Ex Parte Pandey

Patent Trial and Appeal Board

Mar 29, 2013

12148383 (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/148,383 04/18/2008 Awadh B. Pandey PA0006931U-U73.12-327KL 2779
12208 7590 04/01/2013
Kinney & Lange, P.A.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/01/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AWADH B. PANDEY
____________

Appeal 2012-002628
Application 12/148,383
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and ROMULO H.
DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeals under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 through 12
and 19, all of the claims pending in the above-identified application.2 We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to “aluminum alloys and
more specifically to heat treatable aluminum alloys produced by melt

1 Appellant identifies the real party in interest as “United Technologies
Corporation.” (See Appeal Brief filed August 3, 2011 (“App. Br.”) at 2.)
2 See App. Br. 2.
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Application 12/148,383

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processing and strengthened by L12 phase dispersions.” (See Spec. 1, para.
0002.) Details of the appealed subject matter are recited in representative
claim 1 reproduced below from the “CLAIMS APPENDIX” in the Appeal
Brief3:
1. A heat treatable aluminum alloy comprising:
about 4.0 to about 25.0 weight percent silicon;
at least one first element selected from the group consisting of about
0.1 to about 0.5 weight percent scandium, about 0.1 to about 6.0 weight
percent erbium, about 0.1 to about 10 weight percent thulium, about 0.1 to
about 15.0 weight percent ytterbium, and about 0.1 to about 12 weight
percent lutetium;
at least one second element selected from the group consisting of
about 0.1 to about 4.0 weight percent gadolinium, about 0.1 to about 4.0
weight percent yttrium, about 0.05 to about 1.0 weight percent zirconium,
about 0.05 to about 2.0 weight percent titanium, about 0.05 to about 2.0
weight percent hafnium, and about 0.05 to about 1.0 weight percent
niobium; and
the balance substantially aluminum;
wherein the alloy is formed by rapid solidification processing,
followed by heat treating by a solution anneal at a temperature of about
800°F (426°C) to about l l00°F (593°C) for about 30 minutes to four hours,
followed by quenching, and is thereafter aged at a temperature of about
200°F (93°C) to about 600°F (316°C) for about two to forty-eight hours to
produce an ordered intermetallic precipitate of L12 crystal structure and
lattice parameter closely matching the aluminum solid solution matrix.

(See App. Br. 7(Claims App’x).)(Emphasis added.)

3 Appellant has not separately argued the claims on appeal. (App. Br. 4-6.)
Therefore, we select claim 1 and address the propriety of the rejection set
forth in the Answer based on this claim alone consistent with 37 C.F.R. §
41.37(c)(1)(vii).

Appeal 2012-002628
Application 12/148,383

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Appellant seeks review of the Examiner’s rejection of claims 1
through 12 and 19 under 35 U.S.C. § 103(a) as unpatentable over Lee4 in
view of Mergen 5 set forth in the Examiner’s Answer mailed September 23,
2011 (“Ans.”). (See App. Br.3-4.)

DISCUSSION
The Examiner has found that Lee teaches an aluminum alloy having,
inter alia, 6.0 to 25 weight percent of silicon, 0.05 to 1.2 weight percent of
titanium, 0.5 to 1.2 weight percent of zirconium, and the balance
substantially aluminum,6 (See Ans. 5-6 and Lee, p. 2, para. 0020.) The
Examiner has also found, and Appellant does not dispute, that Lee teaches
that its aluminum alloy, which is prepared by pressure casting and squeeze
casting that reads on the rapid solidification processes recited in claim 1, is
being heated by a solution anneal at a temperature of 900o F to 1000o F for

4 US 2003/0192627 A1 published in the name of Lee et al. on October 16,
2003.
5 US 6,517,954 B1 issued to Mergen et al. on February 11, 2003.
6 As is apparent from dependent claims 3 through 10 drawn to additional
alloying elements and the transitional phrase “comprising” in claim 1, the
presence of the additional alloying elements disclosed at page 1, paragraph
0020, of Lee is not excluded in claim 1. See, e.g., In re Baxter, 656 F.2d 679,
686-87 (CCPA 1981) (“As long as one of the monomers in the reaction is
[claimed] propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”) In
fact, dependent claims 3 through 10 require the presence of those additional
alloying elements described in Lee in the claimed aluminum alloy
composition.

