Ex Parte FENG et al

Patent Trial and Appeal Board

Jun 22, 2018

13868481 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/868,481 04/23/2013 Ganjiang FENG
13152 7590 06/25/2018
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
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.
262447/22113-0153 6951
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAILDATE DELIVERY MODE
06/25/2018 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 GANJIANG FENG,
JON CONRAD SCHAEFFER, and MICHAEL DOUGLAS ARNETT
Appeal2017-007918
Application 13/868,481
Technology Center 1700
Before ADRIENE LEPIANE HANLON, RAEL YNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 7, 9-11, and 19. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6.
We affirm.
Claim 1 illustrates the invention:
1. A cast nickel-base superalloy comprising, in weight
percent:
about 3-5% Fe;
about 7.5-19.1 % Co;
about 7-22.5% Cr;
Appeal2017-007918
Application 13/868,481
about 1.2-6.2% Al;
up to about 5% Ti;
about 0.94---6.5% Ta;
about 2---6% W;
up to about 3% Re;
up to about 4% Mo;
up to about 0.18% C;
up to about 0.15% Hf;
about 0.004---0.015 B;
about 0.01---0.1 % Zr; and
the balance Ni and incidental impurities,
wherein the superalloy is characterized by a y' mole
fraction that is no more than 15% less than the y' mole fraction
of a comparable superalloy that does not include 1-6% Fe.
2
Appeal2017-007918
Application 13/868,481
Appellant 1 (see generally Appeal Brief) requests review of the
following rejections from the Examiner's Final Action2 :
I. Claims 1, 7, 9, 10, and 19 rejected under 35 U.S.C. § 103 as
unpatentable over Hodshire (US 3,748,110, issued July 24, 1973).
II. Claims 1, 7, 9-11, and 19 rejected under 35 U.S.C. § 103 as
unpatentable over Shaw (US 4,039,330, issued August 2, 1977).
For each rejection, Appellant presents arguments only for independent
claims 1 and 9 together and does not separately address the patentability of
dependent claims 7, 10, 11, and 19. App. Br. 7, 10-11. Further, the
arguments presented for both rejections and for independent claims 1 and 9
are essentially the same. See generally App. Br. Accordingly, we address
both rejections together. We further select independent claim 1 as
representative of all the claims presented for review on appeal.
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the rejections of claims 1, 7, 9-11, and 19 for the
reasons presented by the Examiner. We add the following for emphasis.
1 General Electric Company is the Applicant/ Appellant. The named
inventors and General Electric Company are identified as the real parties in
interest. App. Br. 1.
2 The Examiner withdrew the rejections under 35 U.S.C. §§ 112(b) and
under 35 U.S.C. § 103 based on the reference to Malley (EP 0 849370Al,
published June 24, 1998). Ans. 12. The Examiner previously withdrew the
rejection under 35 U.S.C. § 112(d) in the Advisory Action mailed July 1,
2016. Ans. 12; Adv. Act. 2.
3
Appeal2017-007918
Application 13/868,481
The subject matter of independent claim 1 is directed to a cast nickel-
base superalloy comprising from about 3-5% iron. Spec. i-f 17; App. Br. 2.
According to Appellant, the inclusion of this amount of iron in a nickel-base
alloy results in beneficial effects without unacceptable sacrifice of material
properties, particularly the y' mole fraction, 3 when compared to a nickel
base alloy that does not include 1---6% iron. Id. i-f 8, 38; Claim 1.
The Examiner finds each of Shaw and Hodshire discloses a cast
nickel-based superalloy including an iron content of up to 3 % that overlaps
with the lower amount of the claimed iron content of about 3-5%. Ans. 2-3
and 7-8. 4 The Examiner determines that this overlap establishes a prima
facie case of obviousness. Id. at 3, 8.
Appellant acknowledges that the prior art's disclosed iron content
range and the claimed iron content range "meet at a single point" (3%).
App. Br. 4, 7. However, Appellant argues the Examiner erred in "failing to
consider that the present claims are directed to a compositional range
previously believed to be unacceptable, and that the prior understanding in
the art that iron content should not be increased past 3 % amounts to a
teaching away from the present claims." Id. at 5, 8. That is, Appellant
argues the Examiner erred in not considering the claimed embodiments that
3 The Specification describes "[t]he decreasing y' mole fraction" as
"translat[ing] to decreasing strength and decreasing creep resistance with
increasing Fe content." Spec. i-f 38.
4 We rely on the Answer for the findings made by the Examiner because it
addresses the subject matter of the claims which were narrowed to an iron
content of about 3-5% from 1-6 %. Compare Ans. 2, 7 with Final Act. 7,
1 1.
4
Appeal2017-007918
Application 13/868,481
lie beyond the common "single point" iron content overlap of the noted iron
content ranges.
We have considered Appellant's various arguments, but are
unpersuaded. Our reviewing court has held that "a prima facie case of
obviousness arises when the ranges of a claimed composition overlap the
ranges disclosed in the prior art." In re Harris, 409 F.3d 1339, 1341 (Fed.
Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). In
such a case, the burden is on Appellant to rebut prima facie obviousness by
showing evidence of unexpected properties at the claimed range relative to
the prior art range. See In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir.
1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Given Appellant's acknowledgement that the prior art's disclosed iron
content range and the claimed iron content range overlap "at a single point"
(3%) (App. Br. 4, 7), Appellant does not explain error in the Examiner's
determination of obviousness (Ans. 3, 8). Appellant relies on the
Declaration under 37 C.F.R. § 1.132 from co-inventor Jon Conrad Schaeffer
(Declaration)5 to assert that "a person having ordinary skill in the art would
not seek to push the outermost boundary of [prior art's] disclosed range
alloy embodiments comprising more than 3% iron." Dec. i-fi-15, 6., However,
weighing the declaration evidence against the Examiner's prima facie case
of obviousness, the Examiner has established, and Appellant does not
dispute, that the claimed range and the prior art range overlap. Thus, it is of
no moment whether one of ordinary skill in the art would have increased the
amount of iron to more than 3% because there already is overlap between
5 The Declaration was submitted by Appellant on April 7, 2016 and entered
into the record by the Examiner in the Final Action of April 25, 2016.
5
Appeal2017-007918
Application 13/868,481
the prior art range and the claimed range. Moreover, Appellant has not
directed us to any evidence of criticality for the claimed iron range.
Appellant additionally argues that the Examiner erred in dismissing
the claim limitation of a "superalloy characterized by a y' mole fraction that
is no more than 15% less than the y' mole fraction of a comparable
superalloy that does not include 1---6% Fe." App. Br. 5, 9. According to
Appellant, they' mole fraction of an alloy is not a property, per se, but rather
is a structural feature of the alloy which contributes to the alloy's ultimate
properties. Id. Appellant contends the properties of an alloy are not defined
merely by the composition of the alloy, but rather, the properties of an alloy
are also significantly influenced by the microstructure of the alloy, and the
microstructure is determined by multiple factors, including the composition
of the alloy, the heat treatment by which the alloy is formed, the pressure at
which the alloy is formed, and others. Id. Appellant also argues that the
claimed superalloy and the prior art's alloy are made by different processes.
Id. at 6, and 9--10. Appellant further argues that prior art's superalloy is not
identical or substantially identical to the claimed invention. Id. at 6-7, and
9.
We find these arguments unavailing. The mere recitation of a
property or characteristic not disclosed by the prior art does not necessarily
confer patentability. Cf In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
Where the Examiner establishes a reasonable belief that the property or
characteristic recited in the claims would have been inherent to the product
or process, the burden of proof shifts to Appellant to show that this
characteristic or property is not possessed by the prior art. See In re Best,
6
Appeal2017-007918
Application 13/868,481
562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
As shown above, the Examiner established, and Appellant does not
dispute, that the alloys of Hodshire and Shaw and the claimed alloy are both
directed to a nickel-base superalloy comprising an iron content range that
overlaps at about 3%. Ans. 2, 7; App. Br. 4, 7. Further, the Examiner has
found that the claimed cast alloy appears to be identical or substantially
identical to the prior art's alloy. Ans. 16; Best, 562 F.2d at 1255. Thus,
there is a reasonable basis for one skilled in the art to expect the prior art
alloys and the claimed alloy to have the same properties. Accordingly, the
burden is shifted to Appellant to demonstrate that the microstructure of the
claimed alloy was not possessed by the prior art. Best, 562 F.2d at 1255.
Appellant has not adequately explained or directed us to evidence showing
why the prior art's alloys do not necessarily or inherently possess the
disputed property.
While Appellant argues that the processes affects they' mole fraction
of an alloy and that Appellant's process and the process taught by the prior
art are different, Appellant has not shown that the process differences are
substantial and indeed would lead to a y' mole fraction other than recited in
the claims, particularly where no particular y' mole fraction is recited, only
that the y' mole fraction is 15% less than comparable alloys with much more
or much less iron than the amounts taught by the prior art. 6
6 We note that the language of claim 1 compares they' mole fraction of the
claimed nickel base alloy having 3-5% iron against "prior art" nickel-based
alloys having iron content outside of 1---6% iron content range (i.e., greater
than 6% or less than 1 % iron). Because the prior art also includes iron
concentrations in the 1---6% range, the comparable alloys would be expected
7
Appeal2017-007918
Application 13/868,481
Accordingly, we affirm the Examiner's prior art rejections of claims
1, 7, 9--11, and 19 under 35 U.S.C. § 103 for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 1, 7, 9--11, and 19 under
35 U.S.C. § 103 are affirmed.
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
to have a y' mole fraction similar to comparable nickel-based alloys having
content in the 1---6% range as compared to comparable superalloy with iron
content outside of this range.
8