Ex Parte Segletes et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10938713 (B.P.A.I. Sep. 29, 2010)

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.
10/938,713 09/10/2004 David Scott Segletes 2003P13701US01 2823
7590 09/29/2010
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SIEMENS POWER GENERATION, INC.
____________________

Appeal 2009-006313
Application 10/938,713
Technology Center 3700
____________________

Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and
JAMESON LEE, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Siemens
Power Generation, Inc. (“Siemens”) under 35 U.S.C. § 134(a) from a final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

References Relied on by the Examiner
Franklin et al. (“Franklin”) 3,207,599 Sep. 21, 1965
Jahnke 4,409,462 Oct. 11, 1983
Clark et al. (“Clark”) 4,903,888 Feb. 27, 1990
Rhoades et al. (“Rhoades”) 5,248,077 Sep. 28, 1993
Foster et al. (“Foster”) US 6,333,484 B1 Dec. 25, 2001

Admitted Prior Art (“APA”) appearing on page 1 of Siemens’ specification.

The Rejections on Appeal
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) over Clark
and Jahnke or Foster.
The Examiner rejected claims 2-9 under 35 U.S.C. § 103(a) over
Clark, APA, and Jahnke or Foster.
The Examiner rejected claims 10, 13-16, and 18 under 35 U.S.C.
§ 103(a) over Clark and Rhoades.
The Examiner rejected claims 11, 12, an 17 under 35 U.S.C. § 103(a)
over Clark and Rhoades and Foster.
The Examiner rejected claim 19 under 35 U.S.C. § 103(a) over Clark,
Franklin, and Jahnke or Foster.

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The Invention
The invention relates to the repair of gas turbine disks made of
superalloy components. (Spec. 1:7-8.) The term “superalloy” refers to
materials suitable for use in high temperature, high stress environments. (Id.
at 1:11-12.)
Claim 1 is reproduced below (App. Br. 11, Claims App’x.):
1. A method comprising:

removing a damaged portion of an original nickel-based
superalloy turbine disk;

welding a replacement nickel-based superalloy material to the
disk in place of the removed damaged portion using a welding process
comprising:

maintaining a preheating temperature to be no more than
100º C below an aging temperature of the replacement material;
and

