Ex Parte Kawamoto et al

Patent Trial and Appeal Board

Sep 1, 2017

13520583 (P.T.A.B. Sep. 1, 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.
13/520,583 07/05/2012 Hiroaki Kawamoto 400769US99PCT 2067
22850 7590 09/06/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
REA, CHRISTINE
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/06/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROAKI KAWAMOTO, HIROHISA WATANABE,
TETSUNAO IKEDA, and YUSHI SAWADA
Appeal 2016-002758
Application 13/520,583
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO,
and MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a Ni-base alloy weld metal and a Ni-base alloy
covered electrode. Claims 1 and 2 are illustrative:
1. A Ni-base alloy weld metal comprising, relative to the
total mass of the Ni-base alloy weld metal,
Cr: 28.0 to 31.5% by mass,
Fe: 7.0 to 11.0% by mass,
Nb and Ta: 1.0 to 2.0% by mass in total,
C: 0.035 to 0.050% by mass,
Mn: 4.60 to 5.18% by mass,
Appeal 2016-002758
Application 13/520,583
N: 0.005 to 0.08% by mass,
Si: 0.15 to 0.70% by mass,
Mg: 0.0010% or less by mass,
Al: 0.50% or less by mass,
Ti: 0.50% or less by mass,
Mo: 0.50% or less by mass,
Cu: 0.50% or less by mass, and
Ni and incidental impurities,
wherein contents of B and Zr in the Ni-base alloy weld
metal are controlled to be 0.0010% or less by mass and
0.0010% or less by mass, respectively, and
contents of Co, P, and S in the incidental impurities are
controlled to be 0.10% or less by mass excluding zero, 0.015%
or less by mass, and 0.015% or less by mass, respectively.
2. A Ni-base alloy covered electrode comprising a core wire
composed of a Ni-base alloy and a covering material that
contains a component of a flux and covers a periphery of the
core wire,
wherein the core wire contains, relative to the total mass
of the core wire,
Cr: 28.0 to 31.5% by mass,
Fe: 7.0 to 11.0% by mass,
Nb and Ta: 1.0 to 2.0% by mass in total,
C: 0.05% or less by mass,
Mn: 4.5 to 5.5% by mass,
N: 0.001 to 0.02% by mass,
Si: 0.70% or less by mass,
Mg: 0.0010% or less by mass,
Al: 0.50% or less by mass,
Ti: 0.50% or less by mass,
Mo: 0.50% or less by mass,
Cu: 0.50% or less by mass, and
Ni and incidental impurities,
wherein contents for B and Zr in the core wire are
controlled to be 0.0010% or less by mass and 0.0010% or less
by mass, respectively, and
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Application 13/520,583
contents of Co, P, and S in the incidental impurities are
controlled to be 0.10% or less by mass, excluding zero, 0.015%
or less by mass, and 0.015% or less by mass respectively,
the covering material contains, as the component of a
flux, a slag-forming agent: 3.5 to 6.5% by mass, a metal
fluoride (in terms of F content): 2 to 5% by mass, and a
carbonate (in terms of CO2 content) 2.5 to 6.5% by mass
relative to the total mass of the covered electrode; a Mn content
in the flux is controlled to be 2.0% or less by mass; a total
content of Nb and Ta in the flux is controlled to be 1.5% or less
by mass; and a Fe content in the flux is controlled be 2.5% or
less by mass.
The References
Culling US 4,135,919 Jan. 23, 1979
Natsume US 5,430,269 July 4, 1995
Nakajima US 2007/0272671 A1 Nov. 29, 2007
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3, 4, 7 and 9 over Nakajima in view of Culling and claims 2, 5, 6, 8, and 10
over Nakajima in view of Culling and Natsume.
