APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/588,111 10/26/2006 Frank N. Mandigo 6113B /US/COA 1211

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/588,111 10/26/2006 Frank N. Mandigo 6113B /US/COA /10/2012 HARNESS, DICKEY, & PIERCE, P.L.C 7700 Bonhomme, Suite 400 ST. LOUIS, MO ART UNIT 1735 EXAMINER IP, SIKYIN PAPER NUMBER MAIL DATE DELIVERY MODE 05/10/2012 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)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte FRANK N. MANDIGO, PETER W. ROBINSON, DEREK E. TYLER, ANDREAS BOEGEL, HANS-ACHIM KUHN, FRANK M. KEPPELER and JOERG SEEGER Appeal Technology Center 1700 Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. 134 from the Examiner's decision finally rejecting claims We have jurisdiction under 35 U.S.C. 6(b). We AFFIRM. Appellants claim a wrought copper alloy consisting essentially of wt.% Ni, wt.% Co, wt.% Si, and optionally up to 1.0 wt.%

3 Ag, Ti, and/or Zr, and up to 0.15 wt.% Mg. The balance of the alloy is Cu and inevitable impurities. The Ni/Co weight ratio is 0.5-5, while the Ni plus Co is wt.%. The (Ni+Co)/Si ratio is The alloy has an electrical conductivity greater than 40% IACS, a yield strength greater than 95 ksi, a minimum bend radius as a function of thickness (mbr/t) of up to 4t for good and bad way bend, and an average grain size following solutionizing at 950 o C of 20 microns or less. (Claims 60 and 64). Representative claims 60 and 64 read as follows: 60. A wrought copper alloy consisting essentially, by weight, of: from 1% to 2.5% of nickel; from 0.5% to 2.0% of cobalt, with a total nickel plus cobalt content of from 1.7% to 4.3% and a weight percent ratio of nickel to cobalt that is from 0.5:1 to 5:1; from 0.5% to 1.5% of silicon with the weight ratio of (Ni+Co)/Si being between 3.5:1 and 6:1; and the balance copper and inevitable impurities wherein said wrought copper alloy has an electrical conductivity in excess of 40% IACS, a yield strength in excess of 95 ksi, a minimum bend radius as a function of thickness, mbr/t of up to 4t for both good way and bad way bends and an average grain size of 20 microns or less following solutionizing at 950 C. 64. A wrought copper alloy consisting essentially, by weight, of: from 1% to 2.5% of nickel; from 0.5% to 2.0% of cobalt, with a total nickel plus cobalt content of from 1.7% to 4.3% and a weight percent ratio of nickel to cobalt that is from 1.01:1 to 2.6:1; from 0.5% to 1.5% of silicon with the weight ratio of (Ni+Co)/Si being between 3.5:1 and 6:1; from an amount effective to improve a combination of yield strength and electrical conductivity up to 1.0% of silver, titanium, zirconium and combinations thereof; up to 0.15% of magnesium; and the balance copper and inevitable impurities wherein said wrought copper alloy has an electrical conductivity in excess of 40% IACS, a minimum bend radius as a function of thickness, mbr/t of up to 4t for both good way and bad way bends and an average grain size of 20 microns or less following solutionizing at 950 C. The references listed below are relied upon by the Examiner as evidence of obviousness: 2

4 Fujiwara 1 (as transl.) JP Jan. 21, 1997 Hirai (as transl.) JP Aug. 17, 1999 Under 35 U.S.C. 103(a), the Examiner rejected: claims as unpatentable over Fujiwara; and claims as unpatentable over Fujiwara in view of Hirai. We will sustain the above rejections for the reasons expressed by the Examiner in the Answer. The following comments are added for emphasis. Appellants do not separately argue all claims on appeal under these rejections, but instead focus their arguments on the limitations of claims 60 and 64 (App. Br. 7-12; Rep. Br. 2-3). For purposes of this appeal, we select claims 60 and 64 to decide the issues for these rejections. See 37 C.F.R (c)(1)(vii) ( When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. ). The 103(a) rejection over Fujiwara The Examiner found that Fujiwara teaches the claimed Cu based alloy composition, grain size, electrical conductivity, yield strength, and bending property. (Ans. 4). In addition, the Examiner found that the prior 1 The Examiner s Answer refers to JP by the given name of the first inventor, rather than the surname. For consistency, we have adopted the convention of using the surname of the first named inventor for both references applied. 3