controlling an interpass temperature to be below a
solution annealing temperature of the replacement material.
B. ISSUES
1. Did the Examiner incorrectly determine that a person of
ordinary skill in the art would have recognized that the turbine disk of Clark
may be constructed from a nickel-based superalloy and repaired according to
the welding process set forth in Clark?
2. Did the Examiner incorrectly determine that a person of
ordinary skill in the art would have recognized from the prior art that a
directionally solidified material or a single crystal material may be welded to
a particular superalloy material that is polycrystalline?
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C. PRINCIPLES OF LAW
Nothing requires a fact finder to credit the unexplained testimony of
an expert. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.
Cir. 1997).
A prima facie case of obviousness is established when the prior art
itself would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976).
Once the Examiner has established a prima facie case of obviousness,
the burden shifts to the appellant to show evidence of secondary
considerations of non-obviousness. In re Huang, 100 F.3d 135, 139 (Fed.
Cir. 1996).
D. FINDINGS AND ANALYSIS
Claim 1-19 were rejected and are on appeal. Siemens argues the
claims in five groupings: (1) claims 1-3 and 7-9; (2) claims 5 and 6; (3)
claims 10, 13-16, and 18; (4) claims 11, 12, and 17; and (5) claim 19.
Claims 1-3, and 7-9
The Examiner rejected claim 1 over Clark and Jahnke or Foster. The
Examiner rejected claims 2, 3, and 7-9 over Clark, APA, and Jahnke or
Foster. Claims 2, 3, and 7-9 are dependent on independent claim 1.
Siemens does not argue the patentability of those dependent claims apart
from claim 1. We focus on the contested limitations.
Claim 1 is drawn to a method and includes steps directed to removing
the damaged portions of a nickel-based superalloy turbine disk and welding
replacement nickel-based superalloy materials to the turbine disk. As a part
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of the welding process, claim 1 calls for “maintaining a preheating
temperature to be no more than 100º C below an aging temperature of the
replacement material.” (App. Br. 11, Claims App’x.)
In rejecting claim 1, the Examiner relied on Clark as disclosing the
method of claim 1 with the exception of using (1) “nickel-based superalloy”
materials for a turbine disk and (2) the above-quoted step directed to
maintaining a preheating temperature. To make-up for the deficiencies in
Clark, the Examiner pointed to the teachings of either Jahnke or Foster as
teaching the welding repair of a turbine disk made of nickel-based
superalloy material including maintaining preheat temperatures as required
by Siemens’ claim 1. In light of the teachings of the prior art, the Examiner
determined that Siemens’ claim would have been obvious. (Ans. 3:17-4:18.)
Siemens challenges the Examiner’s determination, arguing first that
Clark is directed to repairing steam turbine components made of “low-alloy”
materials and not the “superalloy” materials required by its claims. (App.
Br. 4:9-21.) Siemens asserts that Clark’s teachings are therefore limited
strictly to a welding process involving low-alloy materials and that one
skilled in the art would not view any of its teachings as useful for a
superalloy material. (Id. at 5:21-27.) As support for that assertion, Siemens
relies on a Declaration from Mr. Brij B. Seth. In that Declaration, Mr. Seth
gives the following testimony (Seth Declaration 2: ¶9):
The ferrous materials discussed by Clark are chemically very different
than the superalloy materials of the above-cited invention, primarily in
the concentration of the alloying elements. The welding process
described by Clark is not useful as a superalloy material. One skilled
in the art of materials technology would not look to the Clark patent
for any teaching regarding the joining of superalloy materials. It is
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inappropriate to combine the teaching of Clark with any teaching
involving the welding of a superalloy material.

Based on that testimony, Siemens concludes that none of the
teachings of Clark may be combined with Jahnke or Foster.
We are not persuaded by Siemens’ argument. Mr. Seth’s testimony
amounts simply to a statement that materials of Clark are “chemically very
different” as compared with a superalloy materials and a summary
conclusion that Clark’s teachings are therefore “not useful” or
“inappropriate” in the welding of superalloy materials. Mr. Seth, however,
does not provide any meaningful rationale as to why chemical differences
between two materials renders a welding technique suitably applied to one
material unsuitable for application to the other material. Nothing requires a
fact finder to credit the unexplained testimony of an expert. Rohm and Haas
Co., 127 F.3d at 1092. We do not credit Mr. Seth’s testimony as it is
unsubstantiated by adequate underlying explanation.
Moreover, Mr. Seth’s testimony is inconsistent with the disclosure of
the prior art. Clark discloses that its welding technique has the benefit of
minimizing weld stresses and cracking and may be applied to steam turbine
disks that are generally made from a variety of alloy materials. In particular,
Clark recognizes that in addition to low-alloy steel (Id. at 7:23-40):
Other forging alloys which can be used for making steam turbine
components for high pressure service may also be repaired through
the processes of this invention, such as those containing varying
amounts of Ni, Co, Cr and other alloying ingredients.

