Ex Parte Harris et al

Patent Trial and Appeal Board

Apr 12, 2017

13298879 (P.T.A.B. Apr. 12, 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
04/14/2017 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. WAHL1
Appeal 2015-0028762
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 dissenting by MARK NAGUMO, Administrative Patent Judge.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—9 under 35 U.S.C. § 103(a) as being
unpatentable over at least either of Duhl ’080 (WO 2006/019035 Al,
published Feb. 23, 2006), or Deluca (US 2003/0041930 Al, published Mar.
1 According to Appellants, the real party in interest is Cannon-Muskegon
Corporation. See Appeal Br. 3.
2 In the Reply Brief, Appellants identify application 13/311,626 as a related
appeal.
Appeal 2015-002876
Application 13/298,879
6, 2003)3. Claims 1—3 and 6—9 were also rejected under 35 USC § 103 (a) as
unpatentable over Duhl ’096 (US 6,054,096, issued Apr. 25, 2000).
An oral hearing was conducted on March 21, 2017. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal (emphasis
added):
1. A nickel-base superalloy for single crystal casting
comprising'.
5.60% to 5.85% aluminum by weight;
9.4% to 9.9% cobalt by weight;
5.0% to 6.0% chromium by weight;
0.08% to 0.35% hafnium by weight;
0.50% to 0.70% molybdenum by weight;
8.0% to 9.0% tantalum by weight;
0.60% to 0.90% titanium by weight;
8.5% to 9.8% tungsten by weight;
a maximum of 0.15% rhenium by weight', and
the balance comprising nickel and minor amounts of incidental
elements, the total amount of incidental elements being about 1 % or
less by weight.
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
It is well established that when claimed ranges overlap or lie inside
ranges disclosed by the prior art for every component in a claim, a prima
facie case of obviousness is typically established. In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
3 The Examiner applied additional reference(s) to dependent claim 4 in each
of these rejections; however, all the claims stand or fall with claim 1.
2
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2003) (“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.”). 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. Furthermore, “a reference must
be considered for everything that it teaches.” In re Applied Materials, Inc.,
692 F.3d 1289, 1298 (Fed. Cir. 2012). It is also well established that a
reference is not limited to its examples or preferred embodiments; see Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(holding that the prior art's disclosure of over 1200 possible combinations
rendered all possible formulations obvious).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range, or that the
applied prior art teaches away from the claimed invention. See e.g., In re
Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990). 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).
There is no dispute that each of the three alternatively applied
references disclose a nickel-based superalloy for single crystal casting
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Application 13/298,879
having component ranges that either encompass all of the claimed ranges
(Duhl ’096 and Deluca), or encompass all of the claimed ranges except one
where an overlap exists (Duhl ’080). Duhl ’080 admits that its broad
composition ranges may encompass specific compositions known in the art
(Duhl ’080 col. 3,11. 53—56). Thus, Duhl ’080 sets out a relationship of the
alloy components to be obeyed to obtain optimum properties; this
relationship results in a P value (Duhl ’080, col. 3,11. 35—68). Appellants
persuasively argue that Duhl ’080 teaches away from the claimed invention
because it limits its inventive alloy to those with a P value of more than
3360, whereas, on this record, it is not disputed that the maximum P value
obtained by the claimed alloy would be 3070 (id.; App. Br. 11—14; Reply Br.
7; Ans. generally). We, thus, reverse the Examiner’s rejection based on
Duhl ’080.
On the other hand, a preponderance of the evidences supports the
Examiner’s rejections based on Duhl ’096 and DeLuca and thus, we will
sustain those rejections for essentially those reasons expressed in the Final
Action and the Answer, as it pertains to those rejections (e.g., Ans. 6-12;
Final Action 6-12). We add the following for emphasis.
Appellants’ main argument is that both of these references disclose
such broad ranges compared to the narrow ranges claimed that a prima facie
case of obviousness has not been established for all the reasons presented
regarding Duhl ’080 (App. Br. 16, 17 stating that since Duhl ’080 and ’096
pertain to substantially the same subject matter, one would look to the
guidance of Duhl ’080 and not arrive at the claimed composition).
