Ex Parte Baker et al

Patent Trial and Appeal Board

Jul 26, 2017

12420251 (P.T.A.B. Jul. 26, 2017)

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.
12/420,251 04/08/2009 Brian A. Baker 0101SM-000006/US 2144
110407 7590 07/28
Burris Law, PLLC
300 River Place Drive, Suite 1775
Detroit, MI 48207
EXAMINER
TAKEUCHI, YOSHITOSHI
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
07/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ burrisiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN A. BAKER, GAYLORD D. SMITH, and
RONALD D. GOLLIHUE
Appeal 2016-000049
Application 12/420,2511
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and BRIAN
D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 16—59 and 61—63. We have jurisdiction. 35
U.S.C. § 6(b). An oral hearing was held on July 20, 2017.2
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is Huntington Alloys
Corporation. Appeal Br. 2.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal 2016-000049
Application 12/420,251
STATEMENT OF THE CASE3
Appellants describe the invention as a high temperature, high strength
nickel-cobalt-chromium alloy suitable for a header pipe in boiler
applications. Spec. 12. Claim 16, reproduced below with formatting added
for readability and emphases added to key recitations, is illustrative of the
claimed subject matter:
16. A high temperature, high strength Ni-Co-Cr alloy, the
alloy comprising in weight %:
23.5 to 25.5% Cr,
15.0 to 22.0% Co,
1.1 to 2.0% Al,
1.0 to 1.8% Ti,
0.95 to 2.2% Nb,
less than 1.0% Mo,
less than 1.0% Mn,
less than 0.3% Si,
less than 3.0% Fe,
less than 0.3% Ta,
less than 0.3% W,
0.005 to 0.08% C,
0.01 to 0.3% Zr,
0.0008 to 0.006% B,
up to 0.05% rare earth metals,
balance Ni plus trace impurities,
3 In this Opinion, we refer to the Non-Final Office Action dated November
24, 2014 (“Non-Final Act.”), the Appeal Brief filed April 24, 2015 (“Appeal
Br.”), the Examiner’s Answer dated July 15, 2015 (“Ans.”), and the Reply
Brief filed September 14, 2015 (“Reply Br.”).
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Application 12/420,251
wherein the alloy possesses essentially fissure-free
weldability for applications having wall thicknesses of 1.6 to 8.0
cm.
Appeal Br. 18 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 36 and 37 under 35 U.S.C. § 112(d) as failing to
further limit the subject matter of the claim upon which each of these claims
depends. Non-Final Act. 4.
Rejection 2. Claims 16—59 and 61—63 under 35 U.S.C. § 102(b) as
anticipated by Smith et al., U.S. 6,491,769 B1 (iss. Dec. 10, 2002)
(hereinafter “Smith”) or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Smith.
ANALYSIS
Rejection 1. The Examiner rejects claims 36 and 37 under 35 U.S.C.
§ 112(d) as failing to further limit the subject matter of the claim upon which
each of these claims depends. Non-Final Act. 4. Claim 16 recites “the alloy
comprising in weight %: . . . less than 0.3% W [tungsten].” Appeal Br. 18
(Claim App.). Claim 36 recites, “[t]he alloy of claim 16, wherein the W
content is 0.05 to 0.3%.” Id. at 19. Similarly, claim 37 recites “the W
content is 0.1 to 0.3%.” Id.
It is axiomatic that a dependent claim cannot be broader than the
claim from which it depends. See 35 U.S.C. § 112(d) (“[A] claim in
dependent form shall [1] contain a reference to a claim previously set forth
and then [2] specify a further limitation of the subject matter claimed”);
Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006)
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(holding a claim invalid where it claimed matter “completely outside the
scope” of independent claim it referred to). Under the broadest reasonable
interpretation of claims 36 and 37, the claims embrace exactly 0.3%
Tungsten whereas claim 1 is limited to less than 0.3% Tungsten. We thus
agree with the Examiner that the claims are improper under 35 U.S.C. §
112(d). Ans. 3.
Appellants argue that a person of skill in the art would understand
that, because of their dependency from claim 16, claims 36 and 37 each
require Tungsten content less than 0.3%. Appeal Br. 16. We disagree.
Appellants’ proposed construction of claims 36 and 37 would ignore the
different language of claims 36 and 37. Cf. In re Miller, 441 F.2d 689, 694
(CCPA 1971) (“All words in a claim must be considered in judging the
patentability of that claim against the prior art”) (internal quotation marks
and citation omitted). We therefore sustain the Examiner’s rejection.
Rejection 2, Anticipation. The Examiner rejects claims 16—59 and
61—63 as anticipated by Smith, or in the alternative, as obvious over Smith.
We first address anticipation.
The Examiner determines that Smith teaches each recited range of
claim 16 with sufficient specificity for Smith to anticipate claim 16. Ans. 5.
In reaching this determination, the Examiner finds that Smith teaches a
range of silicon from “greater than 0%” (emphasis removed) to 1%.
