Awadh B. Pandey

Patent Trials and Appeals Board

Apr 15, 2020

14822044 - (D) (P.T.A.B. Apr. 15, 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.
14/822,044 08/10/2015 Awadh B. Pandey 77492US02(14-263-2) 9189
52237 7590 04/15/2020
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
SU, XIAOWEI
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/15/2020 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 AWADH B. PANDEY
Appeal 2019-002556
Application 14/822,044
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/822,044 filed Aug. 10, 2015; the Final Office Action dated Apr. 23, 2018
(“Final Act.”); the Advisory Action dated June 28, 2018 (“Adv. Act.”)’ the
Appeal Brief filed Sept. 21, 2018 (“Appeal Br.”); the Examiner’s Answer
dated Dec. 11, 2018 (“Ans.”); and the Reply Brief filed Feb. 11, 2019
(“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–10, 12, and 15–19. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The subject matter of the invention relates to die-castable nickel based
superalloys for gas turbine engine components. Spec. ¶ 2. According to the
Specification, nickel based superalloys known as IN713 are not readily
castable via a die casting process, as the IN713 alloys break apart due to the
formation of extremely fine gamma prime precipitates with high volume
fraction due to the high cooling rates associated with die casting, which
provides higher cooling rates than investment casting. Spec. ¶¶ 4, 37. The
inventors claim to have determined that the relatively high content of
aluminum is a primary cause of the castability issues. Spec. ¶ 37. The
Specification describes the nickel based superalloy of the invention as
containing relatively lower aluminum wt % and higher titanium wt % than
that of IN713, as well as tungsten, columbium, and tantalum to provide a die
castable alloy without losing any mechanical properties capability. Spec.
¶ 38.
The claims are directed to die-cast nickel based superalloys and gas
turbine engine components comprised of such superalloys. See Appeal Br.
23–28 (Claims Appx.).

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 2.
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Claim 1, reproduced below, illustrates the claimed subject matter:
1. A die-castable nickel based superalloy comprising:
4.5–5.5 wt% Tungsten (W), 1.5–2.5 wt% Columbium
(Cb), 4.5–5.5 wt% Tantalum (Ta), 0.5–5.0 wt% Titanium
(Ti), and 0.5–3.0 wt% Aluminum (Al),
wherein an average grain size is ASTM 3 or smaller and
a degree of elemental segregation lower than in
investment casting.
Appeal Br. 23 (Claims Appx.) (some paragraphing added).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Denzine et al.
(“Denzine”)3
US 4,078,951 Mar. 14, 1978
Garcia et al.
(“Garcia”)
US 4,140,555 Feb. 20, 1979
Schirra et al.
(“Schirra”)
US 2002/0005233 A1 Jan. 17, 2002
Maurer et al.
(“Maurer”)
EP 0 068 628 A2 Jan, 5, 1983
REJECTIONS
The Examiner maintains the following rejections:4

3 We follow our standard practice in citing to prior art references by the last
name of the first author, rather than by the short form of the patent or patent
application number (as used by the Examiner and Appellant).
4 In the Answer, the Examiner withdrew a provisional nonstatutory
obviousness-type double patenting rejection due to abandonment of the
application over which the claims were provisionally rejected. See Ans. 4.
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A. Claims 1–10, 12, and 15–19 under 35 U.S.C. § 112(b) as
indefinite;
B. Claims 1–5, 7, 8, 10, and 12 under 35 U.S.C. § 103 over
Maurer in view of Schirra; and
C. Claims 6, 9, and 15–19 under 35 U.S.C. § 103 over Maurer in
view of Denzine and Schirra.5 Final Act. 3–14.
OPINION
A. Rejection under 35 U.S.C. § 112(b)6
The Examiner rejects claims 1–10, 12, and 15–19 as indefinite for
including the limitation “a degree of elemental segregation lower than in
investment casting.” Final Act. 3–4; Ans. 4–5; see also Appeal Br. 23–28
(Claims Appx.). The Examiner finds that “the degree of segregation is
determined by the complexity of the part to be casted, cooling rate, etc.”
Adv. Act. 2. According to the Examiner, the degree of elemental
segregation is indefinite without reciting detailed casting conditions. Id.
The Examiner interprets “die-castable” as any material that can be
heated to a molten state and cast into a die. Ans. 5. Therefore, the Examiner
finds that any nickel based superalloy that can be heated to a molten state
and cast into a die is a die-castable nickel based superalloy. Id.
Appellant argues, “[o]ne of ordinary skill in the art would readily
understand this terminology and the contrast between investment casting and