Appellants urge that millions of distinct compositions are possible and there
is no guidance to arrive at the presently claimed narrow subset. Appellants
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argue further urge that the prior art (Duhl ’080) teaches that rhenium must be
in a range of about 2.5 to 4% by weight to achieve good high temperature
stress rupture properties (App. Br. 14) Appellants state:
None of these references teach that (1) Re could be
reduced to 0.15% or less, (2) total refractory elements could be
from 17.0% to 19.65%, and (3) Ti could be from 0.6% to 0.9%,
in order to provide creep-rupture properties comparable to
conventional second-generation single-crystal nickel-based
superalloys. Rather, the prior art when considered in its entirety
teaches that about 3% Re is needed to achieve high-
temperature, high-stress creep and rupture properties (i.e.,
second-generation properties), that Ti should be eliminated to
improve oxidation resistance, and that total refractory elements
should be about 20. Moreover, the Duhl et al. '080 reference
teaches that a P value in excess of 3360 must be achieved,
whereas the claimed invention is only capable of achieving a
P value of 3070.1. The teachings of Deluca et al. and Duhl et al.
'096 relate only to heat treatments of alloys having the same
compositional range as Duhl et al. '080, and cobalt optimization
within a very similar range as Duhl et al. '080. The
recommendations of the prior art with regard to P value,
titanium addition, rhenium addition and total refractory element
additions lead away from the claimed invention.
Appellants’ basic premise that one of ordinary skill in the art would
necessarily limit the Duhl ’096 disclosure, as well as the Deluca disclosure,
based on Duhl ’080 is not persuasive. As pointed out by the Examiner,
while Duhl ’096 may have been filed earlier, it was not patented and, thus,
not available to the public until many years after Duhl ’080, and Deluca was
also published many years after Duhl ’080 (Ans. 13). Furthermore, as
pointed out by the Examiner Duhl ’096 and Deluca (as well as Duhl ’080)
explicitly teach that no rhenium may be present (Ans. 17). Indeed, Duhl ’096
has numerous examples of rhenium free alloys. While Appellants correctly
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point out that the Examiner miscalculated the refractory element content
(i.e., Mo, W, Ta, and Re) of Alloy 255 of Duhl ’096 to be 17.38 when it is
actually 16.0, we note Duhl ’096 teaches refractory content is a result
effective variable (col. 2,11. 47—63 (also explaining that total refractory
content preferably exceeds 10%)). We note than an amount of 16.0 is close
to Appellants’ urged combined lower limit of 17.0. Appellants’ argument
that the examples of Duhl ’096 provide a teaching away from a total
refractory content of 17.0 to 19.65 is not persuasive, especially when taken
in context of Duhl ’096 teaching that the amount of refractory metals is a
result effective variable, 16.0% may be used in one rhenium free alloy
example, and that the upper limits of the ranges of refractory metal content
of Duhl ‘096 encompass the claimed amounts of Mo, W, Ta, and Re
wherein such “higher amounts of these strengthening elements will find
application in blades and other similar more highly stressed engine
components” (col. 2,11. 60—62).
Appellants further argue that claim 1 is not obvious over the
disclosure of Duhl 096 or DeLuca because it is drawn to a narrow subset of
the ranges disclosed therein (e.g., App Br. 8-11 (citing In re Jones 958 F.2d
347, 350 (Fed. Cir. 1992); In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In
re Peterson) 315 F.3d 1325 (Fed. Cir. 2003); Reply Br. 5). We do not agree.
The Baird court rested its decision on an inference that the cited reference
taught away from the particular species within the reference’s generic
disclosure that the Examiner relied upon. Baird, 16 F.3d at 382—83. 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 the claimed amounts were disfavored. Appellants’ reliance on
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Baird (as well as Jones and Peterson), therefore, is misplaced.4 Indeed
Peterson weighs more in support of a conclusion of obviousness (than
nonobviousness) in this case for similar reasons it supported a conclusion of
obviousness in In re Harris (Cf. In re Harris, 409 F.3d at 1343 where our
reviewing court explained that Peterson did not support Harris’ argument
that ranges were too broad to teach any specific alloy, as the prior art in
Peterson taught ranges even broader than that claimed in the applied prior
art, and in neither case, were the prior art ranges too broad to render
narrower ranges obvious, absent “unexpectedly improved properties” or a
lack of motivation “to make what otherwise appear to be obvious changes”
citing In re Dillon 919 F.2d 688, 692 (Fed. Circ. 1990) (en banc)).
