Ex Parte Harris et al

Patent Trial and Appeal Board

Aug 16, 2017

13298879 (P.T.A.B. Aug. 16, 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.
13/298,879 11/17/2011 Kenneth Harris Cannon 143990-0002 2940
35684 7590
BUTZEL LONG, P.C.
IP DEPARTMENT
41000 Woodward Avenue
Stoneridge West
Bloomfield Hills, MI 48304
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
PATENT@BUTZEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH HARRIS and JACQUELINE B. WAHL
Appeal 2015-002876
Application 13/298,879
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.
Opinion for the Board by KAREN M. HASTINGS, Administrative Patent
Judge.
Opinion concurring by PETER F. KRATZ, Administrative Patent Judge.
Opinion dissenting by MARK NAGUMO, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is in response to a Request for Rehearing (“Req. Reh’g”), dated
June 14, 2017, of our Decision, mailed April 14, 2017 (“Decision”), wherein
we affirmed the Examiner’s § 103(a) rejection based on DeLuca (US
2003/0041930 Al, published Mar. 6, 2003) as well as the § 103(a) rejection
based on Duhl ’096 (US 6,054,096, issued Apr. 25, 2000).
We have reconsidered our Decision, in light of Appellants’ comments
in the Request for Rehearing, and we find no error in the disposition of the
§ 103(a) rejection.
Appeal 2015-002876
Application 13/298,879
We have reviewed the arguments set forth by Appellants in the
Request. However, we remain of the opinion that the subject matter of the
claims is properly rejected and unpatentable under 35 U.S.C. § 103(a).
Appellants request reconsideration based on the Board’s following
alleged errors:
(1) mischaracterizing this appeal as “the typical case in which
overlapping or encompassing prior art ranges establish prima
facie obviousness,” ['] rather than applying the standards of In
re Peterson, which require a determination of whether the prior
art as applied against the claims at issue were too broad to
invite routine experimentation; (2) improperly finding that
when “the difference between the claimed invention and the
prior art is some range or other variable within the claims . . .
Appellants must show that the particular range is critical;” (3)
mischaracterizing In re Baird as resting “its decision on an
inference that the cited reference taught away from the
particular species within the reference’s generic disclosure;”
and (4) relying on a false analogy between In re Harris and In
re Peterson to draw a conclusion regarding the claims at issue.
(Req. Reh’g 2).1 2
These arguments are not persuasive of any error in our Decision.
Appellants’ dissatisfaction with our application of the law in our decision is
noted; indeed, Appellants urge that “[b]oth the Harris court and the majority
have misapplied Peterson ” (Req. Reh’g 6; emphasis added). Appellants
1 Appellants do not provide a cite for this quote, and a word search did not
find the phrase “typical case” in our underlying decision.
2 Appellants appear to fail to explicitly set forth “the points believed to have
been misapprehended or overlooked by the Board” as required by 37 C.F.R.
§ 41.52(a). Thus, the request appears to be improper. Nonetheless, we have
responded to Appellants’ apparent reargument of their position on appeal.
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Appeal 2015-002876
Application 13/298,879
urge that In re Baird did not base their decision that a broad genus can fail to
render a species within that genus on a teaching away premise (Req. Reh’g
5,6).
In the case before us, Appellants do not claim a few species or a
specific composition as was the case in Baird. In fact, Appellants,
themselves, claim a genus that encompasses a large number of alloy
compositions by employing range amounts for the required alloy
components. In addition to the manifold compositions encompassed by
representative claim 1 based on constituent amount variations encompassed
via the amount ranges therein, representative claim 1 employs the open
“comprising” transitional term (twice) and expressly permits the inclusion of
any incidental elements in a total amount of at least up to one percent (e.g.,
dependent claims 2 and 3 expressly provide for certain other elements to be
purposefully added in targeted amounts). Indeed, Appellants admit that the
claims “may, as alleged, encompass a large number of alloys” (Req. Reh’g
7).
We recognized that our reviewing court in Baird further rested its
decision on an inference that the cited reference taught away from the few
particular species within the reference’s generic diphenyl formula disclosure
that the Examiner relied upon. In re Baird, 16 F.3d 380, 382—83 (Fed. Cir.
1994).
