Ex Parte Sakashita et al

Patent Trial and Appeal Board

Dec 9, 2014

12771147 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHINJI SAKASHITA and KYOSUKE FUJISAWA
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Appeal 2013-0049121
Application 12/771,1472
Technology Center 1700
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Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1–4 and 7–16.3 We have
jurisdiction under 35 U.S.C. § 6.

1 We heard oral arguments from the Appellants’ counsel on December 2,
2014. A written transcript of the arguments will be entered into the
electronic record when it is made available.
2 According to the Appellants, the Real Party in Interest is Kabushiki Kaisha
Kobe Seiko Sho (Kobe Steel, Ltd.) (Appeal Brief filed September 27, 2012,
hereinafter “Br.,” 2).
3 Subsequent to the Final Office Action entered May 9, 2012 (hereinafter
“Final. Act”), the Appellants amended claim 1 by incorporating the
limitations of dependent claim 6, which was canceled concurrently with the
amendment of claim 1 (Amendment filed July 18, 2012 at 5). The Examiner
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We AFFIRM, but for reasons given below, we designate our
affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).

BACKGROUND
The Specification (hereinafter “Spec.”) informs one skilled in the
relevant art that the broadest aspects of the disclosed invention relate “to a
low-cost titanium alloy excellent in corrosion resistance” (Spec. ¶ 1). Claim
1, which was narrowed in scope during examination, is reproduced from
page 17 of the Appeal Brief (Claims App’x) as follows:
1. A container suitable for transportation or disposal of
radioactive waste comprising a corrosion resistant structural
member comprising a[]titanium alloy material comprising
0.005-0.10 mass% of ruthenium (Ru), 0.005-0.10 mass% of
palladium (Pd), 0.01-2.0 mass% of nickel (Ni), 0.01-2.0 mass%
of chromium (Cr), 0.01-2.0 mass% of vanadium (V), with the
remainder including titanium (Ti) and inevitable impurities.

The Examiner rejected claims 1–4 and 7–16 under 35 U.S.C. § 103(a)
as unpatentable over JP ’8284 and JP ’4665 (Final Act. 2–4; Advisory Act. 2;
Examiner’s Answer entered December 5, 2012, hereinafter “Ans.,” 3–7).

entered that amendment and revised the rejection of claims 1–4 and 7–16 to
take account of the amendment (Advisory Action entered August 3, 2012,
hereinafter “Advisory Act.,” at 2).
4 Japanese Patent Publication JP 04-365828 published December 17, 1992.
We cite to the English language translation of record.
5 Japanese Patent Publication JP 2009-092466 published April 30, 2009. We
cite to the computer-generated English language translation of record.
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DISCUSSION
The Appellants argue the claims together (Br. 4–16). Therefore, we
confine our discussion to claim 1, which we select as representative pursuant
to 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that JP ’466 describes a container for radioactive
waste based on corrosion-resistant titanium alloys (Ans. 6; Final Act. 4).
The Examiner also found that JP ’828 teaches a corrosion-resistant titanium
alloy material, which is suitable for use as an anode material and includes
Ru, Pd, Ni, Cr, V, and Ti in ranges of amounts that significantly overlap
those recited in claim 1 (Final Act. 3). Based on these findings, the
Examiner concluded that a person of ordinary skill in the art would have
combined the references in the manner claimed by the Appellants (Ans. 8).
The Appellants contend that JP ’828 is non-analogous prior art
because the reference is concerned with the manufacture of anodes rather
than the manufacture of radioactive waste containers (Br. 5). The
Appellants also contend that even if JP ’828 constitutes analogous art, “[t]he
Examiner failed to articulate any sound basis for a reasonable expectation of
using an alloy specifically designed to be an anodic material . . . as a
container for radioactive waste” (id. at 6). According to the Appellants,
“undue experimentation [was] required to make and use the claimed
invention” and “the prior art must enable one skilled in the relevant art to
make and use the claimed subject matter without undue experimentation”
(id. at 7). Furthermore, the Appellants urge that even if the Examiner
established a prima facie case of obviousness, the working examples in the
Specification include evidence of unexpected results in terms of crevice
corrosion and corrosion resistance against fluoride (id. at 8–15).
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We disagree with the Appellants for the reasons discussed below.