Thus, a preponderance of the evidence supports the Examiner’s
position that it would have been prima facie obvious, using no more than
ordinary creativity to make a rhenium free Ni-based superalloy for single
crystal casting using the recited elements in amounts that are within all of
the claimed ranges.
Appellants point to the inventive and comparative examples presented
in the Specification Tables 7 and 8 as providing evidence of the criticality of
the claimed composition (App. Br. 20). However, a preponderance of the
evidence supports the Examiner’s position that this evidence is not
commensurate in scope with the claims; that is, Appellants have not
furnished a sufficient nexus between obtaining an alloy possessing the
argued properties and the claimed alloy range limitations (e.g., Ans. 21).
4 In the case before us, Appellants do not claim a few species as was the case
in Baird. In fact, Appellants, themselves, claim a genus that encompasses a
large number of alloy compositions.
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Application 13/298,879
For example only, claim 1 uses the open-ended term “comprising” (twice)
and, thus, may include other unrecited components in minor amounts.
Furthermore, Appellants merely exemplify two examples, both with similar
amounts of each component, and do not show results covering the claimed
ranges (e.g., Ans. 21)5. Claim 1, for instance, encompasses an alloy with
less than one-third the amount of hafnium (Hf) employed in either of
Appellants’ examples (Spec. 10, 14, Tables 2, 6). Furthermore, if
Appellants’ assertions that the level of unpredictability is high in this art are
correct6, it also follows that two examples that both contain component
amounts that are very close and nearer to one end of each claimed range and
which examples are also fully encompassed by the applied prior art should
not be indicative of the properties throughout the entire claimed range of
each component.
On this record, Appellants have not adequately shown why the
evidence relied upon would have been unexpected by one of ordinary skill in
the art or is reasonably commensurate in the scope with the claims. See,
e.g., In re Harris, 409 F.3d at 1344 (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims.”); In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978).
For example only, the strength of the two example alloys discussed by
Appellants does not demonstrate that the property would have been
5 While the Examiner apparently did not appreciate that Table 2 and Table 6
disclose Appellants’ alloy components’ amounts, this is harmless error (e.g.,
Ans. 20; Reply Br. 10).
6 Indeed, concomitantly, the level of skill in this art would also appear to be
quite high.
8
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expected, and/or that it would have been unexpected throughout the claimed
ranges (compare In re Harris, where our reviewing court found that a single
example of Ni-based superalloy based on claimed narrow ranges of
components compared to the prior art did not establish unexpected results
over prior art with broader ranges, and furthermore agreed that a 32 to 43%
increase in stress rupture life “does not represent a “difference in kind” that
is required to shown unexpected results”. Harris 409 F. 3d at 1343).
While Appellants’ Specification states that its two tested examples
had “good creep strength / stress-rupture life properties” that were
“surprisingly similar” to Rene N-5 (3% Re) and Rene’ N-515 (1.5% Re)
alloys, the claims do not recite any particular properties that all alloys
within its alloy compositional ranges necessarily possess. Furthermore,
Appellants’ alleged unexpected results are compared as being “surprisingly
similar” to certain prior art alloys containing either 1.5% or 3% rhenium, or
“superior” to another prior art alloy “CMSX-2/3® alloy (zero Re)” under
some test conditions (Spec. 147)7, or to an example in Duhl ’080 (Reply Br.
10 (stating that a comparison to the Duhl ’080 alloy B1 shows a 29% to 37%
improvement in stress rupture life). However, the exemplified alloys
encompassed by the prior art would appear to further include a rhenium free
example alloy of Duhl ’0968, such as the “stable” example alloys 313 and
7 The specific compositions of these alloys are not described in the body of
the subject Specification. The burden is on Appellants’ to establish
unexpected results for the claimed subject matter by presenting supporting
evidence reasonably co-extensive in scope with the claims.