5 art alloy composition overlaps the claimed ranges for each of the recited components (id. at 4, 8). The Examiner provided a table comparing the wt.% range disclosed by Fujiwara and claim 60 of each of the alloy components (id. at 6). This table shows that the ranges for Ni, Co, and Si disclosed by Fujiwara substantially overlap each of the claimed ranges for these components (id.). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to select any portion of range, including the claimed range, from the broader range disclosed in a prior art reference because the prior art reference finds that the prior art composition in the entire disclosed range has a suitable utility. (Id. at 5). In support of this conclusion, the Examiner cited to In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ( In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima face case of obviousness ). (Id.). Appellants argue that Fujiwara requires the presence of Zn, Mn, and P, and that these components are excluded by claim 60 through the use of the transitional phrase consisting essentially of (App. Br. 6-9; Rep. Br. 2). Appellants further argue that because Ni is optional in Fujiwara s alloy system, this alloy is totally different from that claimed (App. Br. 10; Rep. Br. 2). Appellants also argue that Fujiwara s alloy doesn t meet the claimed Ni/Co nor (Ni+Co)/Si ratios, and that these ratios are critical to meet the claimed alloy properties. (App. Br ; Rep. Br. 2-4, 9). We are not persuaded of reversible error in the Examiner s obviousness determination. 4

6 It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citation omitted). This complements the judicially created test for determining the scope of a claim using the transitional phrase consisting essentially of. By using the term consisting essentially of, the drafter signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention. PPG Indus. Inc. v. Guardian Indus. Corp, 156 F.3d 1351, 1354 (Fed. Cir. 1998). Therefore, in construing the phrase consisting essentially of in Appellants' claims, it is necessary and proper to determine whether the claims and Specification reasonably support a construction that would include or exclude additives such as the Zn, Mn, and P. Initially, we note that the claims positively list inevitable impurities as an ingredient of the claimed alloy (claims 60 and 64). In addition, the claimed alloy may include up to 1.0 wt.% of one or more of Ag, Ti, and Zr (Spec. paras. [0020], [0042], and [0043]; claim 64). In order to construe the meaning of inevitable impurities, we turn to the Specification to determine what these may be and whether these or other ingredients may be present without materially affecting the basic and novel properties of the invention. The Specification broadly states that the inventive alloys may contain other, unspecified, elements in amounts not effective to materially change a basic property of the alloy and still be within the scope of the claims (Spec. para. [0044]). The claimed alloys will likely contain certain inevitable 5

7 impurities (id.). Among these inevitable impurities, the Specification lists Zn up to a maximum of 0.5%, Mn less than 0.1%, and P less than 0.04%, inter alia (id. paras. [0045], [0048], and [0050]). Accordingly, Appellants argument with regard to the scope of the claims under the transitional phrase consisting essentially of is contrary to the expressed teachings of their own Specification and the intent of the claims as would be understood by one of ordinary skill in the art. Appellants argue that both Fujiwara and the Specification confirm that Zn, Mn, and P would materially affect the alloy properties (App. Br. 7-9; Rep. Br. 2). Appellants state that because Fujiwara teaches a purpose for Mn, Zn, and P, and each of Fujiwara s example alloys that achieves the desired strength and conductivity properties includes Zn and at least P or Zr, these ingredients affect the basic and novel properties of the alloy, and thus are excluded from the appealed claims (App. Br. 7-9; Rep. Br. 2). As a result, Appellants conclude that removal of these ingredients would undo Fujiwara s alloys and would be contrary to its teachings (Rep. Br. 2). We disagree with the premise that merely because the prior art has a reason to add Zn, Mn, and at least P or Zr, that these ingredients must necessarily be affecting the basic and novel properties of the invention. As pointed out above, the fact that Appellants own disclosure permits these ingredients within the scope of the claims is alone sufficient rebuttal to this premise. Moreover, the basic and novel properties of the invention here are the claimed electrical conductivity, yield strength, minimum bend radius, and average grain size, none of which appear to be deleteriously affected by any of these ingredients in the amounts disclosed by Fujiwara. Finally, the burden is on Appellants to establish that any ingredient not listed in these 6