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fifteen minutes to four hours, quenched at a temperature of 120o F to 300o F
and then aged at a temperature of 425o F to 485o F for six to 12 hours.
(Compare Ans. 8 with App. Br. 4-6 and Reply Br. 1-2 and compare claim 1
with Lee, p. 3, paras. 0031-0032.) According to the Examiner at page 7 of
the Answer:
[Lee] teaches that the alloy comprises aluminum solid solution
matrix and the particles of AI3X (X=Ti, V, Zr) compounds
having similar face-centered-cubic (FCC) crystal structure,
having LI2 lattice structure (paragraph [0024] of US'627), which
reads on the ordered inter-metallic precipitate LI2 crystal
structure in the instant claims and PG'627 [(Lee)]further
teaches: "...both the aluminum solid solution matrix and the
particles of Al.sub.3X compounds have similar face-centered-
cubic (FCC) crystal structures, and are coherent because their
respective lattice parameters and dimensions are closely
matched." (Paragraph [0024] of PG'627[(Lee)]),which reads on
the limitation of closely matching structure as recited in the
instant claim.

(See also Lee, Abstract and p. 2, para. 0024.)
According to pages 1, 3, and 4, paragraphs 0003 and 0033, of Lee, its
aluminum alloys are high strength alloys suitable for high temperature
applications and exhibit a tensile strength three times or four times that of
those conventional aluminum alloys.
Although Lee does not mention including about 0.1 to about 0.5
weight percent of scandium (Sc), the Examiner has correctly found that
Mergen teaches employing the claimed amount of scandium in aluminum
alloys as a means of adjusting or improving the properties of the aluminum
alloys. (Ans. 6-7.) In particular, Mergen teaches (col. 6, ll. 24-31):
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Adding Sc to Al-alloys is a practice that has long been
known. For example, structural materials with an aluminum
base containing added quantities of scandium are know from
the prior art and are primarily used in space travel and the
aircraft industry. Not only are these alloys light-weight, the
also exhibit the property of super-elasticity, which is mainly
attributable to a highly degenerative re-crystallisation behavior.

Appellant also acknowledges that scandium, like titanium and zirconium
taught by Lee, is known to be useful in forming Al3XL12 intermetallic phase
particles in aluminum alloys prepared via rapid solidification process and
that such Al3XL12 intermetallic phase particles, which are coherent with the
aluminum alloy matrix, are known to strengthen aluminum alloys. (Spec. 2,
para. 0006.)
Appellant does not question the Examiner’s determination that one of
ordinary skill in the art would have been led to include the claimed amount
of scandium in the aluminum alloy taught by Lee, with a reasonable
expectation of successfully forming a high strength aluminum alloy.7
(Compare 6-7 with App. Br. 4-6.) Rather, Appellant contends that the Rule
132 Declaration (“Dec.”) executed by the named inventor, Awadh Pandey,
on February 2, 2010 shows that “the alloys of this invention are
unexpectedly superior in strength to the alloys of the cited references.”
(App. Br. 4.)

7 See also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)
(“the expectation of success need only be reasonable, not absolute”).