8 Cf., Duhl ’080 alloy B1 has no titanium therein and an amount of tantalum
significantly below the lower claimed amount; Duhl ’096 alloys 313 and 316
contain all elements that are claimed in amounts closer to or within the
claimed ranges compared to those of Duhl ’080.
9
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316 (Duhl ’096 col. 7, Table l)9. Moreover, the disclosed prior art ranges of
Duhl ’096 or DeLuca, including the claimed ranges of Duhl ’096 (see, e.g.,
claim 1) embrace a) untested alloys that are only slightly outside the claimed
ranges and b) untested alloys that are within the bounds of Appellants’
claimed ranges. We, therefore, discern no error in the Examiner's
determination that the applied prior art of Duhl ’096 or DeLuca would have
rendered obvious the Ni-based superalloy of claim 1 of Appellants'
invention.
In light of these circumstances, the preponderance of the evidence
supports the Examiner’s rejections based on Duhl ’096 and DeLuca.
Accordingly, we sustain the rejections based on Duhl ’096 and
DeLuca of the claims on appeal, although as previously noted, we reverse
the rejection based on Duhl ’080.
DECISION
The decision of the Examiner is 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)(1).
AFFIRMED
9 These alloys of Duhl ’096 contain all of the claimed elements either in the
ranges or close to endpoints of the ranges except for tungsten (W) which is
at 4.1 and 7 versus claimed 8.5 to 9.8 (notably, W is known to be result
effective refractory metal).
10
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
NAGUMO, Administrative Patent Judge, dissenting.
I respectfully dissent.
In my view, the majority overstates the holding in Peterson10, and
overlooks or misapprehends the evidence in the record, both in Appellants’
’879 Specification, and in the prior art. The weight of that evidence, in my
view, is sufficient to show that the Examiner failed to establish a prima facie
case of obviousness. Thus, the arguments that Appellants failed to
demonstrate unexpected results are misplaced, because that burden had not
been transferred to them properly.
In Peterson, the Federal Circuit, after analyzing precedent and
reviewing the findings of fact of record, stated, “[w]e therefore conclude that
a prior art reference that discloses a range encompassing a somewhat
narrower claimed range is sufficient to establish a prima facie case of
obviousness.” 315 F.3d at 1330 (emphasis added). The court noted that
10 In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
Appeal 2015-002876
Application 13/298,879
“ranges that are not especially broad invite routine experimentation to
discover optimum values, rather than require nonobvious invention.” Id. at
n.l (emphasis added). However the court continued, “we do not have here
any assertion that the disclosed range is so broad as to encompass a very
large number of possible distinct compositions.” Id. On that record, the
court explained, “[w]e thus do not need to decide whether a disclosed range
of such breadth might present a situation analogous to our cases involving
the failure of a very broad disclosed genus of substances to render prima
facie obvious specific substances within its scope.” Id. (citing In re Baird,
16 F.3d 380 (Fed. Cir. 1994) and In re Jones, 958 F.2d 347 (Fed.
Cir. 1992)). In other words, on the facts before the court in Peterson, the
disclosed ranges encompassed a “somewhat narrower ‘claimed range.’” In
the absence of evidence to the contrary, it was not unreasonable to presume
that the ranges were “not especially broad,” and that persons having ordinary
skill in the art were, thus, invited to conduct “routine experimentation to
discover optimum values.” Hence, in Peterson (as well as in Harris11), the
court affirmed the holdings of obviousness below.
In this appeal, we have assertions of the sort noted expressly as being
absent in Peterson. Hence, we should consider whether the prior art
disclosed ranges are so broad that, like very broad genuses, they fail to
render prima facie obvious a much narrower range of alloys within their
scope. Before we embark on this consideration, it is useful to review what
11 In re Harris, 409 F.3d 1339 (Fed. Cir. 2005). The court in Harris
characterized the ranges of the prior art in Peterson as broader. 409 F.3d
at 1343. Hence, Peterson is the more potent case for upholding obviousness.
