12870873 (P.T.A.B. Mar. 24, 2016)

Ex Parte FENG et al

Patent Trial and Appeal BoardMar 24, 2016

12870873 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/870,873 08/30/2010 26587 7590 03/25/2016 MCNEES WALLACE & NURICK LLC 100 PINE STREET P.O. BOX 1166 HARRISBURG, PA 17108-1166 FIRST NAMED INVENTOR Ganjiang FENG 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 246698/22113-0008-01 1741 EXAMINER KIECHLE, CAITLIN ANNE ART UNIT PAPER NUMBER 1733 MAILDATE DELIVERY MODE 03/25/2016 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) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GANJIAN FENG, GEORGE GOLLER, JOSEPH RAZUM and MATTHEW LA YLOCK 1 Appeal2014-005289 Application 12/870,873 Technology Center 1700 Before CHUNG K. PAK, TERRY J. OWENS, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision2 rejecting claims 1-6, 10, and 15-20, which are all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The real parties in interest are said to be Ganjiang Feng, George Albert Goller, Joseph C. Razum, Matthew J. Laylock and General Electric Company. Appeal Brief filed November 26, 2013 ("App. Br.") at 1. 2 Non-Final Action entered December 20, 2012 ("Non-Final Act.") at 3-9, Final Action mailed June 25, 2013 ("Final Act.") at 1-4 and the Examiner's Answer entered January 28, 2014 2012 ("Ans.") at 2-8. Appeal2014-005289 Application 12/870,873 STATEMENT OF THE CASE The subject matter on appeal is directed to a "nickel-iron-base alloy [useful for a gas turbine engine] and a process of forming [the] nickel-iron base alloy." Spec. 1, ,-i,-i 1 and 2. The nickel-iron-base alloy has "a solidification range of less than about l 10Â°F, a gamma prime solvus of greater than about l 700Â°F, substantially no eta phase, a laves phase of less than about 5%, a sigma phase of less than about 5%[.]" Id at ,-i 10. These properties are said to be a function of the compositions of the nickel-iron-base alloy. Id at ,-i,-i 21-25. The composition of the nickel-iron-base alloy can be defined as having "by weight about 0.06 % to about 0.09 % C, about 35 % to about 37 % Fe, about 12.0 % to about 16.5 % Cr, about 1.0 % to about 2.0 % Al, about 1.0 % to about 3.0 % Ti, about 1.5 % to about 3.0 % W, up to about 5.0 % Mo, up to about 0.75 % Nb, up to about 0.2 % Mn, up to about 0.1 % Si, up to about 0.006 % B, and balance essentially Ni." Id at,-i9. Details of the appealed subject matter are recited in illustrative claim 1, which is reproduced below from the Claims Appendix of the Reply Brief filed March 27, 2014 ("Reply Br."): 1. A nickel-iron-base alloy comprising by weight about 0.06 % to about 0.09 % C, about 35 % to about 37 % Fe, about 12.0 % to about 14.5 % Cr, about 1.0 % to about 2.0 % Al, about 1.0 % to about 3.0 % Ti, about 1.5 % to about 3.0 % W, up to about 5.0 % Mo, up to about 0.75 % Nb, up to about 0.2 % Mn, up to about 0.1 % Si, up to about 0.006 % B, and balance essentially Ni wherein the alloy has a solidification range of less than about 110Â° F, a gamma prime solvus of greater than about l 700Â°F, substantially no eta phase, a laves phase of less than about 5%, and a sigma phase of less than about 5% and wherein a combined amount of the Al and the W reduce or eliminate eta phase. Reply Br. 5 (emphasis added). 2 Appeal2014-005289 Application 12/870,873 The Examiner has maintained, and Appellants seek review of, the following grounds of rejection: 1. Claims 1-6, 10, and 15-20 under 35 U.S.C. Â§103(a) as unpatentable over the disclosure of Cloue '3 83; 3 and, 2. Claims 1-3, 6, 10, and 15-19 provisionally on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-9 of copending Application 13/299,823 filed November 18, 2011 (now Patent Application Publication US 2013/0126056 Al published in the name of Feng et al. on May 23, 2013) ("Feng '056"). Final Act. 2-3; Ans. 2-8; Reply Br. 2. DISCUSSION Upon consideration of the evidence on this appeal record in light of the respective positions advanced by the Examiner and Appellants, we find that Appellants do not identify reversible error in the Examiner's rejections of claims 1-6, 10, and 15-20 under 35 U.S.C. Â§103(a) as unpatentable over the disclosure of Cloue '383 and claims 1-3, 6, 10, and 15-19 provisionally on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-9 of copending Application 13/299,823 (Feng '056). Accordingly, we sustain the Examiner'sÂ§ 103(a) and obviousness-type double patenting rejections of the above claims for the reasons set forth in the Non-Final Action, the Final Action, and the 3 WO 2008/081118 A2 published in the name of Cloue et al. on July 10, 2008. The Examiner relies upon US 2010/01163 83 A 1 published in the name of Cloue et al. on May 13, 2010 ("Cloue '383") as the English translation of WO 2008/081118 A2. Final Act. 2. Because there is no dispute that Cloue '383 constitutes the English translation of WO 2008/081118 A2, our reference to WO 2008/081118 A2 is to Cloue '383. 