Ex Parte Schmitz et al

Patent Trial and Appeal Board

Aug 4, 2016

13701155 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131701, 155 11130/2012
22116 7590 08/08/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Friedhelm Schmitz
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.
2010P03182WOUS 6479
EXAMINER
LA VILLA, MICHAEL EUGENE
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRIEDHELM SCHMITZ
and WERNER STAMM
Appeal2015-001132
Application 13/701,155
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 15-17 and 26-30 of Application
13/701,155 under 35 U.S.C. § 103(a) as obvious. Non-Final Act. (Jan. 29,
2014). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 Siemens Aktiengesellschaft of Munich, Germany, is identified as the real
party in interest. App. Br. 3.
Appeal2015-001132
Application 13/701,155
BACKGROUND
The '155 Application describes an alloy for use as a protective layer
on metal components. Spec. 1: 1-8. The Specification describes the layer as
providing gas turbine and steam turbine engine components with long term
stability and high-temperature resistance against corrosion and oxidation.
Id. at 2:24--29; 3:1-7.
Claim 15 is representative of the '155 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
15. An alloy, consisting of:
24 wt.% to 26 wt.% cobalt;
12 wt. % to 15 wt. % chromium;
10.5 wt.% to 11.5 wt.% aluminum;
0.1 wt. % to 0.7 wt. % []yttrium;
nickel; and
at least 1.0 wt.[]% tantalum[].
Appeal Br. 11.
REJECTION
On appeal, the Examiner maintains2 the following rejection:
1. Claims 15-17 and 26-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sommer3 and Stamm. 4 Ans. 2.
2 The Examiner has withdrawn the provisional obviousness-type double
patenting rejection of claims 15-17 and 26-30 over claims 8-10 and 14--18
of co-pending Application No. 13/977,747 because the '747 Application has
been abandoned. Ans. 4--5. Accordingly, the Examiner's obviousness
rejection is the only rejection at issue on appeal.
3 US Patent No. 6,280,857 Bl, issued Aug. 28, 2001.
4 EP 1790743 Al, published May 30, 2007.
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Appeal2015-001132
Application 13/701,155
DISCUSSION
Appellants argue for the reversal of the rejection of dependent claims
16, 17, and 26-30 on the basis of limitations present in independent claim
15. See Appeal Br. 8. We, therefore, limit our analysis to claim 15 for the
rejection of these claims. Dependent claims 16, 17, and 26-30 will stand or
fall with claim 15. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 15 is directed to an alloy composition consisting of claimed
wt. % ranges of cobalt, chromium, aluminum, yttrium, and tantalum, with
the balance of the alloy being nickel. Appellants argue that the Examiner
erred by finding that the combination of Sommer and Stamm describes or
suggests such an alloy. Appeal Br. 8.
In rejecting claim 1, the Examiner relied on Stamm, which discloses
that "[p ]rotective coatings for metal parts ... are known under the collective
name of MCrAlY, wherein M stands for at least one of the elements from
the group comprising iron, cobalt and nickel and other essential components
are chromium, aluminum and yttrium." Stamm if 2; see also Ans. 2.
According to the Examiner, this disclosure "implies that other alloying
ingredients are non-essential and may be included or omitted." Ans. 2
(citing Stamm i-f 2).
The Examiner found that Sommer "teaches a range of MCrAlY
alloys" including EC6, which meets each of the claimed limitations except
this alloy contains 2 wt. % silicon, 0.5 wt. % tantalum, and 0.5 wt. %
hafnium. Ans. 2; see Sommer 3:39. The Examiner further found that
Sommer also teaches alloy PC3, which meets each of the claimed limitations
except this alloy contains 23.8 wt.% cobalt, 11.8 wt.% aluminum, 3 wt.%
rhenium, 1 wt.% silicon, 0.3 wt.% niobium, and 0.1 wt.% lanthanum.
Ans. 2; see Sommer 3:15.
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Appeal2015-001132
Application 13/701,155
The Examiner determined that "it would have been obvious to one of
ordinary skill in the art at the time of the invention to omit Hf and Si or to
omit Re, Si, Nb, and La" because "Stamm teaches that such elements are not
required for effective MCrAlY performance, such as under less extreme
temperature conditions .... " Ans. 3. The Examiner further determined that
under "more extreme conditions, inclusion of such elements may be
desired." Id. As explained by Appellants (e.g., App. Br. 5-8; Reply Br. 2-
5), the Examiner's findings are not supported by a preponderance of the
evidence.
Our reviewing court has held that "[ o ]bviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success." In re Drage, 695 F.3d 1334, 1338 (Fed. Cir. 2012)
(quoting In re Kubin, 561F.3d1351, 1360 (Fed. Cir. 2009)). Here, the
Examiner has merely identified six elements, but has not shown why a
person skilled in the art would have reasonably expected to increase high-
temperature resistance without them. See Reply Br. 3 ("[b ]oth Sommer and
Stamm agree ... that alloys that can withstand increasing temperatures are
needed in the field of gas turbines"). We also do not see where, or how, the
prior art establishes that the ordinary skilled artisan would have reasonably
expected success by including tantalum at a higher concentration. We thus
find that the Examiner's conclusion of obviousness is not adequately
supported by the facts of record, and must be reversed. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Moreover, the Examiner has not
provided sufficient evidence or reasoning that one of ordinary skill had
"good reason to pursue the known options within his or her technical
grasp." See Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d
1350, 1359 (Fed. Cir. 2007) (discussing the requirements of an
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Appeal2015-001132
Application 13/701,155
"obvious to try" -type obviousness rejection) (internal quotations and citation
omitted). Thus, on the record before us, we cannot sustain the rejection of
claim 15 as unpatentable over the combination of Sommer and Stamm.
We, therefore, reverse the rejections of claims 15-17 and 26-30 of the
'155 Application.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims
15-17 and 26-30 of the '155 Application.
REVERSED
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