Friedhelm Schmitz et al.

Patent Trials and Appeals Board

Jul 31, 2019

13701155 - (D) (P.T.A.B. Jul. 31, 2019)

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.
13/701,155 11/30/2012 Friedhelm Schmitz 2010P03182WOUS 6479
22116 7590 07/31/2019
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
EXAMINER
LA VILLA, MICHAEL EUGENE
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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
________________
Appeal 2018-003797
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 finally rejected claims 15–17 and 26–30 of Application
13/701,1551 under 35 U.S.C. § 103(a) as obvious. Final Act. (May 22,
2017). Appellants2 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 affirm.

1 The ’155 Application was the subject of an earlier appeal to the PTAB. Ex
parte Schmitz, Appeal No. 2015-001132, slip op. (PTAB August 8, 2016)
(available at https://go.usa.gov/xymNB).
2 Siemens Aktiengesellschaft is identified as the real party in interest.
Appeal Br. 2.
Appeal 2018-003797
Application 13/701,155
2
BACKGROUND
The ’155 Application describes an alloy which may be used as a
protective layer on metal components. Spec. 1. 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 2–3.
Claim 15 is representative of the ’155 Application’s claims and is
reproduced below from the Claims Appendix.
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. 16.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 15–17 and 26–30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sommer3 and Schmitz.4
Final Act. 3.

3 US 6,280,857 B1, issued August 28, 2001.
4 US 5,993,980, issued November 30, 1999.
Appeal 2018-003797
Application 13/701,155
3
2. Claims 15, 17, 26, 27, 29, and 30 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Stamm5 and
Sommer. Final Act. 6.
3. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Stamm, Sommer, and Schmitz. Final Act. 7.
4. Claims 15–17 and 26–30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Preston6 and Sommer. Final
Act. 8.
5. Claims 15–17 and 26–30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Khan.7 Final Act. 9.
6. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Khan and Schmitz. Final Act. 10.
7. Claims 15–17 and 26–30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Goebel8 and Khan. Final
Act. 11.
8. Claims 15, 17, and 26–28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hirota9 and Khan. Final
Act. 12.

5 US 2004/0180233 A1, published September 16, 2004.
6 US 4,005,989, issued February 1, 1977.
7 US 2004/0079648 A1, published April 29, 2004.
8 US 4,326,011, issued April 20, 1982.
9 JP 04-32546, published February 4, 1992. We cite the translation that is
part of the record in the ’155 Application.
Appeal 2018-003797
Application 13/701,155
4
DISCUSSION
We begin by noting that the Examiner’s Answer contains a discussion
of the effect of increasing levels of silicon in an alloy upon the alloy’s
ductility and oxidation resistance. Answer 14–15. This discussion is not
present in the Final Action, and Gupta10—which the Examiner cites as
supporting this discussion—is not cited in any of the rejections at issue. We,
therefore, do not consider this discussion in our analysis of the issues
presented by this appeal.
Rejection 1. The Examiner rejected claims 15–17 and 26–30 as
unpatentable over the combination of Sommer and Schmitz. Final Act. 3.
Appellants only present substantive argument for reversal of this
rejection with respect to independent claim 15. Appeal Br. 4–8.
Accordingly, we choose claim 15 to represent the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will
stand or fall with claim 15. Id.
In rejecting claim 15, the Examiner found that Sommer describes an
alloy, designated EC6. Compare Final Act. 3 with Sommer Table 2(b).
Although not specifically cited by the Examiner, Sommer also describes a
general formula for alloys of its invention. See Sommer Table 1. The table
set forth below compares the composition of EC6 and Sommer’s general
formula with the composition specified by claim 15.
Claim 15 EC6 Sommer’s Invention
An alloy, consisting of:
24 wt. % to 26 wt. %
cobalt; 24 wt. % Co 18–28 wt. % Co