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Appellants say is the context of their invention, and what it is they say they
have invented.
The ’879 Specification concerns single crystal nickel-base superalloys
that are used to cast single crystal gas turbine components for jet aircraft and
power generation equipment. (Spec. 14.) Rhenium (Re) is said to be used
as an alloying additive “because of its potent effect at slowing diffusion and
thus slowing creep deformation, particularly at high temperature.” (Id.)
According to the Specification, “[tjypical nickel-base superalloys used for
single crystal castings contain from about 3% rhenium to about 7% rhenium
by weight.” (Id. 1 5.) Moreover, the Specification continues, “[although
rhenium has been used as only a relatively minor additive, it has been
regarded as critical to single crystal nickel-base superalloys to inhibit
diffusion and improve high temperature creep resistance.” (Id. (emphasis
added).) However, rhenium is said to be “truly rare” (id. 13) and expensive
(id. ]Hf 2, 5.) Therefore, minimizing the amount of rhenium, provided the
beneficial properties such as high temperature creep resistance, castability,
and phase stability are maintained, is desirable. (Id. 1 6.)
According to the Specification, the inventors have discovered
rhenium-free12 nickel superalloys that have creep strength and stress-rupture
life properties that are suitable for casting gas turbine components. (Id. 1 8.)
The Specification reports that this was achieved by “balancing the refractory
metal elements (tantalum, tungsten and molybdenum) at a total amount of
12 The Specification defines the terms “rhenium-free” and “substantially free
of rhenium” as meaning that “the alloys do not contain any added rhenium
and/or that the amount of rhenium present in the alloy is a maximum of
0.15% by weight.” (Id. 132.)
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about 17% to 20%[13] in order to achieve good creep-rupture mechanical
properties along with acceptable alloy phase stability.” {Id. 17.) The
rhenium-free alloys are said to have properties “surprisingly similar to
Rene’ N-5 (3% Re) and Rene’ N-515 (1.5% Re) alloys.” (Id. 147.)
Evidence supporting the findings is reported in the Figures and in Tables 1
through 5 of the Specification. {Id. H 38—69.)
The statement in the Specification regarding the relation between the
prior art and the reported discovery is worth quoting in full:
Single crystal superalloys and castings have been
developed to exhibit an array of outstanding properties
including high temperature creep resistance, long fatigue life,
oxidation and corrosion resistance, solid solution
strengthening, with desired casting properties and low
rejection rates, and phase stability, among others. While it is
possible to optimize a single additive alloying elements for a
particular property, the effects on other properties are often
extremely unpredictable. Generally, the relationships among
the various properties and various elemental components are
extremely complex and unpredictable such that it is
surprising when a substantial change can be made to the
composition without deleteriously affecting at least certain
essential properties.
{Id. 134 (emphasis added).) In other words, there are a lot of prior art single
crystal superalloys, with a lot of optimized properties, but changing the
amount of one element to improve a particular property often results in
unforeseen detrimental changes in other properties. Getting the mix right
13 The specification indicates that, unless indicated otherwise, all
percentages are by weight, based on the total weight of the alloy
composition. (Spec. 133.)
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after making a large change in one component is neither easy nor
predictable.
These statements, and the data supporting them, enjoy the
presumption of being true. Here, that means that the PTO bears the burden
of showing that they are not true, or that those of ordinary skill in the art
would not have relied on those statements and data. Our reviewing court,
addressing a similar situation, has stated,
Mere improvement in properties does not always suffice
to show unexpected results. In our view, however, when an
applicant demonstrates substantially improved results, as
Soni did here, and states that the results were unexpected,
this should suffice to establish unexpected results in the
absence of evidence to the contrary. Soni, who owed the
PTO a duty of candor, made such a showing here. The PTO
has not provided any persuasive basis to question Soni’s
comparative data and assertion that the demonstrated results
were unexpected. Thus, we are persuaded that the Board's
finding that Soni did not establish unexpected results is
clearly erroneous.
In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (emphases omitted).
