Ex Parte Srivastava et al

Patent Trial and Appeal Board

Feb 21, 2018

14768845 (P.T.A.B. Feb. 21, 2018)

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.
14/768,845 08/19/2015 S. Krishna Srivastava 0021499-882394 8118
23464 7590 02/23/2018
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte S. KRISHNA SRIVASTAVA and LEE PIKE
Appeal 2018-000703
Application 14/768,845
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed August 19, 2015
(“Spec.”); the Final Action mailed February 16, 2017 (“Final Act.”); the
Appeal Brief filed July 17, 2017 (“Appeal Br.”); the January 26, 2017
Declaration of Lee M. Pike, Jr. under 37 C.F.R. § 1.132 (“Pike Decl.); the
Examiner’s Answer mailed August 29, 2017 (“Ans.”); and the Reply Brief
filed October 30, 2017 (“Reply Br.”).
2 Appellant is the applicant, Haynes International Inc., identified as the real
party in interest. Appeal Br. 1.
Appeal 2018-000703
Application 14/768,845
The claims are directed to fabricable, high strength, oxidation resistant
nickel-chromium-cobalt-molybdenum-aluminum based alloys. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A nickel-chromium-cobalt-molybdenum-aluminum
based alloy having a composition comprised in weight percent
of:
15 to 20 chromium
9.5 to 20 cobalt
7.25 to 10 molybdenum
2.72 to 3.9 aluminum
up to 10.5 iron
present up to 0 .15 carbon
up to 0.015 boron
up to 0.75 titanium
up to 1.5 tantalum
up to 1 hafnium
up to 1 manganese
up to 0.6 silicon
up to 0.06 zirconium
with a balance of nickel and impurities, the alloy further
satisfying the following compositional relationship defined with
elemental quantities being in terms of weight percent:
A1 + 0.56Ti + 0.29Nb + 0.15Ta < 3.9.
Appeal Br. 15 (Claims App’x).
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Application 14/768,845
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Hirata et al. (“Hirata”) US 2010/0166594 A1 July 1, 2010
Uno3 JP 2009-167500 July 30,2009
REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C § 103: (1) claims 1, 3, 7, 8, 10, 12—15, 18, 19, 22,
23, and 25 over Uno; and (2) claims 1—25 over Hirata. Final Act. 2—25;
Appeal Br. 5.
OPINION
The Examiner rejects claims 1, 3, 7, 8, 10, 12—15, 18, 19, 22, 23, and
25 as obvious over Uno. Final Act. 2. The Examiner finds that Uno
discloses an alloy having a composition that overlaps the amounts of
chromium, cobalt, molybdenum, aluminum, iron, carbon, boron, titanium,
tantalum, hafnium, manganese, silicon, and zirconium in the rejected claims,
which is prima facie evidence of obviousness. Id. at 2—3; see, e.g., In re
Mochel, 470 F.2d 638, 640 (CCPA 1972) (holding the phrase “up to”
includes zero as the lower limit). The Examiner finds that the formula in the
claims (Al + 0.56Ti + 0.29Nb + 0.15Ta < 3.9) does not prevent a conclusion
of obviousness because “there is no invention in the discovery of a general
formula if it covers a composition described in the prior art.” Id. at 3^4
(citing, inter alia, In re Cooper, 134 F.2d 630, 632 (CCPA 1943). The
3 The Examiner and the Appellants rely on the machine translation of record.
We do the same in this Decision.
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Application 14/768,845
Cooper court held that “[patentability of the claims may not rest solely on
the fact that the carbon contents specified therein are calculated from the
formula.” “Appellants’ entire contention herein is that, unless there is
specifically set out in the prior art an alloy produced by their formula, such
prior art may not be used in denying patentability to their claims. We cannot
agree with such contention.” Cooper, 134 F.2d at 632.
The Examiner rejects claims 1—25 as obvious over Hirata. Final Act.
12. As with Uno, the Examiner finds that Hirata discloses an alloy wherein
the amounts of chromium, cobalt, molybdenum, aluminum, iron, carbon,
boron, titanium, tantalum, hafnium, manganese, silicon, and zirconium in the
reference overlap the amounts of those elements in the rejected claims,
again, which is prima facie evidence of obviousness. Id.