1. Whether JP ’828 is Analogous Prior Art
The non-analogous art test considers the threshold question whether a
prior art reference is “‘too remote to be treated as prior art.’” In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741
(Fed. Cir. 1985)).
The two separate tests for determining whether a prior art reference is
analogous are as follows: (i) whether the art is from the same field of
endeavor, regardless of the problem addressed; and (ii) if the reference is not
within the inventor’s field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved.
Clay, 966 F.2d at 658–659. The same field of endeavor test “for analogous
art requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(reference describing a toothbrush found to be in the same field of endeavor
as an invention directed to a hairbrush based on findings regarding function
and structural similarity). With respect to the second test, a reference is
reasonably pertinent to the particular problem with which the inventor is
involved if it addresses the same or similar problem. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1380–1381 (Fed. Cir. 2007) (prior art
disclosing springs as part of a counterbalancing mechanism in a folding bed
is reasonably pertinent to an application describing a gas spring used as part
of a lift assist assembly in a claimed treadmill).
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We apply each of these tests to the facts of the current appeal, starting
with the same field of endeavor test. As we noted at the outset, the
Appellants’ Specification plainly states that the disclosed invention relates
generally to the field of “low-cost titanium alloy excellent in corrosion
resistance” (Spec. ¶ 1). In the “Description of the Related Art” (emphasis
added), the Appellants explain that corrosion-resistant titanium alloys have
been used in “various fields such as a chemical plant, marine structure, and
building materials” (id. ¶ 2). Indeed, claim 1, as originally filed and finally
rejected, was directed to a “titanium alloy material” (id. at 26) or to a
“corrosion resistant structural member comprising a titanium alloy”
(Amendment filed February 17, 2012 at 3) (underlining omitted)––without
any limitation on a particular end use for the alloy. Furthermore, the
Specification working examples, which are relied on as a showing of
unexpected results, are based on test samples obtained from a titanium alloy
sheet, not a container for radioactive waste (Spec. ¶ 39).
Like the current application, JP ’828 describes titanium alloys
exhibiting corrosion resistance, although the reference also teaches that the
alloys are suitable as anodes for electrolysis (JP ’828 at 4–7). As found by
the Examiner (Final Act. 3), the titanium alloy materials described in JP
’828 and the current application including appealed claim 1 are remarkably
similar in terms of structure (i.e., the metallic constituents and their
amounts). Thus, taking account of the “explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention” (emphasis added) as
presented for search and examination, we find that JP ’828 is in the same
field of endeavor as the current application. Bigio, 381 F.3d at 1325.
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Even if JP ’828 is not in the same field of endeavor as the current
application, it is analogous art under the second test. A significant problem
addressed by the inventors is to provide titanium alloy materials having
excellent corrosion resistance––without any limitation as to a particular end
use (Spec. ¶¶ 2–19). Although JP ’828 is concerned with materials suitable
for use as anodes, a significant problem addressed in the reference is to
provide a titanium alloy having excellent resistance to harsh corrosive
environments (JP ’828 at 4–7). Therefore, the reference addresses the same
or similar problem as the current application.
Moreover, the disclosed need for corrosion-resistant titanium alloy
materials in JP ’466 (¶ 8) would have prompted a person of ordinary skill in
the art to look for such corrosion-resistant titanium alloy materials in fields
other than solely containers for radioactive waste. ICON Health, 496 F.3d at
1380 (“[A]n inventor considering a hinge and latch mechanism for portable
computers would naturally look to references employing other ‘housings,
hinges, latches, springs, etc.,’ which in that case came from areas such as ‘a
desktop telephone directory, a piano lid, a kitchen cabinet, a washing
machine cabinet, a wooden furniture cabinet, or a two-part housing for
storing audio cassettes.’”) (quoting In re Paulsen, 30 F.3d 1475, 1481–82
(Fed. Cir. 1994)). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“When a work is available in one field of endeavor, design
incentives and other markets forces can prompt variations of it, either in the
same field or a different one.”); id. (“if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
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Under these circumstances, we discern no reversible error in the
Examiner’s determination that JP ’828 is analogous prior art (Ans. 6).
Therefore, JP ’828 is within the realm of pertinent prior art that can be
applied against the claims of the current application.