3 Appeal2014-005289 Application 12/870,873 Answer. We add the following primarily for emphasis. We initially note that Appellants argue related or common limitations in claims 1, 19, and 20 and do not separately argue claims 5-6, 10, and 15-18. App. Br. 4-9. Therefore, for purposes of this appeal, we limit our discussion to such limitations in claims 1, 19, and 20. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012). With respect to theÂ§ 103(a) rejection of record, the Examiner has correctly found that Cloue '383, at paragraphs, 4, 16, and 29, discloses a nickel-iron-based alloy having compositions that overlap with the compositions of the claimed nickel-iron-based alloy as shown below: Element Claim 1 {weight%} Cloueetat (weight%) Oveflapping Range (Weight%} !:::::::::::::::::::::~~::::::::::::::::::::: ::::::::::::::::~~:~::~~::::::::::::::::: :::::::::::::fr~:i::~::i:~:::::::::::::t::::::::::::::ki::~:~~:Â§::::::::::::::::l l Nb ::; 0-75 0 ~ 'lO i 0 ~ 0, 75 l ' ' Mn ~ 02 ~ 05 s 0.2 L_ ____________________ Â§_i_______________________ _ _________________ Â§:.9:.1 ___________________________________ :~.9::?.?. ________________ ; _____________________ :~ __ 9::~---------------------_) t'''''''''''''''''''''''~'~"''''''''''''''''''''''''''''''''''''''''''''' "-'''''''''''''''''''~~ ..... ,,,,,,,,,,,,,,,_~~'"''''''''''''''''''''''''''' ''''''''''''''''''''''''''''''''''Â·:~'"::''''''''~'''''''''''''''''!"'''''''''''''''''''''''''''''''''':;,.;:-''''''''''''''''''~ l 8 ~ LL 006 s 0 J) , : $ 0, OOti l 1---------------------Â·nrÂ·-------------------- ----------------EfoEi;1Â·c~;--------------- -----------------i~;;-sÂ·----------------1----------------------'.iÂ·-:mÂ·---------------------1 4 Appeal2014-005289 Application 12/870,873 Claim 20 (weight%) Ctoue at at {weight.%) Overlapping Range (Weight%} i C 0.05 ~ Q_ '!O 0.05 , Â· .. ,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,, ... ''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''" ''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''''" ,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,, .. ~ f""""""""""''fe""""""""""'T"""""""""'s'if"""""""""" """""""aaTa;1~;;Â·a"""""""""""""""K~iance"""""""'"1 ::'-'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'-'-'+'-'-'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'" '"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'" '"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"'"~ i Cr : 12.5 12 ---40 12,5 l .A! 0~20 s 5 0.20 Tl 2~80 $ 5 2.80 . 8 . $ CLOOS % cun :% 0.006 ' L::::::::::::::::::::rn:::::::::::::::::::::I::::::::::::::~~t~!19i:::::::::::::: ::::::::::::::::::;~~:~19::::::::::::::::::: ::::::::::::::::::::::~I~:::::::::::::::::::J Non-Final Act. 3-4 and 6-7; see also Cloue '383 iii! 4, 16, and 29. The balance percentage of iron taught by Cloue '3 83 encompasses the proportion of iron included in claims 1, 19, and 20, when 0.05 to 0.09 wt.% of C, 12 to 14.5 wt.% of Cr, 0.2 to 2.0 wt.% of Al, 1.0 to 3.0 wt.% of Ti, 0.1 to 3.0 wt% ofW, 0.1 to 5.70 wt.% Mo, and 40 to 44 wt.% of Ni, for example, are selected from the ranges of C, Cr, Al, Ti, W, Mo, and Ni taught to be useful for the nickel-iron-based alloy compositions taught by Cloue '383. Non-Final Act. 3-4 and 6-7; see also Cloue '383 iii! 4, 16, and 29. Cloue '383 does not include cobalt (co) in its nickel-iron- based alloy as recited in claim 19. Id. The nickel-iron-based alloy compositions taught by Cloue '383, like the claimed nickel-iron-based alloy compositions, are directed to addressing the problem associated with gas turbine components' exposure to high temperatures. Compare Cloue '383 iJ 49 with Spec. iJ 2. Thus, we find no reversible error in the Examiner's finding that Cloue '3 83 would have suggested forming nickel-iron-based alloys having the compositions recited in claims 1, 19, and 20, with a reasonable expectation of successfully forming the nickel-iron-based alloys having desired high temperature resistant properties. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("In cases involving 5 Appeal2014-005289 Application 12/870,873 overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.") Notwithstanding Appellants' arguments to the contrary, the fact that Cloue '383, like Appellants, also discloses an alternative embodiment, i.e., alternative catalyst compositions, does not negate the obviousness of the nickel-iron-based alloy compositions recited in claims 1, 19, and 20. Compare Cloue '383 iii! 4, 16, 28, and 29 with Spec. 3, iii! 9 and 11. The Examiner acknowledges that Cloue '3 83 does not specifically mention that its suggested nickel-iron-based alloy compositions have the properties defined by the amount of eta, laves, and sigma phases, and the solidification temperature range, and gamma prime solvus recited in claims 1, 19, and 20. Non-Final Act. 4 and 6-7. However, the Examiner has found that such claimed properties "would have naturally flowed from following the suggestion of [forming the claimed nickel-iron-based alloy compositions by] Cloue [ '3 83]. "4 Id.; see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized another advantage[ s] [or properties] which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious."); In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990) ("Products of identical chemical composition cannot have mutually exclusive properties."); In re Papesch, 315 F.2d 381, 391 (CCPA 1963) ("From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing."). This finding is supported by 4 In other words, the suggestion of the claimed nickel-iron based alloy compositions by Cloue '383 necessarily constitutes an implicit suggestion of any intrinsic or latent properties associated with such alloy compositions because the compositions and all of their properties are inseparable. 6 Appeal2014-005289 Application 12/870,873 Appellants' own statements in the Specification, which indicate that the claimed properties are a function of the compositions of the claimed nickel-iron-based alloys. Spec. 5-6, iii! 21-25; see also In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the [limitation], [applicants'] application itself instruct that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention].") Appellants contend that the claimed properties would not have naturally flowed from following Cloue '383 's suggestion of forming the claimed nickel- iron-based alloy compositions. App. Br. 6-9. In support of this contention, Appellants rely upon paragraphs 7 through 12 in a second Rule 132 declaration executed by Ganjian Feng, one of the inventors in the present application, on March 20, 2013 ("the second Feng Declaration"). Id. These paragraphs in the second Feng Declaration state that: 7. Cloue, as read and understood, is a heat treatment process for an Alloy 718 composition for formation of a material for nuclear reactor components. 8. Cloue, as read and understood, subjects the Alloy 718 to a heat treatment temperature of 980-1000Â°C (more broadly 950-l 160Â°C) for a sufficient time to eliminate the delta phase (see for example paragraph [0085]-[0088] and [O 111 ]). 9. Cloue, as read and understood, subjects the Alloy 718 to an optional aging treatment at a temperature of 7 40-780Â°C at times, such as 40 hours (see for example paragraphs [0089]-[0090]). 10. As one of ordinary skill in the art would understand, eta phase (Nb Ti) is a hexagonal close packed phase and is typically formed in iron-nickel base or nickel-base alloys. 11. As one of ordinary skill in the art would understand, eta phase is formed from gamma prime phase during elevated- temperature exposure, such as forging, heat treating or long-time service exposure. 