Rio Tinto Alcan International Limited v. Norsk Hydro Asa

• Decision Date: 26 January 2016
• Docket Number: Appeal 2015-007694
• Citation: Rio Tinto Alcan International Limited v. Norsk Hydro Asa, Appeal 2015-007694 (P.T.A.B Jan 26, 2016)
• Parties: RIO TINTO ALCAN INTERNATIONAL LIMITED Requester and Cross-Appellant v. NORSK HYDRO ASA Patent Owner and Appellant Reexamination Control No. 95/002, 225 Patent 8, 147, 625 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

RIO TINTO ALCAN INTERNATIONAL LIMITED Requester and Cross-Appellant v. NORSK HYDRO ASA Patent Owner and Appellant

Reexamination Control No. 95/002, 225 Patent 8, 147, 625 B2 Technology Center 3900

Appeal No. 2015-007694

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 26, 2016

FILING DATE 09/13/2012

Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST Administrative Patent Judges.

DECISION ON APPEAL

GUEST Administrative Patent Judge.

Patent Owner^[1] appeals the Patent Examiner's decision to reject pending claims^[2] 1-8 11-14, and 16-19 in an inter partes reexamination of U.S. Patent 8, 147, 625 B2^[3] (hereinafter "the '625 patent"). Third-Party Requester^[4] (hereinafter "Requester") appeals from the Patent Examiner's decision not to adopt further proposed rejections of the claims. The Board's jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315.^[5] We affirm.

I. BACKGROUND

Requester filed a request for inter partes reexamination under 35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the '625 patent on September 13, 2012 (Request for Inter Partes Reexamination). Claims 1-19 are pending and stand rejected. An oral hearing was held January 6, 2016. A transcript of the hearing will be entered into the record in due course.^[6]

The claims of the '625 patent are drawn to an aluminum alloy comprising particular amounts of magnesium (Mg), silicon (Si), manganese (Mn), chromium (Cr), zinc (Zn), copper (Cu), iron (Fe), grain refining elements, ^[7] and incidental impurities. The alloy includes AlMnFeSi dispersoid particles which act as nucleation sites for Mg2Si particles. According to the specification of the '625 patent, in addition to promoting the transformation of the AlFeSi intermetallic phase to improve extrudability and surface finish, the addition of Mn to AlMgSi alloys forms AlMnFeSi dispersoid particles which act as nucleation sites for Mg₂Si particles during cooling after homogenization. '625 patent, col. 1, ll. 34-40. With more nucleation sites, more but smaller Mg₂Si particles are formed, and smaller Mg2Si particles dissolve more easily. Id., col. 1, ll. 40-50.

Claims 1 and 14 are representative and reads as follows (with underlining showing additions and brackets showing deletions with respect to the claims as issued in the '625 patent and additional indentations added for clarity):

1. Aluminium alloy useful for extrusion purposes, which contains in wt%:

Mg

0.36 - 0.[5]47

Si

0.35 - 0.6

Mn

0.03 - 0.06

Cr

maximum 0.05

Zn

maximum 0.15

Cu

maximum 0.1

Fe

0.08 - 0.28 and

in addition grain refining elements up to 0.1 wt% and incidental impurities up to 0.15 wt%,

wherein the alloy includes AlMnFeSi dispersoid particles which are formed during homogenisation and which act as nucleation sites for Mg₂Si particles during cooling after homogenisation.

14. An aluminium alloy, consisting of:

a)0.36 - 0.47 of Mg,

b)0.35 - 0.6 of Si,

c)0.03 - 0.06 of Mn,

d)0 - 0.05 of Cr,

e)0 - 0.15 of Zn,

f)0 - 0.1 of Cu,

g)0.08 - 0.28 of Fe,

h) 0 - 0.1 of grain refining elements, and

i) 0 - 0.15 of incidental impurities,

wherein a) to i) are weight percentages based upon the total weight of the aluminium alloy,

wherein the aluminium alloy is subjected to homogenisation,

wherein AlMnFeSi dispersoid particles are formed in the aluminium alloy during the homogenisation,

wherein the A1MnFeSi dispersoid particles are nucleation sites for Mg2Si particles, and

wherein the Mg2Si particles form at the A1MnFeSi dispersoid particle nucleation sites during cooling after the homogenisation.

IA. Appeal by Patent Owner

Patent Owner appeals the Examiner's decision to reject the claims as follows:

1. Claims 1-4, 6, 8, 11-14, and 16-19 rejected under 35 U.S.C. § 103(a) as unpatentable over Bichsel^[8] in view of Reiso^[9] and AA Spec.^[10] See RAN 8-9; PO App. Br. 7.

2. Claims 1-8, 11-14, and 16-19 rejected under 35 U.S.C. § 103(a) as unpatentable over Bichsel and Parson.^[11] See RAN 17-18; PO App. Br. 11.