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Thus, the dispositive question is: Has Appellant demonstrated that the
claimed subject matter as a whole imparts unexpected results, thereby
overcoming any inference of obviousness established by the Examiner? On
this record, we answer this question in the negative.
It is well settled that Appellant bears the burden of showing that the
claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see
also In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon
appellants to submit clear and convincing evidence to support their
allegation of unexpected property."). Such burden also requires Appellants
to demonstrate that the showing relied upon is reasonably commensurate
with the scope of protection sought by the claims on appeal. In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035
(CCPA 1980)); See also In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005)).
Here, the Declaration relied upon by Appellant show four specific
aluminum alloys having specific amounts of specific ingredients produced
by specific processes, including specific heat treatments and quenching
conditions. (Dec. 2, para. 3.) However, the Declaration does not mention
the conditions specifically employed in the rapid solidification processing
used to produce its four aluminum alloys and merely reiterates the broadly
claimed heat treatment conditions in claim 1, without indicating the specific
heat treatment temperatures and times actually employed in producing these
four alloys. (Dec. 3, para. 5.) Unlike the heat treatment conditions, the
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Declaration reveals that the actual quenching temperature employed is room
temperature. (Dec. 3, para. 6.) The Declaration also states that the
“[q]uenching temperature has a significant effect on microstructure and
mechanical properties” and can “provide greater number of nucleation sites
for precipitation of fine particles for significantly higher strengthening in the
present alloy.” (Id.) According to the Declaration, these four aluminum
alloys prepared by an unknown, but allegedly critical, process impart higher
ultimate tensile strengths than those shown in Lee at 500o F and 600oF (Dec.
2, para. 4.)
As is apparent from the record, Appellant has not shown that such
alleged improvements in ultimate tensile strengths are unexpected to one of
ordinary skill in the art. The fact that these four aluminum alloys prepared
by an unknown specific process impart higher ultimate tensile strengths than
those shown in Lee is not sufficient to establish that such improvement is
unexpected to one of ordinary skill in the art. As is apparent from
Appellant’s acknowledgement at page 2 of the Specification, one of ordinary
skill in the art would have reasonably expected that the addition of scandium
in aluminum alloys is useful for forming Al3XL12 intermetallic phase
particles upon rapid solidification processing for the purposes of
significantly strengthening aluminum alloys. On this record, Appellant has
failed to carry the burden of showing that one of ordinary skill in the art
would not have expected an increase in the ultimate tensile strengths of
Lee’s aluminum alloys upon adding scandium therein with rapid
solidification processing. In re Skoner, 517 F.2d 947, 948 (CCPA 1975)
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(Expected results are evidence of obviousness just as unexpected results are
evidence of unobviousness).
As also correctly found by the Examiner at pages 12 and 15 of the
Answer, Appellant has not demonstrated that the showing in the Declaration
is reasonably commensurate with the degree of protection sought by claim 1
on appeal. While the showing in the Declaration is limited to four specific
aluminum alloys having specific amounts of specific ingredients prepared
under some unknown specific critical conditions that affect the structures
and properties of the alloys, the claims on appeal are not so limited. As is
apparent from the plain language of claims 1 and 3 through 10, they
encompass a myriad of aluminum alloys not shown in the Declaration,
including those not formed by the specific process conditions employed to
form the four aluminum alloys in the Declaration. On this record, Appellant
has not demonstrated that the ultimate tensile strengths, microstructures,
and/or properties applicable to the four specific aluminum alloys in the
Declaration would be applicable to the myriad of aluminum alloys that
include ingredients materially different from those shown in the Declaration
and made under process conditions materially different from those used in
the experiment referred to in the Declaration, but encompassed by the claims
on appeal. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448
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F.2d 791, 792 (CCPA 1971). As explained by our reviewing court in In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005):
The Board also correctly reasoned that the
showing of unexpected results is not
commensurate in scope with the degree of
protection sought by the claimed subject matter
because the elemental composition of CMSX®-
486 is at or near the midpoint of the claimed range.
While Harris's evidence may show a slight
improvement over some alloys, the record does
not show that the improved performance would
result if the weight-percentages were varied within
the claimed ranges. Even assuming that the results
were unexpected, Harris needed to show results
covering the scope of the claimed range.
Alternatively Harris needed to narrow the claims.
[(Emphasis added.)]
Accordingly, based on the totality of record, including due
consideration of Appellant’s arguments and evidence in light of the evidence
relied upon by the Examiner, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness regarding the subject
matter recited in claims 1 through 12 and 19 within the meaning of 35
U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After
evidence or argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
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ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 1
through 12 and 19 under 35 U.S.C. § 103(a) as unpatentable over Lee in
view of Mergen is AFFIRMED; and
FURTHER ORDERED that 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)(iv).
AFFIRMED

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