Appellant combines arguments for patentability over Uno and over
Hirata. Appeal Br. 6—9. With the exception of claims 12—14, for which
Appellant makes separate arguments for patentability, Appellant argues the
claims as a group. We select claim 1 as representative of the group for each
reference. 37 C.F.R. § 37.41 (c)( 1 )(iv). Claims 3, 7, 8, 10, 15, 18, 19, 22,
23, and 25 will stand or fall with claim 1 in the rejection over Uno. Claims
2—11 and 15—25 will stand or fall with claim 1 in the rejection over Hirata.
“[T]he failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.” In re
Huai-Hung Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011). The rejection of
claims 12—14 argued separately is addressed separately below.
Appellant’s arguments focus on the compositional relationship, or
formula, in claim 1: A1 + 0.56Ti + 0.29Nb + 0.15Ta < 3.9. Appeal Br. 6.
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Application 14/768,845
Appellant contends that the Examiner fails to identify any composition in the
prior art that meets the formula, thus, there is no prima facie case of
obviousness over either reference. Id. at 7. Appellant argues that In re
Tanczyn applies to the facts here. Id.', see In re Tanczyn, 202 F.2d 785
(CCPA 1953).
In Tanczyn, applicants claimed
10. In manufactures of the class described, wrought and
polished straight chromium stainless steel sheet, strip, wire, and
like products containing large amounts of chromium and small
amounts of manganese and silicon which products are
substantially free of surface-defacing complex silicate
inclusions and comprise 10% to 27% chromium, up to about
0.2% manganese and from incidental amounts up to about 1%
silicon with said manganese content restricted to amounts
beneath the curve in the accompanying diagram corresponding
to the specific amount of said chromium, and the remainder
substantially all iron.
Tanczyn, 202 F.2d at 785—86 (emphasis added). The Court found the
Examiner (and Board) improperly rejected the claims over references that
disclosed steel alloys and that steel alloys are commonly wrought and highly
polished. Id. at 786. The Court held that In re Cooper did not apply because
the claimed alloy in Cooper differed from the alloy of the prior art reference
only in degree and not in kind. Id. at 787. The Court noted that in Cooper,
the applicants disclosed and claimed a tool steel alloy having constituents in
ranges which applicants admitted fell within the upper ranges disclosed in a
prior patent. Id. In contrast, the Tanczyn court found
[Njeither of the [prior art] references indicates that its author
was in any way concerned with the problem of surface defects
in wrought and polished straight chromium stainless steel
products. Not only does neither reference in any way suggest
any solution for eliminating such defects, but neither indicates
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Application 14/768,845
that the author even recognized that such a problem existed, or
that he attempted to trace its source.
These two specific alloys [disclosed in the prior art] are in no
way correlated to the production of wrought and polished
straight chromium stainless steel products substantially free of
complex silicate inclusions.
Id. Thus, the Court in Tanczyn focused its patentability determination on the
claims’ inclusion of the limitation that the products were “substantially free
of complex silicate inclusions.”
In the instant case, Appellant argues that neither Uno nor Hirata
“describe an alloy expected to possess certain properties (as does the present
application).” Appeal Br. 8—9. Appellants further argue that neither
reference teaches anything “about an alloy composition or how to find an
alloy composition that possesses key properties required by the present
application (excellent oxidation resistance, strain-age cracking resistance,
and thermal stability).” Id. at 9.
However, claim 1 does not recite the “key properties,” nor is it limited
to an alloy for use in gas turbines that operate at continually higher and
higher temperatures. See Appeal Br. 15—22 (Claims App’x); Pike Deck 26.
It is axiomatic that the claims define the invention that an applicant believes
is patentable. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appellant’s argument would improperly import limitations from the
Specification into claim 1 by importing the properties of excellent oxidation
resistance, strain-age cracking resistance, and thermal stability. Id.
(“[L]imitations are not to be read into the claims from the specification.”).
Appellant contends that the formula alone is sufficient to distinguish
the claimed composition from the cited references because the Specification
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Application 14/768,845
teaches that the relationship must be satisfied to maintain fabricability.
