Ex Parte Suzuki et al

Patent Trial and Appeal Board

Aug 30, 2016

12571013 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/571,013 0913012009
6147 7590 09/01/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Akane Suzuki
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.
238870-3 1240
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKANE SUZUKI,
MICHAEL FRANCIS XAVIER GIGLIOTTI, JR., SHYH-CHIN HUANG,
and PAZHA YANNUR RAMANATHAN SUBRAMANIAN
Appeal2014-009408
Application 12/571,013
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants timely request1 reconsideration of our Decision2 entered
June 1, 2016 affirming the Examiner's decision rejecting claims 1-12 under
35 U.S.C. § 103(a).
1 Request for Rehearing filed July 29, 2016 ("Request").
2 Decision on Appeal mailed June 1, 2016 (cited henceforth as "Decision").
Appeal2014-009408
Application 12/571,013
We have considered Appellants' Request but we deny the requested
relief because Appellants have not persuaded us that we misapprehended or
overlooked any points of law or fact that would require a different outcome,
we deny the request to modify our Decision.
Appellants contend we misapprehend Appellants' argument based
upon the breadth of the ranges disclosed in the cited references and
overlooked argument addressing the various sections of the MPEP and the
numerous cases cited therein, inter alia, In re Baird, In re Jones, In re
Peterson and Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, were
overlooked in our decision. Request 2---6, 8-10. Appellants additionally
contend the Board's reasons for sustaining the rejections included new
grounds. Request 2.
We are not persuaded by Appellants' arguments. Our Decision does
not misapprehend or overlook any point of law or fact that would require a
different outcome. We did not overlook or misapprehend Appellants'
argument based upon the breadth of the ranges disclosed in the cited
references. The factual findings relied upon by the Examiner, including the
overlap between the claimed ranges and the ranges disclosed in the cited
references, are amply supported by the record and are sufficient to establish
obviousness for the reasons explained in the Decision. Decision 5---6. The
extent of the overlap is a factor in determining obviousness. See In re
Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005)
Appellants argue the Examiner and the Board did not address
Appellants' argument that the prior art discloses the nickel alloy technology
as highly unpredictable. Request 9; App. Br. 11-13, 17, 24; Reply Br. 2-3.
Appellants' assertion of unpredictability in the nickel alloy technology is
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Appeal2014-009408
Application 12/571,013
predicated on prior art, as represented by Wukusick, Yamamoto, Bouse and
Ross, which consider other alloy compositional aspects in arriving at their
respectively desired alloy composition. App. Br. 11-13, 24--25; Wukusick
col. 4, 11. 33--41; Yamamoto i-f 16; Bouse cols. 9-11; Ross i-fi-147, 52.
Appellants argue that the prior art's consideration of multiple
compositional aspects in designing a nickel alloy attests to the complexity of
the art. However, Appellants have not adequately explained how this
complexity translates to unpredictability. As noted by the Examiner,
Wukusick and Ross would guide one having ordinary skill to alloys that
would meet the formulas of the claims. Ans. 26, 33; Wukusick Abstract,
col. 3, 11. 25-38, col. 9 (Table 1); Ross Abstract, col. 1, 11. 49-58, col. 4, 11.
52-57. That is, the prior art discloses techniques that would have placed
within the technical grasp of an ordinary artisan a mechanism for optimizing
the composition of a nickel alloy by balancing the compositional elements to
predictably achieve a nickel alloy formulation that exhibits excellent
attributes. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The
normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
set of percentage ranges is the optimum combination of percentages."); see
In re Aller, 220 F.2d 454, 456-58 (CCPA 1955) ("where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation").
Appellants' arguments do not persuade otherwise.
Appellants argue Wukusick's explicit statements and disclosure of
Alloys 3 and 5 teach away from the addition or inclusion of carbon and
boron in Wukusick's alloys for high temperature application. Request IO-
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Appeal2014-009408
Application 12/571,013
12; Wukusick col. 5, 11. 50-58, col. 11, 11. 27-28; col. 12, 11. 22-26.
Appellants further argue, contrary to the Board's decision, Wukusick does
not disclose any benefits from the addition of either carbon or boron.
Request 11. According to Appellants, there is no disclosure in Wukusick
that supports the Board's statement that the recited amounts of carbon and
boron in Alloys 3 and 5 are minor amounts which are equivalent or
considered equivalent to impurity levels. Id.
We have addressed these arguments in our decision. Decision 6-7.
Wukusick discloses as known by the prior art to add carbon and boron to
nickel alloys to strengthen the grain boundaries of nickel alloys. Wukusick
col. 9, 11. 50-65; col. 2, 11. 26-30. Wukusick also discloses that addition of
carbon and boron, while acting as melting point depressants, compromised
additional properties of the alloy. Id. at col. 2, 11. 29-36. Thus, Wukusick
discloses nickel alloys that contain no carbon and boron or, if present, they
are included at impurity levels. Id. at col. 5, 11. 50-58. Therefore, Wukusick
recognizes that carbon and boron can be included in the nickel alloys so long
as they are present at no more than impurity levels. As noted in our
Decision, Wukusick exemplifies 0.06 and 0.05 % of carbon and 0.009 and
0.002 % of boron for Alloys 3 and 5, respectively, to show the impact of
minor amounts of these elements in nickel alloys. Decision 7; Wukusick
col. 9 (Table I). Given Wukusick's recognition that the disclosed nickel
alloys can contain these elements at impurity levels, one skilled in the art
would understand from Wukusick's disclosures that impurity levels would
be at most the amounts disclosed in Table I of Wukusick or less. As noted
in our decision, Appellants' argument does not show error in the Examiner's
determination that that a person of ordinary skill in the art would have
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Application 12/571,013
recognized that alloys could contain minor amounts of the grain boundary
modifiers C and B. Decision 7; Ans. 26.
In conclusion, based on the foregoing, Appellants' Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed June 1, 2016, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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