OPINION
We affirm the rejection of claims 1,3,4, 7, and 9 and reverse the
rejection of claims 2, 5, 6, 8, and 10. Because our rationale in affirming the
rejection of claims 1, 3, 4, 7, and 9 differs substantially from the rationale
relied upon by the Examiner in rejecting those claims, under
37 C.F.R. § 41.50(b) we denominate the affirmance as based upon a new
rejection.
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Application 13/520,583
Claims 1, 3, 4, 7, and 9
We need address only the sole independent claim among claims 1,3,
4, 7, and 9, i.e., claim l.1 That claim claims a Ni-base alloy weld metal
which, the Appellants state, “is suitable for welding of nuclear reactors,
pressure vessels, or the like” (Spec. 1). Nakajima discloses “a high
Cr Ni-based alloy filler material used for welding in a nuclear power plant
equipped with pressurized water reactors which operate at a high
temperature” 1). Nakajima’s alloy compares to the Appellants’ claim l’s
alloy as follows:
Element Claim 1 (mass%) Nakajima (wt%)
Cr 28.0-31.5 28-31.5
Fe 7.0-11.0 7-11
Nb and Ta 1.0-2.0 total < 0.5 Nb, 0.005-3.0 Ta
C 0.035-0.050 <0.04
Mn 4.60-5.18 <7
N 0.005-0.08 0.002-0.1
Si 0.15-0.70 0.01-0.5
Mg <0.0010 Ca + Mg < 0.01
A1 <0.50 0.01-0.4
Ti <0.50 0.01-0.45
Mo <0.50
1 The Appellants separately address claims 3, 4, 7, and 9 but do not provide
a substantive argument for the separate patentability of those claims
(App. Br. 24). The Appellants merely state what each claim recites and
broadly assert that the Appellants’ Specification’s examples show that what
is claimed provides excellent results (id). Claims 3, 4, 7, and 9, therefore,
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 13/520,583
Cu <0.50
V <0.5
B <0.0010 <0.01
Zr <0.0010 <0.01
Co impurity 02 < Co < 0.10
P impurity <0.15 <0.02
S impurity <0.15 <0.015
O impurity <0.01
Ni balance balance
Nakajima’s overlapping or encompassing ranges would have rendered
the Appellants’ claim l’s composition prima facie obvious to one of
ordinary skill in the art. See in In re Peterson, 315 F.3d 1325, 1329-30 (Fed.
Cir. 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 ....
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. 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. [(Citations omitted.)]
2 The portions of the Appellants’ Specification which the Appellants cite
when reading claim 1 on the Specification (App. Br. 3) do not provide
written descriptive support for claim l’s requirement that the amount of Co
impurity excludes zero.
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Application 13/520,583
The Appellants argue that their Specification’s Tables 3-1 - 3-3 rebut
any prima facie case of obviousness over Nakajima by showing that the
Appellants’ alloy weld metals containing 4.60 - 5.18 mass% Mn and
0.035 - 0.5 mass% C have good to excellent overall results for reheat
cracking resistance, absence of hot cracking, resistance to pitting, bead
appearance/slag formation and amount of spatters generated, whereas
Nakajima’s Comparative Examples 2-5, 21 and 22 in Tables 1 and 2 disclose
alloys with Mn and C contents within those ranges but having unacceptable
values of those properties (App. Br. 19-21; Reply Br. 10).
We have begun anew and determined that for the following reasons
the totality of the evidence supports a conclusion of obviousness of the
Appellants’ claimed weld metal. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976).
First, the Appellants do not identify the closest prior art composition
and provide a side-by-side comparison of it to the claimed weld metal. See
In re Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Second, it is not enough for Appellants to show that the results for the
Appellants’ invention and the comparative examples differ. The difference
must be shown to be an unexpected difference. See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The Appellants do not provide evidence that the results would have been
unexpected by one of ordinary skill in the art.