As for the prior art applied by the Examiner, Appellants assert that the
ranges disclosed by Duhl ’080, Duhl ’096, and DeLuca “are intended to
encompass most of the commercially important first- and second-generation
single-crystal nickel-based superalloys.14” (App. Br. 7,11. 14—16.) In this
regard, it is apparent that Duhl ’080 discloses alloys having a preferred range
of 2.5^1 w% rhenium (i.e., second generation alloys), while Duhl ’096
14 First generation nickel superalloys are said to contain no rhenium
(Duhl ’096, Table 1), while second generation nickel superalloys
(Duhl ’096, Table 2) are said to contain 1.9 to 3.0% rhenium. (App. Br. 6,
11. 26-28.)
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discloses second generation alloys with a preferred range of 1.9-3.0 w%
rhenium (Table 2), as well as first generation alloys without rhenium
(Table 1). Moreover, both Duhl references describe “broad” and “preferred”
ranges of compositions, and both describe several particular embodiments of
alloy by composition and some properties.
Significantly, alloys described by both Duhl references display a
considerable spread of physical properties, such as the P-values reported by
Duhl ’080, over the disclosed working examples. DeLuca, however, does
not describe any particular alloys or any alloys within the broad set of alloys
that are said to be preferred.
As for guidance regarding the known relations, if any, between
compositions and physical properties, Appellants state that Duhl ’080 gives
guidance on selecting alloy compositions based on an equation defining a
“P value” (Duhl ’080, col. 8,11. 40-45), while Duhl ’096 adds cobalt [in an
amount of 1—10%] to enhance micro-structural stability of the alloys, and
DeLuca provides a heat treatment process. (Br. 7,11. 16—22.) None of the
references indicate any concern with reducing the amount of rhenium.
Rather, in Appellants’ view, the broad ranges of Duhl ’080 “were intended
to define the outer boundaries ... to which a compositional relationship is
applied” {id. at 11,11. 11—15), with a special interest in eliminating titanium,
not rhenium {id. at 15,11. 8—11 (citing relevant passages in Duhl ’080)).
Similarly, the earlier-filed but later patented claims of Duhl ’096 are directed
towards alloys in which cobalt is added {id. at 16,11. 20-22), but with no
indication of any concern with eliminating rhenium yet maintaining good
phase stability and high temperature mechanical stress-rupture properties.
{Id. at 17,11. 15-19.)
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The Examiner, and the majority, do not dispute these
characterizations, which the references appear to support. In sum, the
characterizations in the Specification of the prior art as being complex and
unpredictable are well-supported by the prior art of record. The weight of
that evidence, in my view, further supports the characterization as
“surprising” that the result of virtually eliminating rhenium—a material
thought to be critical to creep resistance—without seriously compromising
other desired characteristics of the so-called second generation nickel-based
superalloys.
Claim 1 requires the presence of eight metals other than nickel, and
permits “a maximum of 0.15% rhenium by weight,” and no more than 1% of
“incidental elements.” The broad ranges of metals permitted by each of the
references encompass the ranges recited in claim 1. However, I find it
striking that the preferred ranges disclosed by Duhl ’08015 in Table I
(Duhl ’080, col. 4) of tungsten are entirely too low, while the preferred range
of rhenium is too high by a factor of more than 16.16 Similarly, of the
preferred ranges disclosed by Duhl ’096 (Duhl ’096, col. 1,11. 41—45)
chromium (7—12%) and titanium (1—5%) are entirely above the ranges
permitted by claim 1. Consideration of the specific compositions described
15 Appellants point out that the P-values for all of the presently claimed
alloys are well below the minimum P-value recognized as inventive by
Duhl ’080. (App. Br. 11—14; Reply Br. 3—5). Thus, without more,
Duhl ’080 would not have provided a reason to adjust the composition of its
disclosed alloys towards the presently claimed alloys. This circumstance
emphasizes the vast scope of the nickel superalloy family and the intricate
dependence of properties on composition.
16 The lowest value of the preferred rhenium range in Duhl ’080 is 2.5%.
2.5%/0.15%= 16.7.
