Ex Parte Cui et al

Patent Trial and Appeal Board

Nov 18, 2014

13219993 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YAN CUI, SRIKANTH CHANDRUDU KOTTILINGAM,
DECHAO LIN, and BRIAN LEE TOLLISON1
____________

Appeal 2013-001750
Application 13/219,993
Technology Center 1700
____________

Before CHARLES F. WARREN, TERRY J. OWENS, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–17. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm.

BACKGROUND

Appellants’ claimed invention relates to chemical compositions useful
for joining metal components. Spec. ¶¶ 1–3.

1 According to the Appeal Brief, the Real Party in Interest is General
Electric Company. App. Br. 1.
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Application 13/219,993

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Claim 1 is the only independent claim at issue on appeal, and is
reproduced below:
1. A filler metal chemistry comprising:
an amount of chromium of between about 9.0 and about
16% by weight;
an amount of cobalt by weight of between about 7.0% and
about 14% by weight;
an amount of molybdenum of between about 10% and
about 20% by weight;
an amount of iron of between about 1.0 % and about 5.0 %
by weight;
an amount of aluminum of between about 0.05 % and about
0.75 % by weight;
an amount of titanium of between about 0.5 % and about
2.0 % by weight;
an amount of manganese not to exceed 0.8 % by weight;
an amount of carbon of between 0.02 % and about 0.10 %
by weight;
an amount of titanium+aluminum between about 0.55 %
and 2.75 % by weight; and
an amount of nickel.

The Examiner maintains, and Appellants appeal, the rejection of
claims 1–17 as unpatentable under 35 U.S.C. §103(a) over Richards (US
3,479,157, issued Nov. 18, 1969).

OPINION
The Examiner finds that Richards discloses a composition containing
chromium, cobalt, molybdenum, iron, aluminum, titanium, manganese,
carbon, and nickel in amounts (ranges) that overlap and encompass the
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claimed ranges of corresponding ingredients. Ans. 3–4. According to the
Examiner, the claim term “aluminum+titanium” means the sum of aluminum
and titanium in the composition. Id. at 5–6. Therefore, because Richards
teaches “aluminum and titanium are both up to about 8 wt%, it is the
Examiner’s position that titanium + aluminum [in Richards] may be between
0.55 wt% and 2.75 wt%.” Id. at 3. The Examiner thus concludes that a
prima facie case of obviousness exists. Id. at 4 (citing In re Wertheim, 541
F.2d 257 (CCPA 1976)).
Appellants argue that the Examiner is improperly interpreting the
element “titanium+aluminum” required in claim 1. App. Br. 7. Appellants
contend that the broadest reasonable interpretation of the term
“titanium+aluminum,” consistent with the Specification, is a titanium-
aluminum alloy, and not simply the total amount of titanium and aluminum
in the composition. Id. at 6–7. Appellants argue that the Specification does
not “indicate that the described amounts of titanium and aluminum should be
added together to represent the titanium+aluminum.” Id. at 7. Appellants
further argue that a person of ordinary skill in the art would not consider the
term “titanium+aluminum” as an instruction to add together the individual
components, but would instead understand that the term designates a class of
titanium-aluminum alloys. Id. at 6–7. As a result, Appellants contend that
claim 1 requires aluminum as an individual element, titanium as an
individual element, and titanium+aluminum as an alloy or compound. Id. at
5–7.
Under this interpretation of the claim, Appellants argue that Richards
does not teach a metal having an amount of a titanium+aluminum
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Application 13/219,993

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compound/alloy between about 0.55% and about 2.75% by weight as
described in claim 1.
In the Answer, the Examiner takes the position that claim 1 does not
preclude the titanium and aluminum recited individually in the claim from
being the same titanium and aluminum in the “titanium+aluminum” element.
Ans. 6. According to the Examiner “[t]he claims and the current
[S]pecification do not state that the titanium+aluminum are a separate alloy
from the titanium and aluminum. There is no support in the specification for
the ‘titanium+aluminum’ being a separate compound. The specification
does not mention the words ‘alloy’ or ‘compound’.” Id.
After review of the arguments and evidence presented by Appellants
and the Examiner, we sustain the stated rejection.
In the context of claim interpretation,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the Specification
does not expressly define the term “titanium+aluminum.” On its face, the
meaning of this term, as it is ordinarily used, is the sum of aluminum and
titanium. We are not persuaded by Appellants’ arguments that this term
refers to a titanium-aluminum alloy or compound. Appellants have not
directed us to any portion of the Specification that mentions the words alloy
or compound in the context of the “titanium+aluminum” requirement. Nor
have Appellants directed us to any factual evidence supporting the argument
that a person of ordinary skill in the art would understand that the term
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designates a class of titanium-aluminum alloys, as opposed to an instruction
to add together individual components. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (holding that attorney argument cannot take the place of
evidence). Thus, absent any evidence to the contrary, we find that the
broadest reasonable interpretation of the claim term “aluminum+titanium”
means the sum of aluminum and titanium in the composition.
Under the broadest reasonable interpretation of the term
“titanium+aluminum,” we find that the Examiner reasonably concluded that
Richards discloses a compound that may have an amount of
titanium+aluminum between 0.55 wt% and 2.75 wt%. Because Appellants
have not directed us to any arguments or evidence regarding any other
deficiencies in the disclosure of Richards or the Examiner’s rejection, we
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 over
Richards.
As Appellants offer no separate arguments regarding the patentability
of dependent claims 2–17, we affirm the Examiner’s rejection of these
claims as well.

CONCLUSION
For the reasons set forth above, we affirm the rejections of claims
1–17 under 35 U.S.C. § 103.
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
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