2. Reason to Combine and Reasonable Expectation of Success
JP ’466 describes a radioactive waste container having a corrosion
prevention composite layer consisting of a titanium or titanium alloy layer, a
titanium oxide layer that is “formed automatically” on the surface of the
titanium or titanium alloy layer, and a titanium hydride layer between the
aforementioned layers (¶ 6; Fig. 2). According to JP ’466, the titanium
hydride layer improves the corrosion resistance and “long-term soundness”
of the radioactive waste container (¶ 15). JP ’466 teaches that the titanium
hydride layer is formed by immersing the vessel into an electrolytic solution
and supplying a direct current between the vessel and an electrode using a
DC power supply (¶¶ 21–25). Thus, a person of ordinary skill in the art
would draw a reasonable inference that the vessel acts as an electrode upon
which hydrogenation is performed (i.e., an anode).
JP ’828 describes a titanium alloy that may have Ru, Pd, Ni, Cr, and V
contents that fall within the scope of the ranges recited in claim 1.
According to JP ’828, the titanium alloy has excellent corrosion resistance
and is particularly useful as an anode in electrolysis (JP ’828 at 4–7).
Given the interrelatedness in the disclosures of the two references in
terms of corrosion resistance and suitability in electrolysis, we conclude that
a person of ordinary skill in the art would have been prompted to
manufacture the radioactive waste container described in JP ’466 with the
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titanium alloy material described in JP ’828 in order to further enhance the
corrosion resistance properties of JP ’466’s radioactive waste container, thus
arriving at a container encompassed by claim 1. KSR, 550 U.S. at 418
(“Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.”).
We find no persuasive merit in the Appellants’ bare assertions that
“undue experimentation” was required to develop the claimed invention and
that the prior art is not enabling. Such bare assertions amount to mere
attorney argument, which is entitled to little or no probative weight.6 Here,
JP ’466, which is presumptively enabled,7 indicates that any titanium alloy
that can act as an electrode and a corrosion prevention layer may be used to
manufacture the vessel. Therefore, a person of ordinary skill in the art
would have been led to combine the references with a reasonable
expectation of success. Even if we assume that the art is unpredictable as
alleged by the Appellants, only a reasonable expectation of success—not
absolute predictability—is required to establish obviousness under 35 U.S.C.
§ 103(a). In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988).

6 See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
7 In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).
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3. Unexpected Results
“When the PTO shows prima facie obviousness, the burden then shifts
to the applicant[s] to rebut.” In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir.
1997).
We concur with the Examiner (Ans. 6–7) that the proffered showing
of unexpected results (Spec. 22–25, Examples 1–34 and Comparative
Examples) is insufficient. These examples do not include a back-to-back
comparison of the invention as recited in claim 1 against the prior art. In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the offered secondary
consideration actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the merits of the claimed
invention.”).
Specifically, Examples 4–34 (invention) included one or more
elements (Al, Si, Fe, Os, Rh, Ir, Pt) that are not recited in claim 1 (Spec.
¶ 46). By contrast, Comparative Examples 36–40 did not include these
unrecited elements (id.). Therefore, it is not possible to ascertain whether
the alleged unexpected results are due to the actual differences between
claim 1 and the prior art or the presence of the unrecited elements. In re
Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While we do not intend to slight
the alleged improvements, we do not feel it an unreasonable burden on
appellants to require comparative examples relied on for non-obviousness to
be truly comparative. The cause and effect sought to be proven is lost here
in the welter of unfixed variables.”).
As for Examples 1–3, it is not clear against which comparative
examples these invention examples should be evaluated, where all variables
are held constant from comparative run to invention run except for the novel
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features of the claim. In any event, these three experiments are insufficient
to support the broad scope of patent protection desired. Where, as here, the
broadly claimed ranges overlap those disclosed in the prior art, the
Appellants must reasonably show that the entire range would provide an
unexpected criticality. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(“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.”).
For these reasons, we uphold the Examiner’s rejection.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1–4 and
7–16 as unpatentable over JP ’828 and JP ’466 is affirmed.
Notwithstanding our concurrence with the Examiner’s obviousness
conclusion, we designate our affirmance as a new ground of rejection
because we have relied on new facts and reasons in support of the rejection.
Our new ground of rejection designation preserves the Appellants’
procedural safeguards. In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir.
2011) (“Had the Board labeled its rejection as a new ground of rejection,
Stepan could have reopened prosecution to address the newly-alleged
deficiencies in its Declaration with the examiner.”); In re Leithem, 661 F.3d
1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and
the same prior art references, alone, is insufficient to avoid making a new
ground of rejection when the Board relies on new facts and rationales not
previously raised to the applicant by the examiner.”).
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37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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).
AFFIRMED
37 C.F.R. § 41.50(b)

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