Ex Parte PECK et al

Patent Trials and Appeals Board

Feb 7, 2019

14478258 - (D) (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/478,258 09/05/2014 Arthur S. PECK
13152 7590 02/07/2019
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.
274753/22113-0212 1038
EXAMINER
WYSZOMIERSKI, GEORGE P
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
02/07/2019 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
Exparte ARTHURS. PECK, WARREN TAN KING, and
JON CONRAD SCHAEFFER
Appeal2018-001977
Application 14/478,258
Technology Center 1700
Before KAREN M. HASTINGS, GEORGIANNA W. BRADEN, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1--4, 6, 7, 11, and 122. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, the General Electric Company. Application
Data Sheet filed September 5, 2014. According to the Appeal Brief, the real
parties in interest are the inventors and the General Electric Company.
Appeal Brief filed June 23, 201 7 ("Br."), 1.
2 Appellant cancelled claims 8-10 in an amendment filed March 2 7, 201 7,
and the Examiner confirmed entry of the amendment in an Advisory Action
entered April 5, 2017. Claims 5 and 13-20 stand withdrawn from
consideration. Final Office Action entered January 27, 2017 ("Final Act."),
1.
Appeal2018-001977
Application 14/478,258
STATEMENT OF THE CASE
Appellant claims a single-crystal superalloy article. Independent
claims 1 and 12 illustrate the subject matter on appeal and are reproduced
below with contested language italicized:
1. A single crystal superalloy article comprising:
a nickel-based superalloy having a composition
including greater than about 80 ppm boron (B);
wherein the article includes a substantially single crystal
microstructure having at least one grain boundary, the article
having a creep rupture strength that is substantially maintained
up to a mismatched grain boundary of about 40 degrees.
12. A single crystal superalloy article comprising:
a nickel-based superalloy having a composition
including, by weight percent:
about 5.75% to about 6.25% chromium (Cr);
about 7.0% to about 8.0% cobalt (Co);
about 6.2% to about 6.7% aluminum (Al);
up to about 0.04% titanium (Ti);
about 6.4% to about 6.8% tantalum (Ta);
about 6.0% to about 6.5% tungsten (W);
about 1.3% to about 1.7% molybdenum (Mo);
about 0.03% to about 0.11 % carbon (C);
about 0.008% to about 0.013% boron (B);
about 0.12% to about 0.18% hafnium (Hf); and
balance nickel (Ni) and incidental impurities;
wherein the article is directionally solidified; and
wherein the article includes a substantially single crystal
microstructure having at least one grain boundary, the article
having a creep rupture strength that is substantially maintained
up to a mismatched grain boundary of about 40 degrees.
Br. 11-12 Claims Appendix ( emphasis added).
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Application 14/478,258
The Examiner maintains the rejection of claims 1--4, 6, 7, 11, and 12
under 35 U.S.C. § 103 as unpatentable over O'Hara3 in view of Miller4 and
Zhou5 in the Examiner's Answer entered September 1, 2017 ("Ans.").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1--4, 6, 7, 11, and 12 under 35 U.S.C. § 103 for the reasons set forth
in the Final Action, the Answer, and below.
Claims 1-3, 6, 7, and 11
Appellant argues claims 1-3, 6, 7, and 11 together on the basis of
claim 1. Br. 3---6. We accordingly decide the appeal as to claims 1-3, 6, 7,
and 11 based on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
0 'Hara discloses a substantially single-crystal article having regions
separated by low-angle boundaries that is produced by the directional
solidification of a nickel-based superalloy comprising up to about 0.015
weight percent boron. O'Hara ,r,r 2, 18, 19, 30, 31. O'Hara discloses that
"nickel base superalloys particularly useful in columnar-grained
directionally solidified superalloy articles" include 0.008---0.015 percent
boron by weight. O'Hara ,r 53.
3 O'Hara et al., US 2011/0120597 Al, published May 26, 2011.
4 M. Miller et al., Characterization of the Effects of Boron and Phosphorus
Additions to the Nickel-Based Superalloy, 6 J. de Physique IV Collogue 718
(1996) (hereinafter "Miller").
5 P.J. Zhou et al, The role of boron on a conventional nickel-based
superalloy, Materials Science and Engineering A 491 (2008) (hereinafter
"Zhou").