Appeal Br. 6, 9 (citing Spec. 24,11. 1^4). The Specification states “[t]o
maintain fabricability, certain elements which may or may not be present
(specifically, aluminum, titanium, niobium, and tantalum) should be limited
in quantity in a manner to satisfy the following additional relationship
(where elemental quantities are in wt.%): A1 + 0.56Ti + 0.29Nb + 0.15Ta <
3.9.” Spec. 24,11. \-A (emphasis added). The formula in claim 1 permits
the amounts of Ti, Nb, and Ta to each equal zero, as the claim allows A1 to
present in 3.9 wt.%. The fact that the elements in the formula may not be
present in the claimed alloy means these elements are optional.
Because the ranges of elements required by claim 1 are overlapped by
ranges of the same elements disclosed in the prior art, the Examiner
reasonably makes a prima facie case of obviousness. In re Boesch, 617 F.2d
272, 275 (CCPA 1980) (where ranges overlap, a prima facie case of
obviousness is made out); see also In re Harris, 409 F.3d 1339, 1341 (Fed.
Cir. 2005) (a prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same).
Appellant contends that it has rebutted the prima facie case of
obviousness based on overlapping ranges. Appeal Br. 10. Appellant
contends that test data in the Specification shows that the claimed range for
aluminum is critical. Id.
Criticality of a claimed range may be shown by providing evidence
that the claimed range achieves unexpected results relative to the prior art
range. In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997) (quoting In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
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Application 14/768,845
Appellant provides a single data point in support of 2.72 wt.% being a
critical lower limit for the content of aluminum. Appeal Br. 11; Spec. 6, 8—9
(Tables 1 and 2). Specifically, the Specification indicates that alloy CC,
with an aluminum content of 1.93 wt.%, did not have an acceptable
oxidation resistance for the purposes of the invention. Spec. 8—9 (Table 2
and following paragraph). The Specification provides data on only one alloy
with an aluminum content of 2.72 wt.% (alloy T), and alloy T includes 1.89
wt.% tungsten and 0.91 wt.% niobium, a combination of elements not
present in any other alloy tested. Id. at 6 (Table 1). The data, therefore, is
insufficient to establish the criticality of the lower range of aluminum
content for the alloys tested, much less, for the alloys claimed.4 Appellant’s
argument regarding criticality of 2.72 wt.% A1 is unpersuasive on these
facts.
Appellant also argues that 3.9 wt.% is a critical upper limit of
aluminum in the claimed alloys. The Specification provides no test results
for an alloy with an aluminum content of 3.9 wt.%. Id. at 6 (Table 1).
Several alloys with an aluminum content in the claimed range (2.72 to 3.9
wt.%) had failing test results. Alloy O, with an aluminum content of 3.60
wt.%, had an unacceptable strain-age cracking test result. Id. at 10-12.
Alloy P, with an aluminum content of 3.63 wt.%, had an unacceptable creep-
4 Appellant argues that the Examiner ignores the commercial alloys that
were tested and identified in the Specification. Reply Br. 5. In the
Background section, the Specification mentions numerous commercial
alloys, but nowhere provides any information on the composition of any
commercial alloys. See generally Spec. The Pike Declaration states that
four commercial alloys are within the ranges disclosed by both Uno and
Hirata, but provides no information on their composition. Therefore, the
record on appeal contains no evidence of the composition of any commercial
alloys.
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Application 14/768,845
rupture life. Id. at 13—14. The Specification provides data showing
acceptable thermal stability for alloy S, with an aluminum content of 3.78
wt.%, but not for alloy DD, with an aluminum content of 4.30 wt.%. This
data is insufficient to establish 3.9 wt.% as critical upper range for the alloys
tested, much less for the alloys claimed (that do not require the iron, carbon,
silicon, titanium, yttrium, and boron present in the tested alloys). An
applicant must show that whatever property they are asserting is unexpected
is unexpected throughout the claimed range, but not outside that critical
range. See Peterson, 315 F.3d at 1330; Harris, 409 F.3d at 1344.
Appellants have not established that the alloys within the ambit of the claim
have the unexpected property while the alloys outside the critical range do
not have the unexpected property.
