Jong Hyun. Na et al.

Patent Trials and Appeals Board

Oct 16, 2020

14726864 - (D) (P.T.A.B. Oct. 16, 2020)

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.
14/726,864 06/01/2015 Jong Hyun Na P23853US1
(P261080.US.02)
8961
107128 7590 10/16/2020
Glassimetal Technology Inc.
c/o POLSINELLI PC
1401 Lawrence Street, Suite 2300
Denver, CO 80202
EXAMINER
JOHNSON, JONATHAN J
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/16/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
aworsnop@polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONG HYUN NA, DANIELLE DUGGINS,
CHASE CREWDSON, MAXIMILIEN LAUNEY,
MARIOS D. DEMETRIOU, and WILLIAM L. JOHNSON
____________

Appeal 2018-006007
Application 14/726,864
Technology Center 1700
____________

Before ROMULO H. DELMENDO. JAMES T. MOORE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final decision to reject claims 1–11, 14–22, 25, and 27. We have
jurisdiction under 35 U.S.C. § 6(a).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Glassimetal Technology, Inc. and Apple
Inc. as the real parties sea in interest. Appeal Br. 3.
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Application 14/726,864

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The invention relates to Au-Al-RE alloys, where RE is a rare earth
metal, capable of forming a metallic glass. Spec. ¶ 2. Claim 1 delineates the
invention and is reproduced below (formatting added):
1. An alloy capable of forming a metallic glass, the
alloy comprising:

an atomic fraction of Au in the range of 40 to 90 percent,

an atomic fraction of Al in the range of 0.5 to 40 percent,

an atomic fraction of RE in the range of 1 to 20 percent;
and

wherein RE is a rare earth metal, wherein the metallic
glass has a Vickers hardness of at least 400 kgf/mm2 and a glass
transition temperature of at least 150°C.

Independent claim 15 recites an alloy similar to claim 1.
Appellant requests review of the Examiner’s rejection of claims 1–11,
14–22, 25, and 27 under 35 U.S.C. § 103 as unpatentable over Schroers (US
2008/0185076 A1, published August 7, 2008). Appeal Br. 4; Final Act. 2.
Appellant relies essentially on the same line of arguments to address
the rejection of independent claims 1 and 15 and does not present separate
arguments for the remaining dependent claims. See generally Appeal Br.
Accordingly, we select independent claim 1 as representative of the subject
matter claimed and decide the appeal based on the arguments Appellant
makes in support of the patentability of claim 1.

OPINION
After review of the respective positions Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Office
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Action and the Answer, we AFFIRM the Examiner’s rejection of claims
1–11, 14–22, 25, and 27 under 35 U.S.C. § 103 for essentially the reasons
the Examiner presents. We add the following for emphasis.
Claim 1
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 2–3. Briefly, the Examiner
finds that Schroers discloses an alloy comprising gold, aluminum, and rare
earth metals where the respective amounts of the elemental components
overlap the claimed amounts for the same components. Id. at 2. Based on
this, the Examiner determines that a prima facie case of obviousness exists.
Id. (citing to MPEP § 2144.05).
Appellant does not dispute the Examiner’s findings that Schroers
discloses an alloy comprising gold, aluminum, and rare earth metals. See
generally Appeal Br. Instead, Appellant contends that Schroers discloses
alloys comprising a very broad range of elements with no guidance for
selection of the elements. Id. at 5. According to Appellant, the claimed
alloys could not be selected from the exceptionally large genus disclosed by
Schroers because Schroers does not disclose a small recognizable class of
alloys with common properties in accordance with the holding of In re
Ruschig, 343 F.2d 965, 974 (CCPA 1965). Id. at 4–5.
Appellant’s arguments are not supported in the record and do not
point to reversible error in the Examiner’s determination of obviousness.
“In cases involving overlapping ranges, [our reviewing court has]
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003); see In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re
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Application 14/726,864