5 In the Advisory Action, the Examiner withdrew the rejection of claims 1–
10, 12, and 18 under 35 U.S.C. § 103 over Garcia in view of Schirra. Adv.
Act. 2. We, therefore, do not address comments on these references in
subsequent briefing.
6 In the Answer, the Examiner withdrew the rejection of the claims as
indefinite for use of the term “die-castable.”) Ans. 4.
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die casting.” Appeal Br. 10. In the Reply Brief, Appellant contends that
elemental effects are well recognized by one of ordinary skill in the art,
citing Elemental Effects of Cast 718 Weldability as a paper used extensively
in the aerospace industry. Reply Br. 1.
Whether the skilled artisan understands the difference(s) between die
casting and investment casting is not at issue. The claims recite “wherein
. . . [the die-castable nickel based superalloy has] a degree of elemental
segregation lower than in investment casting.” See Appeal Br. 23–26
(Claims Appx.). The Specification (as well as the paper referenced by
Appellant) fails to describe the circumstances under which a degree of
elemental segregation in investment casting may be tested and compared to
that in die casting. See generally Spec. Moreover, Appellant does not
dispute the Examiner’s statement that “the degree of segregation is
determined by the complexity of the part to be casted, cooling rate, etc.” See
generally Spec, Appeal Br. We, therefore, agree with the Examiner that
claims 1–10, 12, and 15–19 fail to provide “objective boundaries for those of
skill in the art,” Liberty Ammunition v. United States, 835 F.3d 1388, 1396
(Fed. Cir. 2016 (quoting Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1370–71 (Fed. Cir. 2014).
On the record before us, we sustain the rejection of claims 1–10, 12,
and 15–19 as indefinite for reciting “a degree of elemental segregation lower
than in investment casting.”
We recognize that “[i]f no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious—the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970). Similarly, In re Steele counsels that a prior art rejection
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cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
However, this is not a case where it is impossible to determine whether at
least some scenarios fall within the scope of the claims. The present
situation is, instead, one in which only the boundary of the sought claim
protection is not reasonably clear. Accordingly, we address the obviousness
rejections with respect to these claims in the interests of compact
prosecution.
B. Obviousness rejection of claims 1–5, 7, 8, 10, and 12 over
Maurer in view of Schirra
The Examiner rejects claims 1–5, 7, 8, 10, and 12 as obvious under
35 U.S.C. § 103 over Maurer in view of Schirra. Final Act. 5–8.
Appellant argues claims 1–5, 7, 8, and 10 as a group, making separate
argument for the patentability of claim 12 (which depends from claim 1).
We select independent claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 2–5, 7, 8, and 10 will stand or fall with claim 1.
We address claim 12 separately below.
With regard to claim 1, the Examiner finds that Maurer teaches a
nickel base superalloy having a composition with ranges of elements that
overlap the ranges of elements as claimed, making the composition prima
facie obvious. Final Act. 5–6 (citing MPEP 2144.05 I); Ans. 5–6 (citing In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) and MPEP 2112.01 I). The
Examiner acknowledges that Maurer does not teach that the alloy is die
castable. Final Act. 6.
Appellant argues, “although some of the individual elements may
overlap with” the disclosures in Maurer, “the overall effect simply does not
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permit [Maurer] to be die-castable.” Appeal Br. 12. Appellant contends that
Maurer does not disclose or suggest that the nickel base superalloy it teaches
may be die cast, and “[t]his is as expected as typical nickel based superalloys
are not die-castable.” Id.
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” Best, 562 F.2d at 1255. In the instant matter, the
Examiner explains that, for each element recited in claim 1, Maurer teaches
a range for that element that overlaps the claimed amount. See Final Act. 5–
6. Therefore, the burden shifts to Appellant to come forward with evidence
showing that the composition disclosed in Maurer cannot be die cast. See
Best, 562 F.2d at 1255 (“[The] fairness [of the burden of proof] is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”).
Appellant has not done so. Instead, Appellant relies on the statement
in the Specification that “Nickel Base Supeapploys [sic] IN713 are not
readily castable via die casting.” However, Appellant fails to show how
Maurer’s composition differs from that of claim 1. Properties of the claimed
alloys are immaterial to patentability because the composition is the same in
claim 1 and in Maurer, and thus Maurer must necessarily exhibit the
properties claimed. Titanium Metals Corp. v. Banner, 778 F.2d 775, 782
(Fed. Cir. 1985).
In addition, the Examiner finds that Schirra discloses die casting a
nickel base superalloy turbine blade. Final Act. 6; Ans. 6. Schirra describes
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previous known problems with die casting superalloys, but discloses that die
cast nickel base superalloy components according to its invention (e.g., IN
718) exhibit strength, low crack growth rates and high stress rupture
resistance. Ans. 6 (citing Schirra ¶¶ 38–43).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to die cast the nickel base
superalloy disclosed in Maurer into parts such as turbine blades because
Schirra teaches that die casting enables successful production of articles
having complex shapes, die cast parts have greater reproducibility than
forged or investment cast articles, and die cast parts can be produced near to
their finished shape at low cost. Final Act. 6–7 (citing Schirra ¶ 78); Ans. 6.
The Examiner further finds that, although Maurer does not disclose an