In addition, for unexpected results to be probative of non-obviousness,
Appellant must establish that the difference actually obtained would not
have been expected by one skilled in the art at the time of the invention. In
re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). Appellant provides no
evidence that acceptable oxidation resistance was unexpected below any
aluminum content.
Appellant contends that Hirata teaches away from the claimed upper
limit of 3.9 wt.% aluminum because Hirata states, “the content of A1 is set to
not more than 3% to ensure creep strength at high temperatures.” Appeal
Br. 11—12. Teaching away requires that a reference “criticize, discredit, or
otherwise discourage the solution claimed” by Appellant. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Hirata discloses the aluminum content
should not exceed 3%. Hirata 192. This evidence is not persuasive of
nonobviousness of claim 1, however, because both Hirata and Uno disclose
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Appeal 2018-000703
Application 14/768,845
aluminum content within the claimed range. Appellant does not argue that
Uno teaches away from the claimed upper limit.
In response to Appellant’s arguments, the Examiner finds that the
claims are not commensurate in scope with the test data. Ans. 2—3.
Specifically, the Examiner finds that each of the alloys presented in Table 1
of the Specification (which encompass all alloys tested for the test data to
which Appellant refers) that have an aluminum content within the claimed
ranges5 also require the presence of iron, carbon, silicon, titanium, yttrium,
and/or boron. Id. ail. Table 1 is reproduced below:
Table J
Compositions of Experimental Alloys tin vl/OeO
AUoy Ni CV CO MO At Be C Si Mu Ti r Kr (t otter
A 39 9 Ui 7-8 3.64 J 2 <1.096 0 15 - 0.25 0.0? 0.04 0.004
K Bid. i*> 8 104 7 7 3.56 i 3 0.048 0 14 ... 0.25 o.o? 0.04 O.004
C Hal. Ui.'l Is.9 7.6 3.65 1.3 ! 0.099 0.14 0.24 0.02 0.04 O/XT
D UsL j 6..1 19.9 7.7 3.54 52 0.079 0.14 0.25 0.02 0.02 0.004
h! Bid. id o 19 A 7 7 3.62 9.7 0.045 0 14 ... 0.25 0.0? 0.01 0.C4T
P 3hd. iri.O 10.1 7.7 3 46 " 1.2 0.097 0.3 4 .. 0 22 0.03. 002 0 'XA
Did 3 6.:1 9.9 7.8 3,5: 9.9 0.089 0 13 0.23 0.01 0.02 0.(.5.\l>. 0.691a
E* Bid 36.0 9 9 7.5 3.63 30.0 0.3 07 0 19 0.23 0.02 0.02 0.004 1.95 W
<3 Bid. 16.3 30.1 7.6 365 30.2 0.112 0 IS - 0.22 0.02 0.02 0.005 0.35N’b„ (1.71’3’a
H Bai. 15 A 7.0 10.0 .3 < 0 l 0 1.14 0.39 0 20 0 32 0 03 010 UvXy'-
8 Bill, 3 5 9 9.9 9.8 3.78 U) 0.107 0.47 0.19 0.02 0.031 0.(0 O.fKA
r Bai. u>p. 9.9 7.6 2.72 4.: 0.120 0.37 t A i 22 0 1 0.(0 0/XT 1.89 WXPn Mh
tj Bid- i 9*. .19.9 7 6 33 0 11 »» Jf 0 17 20 114 04 (>.005
V Bid. !9.u u.y 8.11 3 46 LU (MMI 0. J 8 0.13 l u i n 004 o./x.-r. 048 tB
w Hat. 3 8.9 19.0 7.5 .3.3: 1.0 Oi Ss 0.19, 0.14 u ^3 0 l 1 1.03 IT T11
X Bid 39.2 30.9 7 7 3.40 1 ( HO 0 17 i 3 ' t n fit u >.04 0.00 s- 0.45 Ilf
V Baf. 1 6 .4 10.3 7.8 2 5; u 0 lu$ 0.46 t St r, t fl.OU; ! C> 0 'Of >4
z Did. 3 9.0 to 7.4 3.19 it 'HO 0 18 it < 21 fUt 0.0.3 0.CC4 ; 0 Ta
A A Bid. 37.2 20 52 3.57 1.0 0J07 O.lh 0.20 u. 24 0.(02 0.04 0.004
BR Did. 3 9.3 20 3 2.3 3.67 J.0 0.099 0 53 0.5.3 0.52 0.031 0-04 0.004
CC Bai. 19.4 10 0.6 1 93 1.0 0,107 0.19 0.21 0 24 <0.002 <0.(33 0 /XT
DP 1S9 10 9-5 4 30 1.0 0.137 0.49 0.2J 0 43 : 00-05 0.05 0 >%‘4
Table 1 provides the compositions of experimental alloys in wt.%.