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Application 14/478,258
The Examiner finds that the range ofup to about 0.015 weight percent
boron disclosed in O'Hara overlaps the range of greater than about 80 ppm
(0.008%) boron recited in claim 1, rendering the recited range prima facie
obvious. Ans. 4--5 (citing In re Wertheim, 541 F.2d 257 (CCPA 1976), In re
Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)). The Examiner also finds that
"[b ]oth the Miller and Zhou articles indicate that the addition of boron to Ni-
base superalloys increases their creep strength." Ans. 3.
The Examiner finds that although "O'Hara does not specifically
disclose any relationship between creep rupture strength and grain boundary
configuration," because "O'Hara is directed to materials having substantially
the same composition and microstructure as the claimed materials," which
are "produced in substantially the same manner" by directional
solidification, the mechanical properties of O'Hara's materials and the
claimed materials, such as creep rupture strength at a given amount of
mismatch, would likewise be the same. Ans. 3--4.
Appellant argues that "the teachings of the applied [prior art]
references in their entirety would not lead one of ordinary skill to the
superalloy article as claimed by Appellant," and Appellant presents
arguments directed to each of O'Hara, Zhou, and Miller, which we address
in tum. Br. 5---6. For O'Hara, Appellant argues that "O'Hara does not
disclose a boron concentration in the range claimed by Appellant" and does
not disclose "any benefit to a boron concentration in the range claimed." Id.
at 7.
Contrary to Appellant's assertions, however, as discussed above,
O'Hara discloses a boron content range (up to about 0.015 weight percent)
that overlaps the range recited in claim 1 (greater than about 80 ppm
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Application 14/478,258
(0.008%)). As also discussed above, O'Hara discloses that nickel-based
superalloys having a boron content of 0.008---0.015 percent by weight are
particularly useful in columnar-grained directionally solidified superalloy
articles, thus describing a benefit to a boron content within the range recited
in claim 1.
Zhou also describes benefits imparted to a nickel-based superalloy by
including boron in an amount overlapping the range recited in claim 1.
Specifically, Zhou describes experiments in which stress rupture tests and
tension tests were performed on a nickel-based superalloy (M951)
containing various amounts of boron. Zhou Abstr., pgs. 159--161. Zhou
discloses that "[t]he results [of the stress rupture tests] show that boron in the
range of 0.003---0.024% is beneficial to the rupture life." Zhou Abstr., pg.
161, Fig. 4. Zhou further indicates that "both the ultimate tensile stress and
yielding stress are slightly depressed by boron. However, the ductility is
statistically improved by [] boron doping" at concentrations overlapping the
range recited in claim 1. Zhou pg. 161, Fig. 5.
Miller also discloses benefits imparted to a nickel-based superalloy by
including boron in an amount within the range recited in claim 1. Miller
indicates that significant improvements in stress-rupture properties of Alloy
718, the most extensively used nickel-based superalloy in aerospace
applications, were achieved by optimizing the phosphorous, boron, and
carbon additions. Miller pg. 241. Miller discloses that "there was an
advantage of adding either boron or phosphorus individually, however, a
larger improvement was found when they were added together and the
carbon level was reduced below its typical level." Id. Miller discloses that a
commercial grade Alloy 718 containing 0.03 weight percent carbon, 0.008
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Application 14/478,258
weight percent phosphorous, and 0.004 weight percent boron exhibited a
stress rupture life of 200 hours at a load of 690 MP a and a temperature of
650°C, but when the phosphorus and boron contents of the alloy were
increased to 0.022 weight percent phosphorous and 0.011 weight percent
boron, with a carbon level of 0.005 weight percent, the stress rupture life
increased to 750 hours. Id.
The combined disclosures of O'Hara, Zhou, and Miller thus teach the
benefits of nickel-based superalloys having a boron content overlapping the
range recited in claim 1, rendering the recited range prima facie obvious. In
re Peterson, 315 F.3d 1325, 1329 (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."). Appellant does not argue, much less demonstrate, the
criticality of the boron content range recited in claim 1. In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.).
Appellant argues that "the boron concentrations reported by Zhou as
increasing the stress-rupture life are above both the range taught by O'Hara
and the range of Appellant's claims." Br. 5. Appellant argues that Figure 4
of Zhou shows that stress rupture life decreases with increasing boron
concentration to a weight percentage of greater than 0.01, and performance
of the alloy increases only at boron concentrations above those claimed. Id.