Ans. 10. The Examiner bases this finding on Smith stating that chromium’s
protective nature will be enhanced with silicon “up to 1.0%.” Ans. 10—11
(emphasis removed) (quoting Smith 3:27—43).
Appellants argue that the Examiner’s finding is in error. Appeal
Br. 7. Appellants argue that Smith teaches “Si between 0.3 and 1.0%” and
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Application 12/420,251
that this does not teach the range of less than 0.3% Si recited in claim 16.
Id. (citing Smith 4:53—62). A preponderance of the evidence supports
Appellants’ position.
The portion of Smith cited by the Examiner is best understood as
relating to Smith’s teaching regarding chromium. When Smith specifically
teaches how much silicon to use, it teaches that silicon is “essential” to
improve corrosion resistance and that “[ljevels of Si between 0.3 and 1.0%
are effective in this role.” Smith 4:53—62. If Smith’s reference to silicon
when discussing chromium were taken literally and in isolation (i.e., “up to
1.0%”), the discussion could be referring to having zero silicon, but a person
of skill in the art would not read Smith in this way given its teachings at
column 4. Appeal Br. 12.
Because Smith does not teach a range of “less than 0.3% Si” with
sufficient specificity, we do not sustain the Examiner’s anticipation rejection
of claim 16. We also do not sustain the anticipation rejection of all other
claims because those claims depend from claim 16.
Rejection 2, obviousness. Appellants separately argue independent
claim 16 and dependent claim 31 and do not separately argue recitations of
other dependent claims. Appeal Br. 15. We first focus on claim 16. Claims
16—30, 32—59, and 61—63 stand or fall together. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
As explained above, we agree with Appellants’ more narrow
interpretation of Smith’s teachings regarding an appropriate range of silicon.
The Examiner determines that, even if Smith is understood narrowly, the
range of silicon is close enough to that of claim 16 that “one skilled in the art
would have expected them to have the same properties.” Non-Final Act. 8.
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The Examiner thus concludes that claim 16 is obvious on this alternative
basis. Id.', see also Ans. 29—32.
Appellants do not address this alternative position until the Reply
Brief. In this instance, we will consider Appellants’ argument made in the
Reply Brief because it was not entirely clear from the Non-Final Office
Action that the Examiner’s alternative position was an independent ground
of rejection. See Reply Br. 7—8.
Appellants argue that the Examiner’s obviousness conclusion is
legally erroneous because the holding of Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775 (Fed. Cir. 1985), does not apply here. Reply Br. 8—9.
We disagree.
The key portion of Titanium Metals held that dependent claim 3 was
obvious over the prior art. Titanium Metals, 778 F.2d at 782—83. Claim 3 of
the patent at issue recited “[a] titanium base alloy . . . having 0.8% nickel,
0.3% molybdenum, up to 0.1% maximum iron, balance titanium.” Id. at
776. Our reviewing court held that this claim was obvious over a prior art
reference that taught 0.25% molybdenum/0.75% nickel and a second
reference that taught 0.31% molybdenum/0.94% nickel. Id. at 783. The
court reasoned that “[t]he proportions are so close that prima facie one
skilled in the art would have expected them to have the same properties.”
Id. Because the prior art taught for example, 0.25% molybdenum/0.75%
nickel, it also provided reason for one skilled in the art to make
compositions so close that they would be expected to have the same
properties. Very close compositions were therefore obvious. Id. (“The
specific alloy of claim 3 must therefore be considered to have been obvious
from known alloys”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton”).
The decision in In re Dillon, 919 F.2d 688, 692—93 (Fed. Cir. 1990)
(en banc) further confirms the reasoning of Titanium Metals. There, the
court reaffirmed
that structural similarity between claimed and prior art subject
matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and the
burden (and opportunity) then falls on an applicant to rebut that
prima facie case.
Id. Rebuttal could consist of “showing that the claimed compositions
possess unexpectedly improved properties or properties that the prior art
does not have.” Id. The claims at issue there were thus obvious because
“[t]he art provided the motivation to make the compositions in the
expectation that they would have similar properties.” Id. at 693 (emphasis
added). In other words, just as in Titanium Metals, claimed matter was
obvious where one skilled in the art would have expected the claimed matter
and the prior art to have similar properties.
Here, claim 16’s range of “less than 0.3% Si” is at least extremely
close to Smith’s teaching of 0.3% Si. As a practical matter, there is no
evidence that there will be a difference in properties between an alloy with
0.3000% silicon (within the teachings of Smith) and an alloy with 0.2999%
silicon (within the scope of claim 16), and Appellants do not persuasively
dispute the Examiner’s finding that a person of skill would expect such
alloys “to have the same properties” (Non-Final Act. 8). Thus, the case for
obviousness based on the prior art material and the claimed material being
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expected to have the same or extremely similar properties is at least as
strong as it was in Titanium Metals.
