Home -> Law Blog Directory -> Patent Law Blogs -> Benefit of Hindsight

OR PHONE (866) 635-1838 for Bankruptcy Help, (866) 635-6190 for Divorce,
(866) 635-2689 for Personal Injury or (866) 635-9402 for Criminal Defense

Find a Local Lawyer

Bankruptcy (866) 635-1838
Divorce (866) 635-6190
Personal Injury (866) 635-2689
Criminal Defense (866) 635-9402

Patent Law

: Benefit of Hindsight

Does zero include none?

By Alloy Comprising

ADVERTISEMENTS

In BPAI decision Ex parte AGARWAL (Appeal No. 2008-2005 / Application No. 11/124,935), Applicants filed claim 1 as follows:

A 14-karat rose-colored gold alloy composition, comprising:

about 58.5% gold;

about 9.0-12.0% silver;

about 0.0-0.2% zinc;

about 0.3-0.4% cobalt;

about 0.0-0.02% iridium;

about 29.0-33.0% copper;

wherein the hardness of said composition is capable of being selectively changed between its annealed-hardness value, obtained by heating the composition to about 1150 °F for about thirty minutes followed by a water quench, and its age-hardness value, obtained by heating said composition to about 600 °F for about one and one-half hours and thereafter being allowed to cool in a nonoxidizing atmosphere; and

wherein the color of said composition is between about 5-7 CieLab a* color units and between 17-21 CieLab b* color units.

The Examiner rejected the claim as obvious over a few U.S. and Japanese patents. The Board reversed, stating:

Appellants? invention relates to particular rose-colored gold alloy compositions that are a combination of (1) composition, (2) reversible hardness, and (3) color? We agree with Appellants (Reply Br. 2-3) that the Examiner has not cited any support or authority for his position regarding the color and hardness.

Thus, Applicants have allowable claims but not necessarily of the scope they intended because Applicants also argued in their appeal brief:

The Japanese references do not teach all the features of Applicants? claimed invention. Rather, JP 63169344 and JP 63259042 both teach alloy compositions, but their respective compositions differ significantly from Applicants? claimed composition. Neither Japanese reference teaches the use of iridium, a required element of Applicants? claim 1. JP 63169344 does not disclose the use of zinc, another required element of Applicants? claim 1.

This argument was likely to fail since claim 1 clearly includes zero amount of zinc and iridium ("about 0.0-0.2% zinc" and "about 0.0-0.02% iridium") and nothing in the specification indicates that zinc and iridium are required. In fact, if claim 1 were interpreted to require zinc and iridium, then claim 1 would exclude five of the six disclosed embodiments.

Alloy No.	%Au	%Ag	%Cu	%Zn	%Co	%Ir
4	58.5	9	31.9	0.2	0.4	0
5	58.5	10	30.9	0.2	0.4	0
6	58.5	10	30.895	0.2	0.4	0.005
7	58.5	11	30	0.2	0.3	0
8	58.5	12	29.1	0	0.4	0
9	58.5	12	28.9	0.2	0.4	0

However, the argument was argued and is forever in the prosecution history. A competitor may be able to form the five of the six embodiments and argue that the scope of the claims does not include any of these embodiments based on Applicant's admissions during prosecution.

Maybe Applicants should now add new claims explicitly reciting that zinc and iridium are optional.

Full post as published by Benefit of Hindsight on September 08, 2008 (boomark / email).