Ex Parte Hausrath et al

Patent Trial and Appeal Board

Jul 21, 2016

12976261 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/976,261 12/22/2010
24239 7590 07/25/2016
MOORE & VAN ALLEN PLLC
P.O. BOX 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
FIRST NAMED INVENTOR
Robert L. Hausrath
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.
033976-000241 7127
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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):
iplaw@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT L. HAUSRATH and
ANTHONY V. LONGOBARDO
Appeal2015-002622
Application 12/976,261
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 8-29. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is AGY Holdings
Corporation. Appeal Br. 1.
Appeal2015-002622
Application 12/976,261
STATEMENT OF THE CASE
Appellants describe the present invention as relating to glass
compositions for use in manufacturing high strength glass fibers. Spec. i-f 1.
Appellants state that the inventive glass compositions exhibit low melting
and fiberizing temperatures but also strength characteristics of higher-priced
glass fibers. Spec. i-f 5. Claims 11 and 13, reproduced below, are illustrative
of the claimed subject matter:
11. A glass composition consisting essentially of:
about 57.5 to 59.87 weight percent Si02;
between about 17.3 to about 21.5 weight percent Ab03, wherein the
weight percent ratio of Si02/Ab03 is between about 2.7 to about 3.5;
between about 9. 0 to about 11. 3 weight percent MgO;
between about 7.5 to 9.7 weight percent CaO; wherein the weight
percent ratio of MgO/CaO is between about 1.0 to about 1.2;
between about 0 to about 2 weight percent Na20;
essentially free of intentionally added LhO; and
total residual transition metal oxides of less than about 2 weight
percent.
13. A glass fiber consisting essentially of:
about 56 to 59.87 weight percent Si02;
between about 16 to about 23weight percent Ab03, wherein the
weight percent ratio of Si02/ Ab03 is between about 2 to about 4;
between about 8 to about 12 weight percent MgO;
between about 6 to 10 weight percent CaO, wherein the weight
percent ratio of MgO/CaO is between about 0.7 to about 1.5;
between about 0 to about 2 weight percent Na20;
essentially free of intentionally added LhO; and
total residual transition metal oxides of less than about 2 weight
percent.
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Appeal2015-002622
Application 12/976,261
Appeal Br.2 20-21 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Tang3
Unidentified Applicant
US 2012/0129678 Al
JP2003 l 7 l l 43A
(hereinafter "JP ' 14 3 ")
REJECTIONS
May 24, 2012
June 17, 2003
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 13-17, 19, and 21-29 under 35 U.S.C. § 103 as
unpatentable over JP '143. Ans. 2.
Rejection 2. Claims 8-12, 18, and 20 under 35 U.S.C. § 103 as
unpatentable over Tang. Id. at 4.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in Jn re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Appellants'
2 In this decision, we refer to the Final Office Action mailed February 26,
2014 ("Final Act."), the Appeal Brief filed May 27, 2014 ("Appeal Br."), the
Examiner's Answer mailed October 22, 2014 ("Ans."), and the Reply Brief
filed December 22, 2014 ("Reply Br.").
3 The Examiner's rejection relies on CN101597140, but the Examiner
references Tang US 2012/0129678 Al as the English language equivalent.
Ans. 4. Likewise, references herein are to the English language equivalent
(i.e. the published U.S. application) ..
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Application 12/976,261
arguments with respect to each of the Examiner's rejections are discussed
below.
Rejection 1. The Examiner rejects claims 13-17, 19, and 21-29 as
obvious over JP '143. Appellants do not separately argue claims 14--17, 19,
or 21-29. We therefore limit our discussion to claim 13. Claims 14--17, 19,
or 21-29 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants argue that claim 13 recites a MgO/CaO ratio between
about 0. 7 to about 1.5 and that JP '143 does not teach this limitation because
JP '143's example 5 in Table 1 discloses a ratio of 1.92. Appeal Br. 9. The
Examiner, however, correctly finds that JP '143 "discloses a glass fiber
composition comprising 55---65% by weight of Si02; 17-23% by weight of
Ah03; 7-15% by weight MgO; 2---6% by weight CaO; and 1-7% by weight
Ti02 (see paragraph 0015)." Final Act. 2. JP '143 thus discloses a
MgO/CaO ratio between 1.17 (7% MgO divided by 6% CaO) and 7.5 (15%
MgO divided by 2% CaO). Cf In re Waymouth, 499 F.2d 1273, 1275-76
(CCPA 1974) (considering unexpected results and thereby suggesting that a
prima facie case was established where prior art reference did not
specifically disclose claimed ratio but ratios could be calculated from
disclosure).
The range of ratios that is intrinsic in JP '143 's teachings overlap with
the claimed range of about 0.7 to about 1.5. These overlapping ranges are
sufficient to establish a prima facie case of obviousness. See, e.g., In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("[a] primafacie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art"); In re Geisler, 116 F.3d 1465,
1469 (Fed. Cir. 1997) (acknowledging that a claimed invention was
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Application 12/976,261
rendered primafacie obvious by a prior art reference whose disclosed range
( 5 0-100 Angstroms) overlapped the claimed range (100-600 Angstroms)).