Aside from there not being a few discrete species being claimed here,
as in Baird, neither Duhl ’096 nor DeFuca teaches away from the claimed
amounts of each component, nor contains sufficient disclosure that would
have supported an inference that forming an alloy having the constituent
elements in amounts corresponding to Appellants’ claimed amounts, albeit
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Application 13/298,879
falling within the ambit of the teachings/suggestions of each of Duhl ’096
and DeLuca, would have been a path a skilled artisan would have been
discouraged from embarking upon or led away from.
As indicated above, Appellants are not claiming only a few discrete
compositions, as was at issue in Baird. Therefore, Appellants’ reliance on
Baird (as well as Peterson for support of their position) is misplaced.
Appellants also argue the Examiner and the Board did not address
Appellants’ argument that the prior art discloses the nickel alloy technology
as highly “unpredictable” (e.g., Req. Reh’g 4). Appellants’ assertion of
unpredictability in the nickel-based superalloy technology is predicated on
the premise that the prior art’s consideration of multiple compositional
aspects in designing such alloys attests to the complexity of the art.
However, Appellants have not adequately explained how this complexity
translates to unpredictability, nor why Duhl ’096 and DeLuca would not
have led one having ordinary skill to alloys that would meet the ranges
recited in the claims. One of ordinary skill would have been aware of the
relative expense of the compositional elements. The prior art discloses
techniques that would have placed within the technical grasp of an ordinary
artisan a mechanism for optimizing the composition of a nickel-based single
crystal superalloy by balancing the compositional elements (with due
consideration of the relative expense of any rare elements) to predictably
achieve a nickel alloy formulation that exhibits excellent attributes. In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“In fact, when, as here, the
claimed ranges are completely encompassed by the prior art, the conclusion
is even more compelling than in cases of mere overlap. The normal desire of
scientists or artisans to improve upon what is already generally known
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Application 13/298,879
provides the motivation to determine where in a disclosed set of percentage
ranges is the optimum combination of percentages.” (Citation omitted)); see
In re Alter, 220 F.2d 454, 456—58 (CCPA 1955) (“[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
Appellants’ arguments do not persuade us otherwise. See also Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356,
1368 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit
motivation to combine exists not only when a suggestion may be gleaned
from the prior art as a whole, but when the ‘improvement’ is technology-
independent and the combination of references [alloy elements] 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.
Because the desire to enhance commercial opportunities by improving a
product or process is universal—and even common-sensical—we have held
that there exists in these situations a motivation to combine prior art
references even absent any hint of suggestion in the references
themselves.”).
Furthermore, as we pointed out in our Decision, if Appellants’
assertions that the level of unpredictability is high in this art are correct, it
also follows that two examples in their Specification that both contain
component amounts that are very close and nearer to one end of each
claimed range (with said examples also being fully encompassed by the
applied prior art) should not be indicative of the properties throughout the
entire claimed range of each component.
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Application 13/298,879
The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Appellants’ evidence of unexpected
results fails to satisfy this burden as explained in our Decision.
Accordingly, no persuasive merit is present in Appellants’ arguments
(Req. Reh’g generally).
Thus, we decline to modify our decision to affirm the Examiner’s
above noted § 103(a) rejections of the appealed claims.
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejection therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed April 14, 2017, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52 (a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
DENIED
6
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH HARRIS and JACQUELINE B. WAHL
Appeal 2015-002876
Application 13/298,879
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.
PETER F. KRATZ, Administrative Patent Judge, concurring.
Having reconsidered the Decision, mailed April 14, 2017, in light of
Appellants’ comments in the Request for Rehearing, I find no error in
upholding the Examiner’s § 103(a) rejections over either Duhl ’930 or
DeLuca. Consequently, I join this Decision on Reconsideration in adhering
to the affirmance of the Examiner’s above-identified obviousness rejections
as set forth in the previously entered Decision.
In my view, however, and upon reconsideration of the rendered
Decision, I would modify the Decision and extend the Board’s affirmance to
include affirmance of the Examiner’s § 103(a) rejection of the appealed
claims over Duhl ’080 for reason set forth by the Examiner in the Final
Rejection and the Answer. This is because, after reconsideration in light of
this Request (and contrary to the determination in the Decision), I find that
Duhl ’080 would not have been understood by one of ordinary skill in the art
Appeal 2015-002876
Application 13/298,879
as teaching away from Appellants’ claimed subject matter by limiting its
disclosure to its inventive alloy compositions within its taught composition
constituent ranges that further have a P value of more than 3360, adherence
to which additional limitation is disclosed as providing for optimum
properties while affording a distinction from specific compositions known in
the art that would be encompassed by at least the broad composition range
teachings of Duhl ’080, according to the inventors of Duhl ’080 (col. 3,11.
