Ex Parte Rottwinkel et al

Board of Patent Appeals and Interferences

Sep 10, 2010

11486733 (B.P.A.I. Sep. 10, 2010)

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.
11/486,733 07/14/2006 Theodor Rottwinkel 69459-Z CCD 4545
7590 09/10/2010
COOPER & DUNHAM LLP
1185 Ave. of the Americas
New York, NY 10036
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
09/10/2010 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 THEODOR ROTTWINKEL, DAVID SKINGLEY WRIGHT,
RICHARD GARY HAMERTON, JEREMY MARK BROWN, and
JOHN ANDREW WARD
____________

Appeal 2009-013079
Application 11/486,733
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 37-47. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Claim 37 is representative of the subject matter on appeal and is set
forth below:
37. A method of processing an AL alloy having a composition in
wt%:
Mg 0.05 to 0.30
Mn 0.06 to 0.25
Fe 0.11 to 0.40
Si up to 0.25
Ti up to 0.03
B up to 0.01
Cu up to 0.01
Cr up to 0.03
Zn up to 0.15
Zr up to 0.005
Unavoidable impurities up to 0.05 each, 0.15 total
Al balance,

which method comprises the steps of: casting, homogenising,
optional hot rolling, cold rolling, and optional interannealing, wherein the
homogenisation step is carried out by heating the cast alloy to a temperature
of 550 to 610°С for 1 to 10 hours and subsequently cooling to a hot rolling
temperature of between 450 and 550°С.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nishikawa 4,729,939 Mar. 8, 1988
von Asten et al 6,447,982 B1 Sep. 10, 2002

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THE REJECTION
Claims 37 - 47 are rejected under 35 U.S.C. § 103(a) over von Asten in
view of Nishikawa.
ISSUE
Did the Examiner err in determining that the applied art suggests the
claimed amount of Mn of from 0.06 to 0.25 wt%?
We answer this question in the negative and AFFIRM.

ANALYSIS
(with Findings of Fact and Principles of Law)

We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellants for this rejection. We therefore incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.
The table on page 4 of the Answer shows that von Asten teaches each
ingredient of the composition of Appellants’ method claim 37 (we note that
claim 37 recites “up to” for some of the ingredients, which includes an
amount of zero), except for the claimed amount of Mn of from 0.06 to 0.25
wt%. It is the Examiner’s position that this claimed amount is suggested in
the combination of von Asten in view of Nishikawa. The Examiner relies
upon Nishikawa for teaching an amount of Mn of from 0 to 0.4 wt%, which
encompasses the claimed Mn range of from 0.06 to 0.25 wt%. The
Examiner states, in pertinent part:
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[T]herefore, it would have been obvious to one of ordinary skill
in the art to add a proper amount of Mn, for example, 0.06 to
0.25wt% as recited in the instant claim as disclosed by US'939
in the alloy of US'982, because US'939 teaches such proper
amount of Mn restrains the cast structure from becoming coarse
and also restrains the recrystallized structure from becoming
coarse (Col.3, lines 41-49 of US'939).
Ans. 5.
Appellants argue that von Asten teaches away from any increase in
Mn content above 0.05 wt%, and refers to the Abstract, col. 4, l. 59, claim 1,
and claim 9 of von Asten. Br. 6.
However, we are not convinced that the amount of Mn taught in von
Asten is a “teaching away”. It is self-evident that the art recognizes that the
content of Mn is a result effective variable as implied by the Examiner on
page 5 of the Answer. That is, Nishikawa recognizes that the amount of Mn
affects the coarseness of the cast structure, as pointed out by the Examiner
on page 5 of the Answer. Nishikawa, col. 3, ll. 41-49. Also, Example 8 of
von Asten teaches that the material AA 3103 used is an alloy fulfills the
requirements with regard to strength and reversed bending fatigue “because
of its Mn contents of approximately 1%”. However, a disadvantage of this
material is that it cannot be universally used in EC roughening. Von Asten,
col. 10, ll. 60-65.
A particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620
(CCPA 1977); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery
of an optimum value of a result effective variable . . . is ordinarily within the
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skill of the art.”); see also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”).
In the instant case, as stated above, the art shows that the Mn content
is recognized as a result effective variable, and therefore a prima facie case
of obvious has been established by the Examiner.
Once an Examiner establishes a prima face case of obviousness, the
burden of going forward shifts to the Applicant. In re Dillon, 919 F.2d 688,
694 (Fed. Cir. 1990). A prima facie case of obviousness may be rebutted by
showing that the art, in any material respect, teaches away from the claimed
invention. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). Applicant
can rebut a presumption of obviousness based on a claimed invention that
falls within a prior art range by showing “(1) [t]hat the prior art taught away
from the claimed invention, . . . or (2) that there are new and unexpected
results relative to the prior art.” Iron Grip Barbell Co., Inc. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
As stated, supra, Appellants’ position is that von Asten teaches away
from the claimed invention. However, Appellants have not convinced us
that one skilled in the art would have been dissuaded from selecting an
amount of Mn as taught by Nishikawa. Although von Asten prefers an
amount of not more than .01 weight percent Mn (col. 3, ll. 54-55) and, in
one example, an amount of not more than 0.05 weight percent (col. 4, ll. 59-
60), at the same time von Asten discusses an example (Example 8) wherein
an amount of 1 weight percent Mn provides certain benefits as well as
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certain drawbacks (col. 10, ll. 60-65). Hence, von Asten’s teachings do not
lend themselves to a “teaching away” as asserted by Appellants.
Therefore, in the absence of a showing of unexpected results (as in the
present case), we affirm the rejections. Iron Grip Barbell Co . v. USA
Sports, Inc., 392 F.3d at 1322 (Fed. Cir. 2004).
With regard to Appellants’ arguments in both the Brief and Reply
Brief that it would not have been obvious to have combined von Asten with
Nishikawa because of the different treatments used in each of the references
(heat treatable vs. non-heat treatable), the Examiner makes an excellent
point that both von Asten and Nishikawa are directed to similar alloys. Ans.
8. Furthermore, the alloys are used for similar purposes (surfaces involved
with lithographic technology). We therefore cannot agree that one skilled in
the art would not combine these two references in the manner proposed by
the Examiner.
In view of the above, we affirm the rejection.

CONCLUSIONS OF LAW AND DECISION
The Examiner did not err in determining that the applied art suggests
the claimed amount of Mn of from 0.06 to 0.25 wt%, and we therefore
affirm the rejection.
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)(v).
AFFIRMED

tc

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