average grain size of ASTM 3 or smaller, Schirra discloses an average grain
size of ASTM 3 or smaller, more preferably ASTM 5 or smaller. Final Act.
7. The Examiner determines that using the average grain size disclosed in
Schirra in the nickel base superalloy of Maura would have been obvious
because Schirra teaches turbine blades with such grain size have properties
at least equivalent to turbine blades made by forging. Final Act. 7. The
Examiner finds that the ASTM 112 Standard defines grain size ASTM 3 or
smaller as 127 µm or smaller, and ASTM 5 or smaller as 64 µm or smaller,
thus both of the two average grain sizes disclosed in Schirra (ASTM 3 and
ASTM 5) meet the limitation in claim 1 of “a[] grain size of ASTM 3 or
smaller.” See Ans. 7; see generally Appeal Br., Reply Br.
Appellant argues that Schirra only discloses an average grain size of
ASTM 5 or smaller, and the claims recite an average grain size of ASTM 3
or smaller. Appeal Br. 13. Thus, Appellant contends that there is no
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motivation to modify Maurer to have a grain size smaller than ASTM 5, let
alone smaller than ASTM 3. Id.; see also Reply Br. 1–2.
Appellant fails to understand that a grain size of ASTM 5 is smaller
than a grain size of ASTM 3. The ASTM grain size number is related with
the number of grains that one can count in a 100X magnification, so that
ASTM grain size number increases with decreasing grain size. Thus,
Schirra’s disclosure of a grain size that is preferably ASTM 5 or smaller falls
within the recited limitation of “ASTM 3 or smaller.” See Schirra ¶ 45.
Appellant disputes that there is motivation to combine the teachings of
Maurer and Schirra to achieve the claimed average grain size. Appeal Br.
13. Appellant notes that the Examiner’s proposed motivation is “to make a
turbine blade having properties equivalent to turbine blades made by forging
as disclosed by [Schirra].” Id. (quoting Final Act. 7); Reply Br. 1–2.
Appellant contends that the Examiner practices circular reasoning. Appeal
Br. 13. Specifically, Appellant argues that, if Schirra has desired properties
(such as using die casting to make a nickel base superalloy turbine blade at
low cost), then Maurer does not have desired properties, and modifying
Maurer with Schirra’s teachings would render Maurer unsatisfactory for its
intended purpose. Id. Appellant argues that recognition of a need is not a
proper teaching to support the combination. Replay Br. 2.
We do not agree with Appellant’s analysis. The Examiner does not
rely on mere conclusory statements, but rather provides “articulated
reasoning with some rational underpinning to support the conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As the
Examiner explains, Schirra discloses successful die casting of nickel based
superalloys (such as those described in Maurer) where the articles are
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characterized by a small average grain size (“more preferably ASTM 5 or
smaller”), resulting in articles with properties comparable to corresponding
articles composed for forged materials, but at lower cost and higher
reproducibility. Final Act. 7; Ans. 7–8 (citing Schirra ¶¶ 22–28). “As long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventors.” In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992). “[W]hen a combination of references
results in a product or process that is more desirable, for example because it
is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient,” “there exists in these situations a motivation to combine prior art
references even absent any hint of suggestion in the references themselves.”
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). “In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.” Id. Review of Schirra
confirms that the ordinarily skilled artisan would have been capable of
combining its teachings with those of Maurer.
For the reasons above, we sustain the rejection of claim 1 over Maurer
in view of Schirra. For the same reasons, we sustain the rejection of claims
2–5, 7, 8, and 10 over these references.
Claim 12 is drawn to a gas turbine engine rotor blade comprising a
die-cast nickel based superalloy as claimed in claim 1, said die-cast nickel
based superalloy die cast at a cooling rate on the order of at least equal 102
degree F per second. Appeal Br. 24–25 (Claims Appx.). Appellant
nominally argues separately for patentability of claim 12. Id. at 14–15.
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However, Appellant’s argument focuses on the Examiner’s motivation to
modify Maurer with Schirra to obtain the average grain size in claim 1. See
id. We discuss this issue supra and find no reason to review it again here.
With respect to the cooling rate recited in claim 12, the Examiner
finds that Schirra teaches rapid cooling is needed for forming small grain
size. Final Act. 7 (citing Schirra ¶ 76). This rationale is persuasive in view
of Appellant’s failure to offer any substantive argument to the contrary.
C. Obviousness rejection of claims 6, 9, and 15–19 over Maurer in
view of Denzine and Schirra
The Examiner rejects claims 6, 9, and 15–19 as obvious under
35 U.S.C. § 103 over Maurer in view of Denzine and Schirra. Final Act. 8–
11. The Examiner relies on Maurer and Schirra for the disclosures discussed
supra. See id. The Examiner relies on Maurer for disclosing a range of each
of carbon, manganese, chromium, cobalt, molybdenum, zirconium, iron,
copper, bismuth, lead and nickel that overlaps the ranges claimed in claims 9
and 15–19 for each of these elements.7 Id. at 8–9.
Each of claims 6, 9, and 15–19 requires that the die cast nickel base
superalloy comprises 0.005–0.15 wt % boron. Appeal Br. 23–26 (Claims
Appx.). The Examiner finds that Maurer teaches a higher content of boron
than the amount claimed, thus there is no overlap of the claimed boron
content with Maurer. Final Act. 5, 6, and 8. Therefore, the Examiner relies
on Denzine for teaching the claimed boron content. Id. at 8–11.
Specifically, the Examiner finds that Denzine discloses cast nickel based