36-63).
In particular, Duhl ’080 does not teach that nickel-based superalloy
compositions for single crystal casting that include components, as claimed
here, that are present in amounts within the ranges set forth in the generic
formula of Duhl ’080 but not having a P value greater than 3360 (including
amounts corresponding to the amounts required by Appellants’ claim 1),
should not be pursued simply because they may be included in the prior art
to Duhl ’080 portion of the broad alloy composition ranges taught by Duhl
’080 based on the P value limitation according to Duhl ’080. Duhl ’080
does not teach that such compositions do not have utility for the purpose of
forming single crystal alloy articles even if at last some of them may have
less than optimum properties for certain circumstances (Duhl ’080, col. 3,11.
54—63).
Although Duhl ’080 may indicate a preference for disclosed alloys
having constituent amounts within the disclosed ranges that are such that
they have a P value in excess of 3360, Duhl ’080 does not disparage the
remaining, less-preferred, portions of the disclosed compositional ranges as
being unworkable in formulating an alloy composition. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious composition does not
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Application 13/298,879
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.”). In re Susi, 440 F.2d 442,
445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of
the prior art was “huge, but it undeniably include [d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”). Thus,
Appellants’ argument that Duhl ’080 teaches away from alloy compositions
having a P value that is not in excess of 3360 is not persuasive.
Furthermore, representative claim 1 is not limited to any particular
creep strength, rupture life or other particular alloy property and Duhl ’080
teaches that rhenium can be employed in an amount between 0 to 5 weight
percent (Table 1). In addition, Appellants acknowledge known supply chain
problems for rhenium, which would have incentivized one of ordinary skill
in the art to select a nickel-based superalloy for single crystal casting
containing less rhenium from within the applied prior art alloy composition
constituent range teachings of Duhl ’080 sufficient for the alloy’s utility, but
including less than previously disclosed/suggested optimum amounts of
rhenium in the alloy (Spec. ^fl[ 2- 6).
As indicated in the April 14, 2017 Decision and above, Appellants are
not claiming only a few discrete compositions, as was at issue in Baird.
Therefore, Appellants’ reliance on Baird (as well as Jones and Peterson) in
support of their argument is misplaced.
3
Appeal 2015-002876
Application 13/298,879
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH HARRIS and JACQUELINE B. WAHL
Appeal 2015-002876
Application 13/298,879
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, dissenting.
I dissent, respectfully, from the denial of the Request for Rehearing
and the continued affirmance of the appealed rejections for obviousness.
For the reasons set out in my Dissenting Opinion, which are parallel
to my Dissent in copending Appeal 2015-005912,31 find the evidence
supporting obviousness to be little more than the disclosure in the prior art of
an encompassing range of alloy compositions. Without substantive evidence
indicating unpredictability (indicated, for example, by the existence of many
3 Appeal 2015-005912, in Application 13/311,626, filed December 6, 2011.
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Application 13/298,879
distinct compositions and no unifying explanation for their existence), cases
such as Peterson4 5and Harris5 do support a legal conclusion of obviousness.6
But here, in my view, Appellants have shown that the broad ranges on
which the Examiner relies encompass a very large number of possible
distinct compositions. The record further indicates that the prior art provides
little if any guidance that would have directed the person having ordinary
skill in the art to make a significant change in the amount of a component
such as rhenium, which the prior art recognizes as being critical in inhibiting
diffusion and creep deformation, and to make compensating changes in the
amounts of the eight other named additives, to retain those properties.
Moreover, neither the Examiner nor the Majority have indicated a starting
composition and teachings that would have suggested the rational
modification to arrive at a composition within the scope of the appealed
claims. In short, none of the typical indicia of obviousness are present, and
the reliance on the general rule extracted from Peterson thus amounts to the
improper application of a per se rule rather than the “searching comparison
of the claimed invention—including all of its limitations—with the teachings
of the prior art” required by section 103 “and the fundamental case law
applying it.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
I therefore dissent.
4 In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
5 In re Harris, 409 F.3d 1339 (Fed. Cir. 2005).
6 Appellants’ argument that those cases were wrongly decided are at best a
distracting side issue. In Peterson, the issue of the substantive breadth of the
prior art genus was not raised; in Harris, to the extent it was raised, it was
not supported adequately by evidence of record or by sufficiently persuasive
argument.
5