Ex Parte Litwinski et al

Board of Patent Appeals and Interferences

Jan 14, 2009

10631907 (B.P.A.I. Jan. 14, 2009)

1
2
3
4
5
6
UNITED STATES PATENT AND TRADEMARK OFFICE 7
____________________ 8
9
BEFORE THE BOARD OF PATENT APPEALS 10
AND INTERFERENCES 11
____________________ 12
13
Ex parte EDWARD LITWINSKI and RAHMATOLLAH F. TOOSKY 14
____________________ 15
16
Appeal 2008-1408 17
Application 10/631,907 18
Technology Center 3600 19
____________________ 20
21
Decided: January 14, 2009 22
____________________ 23
24
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and 25
FRED A. SILVERBERG, Administrative Patent Judges. 26
27
SILVERBERG, Administrative Patent Judge. 28
29
30
DECISION ON APPEAL 31
32
STATEMENT OF THE CASE 33
Appellants appeal under 35 U.S.C. § 134 (2002) from a Final Office 34
Action of claims 38-46. We have jurisdiction under 35 U.S.C. § 6(b) 35
(2002). 36
37
Appeal 2008-1408
Application 10/631,907

2
SUMMARY OF DECISION 1
We REVERSE. 2
THE INVENTION 3
The Appellants’ claimed invention is directed to a rivet formed of 4
metal or metal alloy having a refined grain structure (Specification 7, ll. 17-5
24). Claim 38, reproduced below, is representative of the subject matter on 6
appeal. 7
38. A rivet comprising: 8
a shank having a head at one end thereof; and 9
wherein said shank and said head consist essentially of a 10
grain structure having a grain size between about 3 microns and 11
5 microns. 12
THE REJECTIONS 13
The Examiner relies upon the following as evidence of 14
unpatentability: 15
Briles US 4,159,666 Jul. 3, 1979 16
Y.K.K. Corporation JP 10-195567 Jul. 28, 1998 17
(as translated, hereinafter “JP ‘567”) 18
19
The following rejections are before us for review: 20
1. Claims 38-42 are rejected under 35 U.S.C. § 102(b) (2002) as being as 21
being anticipated by JP ‘567. 22
2. Claims 43-46 are rejected under 35 U.S.C. § 103(a) (2004) as being 23
unpatentable over JP ‘567 in view of Briles. 24
25
ISSUE 26
The issue before us is whether the Appellants have shown that the 27
Examiner erred in rejecting claims 38-42 over JP ‘567, and claims 43-46 28
over JP ‘567 in view of Briles. The issue turns on whether JP ‘567 discloses 29
Appeal 2008-1408
Application 10/631,907

3
a shank and head of a rivet consisting essentially of a grain structure having 1
a grain size between about 3 and 5 microns. 2
3
FINDINGS OF FACT 4
We find that the following enumerated findings are supported by at 5
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 6
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 7
proceedings before the Office). 8
1. The Appellants’ Specification discloses a rivet 4 comprising a 9
shank 10 having a head 11 at one end thereof; wherein the shank 10
and the head consist essentially of a grain structure having a grain 11
size between about 3 microns and 5 microns (Specification 7, ll. 4-12
31). 13
2. The Appellants’ Specification further discloses that the rivet is 14
formed of aluminum, an aluminum alloy, titanium or a titanium 15
alloy (Specification 3, l. 30). 16
3. The Appellants’ Specification still further discloses that an end of 17
the shank opposite the head is adapted to be upset to form a 18
another (second) head (Specification 10, ll. 3-14), wherein the 19
shank and the head comprise a refined grain structure formed by 20
stirring with a friction stir welding probe (Specification 7, l. 24-21
Specification 8, l. 24). 22
4. The Appellants’ Specification still further discloses that the rivets 23
formed according to the claimed invention have a refined grain 24
structure that resists formation and propagation of cracks, and thus 25
have improved formability so as to resist necking, cracking, or 26
Appeal 2008-1408
Application 10/631,907