8 claims does in fact materially affect the basic and novel properties of the claimed invention. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). Appellants have not met this burden. In addition, Appellants mischaracterize the Examiner s rejection over Fujiwara. The Examiner is not proposing that it would have been obvious to remove Zn, Mn, or P from Fujiwara s alloys. Rather, the Examiner s rejection is based on the Examiner s conclusion that the presence of these ingredients in Fujiwara s alloys is within the scope of the claims, by virtue of the transitional phrase consisting essentially of. The Examiner has properly construed the claim scope to permit inclusion of these ingredients. We turn next to Appellants argument that Fujiwara s alloy system is different from that claimed because Ni is optional in the Fujiwara system (App. Br. 10; Rep. Br. 2). The Examiner found that Fujiwara has two claims that each list Ni as an ingredient of the Cu-based alloy, wherein the amount of Ni substantially overlaps the claimed amount (Ans. 7). The Examiner then stated that Appellants argument is inconsistent with this express prior art teaching (id.). We share the Examiner s view as Appellants have failed to rebut this finding. We turn next to Appellants argument that the claims are directed to a small subrange of the stated composition, and do not cover a single example [from Fujiwara] (App. Br. 10). Appellants argue that Fujiwara fails to teach or suggest the claim recitations that total nickel plus cobalt content is between 1.7% and 4.3%; the weight percent ratio of nickel to cobalt is between 0.5:1 and 5:1; and the weight ratio of (Ni+Co)/Si is between 3.5:1 and 6:1 (id.). In particular, Appellants state that 7

9 (Id. at 12). [b]ased upon the teachings of [Fujiwara] and the prior art as a whole, it was not predictable that the Ni:Co and (Ni + Co)/Si ratios were relevant to the claimed properties, or that controlling these ratios as claimed results in superior properties only achieved by others with additional alloying elements. Appellants have failed to persuade us that the comparison evidence in the Specification demonstrates criticality in the claimed ranges for Ni, Co, and Si, or any other component of the claimed alloy composition. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (noting the burden of analyzing and explaining data to support an argument of unexpected results rests on party asserting it). For example, Fujiwara s example alloys have yield strengths, electrical conductivities, bend radius, and grain size within the desired ranges. (See Fujiwara Table 3). Appellants have failed to establish any causal relationship between the claimed Ni, Co, and Si amounts or ratios, and the desired properties claimed. In this regard, we note that Appellants have not directed us to any evidence that demonstrates that yield strength, electrical conductivity, bend radius, or grain size unexpectedly depends on the claimed ranges and ratios of Ni, Co, and Si. See In re Dunn, 349 F.2d 433, 439 (CCPA 1965) ( we do not feel it an unreasonable burden on appellants to require comparative examples relied on for non-obviousness to be truly comparative ). Simply, Appellants have not established any criticality to the claimed ranges and ratios of Ni, Co, and Si which substantially overlap the prior art ranges and ratios. In their Reply Brief, Appellants submit a new argument relying on Figure 5 and Example 4, including Spec. para. [0083], in a further attempt to 8

10 establish this criticality. (Rep. Br. 3-4). We note that Figure 5 and Example 4 were not earlier relied on and argued in Appellants Brief. In addition, Appellants Reply Brief also introduces the new argument that the criticality was established in the Response filed August 14, 2008, where applicants established (by reference to declarations submitted in the parent application) that the alloys of JP do not have the properties stated therein, that applicant's claimed alloys have superior properties to those of JP , and that the compositional differences, including the Ni:Co and (Ni+Co)/Si ratios are responsible for these differences. (Id. at 9). Initially, consideration by the Board of new arguments (and/or evidence) presented for the first time in the Reply Brief that could have been presented earlier would vitiate the force of the requirement in Board Rule 37(c)(1)(vii) that [a]ny arguments or authorities not included in the brief... will be refused consideration by the Board, unless good cause is shown. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ( [a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived ); see also Optivus Tech., Inc. v. Ion Beam Appl'ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ( an issue not raised by an appellant in its opening brief... is waived ) (internal citation and quotation marks omitted). Here, Appellants have not shown good cause for the delay in presenting arguments which rely on Figure 5 and Example 4 as well as the declarations filed in the parent Application. Accordingly, these new arguments are waived in this appeal and we decline to consider these new arguments based on Figure 5 and Example 4, or the parent Application declarations. 9

11 In sum, we determine that, based on a review of the entire record before us, a preponderance of the evidence favors the Examiner s conclusion of obviousness based upon Fujiwara. The 103(a) Rejection over Fujiwara in view of Hirai We note that Fujiwara has been discussed at length above. We do not find it necessary to repeat these discussions here to the extent that Appellants repeat arguments advanced earlier regarding this reference. We turn instead to Appellants arguments regarding Hirai and the Examiner s conclusion of obviousness based on the combination of Fujiwara in view of Hirai. In particular, Appellants argue that it would not have been obvious to add Ag to Fujiwara s alloy in view of Hirai (Rep. Br. 4). This argument also is newly raised in the Reply Brief. Appellants do not provide any showing of good cause for the delay in bringing forth this argument for the first time in the Reply Brief. Accordingly, under Borden, supra, this argument is waived on appeal and we decline to consider it. Accordingly, we sustain the 103(a) rejection over Fujiwara in view of Hirai. Conclusion 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 (a)(1)(iv). AFFIRMED ssl 10