Thus, Clark discloses that its teachings are not limited to any one
particular alloy material but may instead be applied to other alloy materials
formed from other alloying ingredients including varying amounts of nickel.
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The Examiner relied on the above-quoted disclosure in Clark for his
reasoning that it would have been obvious to repair a turbine disk made of
nickel-based superalloy material using Clark’s welding process to obtain the
crack minimization benefits of that process. (Ans. 4:1-18.) The Examiner’s
position is reasonable and rational, and supports a conclusion of
obviousness.
Siemens attacks the Examiner’s reasoning on the premise that “it is
well known in the art that steam turbine components [such as in Clark] are
made of low alloy materials and never of the more expensive high alloy
nickel-based superalloys.” (App. Br. 5:11-13.) Siemens, however, does not
point to any objective evidence supporting that statement or explain how it
can be reconciled with the disclosure of Jahnke. Jahnke discloses a welding
process for repairing turbine components made of nickel-based superalloys.
(Jahnke Abstract.) Jahnke expressly recognizes that its welding process
involving nickel-based superalloys is used for the “repair of hot parts of gas
or steam turbines.” (Id.) (emphasis added.) Thus, Jahnke discloses that
nickel-based superalloy is a known material for steam turbine components.
That disclosure is in direct contrast with the assertion made by Siemens.
Furthermore, each of Clark, Jahnke, and Foster recognizes that a
problem associated with welding turbine components, whether in gas
turbines or steam turbines, is the development of cracks in the welding areas.
(e.g., Clark 3:30-45; Jahnke Abstract; and Foster Abstract.) As a solution to
that problem, each of the references raises the temperature of the welded
component to desired levels during the welding process. (Id.) The
references also disclose that the cracking issue is a concern for turbine
components constructed of various alloy materials having varying amounts
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of alloying ingredients. Thus, irrespective of the particular environment in
which the turbines operate or the particular material of the turbines, the
problem to be avoided and the solution according to the prior art is the same.
The record is not consistent with Siemens’ contention that Clark’s teachings
are so disparate from the teachings of Jahnke and Foster as to preclude any
combination of those teachings. Those inconsistencies are also not
addressed by Siemens’ declarant.
Siemens lastly argues that Jahnke “teaches away” from claim 1.
(App. Br. 6:7-9.) That argument centers on an additional feature of claim 1
directed to “controlling an interpass temperature to be below a solution
annealing temperature of the replacement material.” (App. Br. 11, Claims
App’x.) Although the Examiner relied on Clark to account for that feature,
Siemens’ argument focuses on the disclosure of Jahnke. In particular,
Siemens contends that Jahnkes’ welding process “allows for” temperatures
of its replacement material to rise above the solution annealing temperature
of that material and points to Jahnkes’ column 2, lines 17-19 in support of
that contention. (Id. at 6:9-10.) According to Siemens, any combination of
the teachings of Jahnke and Clark requires that an interpass temperature
must also be above the solution annealing temperature of a replacement
material. Siemens thus concludes that a combination of Jahnke and Clark
“teaches away” from the requirement in claim 1 that an interpass
temperature should be below the annealing temperature.
Siemens argument is misplaced. The portion of Jahnke referenced by
Siemens describes that heating of a material during a welding process should
not rise above 100 ºC over the solution anneal temperature of the material.
Thus, the cited portion simply sets an upper limit for the heating temperature
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of the material. It does not disparage or prohibit heating the material to
lesser temperatures, including temperatures less than the solution annealing
temperature. Indeed, Jahnke also even discloses that the material should be
heated to “not more than 30º C. under the temperature of the solution
anneal” during the welding process. (Id. at 2:10-12) (emphasis added). That
is a disclosure of heating the material to a temperature below the solution
annealing temperature which is in accord with what is set forth in Siemens’
claims. We reject Siemens’ teaching away argument.
For the foregoing reasons, we are not persuaded of any error in the
Examiner’s rejection of claim 1 over Clark and Jahnke or Foster. We
sustain the rejection of claim 1. The patentability of claims 2, 3 and 7-9 is
not argued apart from claim 1. We also sustain the rejection of claims 2, 3,
and 7-9 over Clark, APA, and Jahnke or Foster.
Claims 5 and 6
Claims 5 and 6 were rejected over Clark, APA, and Jahnke or Foster.
Claims 5 and 6 are each dependent on claim 1.
Claim 5 adds the steps (App. Br. 12, Claims App’x.):
removing a damaged portion of an original Alloy 706, AMS
Specification 5701 heat treatment B material disk; and

welding a directionally solidified material to the disk.

Claim 6 adds the steps (Id.):
removing a damaged portion of an original Alloy 706, AMS
Specification 5701 heat treatment B material disk; and

welding a single crystal material to the disk.

