Ex Parte Parson

Patent Trial and Appeal Board

May 28, 2013

12183575 (P.T.A.B. May. 28, 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.
12/183,575 07/31/2008 Nicholas Charles Parson 007804.00166 5846
22908 7590 05/28/2013
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
MORILLO, JANELL COMBS
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
05/28/2013 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 NICHOLAS CHARLES PARSON
____________

Appeal 2012-003364
Application 12/183,575
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003364
Application 12/183,575

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Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 1-35, 37-40, 42, 43, 54, 55,
57-79, and 81 as unpatentable over Hurd (US 6,413,331 issued July 2, 2002)
and of claims 36, 41, 56, and 80 as unpatentable over Hurd in view of
Daaland (US 2002/0007881 A1 published Jan. 24, 2002). We have
jurisdiction under 35 U.S.C. § 6. An oral hearing for this appeal was held on
May 21, 2013.
We AFFIRM.

Appellant claims an extrudable aluminum alloy composition
comprising defined ranges of selected ingredients wherein the composition
includes a Cu/Mg ratio higher than or equal to 3 (independent claim 1; see
also remaining independent claims 16, 25, 39, 54, 66, and 73).
Representative claim 1 reads as follows:
1. An extrudable aluminum alloy composition
comprising, in weight percent, between 0.60 and 0.90
manganese, between 0.45 and 0.75 copper, between 0.05 and
0.24 magnesium, less than 0.30 iron, less than 0.30 silicon, less
than 0.05 titanium, less than 0.05 vanadium, and a Cu/Mg ratio
higher or equal to 3.
Appellant does not present any reasonably specific arguments directed
to the dependent claims under rejection including the separately rejected
dependent claims. As a consequence, the dependent claims will stand or fall
with their parent independent claims of which claim 1 is representative.
We will sustain the above rejections for the reasons expressed in the
Answer. The following comments are added for emphasis.
The Examiner finds that Hurd discloses an aluminum alloy in the
form of an extrusion (i.e., an extrudable aluminum alloy) having the claim 1
Appeal 2012-003364
Application 12/183,575

3
ingredients in weight percentage ranges which overlap those of claim 1
(Ans. 4-5). The Examiner concludes that it would have been prima facie
obvious to select from Hurd's ranges ingredient concentrations which fall
within the claim 1 ranges including Cu and Mg concentrations which would
yield the claim 1 ratios based on a reasonable expectation of obtaining an
alloy of the type desired by Hurd (id. at 5).
Appellant does not dispute the Examiner's above findings but contests
the Examiner's conclusion of prima facie obviousness. According to
Appellant, "[t]here is nothing to suggest in Hurd the particular claimed
combination of between 0.45 and 0.75 copper, between 0.05 and 0.24
magnesium as well as a Cu/Mg ratio of higher or equal to 3" (App. Br. 10).
We cannot agree with Appellant. The concentrations of copper and
magnesium required by claim 1 would have been suggested by Hurd's
disclosure of overlapping ranges for these ingredients. See In re Peterson,
315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (rejecting argument that it would
not have been prima facie obvious to select the claimed narrower ranges of
ingredients from the broader prior art ranges of those ingredients).
Moreover, the copper and magnesium concentrations suggested by Hurd
include concentrations which would necessarily yield the claim 1 ratios.
In an attempt to refute the Examiner's prima facie case, Appellant
presents data from Specification Tables 1 and 3 which are said to evince that
the claimed aluminum alloys exhibit unexpected results relative to the
aluminum alloys of Hurd (App. Br. 11-15). Specifically, Appellant states
that the claim 1 ratios serve to maximize the strength to extrudability index
of the claimed alloys (id. at 14) whereas Specification Alloys 1 and 2, which
Appeal 2012-003364
Application 12/183,575

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are characterized as corresponding to the alloys of Hurd (id.), possess an
unsatisfactory strength to extrudability index (id. at 15).
As correctly explained by the Examiner, of the alloys presented in
Specification Tables 1 and 3, only Alloy 4 is representative of the claim 1
alloys (Ans. 9), and the scope of this single example is not commensurate
with the scope of claim 1 (id. at 9-10). See Peterson, 315 F.3d at 1330-31
("applicant's showing of unexpected results must be commensurate in scope
with the claimed range"). Further, we agree with the Examiner that
Appellant improperly characterizes Specification Alloys 1 and 2 as
corresponding to the alloys of Hurd and that ingot no. 3 of Hurd (see Hurd
Table 1) constitutes the closest prior art to the alloys defined by claim 1
(Ans. 10-12). In particular, ingot no. 3 is the closest prior art because, of all
the alloys exemplified by Hurd, it contains copper and magnesium
concentrations that yield a ratio of 2.96 which is closest to the claim 1 ratio
of 3 or higher.
Under these circumstances, we share the Examiner's determination
that Appellant's proffered evidence of nonobviousness in the form of
unexpected results does not outweigh the Hurd evidence of obviousness.
Therefore, we sustain each of the § 103 rejections advanced by the Examiner
in this appeal.

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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