7 Appeal2014-005289 Application 12/870,873 12. Based upon the processing in Cloue, one of ordinary skill in the art would expect formation and retention of the eta phase in the structure of Cloue. Although in this second Feng Declaration, the declarant appears to opine that one of ordinary skill in the art would have expected that the heat treatment taught by Cloue '3 83 would cause the formation of eta phase in Cloue 3 83 's alloy compositions, the declarant proffers no corroborating evidence to support such opinion. See id.; In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations."). Nor does the declarant specify that the amount of eta phase expected to be formed in Cloue '383's alloy compositions is greater than the amount of eta phase claimed. See id. Appellants' own averments in the Specification appear to contradict the declarant's opinion inasmuch as the statements in the Specification indicate that the claimed properties are a function of the type of the nickel-iron-based alloy compositions used, namely, the nickel-iron- based alloy compositions suggested by Cloue '383. Spec. 5-6, iii! 21-25; Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another "unless no reasonable trier of fact could have done so"). Appellants also contend that an earlier Rule 132 declaration executed by Ganjian Feng on October 1, 2012 ("the first Feng Declaration") evinces that the claimed properties would not have naturally flowed from following the suggestion of forming the claimed nickel-iron-based alloy compositions by Cloue '383. App. Br. 9. However, Appellants do not explain what data and/or statements in the first Feng Declaration support such contention. See id.; cf In re Borkowski, 505 F.2d 8 Appeal2014-005289 Application 12/870,873 713, 718 (CCPA 1974). Nor do Appellants contend that the data in the second Feng Declaration demonstrate that the claimed invention imparts unexpected results. Id. Under these circumstances, we determine that the weight of the evidence taken as a whole supports the Examiner's conclusion of obviousness. We find no reversible error in the Examiner's rejection of claims 1-6, 10, and 15-20 under 35 U.S.C. Â§ 103(a) as unpatentable over the disclosure of Cloue '383. With respect to the obviousness-type double patenting rejection, the Examiner has found that the claims of Feng '056 recite alloy compositions that correspond to or include those claimed in the instant application. Non-Final Act. 9. In particular, claims 1 and 3 of Feng '056 recite alloy compositions which are either substantially overlapping with or included by the alloy compositions recited in claim 1 of the instant application as shown below: I Element I Claim 1 Feng'056 Feng'056 (weight%) Claim 1 Claim 3 (weight%) (weight%) c 0.06-0.09 0.05-0.10 0.08 Fe 35-37 35-37 36 Cr 12.0-14.5 12.0-16.5 12.5 Al 1.0-2.0 1.0-2.0 1.5 Ti 1.0-3.0 2.0-3.0 2.5 w 1.5-3.0 2.0-3.0 2.5 Mo :S 5.0 3.0-5.0 3.5 Nb :S 0.75 :S 0.1 :S 0.1 9 Appeal2014-005289 Application 12/870,873 Mn :S 0.2 Si :S 0.1 B :S 0.006 Ni Balance :S 0.2 :S 0.2 :S 0.1 :S 0.1 0.003-0.01 0.006 Balance Balance Although the claims of Feng '056 do not recite or suggest the amount of eta, laves, and sigma phases, and the solidification temperature range, and gamma prime solvus recited in claims 1 and 19, the Examiner determines that such recited properties would not have rendered the alloy composition recited in claim 1 patentably distinct from the alloy compositions recited in, for example, claims 1 and 3 of Feng '056. Non-Final Act. 9. Implicit in this determination is that "[p ]roducts of identical chemical composition cannot have mutually exclusive properties." Spada, 911 F.2d at 708-09. Although Appellants refer to the first and second Feng Declarations to show that the nickel-iron-based alloy compositions suggested by Cloue '383 do not possess the properties recited in claims 1, 19, and 20, they do not question that the nickel-iron-based alloy compositions recited by Feng '056 possess the properties recited in claims 1 and 19 of the instant application. App. Br. 6-9. In other words, Appellants do not contest the Examiner's provisional rejection of claims 1-3, 6, 10, and 15-19 on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1-9 of Feng '056. Id. Accordingly, we find that Appellants do not identify reversible error in the Examiner's provisional rejection of claims 1-3, 6, 10, and 15-19 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-9 of Feng '056. 10 Appeal2014-005289 Application 12/870,873 ORDER In view of the foregoing, the decision of the Examiner to reject claims 1-6, 10, and 15-20 under 35 U.S.C. Â§ 103(a) as unpatentable over the disclosure of Cloue '383 and claims 1-3, 6, 10, and 15-19 provisionally on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-9 of "Feng '056" is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a)(l)(iv). AFFIRMED 11