Similarly, Appellants argue that JP '143 fails to teach claim 11 's
recitation of CaO "between about 6 to 10 weight percent" and Ti02 (a
transition metal oxides) of "less than about 2 weight percent." Appeal Br.
20-21. Appellants incorrectly focus onjust one example of JP '143. In
addition to the specific examples of Table 1, JP '143 teaches CaO and Ti02
weight percentages that overlap with the recited percentages. Final Act. 2;
JP '143 ,-r 12 (teaching 2---6% CaO and 1-7% Ti02).
Appellants also argue that JP '143 teaches away from claim 13 's
composition by teaching a (X + Y) I Z ratio between 14 and 41 where X is
Si02 content, Y is Ah03 content, and Z is CaO content. A composition
having 59.87% Si02, about 23% Ah03, and about 6% CaO would fall within
the scope of both claim 13 and within JP ' 14 3 's teachings in paragraph 12.
Appellants note that the (X + Y) I Z ratio at this composition is 13.8. Appeal
Br. 12.
We agree with the Examiner that the (X + Y) I Z ratio above is
sufficiently close to the preferred ratio of JP '143 that one of skill in the art
would not have been dissuaded from pursuing it. Ans. 8-9. This is
especially true given that claim 13 's recited ranges use the word "about" and
are therefore not precise. In the context of claim 13 and the Specification,
we construe "about 23 weight percent" Ah03 as including much as 23.5%
and construe "about 6 ... weight percent" CaO as being as little as 5.5%.
Using these values, (X + Y) I Z = (59.87 + 23.5) I 5.5 = 15. The calculated
(X + Y) I Z ratio with these values is thus within the JP '143 patent's
preferred ratio of 14 to 41. JP '143 i-f 27. We therefore discern no error in
the Examiner's primafacie obviousness conclusion.
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Application 12/976,261
Once a prima facie obviousness is established, the burden shifts to
Appellants to rebut. Appellants may overcome a prima facie case of
obviousness by establishing "that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range." In re Peterson, 315 F.3d at 1330 (citation and internal
quotes omitted). Our reviewing court has explained that "when 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).
Here, Appellants provided the declaration of Dr. Norman Huff to show
unexpected results. Appeal Br. 18; Oct. 31, 2013, Huff Deel. i-f 8. The
declaration, however, does not adequately establish that the claimed range
achieves unexpected results as compared to the closest teachings of the JP
'143 reference. Ans. 12. Rather, Dr. Huff only states that Exhibits A and B
compare "glasses described in the Application" with "prior art glasses." Huff
Deel. i1 5. It is unclear what "prior art glasses" the data of Exhibits A and B
correspond to. The present record lacks evidence that unexpected results over
a commensurate range of claim 13's scope as compared to, for example,
Example 5 of the JP '143 reference. Accordingly, Appellants have not
adequately rebutted the prima facie case of obviousness.
We thus sustain the Examiner's rejection of claims 13-17, 19, or 21-
29.
Rejection 2. The Examiner rejects claims 8-12, 18, and 20 as obvious
over Tang. Appellants do not separately argue claims 8-10, 12, 19, or 21-
29. We therefore limit our discussion to claim 11. Claims 8-10, 12, 19, or
21-29 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 12/976,261
Appellants argue that Tang does not address claim 11 's recited
Si02/Ab03 or MgO/CaO ratios. Appeal Br. 14--15. We disagree. The
Examiner correctly found that Tang discloses amounts of Si02, Ab03, MgO,
and CaO that result in the recited ratios. Final Act. 6; Ans. 9-12. Tang, for
example, discloses ranges Si02 at 56-64 weight percentage, Ab03 at 13-20
weight percentage, MgO at 7-12 weight percentage, and CaO at 8-13
weight percentage. Ans. 1 O; Tang i-fi-1 5, 10. Tang thus teaches Si02/ Ab03
ratios from 2.8 (56% Si02 divided by 20% Ab03) to 4.9 (64% Si02 divided
by 13% Ab03) and teaches MgO/CaO ratios from 0.53 (7% MgO divided by
13% CaO) to 1.5 (12% MgO divided by 8% CaO). These ratio ranges
overlap with the ranges recited by claim 11 and are thus sufficient to support
the Examiner's conclusion of prima facie obviousness. See, e.g., In re
Peterson, 315 F.3d at 1329.
Appellants also argue that Tang teaches away from compositions with
less than 10 weight percent CaO. Appeal Br. 15-16. While Appellants rely
on select paragraphs of Tang to support this position, Tang teaches
elsewhere that a weight percentage of CaO as low as 8% can be acceptable.
Ans. 1 O; Tang i-fi-1 5, 10. All disclosures of Tang must be considered. See In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976) ("all disclosure of the prior
art, including unpreferred embodiments, must be considered").
We have also considered Dr. Huffs Declaration in the context of
claim 11. As explained above with respect to claim 13, the evidence
presented by Appellants does not adequately identify what prior art
compositions Appellants tested. The present record also does not establish
what compositions within the recited ranges of claim 11 were tested.
Appellants therefore fail to establish unexpected results over a
commensurate range of claim 11 's scope as compared to the closest prior art.
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Application 12/976,261
We therefore sustain the Examiner's rejection of claims 8-12, 18, and
20.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
8-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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