4
Peterson, 315 F.3d at 1330). In such a case, the burden shifts to Appellant
to rebut the prima facie obviousness by producing evidence of unexpected
properties at the claimed range relative to the prior art range. See In re
Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir. 1997); In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990).
In this case, the Examiner pointed to portions of Schroers that teach
the specific elemental compounds and amounts. Final Act. 2–3. In addition,
and contrary to Appellant’s arguments, Schroers provides specific guidance
with respect to the amounts for the components used in making the alloys.
Schroers ¶¶ 15–26. The noted disclosure also shows that Schroers is
concerned with making alloys having high hardness and high glass transition
temperatures. See, e.g., id. ¶ 22. Given these disclosures, Appellant has not
explained adequately why one skilled in the art, using no more than ordinary
creativity, would not have been capable of arriving at the claimed alloy. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”); see
also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the
part of one of ordinary skill in the art). See also In re O’Farrell, 853 F.2d
894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required
is a reasonable expectation of success.”).
Appellant’s argument that Schroers does not teach a small
recognizable class of alloys with common properties in accordance with the
holding of Ruschig (Appeal Br. 4–5) lacks persuasive merit because the
portion of Ruschig cited unambiguously discusses anticipation, not
obviousness, and anticipation is not at issue here. Ruschig, 343 F.2d at 974.
Further, Ruschig addresses the patentability of compounds while the claimed
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invention is directed to a ranges of amounts in alloy compositions that
undisputedly overlap the ranges disclosed by Schroers (emphasis added),
where precedents concerning alloy compositions such as Peterson and
Harris are controlling. Moreover, Schroers, like Appellant, is directed to
making metallic glasses from gold-based alloys. Schroers ¶ 11 (“The
present invention is directed to Au-based amorphous alloys (metallic
glasses) and particularly bulk-solidifying amorphous alloys (bulk metallic
glasses), which are referred to as Au-based alloys herein.”); Spec. ¶2 (“The
disclosure is directed to Au-Al-RE alloys, where RE is a rare earth metal,
capable of forming a metallic glass”). Thus, one skilled in the art would
have reasonably expected all of Schroers’s alloys, as represented by the
formula described in paragraph 27, to have the common properties that make
them suitable to form metallic glasses.
Appellant directs our attention to Schroers’s published literature2
(hereinafter “Schroers’s literature” or “Schroers’s Lit.”) to assert that
Schroers’s disclosed alloys do not have the claimed Vickers hardness or
glass transition temperature. Appeal Br. 10. The portion of Schroers’s
literature that Appellant relies upon in support of the assertion does not
include aluminum or rare earth metals. Schroers’s Lit. 061912-3. Appellant
does not explain persuasively how the alloys of Schroers’s literature relate to
the alloys disclosed in Schroers that contain aluminum and rare earth metals,

2 Contrary to Appellant’s statement (Appeal Br. 10), a copy of Schroers’s
published literature is not of record in the USPTO’s electronic file for this
Application. However, to further the disposition of this appeal, we provide
the requisite copy of Jan Schroers et al., “Gold based bulk metallic glass,”
Applied Physics Letters 87, 061912 (2005); https://doi.org/10.1063/
1.2008374, accessed October 6, 2020.
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6
particularly how the presence of these additional elements affects those
properties. Further, Appellant fails to explain adequately why one having
ordinary skill in the art would not have expected that Schroers’s alloys,
having aluminum and rare earth metals, to have the same properties as the
claimed alloys. Nor does Appellant provide other objective evidence
showing unexpected properties at the claimed range relative to the prior art
range. See In re Geisler, 116 F.3d at 1469, 1470; In re Woodruff, 919 F.2d at
1578.
Appellant argues that Schroers’s exemplified and preferred
embodiments teach away from the claimed invention because preferred
species may weigh against selecting claimed species or subgenus, and may
teach away from making the species within the genus. Appeal Br. 6–8.
Appellant further argues that Schroers discloses adding the elements Ag, Pd,
Ni, P, and Be to increase hardness and the glass transition temperature,
elements not required by the claimed invention. Id. at 9. Thus, Appellant
asserts that the examples disclosed by Schroers are outside the scope of
elements recited in independent claim 1. Id.
These arguments do not point to reversible error in the Examiner’s
determination of obviousness.
As the Examiner explains, it is well settled that a reference may be
relied upon for all that it discloses and not merely the preferred
embodiments as suggested by Appellant. Ans. 4. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered.”
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art
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reference’s disclosure is not limited to its examples). The disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d
442, 446 n.3 (CCPA 1971).
Given that Schroers’s alloys are directed to metallic glasses (Schroers
¶ 11), Appellant has not explained adequately why the preferred
embodiments and examples limit Schroers’s broader disclosure concerning
the addition of aluminum and rare earth metals.
Regarding Schroers’s addition to the alloy of the elements Ag, Pd, Ni,
P, and Be to increase hardness and the glass transition temperature, claim 1
is drafted using the open transitional term “comprising” and, thus, does not
exclude the addition of these elements.
Accordingly, we affirm the Examiner’s prior art rejection of claims
1–11, 14–22, 25, and 27 for the reasons the Examiner presents and we give
above.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11,
14–22, 25,
27
103 Schroers 1–11,
14–22, 25,
27

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