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in Duhl ’096 reveals that of the 13 nickel superalloys presented in Table I
(all of which at least meet the requirement of < 0.15% rhenium, because
they do not contain any rhenium), only one (alloy 316) contains even three
additional required metals within the required ranges (Cr, Al, Hf), and only
three (alloys 705, 715, and 718) contain two metals within the required
ranges (Hf and Al; and Hf and W, respectively). All of the other required
metals are present in amounts either too little or too much. Of course, none
of the alloys presented in Table II meet the required rhenium range; and only
one (alloy 421) contains even two required metals (Co, Cr) within the
required range, and one (alloy 305) contains one required metal (Ti) within
the required range. Thus, there is no reasonable “starting alloy” that the
routineer might modify by directed and incremental steps to arrive at alloys
within the scope of claim 1.
Moreover, there has not been any substantive argument that
Appellants’ representations, that practitioners in the art would not have
garnered any particular guidance from the prior art as to where to start and
which way to go, are inaccurate or suspect. Perhaps Appellants can be
faulted for not coming forward with “textbook” evidence supporting their
characterizations of the prior art, but the prior art of record indicates that,
whatever the scope of the broad teachings, it is the actual examples—what
Duhl ’080 refers to as the “nominal compositions”17 that anchor the art.
So, based on these references, from what alloy would one start, and in
what directions in this nine-dimensional space would one move, and why?
Neither the Examiner nor my colleagues have indicated any teachings
17 See, e.g., Duhl ’080, identifying nominal compositions of several prior
patents at column 1, lines 37—38, 47, and 54.
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Application 13/298,879
beyond the overlapping broad ranges themselves that would have offered
some guidance. Nor has any substantive reason been established to provide
any direction to move, let alone “blazemarks” to identify particular amounts
of one substance that would require corresponding adjustments of the
amounts of another substance. Without some such guidance, in an art where
it is apparent that the number of possible distinct combinations is enormous,
and where there is little predictive power, mere random variation is simply
shooting in the dark. Under such circumstances, the broad ranges on which
the Examiner relies cannot be said, reasonably, to be “not especially broad”
compared to the ranges recited in claim 1. A lucky shot will sustain
anticipation, but not obviousness. Here, there is not, in my judgment, even
an indication that the prior art would have indicated where the bam might be
found in this vast spread of the “broad ranges” identified by Duhl and by
DeLuca.
On the present record, Appellants have shown, in my view, harmful
error in the Examiner’s findings that the prior art relied on would have
rendered the claimed alloys obvious to the routineer. In particular, the
Examiner has not shown a reasonable expectation, based on the prior art,
that rhenium-free nickel-based superalloys (i.e., having a maximum
of 0.15 w% rhenium) would have excellent high temperature creep
resistance while retaining other desired properties such as good castability
and phase resistance.
The majority criticizes Appellants as having failed to demonstrate
unexpected results. In particular, the majority contrasts the range of hafnium
[0.08-0.35 w%] recited in claim 1, with the 0.29 w% and the 0.30 w% Hf
reported in the alloys described in Tables 2 and 6 of the Specification.
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(Op. 8.) The majority does not, however, identify any evidence suggesting
that the amount of Hf at any value over the required range would have been
considered likely to produce results that would somehow diminish the
unexpected qualities of rhenium-free alloys having properties comparable to
second generation alloys of the prior art, having 3—5 w% rhenium. Put
another way, although the various elemental components of the alloy were
recognized as “result-effective variables” in that the amount of each element
was somehow important to the properties of the ultimate alloy, there is but
scant evidence, at best, that the routineer would have been taught,
reasonably, from Duhl or DeLuca, how to eliminate rhenium and then adjust
the amounts of the other components to retain the stress-rupture and other
characteristics desired for high-temperature, high stress conditions of jet
aircraft turbine engines.
For the foregoing reasons, I am persuaded that the preponderance of
the evidence of record supports Appellants’ arguments that the Examiner
erred harmfully in maintaining the rejections of record for obviousness.
Accordingly, I would reverse the rejections of record, and I dissent,
respectfully, from the Decision to affirm.
10