7 Claims 9 and 15–19 recite that the amount of carbon, manganese, iron,
copper, bismuth, and lead may be 0 wt %.
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superalloys comprising 0.001–0.20 wt % boron, an amount that overlaps the
boron content claimed. Id. at 8; see also Denzine col. 3, ll. 35–45.
The Examiner finds that Denzine discloses a nickel base superalloy
whose component amounts overlap those of Maurer except for the amount of
boron. Final Act. 8. The Examiner concludes that it would have been
obvious to incorporate 0.001–0.20 wt % boron in Maurer’s alloy because
Denzine teaches that this amount of boron successfully reduces grain
boundary sliding and improves high temperature strength in nickel based
superalloys with compositions like those of Maurer. Id. (citing Denzine col.
7, ll. 1–33 and 61–67).
Appellant contends that neither Denzine nor Maurer disclose that a
change in boron would facilitate die casting. Appeal Br. 17. Appellant
argues, therefore, that the general characteristics of reducing grain boundary
sliding and improving high temperature strength have nothing to do with the
desire to manufacture a die-castable material. Id. at 19. In effect, Appellant
argues that there is no motivation to combine Denzine’s teachings with
Maurer’s alloy. We disagree.
In asserting that Denzine and Maurer do not disclose die casting,
Appellant is arguing the references individually. However, “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Instead, each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.
Id.
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As with combining Maurer and Schirra, in combining Maurer and
Denzine the Examiner provides “articulated reasoning with some rational
underpinning to support the conclusion of obviousness.” Kahn, 441 F.3d at
988. The prior art taken as whole provides motivation to combine the
references (add an amount of boron to Maurer’s nickel base superalloy), i.e.,
reducing grain boundary sliding and improving high temperature strength in
nickel base superalloys. See Beattie, 974 F.2d at 1312. (Fed. Cir. 1992).
Regarding Appellant’s argument that Maurer and Denzine do no teach die
casting, “[o]ne of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.”
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005). Appellant directs us to nothing that suggests lack of
success in combining Maurer, Schirra, and Denzine.
We sustain the rejection of claims 6, 9, and 15–19 over Maurer in
view of Denzine and Schirra for the reasons discussed above.
CONCLUSION
The Examiner’s decision to reject claims 1–10, 12, and 15–19 is
affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12,
15–19
112(b) Indefiniteness 1–10, 12, 15–
19

1–5, 7, 8,
10, 12
103 Maurer, Schirra 1–5, 7, 8, 10,
12

6, 9, 15–
19
103 Maurer, Denzine,
Schirra
6, 9, 15–19
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Overall
Outcome
1–10, 12, 15–
19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED