crystallized materials arise [sic—cause?] 19
break of the fin material during the cold-roll step 20
and cutting of the fin in assembling the core, 21
besides decreasing the droop resistance and fin-22
melt resistance by making crystallized materials 23
fine. 24
(Kawahara, col. 10, ll. 18-27). Kawahara does not qualify the upper bound 25
of the range of iron content in any way, such as by using a term of degree 26
such as “about” or substantially to modify the phrase “exceeds 2.0% by 27
mass.” Therefore, the Appellant is correct in arguing that Kawahara 28
considered as a whole does not suggest that one of ordinary skill in the art 29
Appeal No. 2010-000269
Application No. 10/755,632

would have expected the claimed finstock, possessed of greater than 2.0 to 1
about 2.4% iron, to have the same properties as the aluminum alloy fin 2
material described by Kawahara. Once again, the Examiner does not 3
persuasively explain why one of ordinary skill in the art might have held 4
such an expectation. 5
The Examiner reasons that “one skilled in the art would [have 6
expected] that the potential disadvantage of adding slightly more Fe could be 7
offset by increasing the Mn content to the upper end of the recommended 8
range of 0.6%-1.8% so that the problem of Al‒Fe compound formation (and 9
early crystallization potentially causing breakage problems cited above) 10
would be suppressed.” (Ans. 7, citing Kawahara, col. 9, ll. 17-21). This 11
reasoning does not explain why one of ordinary skill in the art might have 12
had an apparent reason to begin with to increase the iron content in the 13
aluminum-based alloy above 2.0 wt%. 14
Therefore, neither the teachings of Kawahara nor those of Doko alone 15
establish prima facie obviousness. Even if Kawahara did establish prima 16
facie obviousness, it teaches away from the subject matter of claim 1. See In 17
re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003)(“Alternatively, an 18
applicant may rebut a prima facie case of obviousness by showing that the 19
prior art teaches away from the claimed invention in any material respect.”). 20
The combined teachings of Kawahara and Doko do not support the 21
conclusion that the subject matter of claim 1 would have been obvious. 22
Kawahara’s explanation of the advantages of Kawahara’s aluminum alloy 23
fin material relies heavily on the interaction of the silicon, manganese and 24
iron components during casting and brazing. As the Appellant points out, 25
Doko describes an alloy including a meaningful amount of nickel but only 26
Appeal No. 2010-000269
Application No. 10/755,632

0.3 wt % or less manganese. (See App. Br. 11). Therefore, the Appellant is 1
correct in asserting that Doko’s alloy is “metallurgically different” than 2
Kawahara’s in the sense that the two alloys do not necessarily achieve their 3
desired properties in similar ways. (Id.) At the very least, the two alloys are 4
not so similar that one of ordinary skill in the art would have had reason to 5
improve Kawahara’s alloy by adopting the higher iron content described by 6
Doko. 7
8
DECISION 9
We REVERSE the Examiner’s decision rejecting claims 1-17. 10
11
REVERSED 12
13
14
Klh 15