Ex Parte Lin et al

Board of Patent Appeals and Interferences

Jun 25, 2009

11185619 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WANGEN LIN, BRIAN SCHWARTZ,
VIKTOR FEDOROVICH KHORUNOV, F. MICHAEL HOSKING, and
SVITLANA VASYLIVNA MAKSYMOVA
____________

Appeal 2009-003324
Application 11/185,619
Technology Center 1700
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Decided:1 June 25, 2009
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 7, 8, and 10-14.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003324
Application 11/185,619

The Examiner has withdrawn the final rejection of claim 9 (see Ans. 3). We
have jurisdiction under 35 U.S.C. § 6(b).
Claim 7 is illustrative:
7. A method for brazing an article comprising the steps of: (1)
providing an article formed from a ferrous material; (2) applying a
brazing material to said article formed from an alloy consisting
essentially of from about 52.25 wt% to about 57.0 wt% silver, from
about 38.95 wt% to about 43.0 wt% copper, from about 0.5 wt% to
about 5.5 wt% manganese, and up to about 2.5 wt% nickel; and (3)
heating said article and said brazing material at a temperature in
the range of from abut 900°C to about 1050°C for a time sufficient
to melt said brazing material.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 4):2
Leach 2,138,638 Nov. 29, 1938
Haskell 2,303,272 Nov. 24, 1942

Appellants’ claimed invention is directed to a method for brazing an
article formed from a ferrous material. The brazing material applied to the
article is an alloy of silver, copper, manganese and nickel in the recited
amounts. The article and brazing material are heated at a temperature in the
range from about 900°C to about 1050°C for a sufficient time to melt the
brazing material.
Appealed claims 7, 8, and 10-13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Haskell. Claim 14 stands rejected under
35 U.S.C. § 103(a) as being unpatentable over Haskell in view of Leach.

2 We will not consider the Examiner’s citation of Dean and the publications
of Schwartz since they were introduced for the first time in the Answer.
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Application 11/185,619

We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.3
There is no dispute that Haskell, like Appellants, discloses a method
for brazing an article formed from a ferrous material, steel, with an alloy
consisting of silver, copper, manganese and nickel. Haskell discloses
amounts of silver, copper and manganese which totally encompass the
claimed ranges and discloses an amount of nickel that falls within the
claimed range. As emphasized by Appellants, Haskell is silent regarding the
temperature at which the article and brazing material are heated. However,
we are in full agreement with the Examiner that since the brazing alloy of
Haskell has substantially the same composition as the claimed brazing alloy,
it is reasonable to conclude that one of ordinary skill in the art would heat
the brazing material of Haskell to a temperature that falls within the claimed
range. We are satisfied that one of ordinary skill in the art would have
needed to resort to no more than routine experimentation to determine the
optimum heating temperature for the brazing material. Moreover, assuming
for the sake of argument that the claimed heating temperature is different
than the temperature one of ordinary skill in the art would use in performing
the brazing method of Haskell, it is well settled that where patentability is

3 The Examiner’s citation of Dean and Schwartz is not necessary as factual
support for the legal conclusion of obviousness.
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predicated upon a change in a condition of a prior art process or
composition, such as a change in temperature, pressure, concentration or the
like; the burden is on the applicant to establish with objective evidence that
the change is critical, i.e., it leads to a new, unexpected result. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454,
456 (CCPA 1955). However, Appellants have proffered no objective
evidence of unexpected results attached to performing the claimed brazing
method at a temperature from about 900° C to about 1050°C.
Appellants maintain that “Haskell does not teach or suggest heating
the article and the brazing material” (App. Br. 6, second para.). However,
Appellants have not refuted the Examiner’s reasonable finding that brazing,
by its very nature, involves heating the article and the brazing material.
Also, Haskell expressly refers to a relatively high melting point for the
brazing material and discusses how stresses are set up in the cooling
following the brazing operation (col. 1, ll. 33-41). Appellants have not
explained how a brazing operation can take place without heating the article
and the brazing material.
Appellants point out that Leach relates to an alloy similar in
composition to the alloy of Haskell and has a melting point of 1375°F.
However, as explained by the Examiner, Leach has considerably more
manganese content (5-15 wt%) than that disclosed by Haskell (trace
amounts up to 3 wt%) and that presently claimed (0.5-5.5 wt%). Also,
Leach exemplifies silicon in the alloy. In any event, as stated above, it is a
matter of prima facie obviousness for one of ordinary skill in the art to
determine the optimum temperature for brazing a particular alloy material.
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Appeal 2009-003324
Application 11/185,619

The issue is not only, as urged by Appellants, what temperature would
be used to join the hard metal carbide body to a steel body in the brazing
method of Haskell but, rather, what temperature would one of ordinary skill
in the art have employed in brazing ferrous materials within the scope of the
appealed claims? Again, one of ordinary skill in the art would have found it
obvious to determine the optimum brazing temperature.
Appellants separately argue claim 10 which defines a brazing material
containing 2.0 wt% nickel, as opposed to the 2.5 wt% exemplified by
Haskell. We agree with the Examiner, however, that since the nickel values
are sufficiently close, one of ordinary skill in the art would have had a
reasonable expectation that the Haskell brazing material comprising 2.0 wt%
nickel would have similar properties. Titanium metals Corp. of Am. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). In our view, the expectation is
especially reasonable since Haskell’s amounts for the other elements (silver,
copper and manganese) embrace the claimed amounts for these elements.
Turning to the rejection of claim 14 over Haskell in view of Leach, we
find that brazing an article formed from stainless steel would have been
obvious to one of ordinary skill in the art based on Haskell alone, who
expressly teaches brazing steel-supporting bodies (col. 1, l. 5). Since
stainless steel is a well-known form of steel, we are confident that one of
ordinary skill in the art would have found it obvious to select stainless steel
for the brazing method of Haskell which is directed to brazing steel-
supporting bodies. Leach underscores the conclusion of obviousness by
teaching brazing stainless steel with alloys comprising silver, copper,
manganese and nickel. Leach’s inclusion of silicon in the brazing alloy to
reduce the porosity of the joints brazed does not undermine the obviousness
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of selecting stainless steel for the steel body of Haskell. Furthermore, one of
ordinary skill in the art would have found it obvious to eliminate the silicon
of Leach along with its attendant function. In re Thompson, 545 F.2d 1290,
1293-94 (CCPA 1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). Also,
Appellants offer no reason, let alone evidence, in support of their argument
that one of ordinary skill in the art would not use stainless steel as a support
for metal carbide-containing bodies which are used in metal-cutting and
forming tools (App. Br. 13, first para.). Furthermore, we find that it would
have been obvious for one of ordinary skill in the art to select stainless steel
in a brazing method of the type disclosed by Haskell in forming articles
other than cutting tools.
Appellants further submit that “it should be noted that Haskell never
says what is being cooled and what stresses are being discussed” (Supp.
Reply Br. 3, last para.). We find this argument without merit since it is quite
clear that Haskell is referring to cooling the brazed body following the
brazing operation.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2008).

AFFIRMED

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