4
tearing during manufacture and installation (Specification 9, ll. 14-1
17). 2
5. JP ’567 discloses a rivet comprising aluminum oxide particles, 3
aluminum carbide particles and boride particles dispersed in an 4
aluminum or aluminum alloy matrix (JP ‘567 Translation [0005]). 5
6. JP ’567 further discloses the mean grain size of the matrix must not 6
be more than 5 microns (JP ‘567 Translation [0005] and [0010]) 7
and preferably not more than 1 micron (JP ‘567 Translation 8
[0010]), and the mean grain sizes of the aluminum oxide particles 9
and aluminum carbide particles together being not more than 100 10
nanometers (0.1 microns) (JP ‘567 Translation [0005]). 11
7. JP ’567 still further discloses that the volumetric fraction of the 12
boride particles should be under 30% and the total volumetric 13
fraction of both dispersed aluminum oxide particles and aluminum 14
carbide particles should be greater than 0.5% and less than 8% (JP 15
‘567 Translation [0005]). 16
8. JP ‘567 still further discloses that a mixture of aluminum or 17
aluminum alloy powder and boric acid can be subjected to friction 18
welding (JP ‘567 Translation [0006] and [0009]). 19
9. Briles discloses a rivet 18 and work 10 may consist of like or 20
unlike materials such as aluminum, aluminum alloy, titanium or 21
titanium alloy (col. 3, ll. 51-53); the rivet comprises a head 20 and 22
a shank 19; and wherein an end of the shank opposite the head is 23
adapted to be upset to form a another (second) head 30. 24
25
Appeal 2008-1408
Application 10/631,907

5
PRINCIPLES OF LAW 1
Anticipation is established only when a single prior art reference 2
discloses, expressly or under the principles of inherency, each and every 3
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys., 4
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no 5
difference between the claimed invention and the reference disclosure, as 6
viewed by a person of ordinary skill in the field of the invention. Scripps 7
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 8
1991). It is not necessary that the reference teach what the subject 9
application teaches, but only that the claim read on something disclosed in 10
the reference, i.e., that all of the limitations in the claim be found in or fully 11
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 12
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). 13
“Section 103 forbids issuance of a patent when ‘the differences 14
between the subject matter sought to be patented and the prior art are such 15
that the subject matter as a whole would have been obvious at the time the 16
invention was made to a person having ordinary skill in the art to which said 17
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 18
1734 (2007). The question of obviousness is resolved on the basis of 19
underlying factual determinations including (1) the scope and content of the 20
prior art, (2) any differences between the claimed subject matter and the 21
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 22
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 23
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these 24
questions might be reordered in any particular case, the [Graham] factors 25
continue to define the inquiry that controls.”). 26
Appeal 2008-1408
Application 10/631,907

6
Use of the term “consisting essentially of,” preceding list of 1
ingredients in a composition claim, typically means that invention 2
necessarily includes listed ingredients and is open to unlisted ingredients that 3
do not materially affect basic and novel properties of invention; “consisting 4
essentially of” claims occupy middle ground between closed claims that are 5
written in “consisting of” format and fully open claims that are drafted in 6
“comprising” format. PPG Industries Inc. v. Guardian Industries Corp., 7
156 F.3rd 1351 (Fed. Cir. 1998). 8
The term “consists” appearing in a clause in the body of the claims 9
limits only the element(s) set forth in that clause, but does not limit the open-10
ended “comprising” language appearing earlier in the claims. In re Crish, 11
393 F.3d, 1253 (Fed. Cir. 2004). 12
13
ANALYSIS 14
Appellants argue claims 38, 39, 40, 42 and 43 as a group. As such, 15
we select claim 38 as representative of the group, and claims 39, 40, 42 and 16
43 will stand or fall with claim 38. 37 C.F.R. § 41.37(c)(1)(vii) (2007). The 17
Appellants argue claims 41 and 44-46 separately. 18
JP ’567 discloses a rivet comprising aluminum oxide particles, 19
aluminum carbide particles and boride particles dispersed in a aluminum or 20
aluminum alloy matrix (JP ‘ 567 Translation [0005]) (Fact 5); the mean 21
grain size of the matrix must not be more than 5 microns (JP ‘ 567 22
Translation [0005] and [0010]) and preferably not more than 1 micron (JP ‘ 23
567 Translation [0010]); the mean grain sizes of the aluminum oxide 24
particles and aluminum carbide particles together are not more than 100 25
nanometers (0.1 microns) (JP ‘ 567 Translation [0005]) (Fact 6); the 26
Appeal 2008-1408
Application 10/631,907