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As discussed above, however, Zhou explicitly discloses that "[t]he
results [of the stress rupture tests] show that boron in the range of 0.003-
0.024% is beneficial to the rupture life." Zhou Abstr. Figure 4 of Zhou
appears to show a slight decrease in stress rupture life at boron
concentrations of about 0.0025 to about 0.01 weight percent, but shows a
marked increase in stress rupture life at boron concentrations of O.01 to O. 02
weight percent. Contrary to Appellant's arguments, Zhou therefore
discloses that boron concentrations overlapping the range recited in claim 1
of greater than 80 ppm (greater than 0.008 weight percent) produced an
increase in stress rupture life, as did boron concentrations overlapping the
range disclosed in O'Hara ofup to about 0.015 weight percent.
Appellant argues that Zhou teaches that an increase in boron
concentration has a negative effect on mechanical properties other than
stress rupture life because Section 3 .3 and Figure 5 of Zhou show that tensile
and yielding stress can be depressed by the addition of boron. Br. 5.
As discussed above, however, although Zhou discloses that "both the
ultimate tensile stress and yielding stress are slightly depressed by boron,"
Zhou further indicates that "the ductility is statistically improved by [] boron
doping" at concentrations overlapping the range recited in claim 1. Zhou pg.
161, Fig. 5. One of ordinary skill in the art would have recognized from
these disclosures, and from Zhou' s disclosure discussed above of increased
stress-rupture life, that the boron concentration disclosed in Zhou
overlapping the range recited in claim 1 would have both advantages and
disadvantages. Any disadvantages of such a boron concentration do not
negate Zhous' s explicit disclosure of its advantages, which provide a
suggestion and reason to use this boron concentration in a nickel-based
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superalloy as disclosed in O'Hara. See Allied Erecting & Dismantling Co.,
v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) ("'[A]
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine."' (Quoting
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)));
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another").
Appellant argues that Miller discloses improvements in stress-rupture
properties of a nickel-based alloy by adding either boron or phosphorous
individually to the alloy, and discloses that a larger improvement occurred
when boron and phosphorous were added, and the carbon level was reduced
below its typical level. Br. 5-6. Appellant argues that the only example
described by Miller suggests the addition of phosphorus, which is not
included in the nickel-based superalloy recited in claim 1, and a reduction in
the carbon concentration to 0.005 percent, which is below "the claimed
range." Br. 5---6. Appellant argues that combining the relied-upon
disclosures of Miller and O'Hara as suggested by the Examiner would result
in a carbon content "outside the claimed range." Br. 6.
Claim 1 recites a nickel-based superalloy having a composition
including greater than about 80 ppm boron. Because claim 1 does not recite
any additional components ( and their amounts) that are included in the
superalloy, and due to the open nature of the "including" transitional phrase
recited in the claim, claim 1 does not exclude phosphorous or carbon-in
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Application 14/478,258
any amount-from the recited nickel-based superalloy. Miller's disclosure
of the improvements in stress-rupture properties of a nickel-based superalloy
imparted by adding either boron or phosphorous individually to the alloy
would have suggested including boron individually in the nickel-based
superalloy disclosed in O'Hara to improve the stress-rupture properties of
O'Hara's alloy, regardless of whether Miller's disclosures also would have
suggested adding phosphorous to the alloy, and reducing the alloy's carbon
concentration.
Appellant argues that because "the teachings of the applied [prior art]
references in their entirety would not lead one of ordinary skill to the
superalloy article as claimed by Appellant," "it cannot be concluded that the
properties are necessarily the same." Br. 4--5, 6.
As discussed above, however, the combined disclosures of O'Hara,
Zhou, and Miller would have suggested a single-crystal article having what
appears to be the same structure and composition as the single crystal
superalloy article recited in claim 1. The Examiner, therefore, has a
reasonable basis for finding that the article suggested by the combined
disclosures of O'Hara, Zhou, and Miller would have the same properties as
the article recited in claim 1, including the same creep rupture strength
maintenance. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). ("Where ...
the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. Whether the
rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie
obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of
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Application 14/478,258
proof is the same, and its fairness is evidenced by the PTO' s inability to
manufacture products or to obtain and compare prior art products.").