We are not persuaded by Appellants’ argument that Titanium Metals
is distinguishable because the prior art there provided exact prior art
compositions rather than ranges. Appeal Br. 8—9. We do not agree that
Smith would render claim 16 obvious if its teachings were more narrow (for
example, if it taught exactly 0.32% silicon) but would not do so based on
broader teachings (“between 0.3 and 1.0%” silicon). See In re Mills, 470
F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure
of specific working examples”); In re Mercier, 515 F.2d 1161, 1165 (CCPA
1975) (“[A]ll of the relevant teachings of the cited references must be
considered in determining what they fairly teach to one having ordinary skill
in the art”). One aspect of Smith’s teaching of between 0.3 and 1.0% silicon
is teaching 0.3% silicon. Moreover, as explained above, Appellants’
argument is inconsistent with the reasoning of In re Dillon explained above.
Alternatively, we also find that the range taught by Smith overlaps
that of claim 16. Smith teaches Si “between 0.3 and 1.0%. . . .” Smith
4:53—62. Because Smith expresses these ranges with an accuracy no greater
than a tenth of a percent, a person of ordinary skill in the art would
understand the range taught by Smith to include amounts slightly below
0.3% (for example, 0.299%) that would round to 0.3% or, from a practical
perspective, be the same as 0.3%. Cf In re Woodruff, 919 F.2d 1575, 1577
(Fed. Cir. 1990) (holding that prior art teaching of “about 1—5%” allows for
concentrations “slightly above 5%”). Our reviewing court has held that
“even a slight overlap in range establishes a prima facie case of
obviousness.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see
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also, e.g., Woodruff, 919 F.2d at 1577 (concluding that claimed invention
was rendered obvious by prior art reference whose disclosed range (“about
1—5%” carbon monoxide) abutted claimed range (“more than 5%” to 25%
carbon monoxide)).
Thus, the range taught by Smith and the range recited by claim 16
overlaps at, for example, 0.299%. Overlapping ranges, even where overlap
is slight, are sufficient to establish a prima facie case of obviousness. See,
e.g., Peterson, 315 F.3d at 1329 (“[a] prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art”); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997) (acknowledging that a claimed invention was rendered prima facie
obvious by a prior art reference whose disclosed range (50-100 Angstroms)
overlapped the claimed range (100—600 Angstroms)).
Appellants also argue unexpected results. Appeal Br. 12—14; Reply
Br. 14—21. A party asserting unexpected results as evidence of
nonobviousness, however, has the burden of proving that the results are
unexpected. Geisler, 116 F.3d at 1469—70. Such burden requires Appellants
to proffer factual evidence that actually shows unexpected results relative to
the closest prior art (see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991)), and that is reasonably commensurate with claim scope {In
re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)).
Here, the Examiner determined that Appellants’ evidence of
unexpected results is not commensurate with the scope of claim 16. Ans.
24—29. We agree with this determination. Claim 16 recites “less than 0.3%
Si,” and Appellants do not present evidence of unexpected results at the
upper end of the recited range. Appellants concede that improved results
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“very near to 0.3% are not expected to be so dramatic. . . .” Reply Br. 16.
Appellants’ evidence bears out this concession. The data presented by
Appendix A of the April 8, 2014, Declaration of Mr. Brian A. Baker
establishes that, for example, HV1258 has poor results (“numerous
fissures”) despite having 0.25% silicon. Similarly, the result for Alloy D
shows “1 microfissure.” Thus, the evidence establishes a lack of unexpected
results over at least some of claim l’s scope, and Appellants do not meet
their burden to show unexpected results.
Because Appellants’ do not identify error in the Examiner’s
obviousness conclusion, we sustain the Examiner’s rejection of claims 16—
30, 32—59, and 61—63 as obvious.
Claim 31 recites, “[t]he alloy of claim 16, wherein the Si content is
0.24% or less. Appeal Br. 19 (Claim App.). Appellants argue this claim
separately by again arguing the Examiner erred in finding that Smith teaches
a range of silicon from zero to 1.0%. Appeal Br. 14—15. As explained
above, we agree that the Examiner erred in this respect. The Examiner
concedes that, under the more narrow interpretation of Smith, the claimed
range of silicon in claim 31 would not be prima facie obvious. Non-Final
Act. 8. The Examiner does not present a position contrary to this concession
in the Answer. Ans. 32—34.
The Examiner also finds that Smith teaches that the concentration of
silicon is a result effective variable. Appeal Br. 8. We do not agree that
Smith teaches or suggests optimization of silicon substantially below 0.3%,
however. Reply Br. 10.
We therefore do not sustain the Examiner’s obviousness rejection of
claim 31.
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DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
36 and 37 under 35 U.S.C. § 112(d) as failing to further limit the subject
matter of the claim each of these claims depends from. We affirm the
Examiner’s rejection of claims 16—30, 32—59, and 61—63 under 35 U.S.C.
§ 103(a) as unpatentable over Smith.
We reverse the Examiner’s rejection of claims 16—59 and 61—63 under
35 U.S.C. § 102(b) as anticipated by Smith. We reverse the Examiner’s
rejection of claim 31 under 35 U.S.C. § 103(a) as unpatentable over Smith.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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