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). In the Appellants’ relied-upon Tables 3-1 -
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Application 13/520,583
3-3, the amounts of Si, P, S, Mo, Cu, Al, Ti, Fe, Co, Zr, B, Mg and N do not
cover the ranges in the Appellants’ claim 1. We find in the evidence of
record no reasonable basis for concluding that the great number of materials
encompassed by Appellants’ claim 1 would behave as a class in the same
manner as the particular materials tested. See In re Lindner, 457 F.2d 506,
508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
Because our reason for concluding that the weld metal claimed in the
Appellants’ claims 1, 3, 4, 7, and 9 would have been obvious to one of
ordinary skill in the art differs substantially from that relied upon by the
Examiner (Ans. 4), under 37 C.F.R. § 41.50(b) we denominate the
affirmance of those claims as based upon a new rejection.
Claims 2, 5, 6, 8, and 10
We need address only the sole independent claim among claims 2, 5,
6, 8, and 10, i.e., claim 2.
Natsume discloses a submerged arc welding method for high strength
Cr (2.25-3 wt%)/Mo (1 wt%) steels containing Cr, Mo and V as essential
components, and further Nb, Ti, B, Ca and the like as needed, to obtain weld
metals excellent in strength at room temperature and high temperature,
toughness, creep strength, after stress relief (SR), temper brittleness
resistance (less brittleness in service under high temperature environments),
cold crack resistance (difficult-to-generate delayed fracture due to hydrogen)
and SR crack resistance (difficult-to-generate intergranular crack due to
age-hardening precipitation) (col. 1,11. 8-20). The method uses a solid wire
combined with a bonded flux, wherein “[t]he solid wire contains 0.09 to
0.19% of C, 0.30% or less of Si, 0.50 to 1.40% of Mn, 2.00 to 3.80% of Cr
and 0.90 to 1.20% of Mo, the bonded flux contains 5 to 20% of SiCE, 20 to
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Application 13/520,583
40% of MgO, 2.4 to 12% of a metal fluoride (F-converted value) and 3 to
12% of a metal carbonate (C02 converted value)” (col. 1,1. 68 - col. 2,1. 11),
and the solid wire and/or the bonded flux “contain V and Nb for adding 0.10
to 0.50% of V and 0.005 to 0.035% of Nb in a weld metal” (col. 13,11. 53-
55). “The weld metal thus obtained contains 0.08 to 0.15% of C, 0.05 to
0.30% of Si, 0.50 to 1.20% of Mn, 0.030 to 0.060% of 0 [sic, O], 0.10 to
0.50% of V and 0.005 to 0.035% ofNb” (col. 2,11. 11-14).
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art to include a bonded flux on the bonded alloy welding
rod as taught by Natsume, because the rod combined with the bonded flux
will give a weld metal excellent in strength at room temperature and high
temperature, toughness, and creep strength” (Ans. 14).
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art and predictability or a reasonable
expectation of success in doing so. SeeKSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991). The
Examiner does not address the compositional differences between
Nakajima’s and Natsume’s weld metals and establish that regardless of those
differences, one of ordinary skill in the art would have had an apparent
reason or suggestion to use Natsume’s flux to make Nakajima’s weld metal
and would have had predictability or a reasonable expectation of success in
doing so.
Thus, the Examiner has not established a prima facie case of
obviousness of the Ni-base alloy covered electrode claimed in the
Appellants’ claims 2, 5, 6, 8, and 10.
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Appeal 2016-002758
Application 13/520,583
DECISION/ORDER
The rejection of claims 1, 3, 4, 7, and 9 under 35 U.S.C. § 103 over
Nakajima in view of Culling is affirmed. The rejection of claims 2, 5, 6, 8,
and 10 under 35 U.S.C. § 103 over Nakajima in view of Culling and
Natsume is reversed. Under 37 C.F.R. § 41.50(b) the affirmance is
designated as based on a new rejection.
It is ordered that the Examiner’s decision is affirmed-in-part.
This decision contains a new ground of rejection pursuant to
37 C.F.R. §41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
AFFIRMED-IN-PART: 37 C.F.R, § 41.50(b)
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