The burden therefore shifts to Appellant to show otherwise. On this
appeal record, Appellant does not meet its burden because Appellant does
not direct us to persuasive evidence or reasoning demonstrating that the
single-crystal article suggested by the combined disclosures of O'Hara,
Zhou, and Miller would not have a creep rupture strength maintenance as
recited in claim 1. Br. 3-9.
We accordingly sustain the Examiner's rejection of claims 1-3, 6, 7,
and 11 under 35 U.S.C. § 103.
Claims 4 and 12
Although Appellant presents separate arguments for claims 4 and 12,
which Appellant argues together, Appellant repeats many of the arguments
that Appellant provides for claim 1 ( discussed above) without addressing the
specific subject matter of claims 4 and 12. Br. 7-9. We do not address such
arguments because they are unpersuasive of reversible error for the reasons
discussed above for claim 1, and we address only those arguments directed
specifically to the specific subject matter of claim 12, which we select as
representative of claims 4 and 12. 37 C.F.R. § 41.37( c )(1 )(iv).
Claim 12 recites a single crystal superalloy article comprising a
nickel-based superalloy having a composition that includes, in part, about
0.008% to about 0.013% boron and about 0.03% to about 0.11 % carbon.
Appellant argues that "the teachings of the applied [prior art]
references in their entirety would not [have led] one of ordinary skill to the
superalloy article as claimed by Appellant." Br. 8-9. Appellant argues that
"O'Hara does not disclose a boron concentration in the range claimed by
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Application 14/478,258
Appellant" and does not disclose "any benefit to a boron concentration in the
range claimed." Br. 7, 9. Appellant argues that one of ordinary skill would
not have added boron to a nickel-based superalloy over the concentration
range of about 0.008% to about 0.013% boron (B) as recited in claim 12 to
increase creep strength because "Zhou discloses there is no benefit to the
creep strength over Appellant's claimed concentration range as well as
discloses negative effects due to increasing boron concentrations." Br. 8.
Appellant argues that the Examiner's proposed combination of O'Hara and
Miller would have led to a composition having a carbon content "outside of
the scope of Appellant's claimed range of about 0.03% to about 0.11 %
carbon." Br. 8.
Contrary to Appellant's assertions, however, as discussed above,
O'Hara discloses a boron concentration range (up to about 0.015 weight
percent) that encompasses the range recited in claim 12 (about 0.008% to
about 0.013% boron). O'Hara also discloses that boron concentrations of
0.008---0.015% percent by weight, which encompass the range recited in
claim 12, are particularly useful----or beneficial-in columnar-grained
directionally solidified superalloy articles.
Zhou discloses that boron concentrations overlapping the range
recited in claim 12 of 0.008% to about 0.013% produced an increase in
stress rupture life and improved ductility ( discussed above), thus providing a
suggestion and reason to use such a boron content in a nickel-based
superalloy as disclosed in O'Hara, despite a slight decrease in ultimate
tensile stress and yielding stress resulting from such a boron content. In
addition, Miller's disclosure of significant improvements in stress-rupture
properties imparted to a nickel-based superalloy by adding either boron or
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phosphorus individually to the alloy would have suggested including boron
individually in O'Hara's nickel-based superalloy to realize this advantage.
Although, as discussed above, Miller discloses that a larger improvement
occurred when both boron and phosphorus were added and the carbon level
was reduced below its typical level, this disclosure of reducing the carbon
level does not negate Miller's disclosure of the advantage of including boron
individually in a nickel-based superalloy, such as the alloy disclosed in
0 'Hara. In other words, although Miller would have suggested adding both
boron and phosphorus to such an alloy while reducing the carbon level
below its typical level, Miller nonetheless also would have suggested adding
boron individually to O'Hara's alloy without adding phosphorous and
without reducing the carbon content. Accordingly, contrary to Appellant's
arguments, the Examiner's proposed combination of O'Hara and Miller
would have suggested a composition having a carbon content within the
range of about 0.03% to about 0.11 % carbon recited in claim 12, in view of
O'Hara's disclosure of a carbon content of about 0.03% to about 0.06% by
weight. O'Hara ,r 43.
We accordingly sustain the Examiner's rejection of claims 4 and 12
under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1--4, 6, 7, 11, and 12
under 35 U.S.C. § 103(a).
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 )(iv).
AFFIRMED
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