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In rejecting claims 5 and 6, the Examiner found that APA discloses
that “Alloy 706, AMS Specification 5701 heat treatment B” is a known
nickel-based superalloy material for a turbine disk in a gas turbine
environment. (Ans. 5:3-7.) The Examiner also found that Foster discloses
that the “directionally solidified material” and “single crystal material” are
known superalloy materials for a turbine disk. (Id. at 5:13-21.) Siemens
does not dispute those findings. The Examiner relied on the teachings of
Clark in determining that one with ordinary skill in the art would have
known to combine the materials of the APA and Foster when repairing a
turbine disk. (Id. at 5:14-15; 10:4-11.) Siemens does dispute that
determination.
Siemens contends that “Alloy 706, AMS Specification 5701 heat
treatment B” is a polycrystalline material different from both a directionally
solidified and single crystal material. (App. Br. 7:13-18.) Siemens argues
that the prior art does not disclose combining those different materials in a
turbine disk and concludes that the Examiner has not established a prima
facie case of obviousness. (App. Br. 7:18-22.)
We are not persuaded by Siemens’ argument. Clark discloses that
when repairing turbine disks through a welding process, the weld should
have properties which are comparable to the base material. (Clark 3:20-22.)
The prior art, i.e., APA and Foster, together recognize that the three types of
superalloy materials set forth in claims 5 and 6 are known in the art to be
similar because they each adequately withstand the high temperature and
high pressure environments in which gas turbines operate. (APA, Siemens’
Spec. 1 (discussion of prior art); Foster cols. 1-2.) Thus, we find that those
materials are similar and/or comparable in that regard.
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That the nickel-based superalloy materials known in the art may not
all share identical crystalline structures does not mean that the properties of
those materials have no similarities and are not comparable in this art.
Siemens’ assertion to the contrary is merely argument of counsel and is not
supported by objective evidence, such as declaration testimony. Argument
of counsel cannot take the place of evidence lacking in the record. Estee
Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
A prima facie case of obviousness is established when the prior art
itself would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art. In re Rinehart, 531 F.2d at 1051. On this record,
we are not persuaded that the Examiner has failed to establish an adequate
prima facie case of obviousness for claims 5 and 6.
Once the Examiner has established a prima facie case of obviousness,
the burden shifts to the Appellant to show evidence of secondary
considerations of non-obviousness that would overcome that prima facie
case. In re Huang, 100 F.3d at 139. Siemens does not allege any secondary
considerations of unobviousness, let alone offer any objective evidence to
support the same.
We sustain the rejection of claims 5 and 6 over Clark, APA, and
Jahnke or Foster.
Claims 10, 13-16, and 18
Claims 10, 13-16 and 18 were rejected over Clark and Rhoades.
Claims 10 and 16 are independent claims. Claims 13-15 and 18 are
dependent on one of claims 10 and 16. Each of claims 10 and 16 refer to the
manipulation of a “nickel-based superalloy turbine disk” during a welding
process. (App. Br. 12-13, Claims App’x.) In accounting for that feature, the
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Examiner relied on the following disclosure in Clark concerning its welding
process (Clark 7:35-40):
Other forging alloys which can be used for making steam turbine
components for high pressure service may also be repaired through
the processes of this invention, such as those containing varying
amounts of Ni, Co, Cr and other alloying ingredients.