Spec. 5.
55 Independent claims 1 and 15 specify an aluminum content of 2.72 to 3.9
wt.%. Appeal Br. 15, 18—19 (Claims App’x). Independent claim 22
specifies an aluminum content of 2.72 to 3.78 wt.%. Id. at 20—21.
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Application 14/768,845
Appellant contends that the Examiner improperly infers from Table 1
that titanium and iron must be present in the alloy. Appeal Br. 11. We do
not agree that this is the Examiner’s conclusion. Rather, the Examiner
properly determines that all of the alloys for which Appellant provides test
data with an aluminum content in the claimed range contain iron, boron,
titanium, silicon, and zirconium, yet none of these elements is required by
claim 1. See Spec. 6 (Table 1). It is well settled “that objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Graselli, 713 F.2d 731, 743 (Fed. Cir.
1983). Claim 1, consequently, has a broader scope than the alloys for which
Appellant provides test data. Appellant’s test data is insufficient to rebut the
prima facie case of obviousness.
Appellant argues that the Examiner is incorrect in stating that
“Appellant’s claims are not commensurate in scope with the testing data . . .
because each of the alloys presented in Table 1 . . . having an aluminum
content within the claimed range require the presence of [specified
elements].” Appeal Br. 2. Appellant states that example alloys O and Q do
not have the desired ductility, despite containing aluminum within the
claimed amount in addition to iron, carbon, silicon, titanium, yttrium, and
boron in amounts similar to alloys with the desired ductility, and this shows
that the presence of those elements in the alloys does not affect ductility.
Reply Br. 2—3.
First, Appellant’s statement is incorrect, in that the ductility test result
for alloy Q is 10.2%, a value well above the Specification’s stated lower
limit. Spec. 11—12 (Table 3). Second, whether alloy O does not have the
desired ductility is of no consequence to the determination that the test data
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Application 14/768,845
is not commensurate with the scope of claim 1. Appellant cannot simply
remove the presence of elements in the tested alloys and assign the test
results to alloys without those elements. Alloy O, which fails the ductility
test, is one of only two tested alloys that contains niobium and tantalum.
Spec. 6 (Table 1). One of ordinary skill in the art could reasonably conclude
that the presence of niobium and tantalum in the alloy accounts for the
undesirable ductility.
Appellant argues that dependent claims 12—14 are each separately
patentable. Appeal Br. 12. Claims 12—14 require that the claimed alloy has
a specified oxidation resistance (claim 12), modified CHRT test ductility
value greater than 7% (claim 13), or a specified creep-rupture life (claim
14). Id. at 18 (Claims App’x). However, the alloys of claim 1 and their
properties are inseparable. In re Papesch, 315 F.2d 381, 391 (CCPA 1963)
(“From the standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.”). Appellant does not argue
nor establish that the alloys meeting the properties of claims 12—14 represent
a narrower set of alloys of claim 1 not covered by the overlapping alloys of
Uno and Hirata. Because the Examiner establishes prima facie obviousness
of the alloys falling within the limits of claim 1, Appellant must come
forward with evidence of surprising or unexpected results in rebuttal.
Having failed to do so, the properties recited in claims 12—14 do not confer
patentability on these claims.
Appellant has not shown that the Examiner reversibly erred in
rejecting claims 1, 3, 7, 8, 10, 12—15, 18, 19, 22, 23, and 25 over Uno and
claims 1—25 over Hirata as obvious.
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Application 14/768,845
DECISION
The rejection of claims 1—25 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)(l)(iv) (2015).
AFFIRMED
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