7
volumetric fraction of the boride particles should be under 30% and the total 1
volumetric fraction of both dispersed aluminum oxide particles and 2
aluminum carbide particles should be greater than 0.5% and less than 8% (JP 3
‘ 567 Translation [0005]) (Fact 7); and a mixture of aluminum or aluminum 4
alloy powder and boric acid can be subjected to friction welding (JP ‘ 567 5
Translation [0006] and [0009]) (Fact 8). 6
Appellants contend that JP ‘567 includes particles of varying sizes and 7
while the mean grain size of the matrix is not more than 5 microns, the grain 8
sizes of the aluminum oxide particles, the aluminum carbide particles and 9
the boride particles are outside the range called for in claim 38 (Br. 7). 10
Appellants further contend that given the significance of the grain size to the 11
formability of the rivets of the claimed invention, a composite material that 12
has a volume as much as 38% of material outside the claimed range cannot 13
be considered to “consist essentially of” the claimed material (Br. 8). The 14
Examiner contends that in JP ‘567 the material not having a grain size of 5 15
microns is such a small percentage of the overall volume (38%) and that the 16
structure would continue to “consist essentially of” the grain size of 5 17
microns(Ans. 3 and 5). The Examiner further contends that the small 18
amount of material which does not fall within the claimed range is “about” 19
within the range (Ans. 3 and 5). The Examiner still further contends that in 20
JP ‘567 a mean grain size of not more than 1 micron is about 3 microns, and 21
since JP ‘567 discloses that the mean grain size of the overall matrix is not 22
more than 5 microns, there must be grains larger than 1 micron that would 23
anticipate the about 3 micron low end of the claimed range (Ans. 7). We 24
agree with Appellants that an overall volume of 38% being outside the 25
claimed range is a significant number. While we agree with the Examiner 26
Appeal 2008-1408
Application 10/631,907

8
that a “mean” of not more than 5 microns is an average of not more than 5 1
microns, we find that in JP ‘567, no where is it specifically stated that any of 2
the grains of the matrix are actually within the range of about 3-5 microns as 3
called for in claim 38. We find that to have a mean grain size of no more 4
than 5 microns as disclosed by JP ‘567, all of the grain sizes could be 5
outside the range called for in claim 38. We find that it would be 6
speculative, at best, to assume that any portion of the overall matrix 7
disclosed in JP ‘567 is within the range called for in claim 38. 8
9
CONCLUSION OF LAW 10
We conclude that the Appellants have shown that the Examiner erred 11
in rejecting claims 38-42 under 35 U.S.C. § 102(b) as being anticipated by 12
JP ‘567, and claims 43-46 under 35 U.S.C. § 103(a) as being unpatentable 13
over JP ‘567 in view of Briles. 14
15
DECISION 16
The decision of the Examiner to reject claims 38-42 over JP ‘567, and 17
claims 43-46 over JP ‘567 in view of Briles is reversed. 18
19
REVERSED 20
21
22
23
24
25
26
27
Appeal 2008-1408
Application 10/631,907

9
1
2
3
4
5
LV: 6
7
8
9
10
ALSTON & BIRD, LLP 11
BANK OF AMERICA PLAZA 12
101 SOUTH TRYON STREET, SUITE 4000 13
CHARLOTTE, NC 28280-4000 14