In light of that disclosure, the Examiner reasoned that it would have
been obvious that Clark’s welding process may be performed on a turbine
disk formed from a nickel-based superalloy. (Ans. 8:2-13.) Siemens
challenges that reasoning, alleging that Clark’s teachings apply only to “low-
alloy steel” materials and would be “inappropriate” for superalloy materials.
(App. Br. 8:1-5.)
Siemens’ argument is unpersuasive. Siemens does not point to any
objective evidence establishing that a person of ordinary skill in the art
would have viewed the above-quoted portion Clark as being limited only to
“low-alloy” materials. Clark describes that “low alloy steel” is but one
possible material that may be welded by Clark’s welding process. Clark also
describes that other alloys may make up a steam turbine component and may
be acted on by its welding process. Those alternative alloys are disclosed as
including “varying amounts of Ni, Co, Cr, and other alloying ingredients.”
(Clark 7:39-40.) Siemens does not adequately substantiate its assertion that
a skilled artisan would have viewed Clark’s disclosure as solely limited to
low-alloy materials or that its welding process is “inappropriate” for other
known alloy materials such as nickel-based superalloy materials.
We sustain the rejection of claims 10, 13-16 and 18 over Clark and
Rhoades.
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Claims 11, 12, and 17
Claims 11, 12, and 17 were rejected over Clark, Rhoades, and Foster.
Those claims are dependent on either claim 10 or claim 16. Siemens makes
the same argument with respect to claims 11, 12, and 17 that it did for claims
10 and 16. For the same reasons given above concerning claims 10 and 16,
we reject Siemens’ argument as applied to claims 11, 12, and 17.
Siemens also make an additional argument in connection with claims
11, 12, and 17. Each of those claims recite that either a “directionally
solidified material” or a “single crystal material” are used in a welding
process. Siemens applies the same argument to claims 11, 12, and 17 that it
did with respect to claims 5 and 6. In particular, Siemens contends that the
prior art does not disclose incorporating a directionally solidified or single
crystal material into a “polycrystalline” superalloy turbine disk. (App. Br.
8:16-18.)
In the context of claims 11, 12, and 17, Siemens’ argument is
misplaced. Where claims 5 and 6 called for a specific superalloy material,
i.e., Alloy 706, AMS Specification 5701 heat treatment B, claims 11, 12, and
17 refer only generally to a “nickel-based superalloy” material. That the
specific alloy set forth in claim 5 and 6 may be a “polycrystalline” material
does not mean that all nickel-based superalloy materials are polycrystalline.
Indeed, as disclosed in Foster, it is understood in the art that nickel-based
superalloys used for turbine components may also be “directionally
solidified and single crystal” materials. (Foster 1:65-2:1.) The Examiner
relied on that teaching in Foster in supporting his conclusion that it would
have been obvious to incorporate a directionally solidified material or a
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single crystal material in the turbine components disclosed in Clark.
Siemens’ argument is not commensurate in scope to the rejected claims.
We sustain the rejection of claims 11, 12, and 17 over Clark, Rhoades,
and Foster.
Claim 19
Claim 19 is dependent on claim 1 and was rejected over Clark,
Franklin, and either Jahnke or Foster. Siemens makes the same argument
for claim 19 that it does for claim 1. Namely, Siemens contends that a
person of ordinary skill in the art would not have combined the teachings of
Clark with the teachings of a reference using superalloy materials, such as
Jahnke or Foster.
For the same reasons given above in connection with claim 1, we
reject Siemens’ argument. We sustain the rejection of claim 19 over Clark,
Franklin, and either Jahnke or Foster.
E. CONCLUSION
1. The Examiner did not incorrectly determine that a person of
ordinary skill in the art would have recognized that the turbine disk of Clark
may be constructed from a nickel-based superalloy and repaired according to
the welding process set forth in Clark.
2. The Examiner did not incorrectly determine that a person of
ordinary skill in the art would have recognized from the prior art that a
directionally solidified material or a single crystal material may be welded to
a particular superalloy material that is polycrystalline.
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F. ORDER
The rejection of claim 1 under 35 U.S.C. § 103(a) over Clark and
Jahnke or Foster is affirmed.
The rejection of claims 2-9 under 35 U.S.C. § 103(a) over Clark,
APA, and Jahnke or Foster is affirmed.
The rejection of claims 10, 13-16, and 18 under 35 U.S.C. § 103(a)
over Clark and Rhoades is affirmed.
The rejection of claims 11, 12, and 17 under 35 U.S.C. § 103(a) over
Clark, Rhoades and Foster is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) over Clark,
Franklin and Jahnke or Foster is affirmed.

AFFIRMED

rvb

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830