3. Claims 13, 14, and 19 rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. See RAN 22-23; PO App. Br. 13.

IB. Appeal by Requester

Requester appeals the Examiner's decision not to adopt the following proposed rejections:

1. Claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Zajac^[12] in view of Bischel. See RAN 8; Req. App. Br. 4.

2. Claims 5 and 7 under 35 U.S.C. § 103(a) as unpatentable over Bichsel in view of Reiso and AA Spec. See RAN 14; Req. App. Br. 12.

3. Claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Bichsel in view of Bryant^[13] and AA Spec. See RAN 15-16; Req. App. Br. 16.

4. Claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over Bichsel in view of Couper.^[14] See RAN 16-17; Req. App. Br. 19.

5. Claims 9, 10, and 15 under 35 U.S.C. § 112, first paragraph, as lacking enablement. See RAN 24; Req. App. Br. 22.

II. APPEAL BY PATENT OWNER

REJECTIONS UNDER § 112, SECOND PARAGRAPH

Claim 14

The Examiner rejected claim 14 under 35 U.S.C. § 112, second paragraph as being indefinite because it recites the transitional phrase "consisting of, " but fails to expressly recite that the remaining content in the aluminum alloy is aluminum. RAN 23.

Patent Owner contends that the recitation that the remainder of the alloy is aluminum is supported by the express teaching that the alloy is an "aluminum alloy" both in the preamble of the claim and in the body of the claim. PO App. Br. 13-15. Moreover, Patent Owner contends one of ordinary skill in the art would have understood that the remainder of the content is aluminum in light of the Specification. Id. at 13.

Requester concedes that the claim implies that an amount of aluminum is present in the recited alloy, but disputes that the claim clearly defines that the aluminum content constitutes the remainder of the aluminium alloy. Req. Res. Br. 11-12.

Thus, the issue is: Did the Examiner err in determining that one of ordinary skill in the art would not have understood that claim 14 implicitly includes that the remainder of the aluminum alloy content consists of aluminum in light of the specification of the '625 patent? We answer this question in the affirmative.

The '625 patent is directed to extrudable aluminum alloys. The Specification of the '625 patent defines both preferred and exemplary aluminum alloys in terms of the additional elements, rather than by the amount of aluminum contained therein. See e.g., col. 1, ll. 51-65 and col. 2, ll. 56-64. We agree with Patent Owner that, upon reading the specification, the skilled artisan would have understood claim 14 to implicitly include that the remainder of the alloy consists of aluminum. The recitations in the claims are consistent with the recitations in the specification in that neither expressly state that the remainder of the alloy constitutes aluminum. Yet, this implication would not have been unclear to the skilled artisan. Our construction is reasonable in the context of the claim as a whole and read in light of the totality of the written description. See, e.g., In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000).

Accordingly, we reverse the Examiner's rejection of claim 14 as indefinite under 35 U.S.C. § 112, second paragraph.

Claims 13 and 19

The Examiner rejected claims 13 and 19 under 35 U.S.C. § 112, second paragraph, as being indefinite because it is unclear how to evaluate whether "the aluminium alloy is capable of being extruded without tearing." RAN 23. In particular, the Examiner finds that the claim does not include conditions under which extrusion takes place and the specification of the '625 patent provides no guidance for testing or detecting tearing during extrusion. Id. Requester further states that "nearly any alloy can be made to tear by extruding quickly enough, and nearly any alloy can be extruded without tearing at a slow enough rate" and that neither the claims nor the specification define specific extrusion speeds. Req. Res. Br. 12 (citing Figure 1 of the Royset Declaration (P. 2) as demonstrating ram speeds fast enough that all alloys exhibit tearing and ram speeds slow enough that no alloys exhibit tearing).

Patent Owner argues that "one skilled in the art would readily ascertain the meaning of the claims at the time the invention was made." PO App. Br. 16. Patent Owner cites to publications that have not been entered into the record or considered by the Examiner. Id.

Thus the issue is: Did the Examiner err in determining that one of ordinary skill in the art would not have understood the conditions under which the skilled artisan would have evaluated whether or not a given alloy as claimed would have been "capable of being extruded without tearing"? We answer this question in the negative.

35 U.S.C. § 112, ¶ 2 "puts the burden of precise claim drafting squarely on the applicant." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); see also Halliburton Energy Servs., Inc. v. M-I, LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) ("[T]he patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.").

The specification of the '625 patent is directed to alloys that are "useful for extrusion purposes at high speed." However, the '625 patent does not define what is a desirable "high speed." The '625 patent describes alloys that both tear and do not tear depending upon certain conditions, include not only the particular alloy content, but also ram speed and billet temperature. See e.g., Figures 2, 3, and 5, col. 2 ll. ...