10 US Re. 32,121, reissued April 22, 1986.
Appeal 2018-003797
Application 13/701,155
5
Claim 15 EC6 Sommer’s Invention
12 wt. % to 15 wt. %
chromium; 14 wt. % Cr 11–15 wt. % Cr
10.5 wt. % to 11.5 wt. %
aluminum; 11 wt. % Al 11.5–14 wt. % Al
0.1 wt. % to 0.7 wt. %
yttrium; 0.3 wt. % Y 0.3–1.3 wt. % Y
nickel; and Balance Ni Balance Ni
at least 1.0 wt. %
tantalum. 0.5 wt. % Ta 0.2–1.5 wt. % Ta
2 wt. % Si 1–2.3 wt. % Si
0.5 wt. % Hf 0–0.5 wt. % lanthanide series elements
1–8 wt. % Re
0.2–1.5 wt. % Nb
0–1.5 wt. % Mg
0–0.1 wt. % B
As can be seen from the above table, EC6 differs from the alloy recited in
claim 15 in three ways: the presence of silicon and hafnium and having too
little tantalum (0.5 wt. % v. >1.0 wt. %). Answer 3. Sommer’s generalized
formula set forth ranges for the alloy components that overlap those recited
in claim 15, but also requires the inclusion of silicon, rhenium, and niobium.
Compare Sommer Table 1 with claim 15.
The Examiner also found that Schmitz describes M (where M is
nickel, cobalt, iron, or mixtures thereof), chromium, aluminum, and yttrium
as the essential components of MCrAlY alloys. Final Act. 4. The Examiner
further found that, by implication, Schmitz describes alloy components such
as tantalum, hafnium, rhenium, niobium, lanthanum, magnesium, and silicon
as nonessential. Id. Based upon these findings, the Examiner concluded that
Appeal 2018-003797
Application 13/701,155
6
it would have been obvious to omit any combination of the alleged
nonessential components from Sommer’s alloys. Id. The Examiner also
concluded that it would have been obvious “to retain/include Ta since Ta is
already present in Sommer and since its inclusion is also suggested by
Schmitz.” Id. at 3.
We cannot sustain the Examiner’s rejection of claim 15 as
unpatentable over the combination of Sommer and Schmitz.
To begin with, Appellants persuasively argue that Sommer teaches
away from the Examiner’s prima facie case of obviousness. In particular,
Appellants argue that a person having ordinary skill in the art would have
concluded that Sommer disfavors alloys lacking silicon. Appeal Br. 6–7
(citing Sommer 4:39–42; 4:47–52). Indeed, the Examiner apparently agrees
with this point. Id. at 6 (quoting Non-Final Act. 8 (January 29, 2014)
(“There is no dispute that Sommer’s alloys lacking Re and Si are disfavored
by Sommer’s characterizations.”)).11
The Federal Circuit has explained that a reference can be said to teach
away from an asserted combination “when a person of ordinary skill in the
art, upon reading the reference, would be . . . led in a direction divergent
from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Although the disclosure of a preferred embodiment
does not necessarily teach away from a non-preferred embodiment, see In re
Inland Steel Co., 265 F.3d 1354, 1361 (Fed. Cir. 2001), the Examiner erred

11 We note that the Appeal Brief misquotes the Non-Final Action by failing
to indicate alterations to the quoted passage. In future filings with the
Office, Appellants’ counsel should be more careful to quote material
accurately.
Appeal 2018-003797
Application 13/701,155
7
by finding that a person of ordinary skill in the art at the time of the
invention would not have been discouraged by Sommer from omitting either
rhenium or silicon from an MCrAlY alloy intended to be used to protect a
component against corrosion and/or oxidation.
Moreover, as the Examiner found, Sommer discloses seven “non-
essential” components that can be used in an alloy: tantalum, hafnium,
rhenium, niobium, lanthanum, magnesium, and silicon. The Examiner
found that Schmitz implied that it would have been obvious to include or
exclude any combination of these seven components. Final Act. 4. The
Examiner, however, never explains why a person of ordinary skill in the art
would have selected the particular combination of ingredients in the amounts
specified by claim 15. The Federal Circuit has held that “[a] disclosure of
millions of compounds does not render obvious a claim to three compounds,
particularly when that disclosure indicates a preference leading away from
the claimed compounds.” In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994). In
the absence of a reasoned explanation as to why a person of ordinary skill in
the art would have modified the combined disclosures of Sommer and
Schmitz in the manner set forth in the rejection, the same principle applies
here. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t
can be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
(“hindsight” is inferred when the specific understanding or principal within
Appeal 2018-003797
Application 13/701,155
8
the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at appellant’s claimed invention has not
been explained).
Rejection 2. The Examiner rejected claims 15, 17, 26, 27, 29, and 30
as unpatentable over the combination of Stamm and Sommer. Final Act. 6.
Appellants only present substantive argument for reversal of this
rejection with respect to independent claim 15. Appeal Br. 12–13.
Accordingly, we choose claim 15 to represent the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will
stand or fall with claim 15. Id.
The Examiner found that Stamm describes alloys containing 25 wt. %
cobalt, 15 wt. % chromium, 11 wt. % aluminum, 0.3 wt. % yttrium, and the
balance nickel, wherein the alloy may further contain small amounts of
tantalum as a substitute or complement to yttrium. Final Act. 6 (citing
Stamm Abstract; ¶¶ 20–35, 52–55; claim 16). The Examiner also found that
Stamm does not exemplify an alloy within the scope of claim 15 and does
not exemplify any alloy containing tantalum. Id.
For ease of reference, the following table compares claim 15 to the
Examiner’s findings regarding Stamm.
Claim 15 Stamm
An alloy, consisting of:
24 wt. % to 26 wt. % cobalt; 25 wt. % Co
12 wt. % to 15 wt. % chromium; 15 wt. % Cr
10.5 wt. % to 11.5 wt. % aluminum; 11 wt. % Al
0.1 wt. % to 0.7 wt. % yttrium; 0.3 wt. % Y
Appeal 2018-003797
Application 13/701,155
9
Claim 15 Stamm
nickel; and Balance Ni
at least 1.0 wt. % tantalum.
Some amount
present to
complement or
substitute for Y
The Examiner further found that “Sommer teaches comparable alloy
compositions, wherein Ta is included for additional corrosion resistance
performance.” Id. at 6–7 (citing Sommer Table 1; 7:19–25).
Based upon these findings, the Examiner concluded that it would have
been obvious to a person of ordinary skill in the art to use tantalum as a
partial substitute or complement to yttrium in Stamm’s alloy since Stamm
teaches this may be desirable and Sommer teaches that both ingredients
function to improve oxidation resistance. Id. at 7.
Appellants argue that this rejection should be reversed because the
Examiner erred by finding that Stamm teaches or suggests using tantalum
solely as a partial substitute or complement to yttrium. Appeal Br. 13.
The Examiner points to Stamm’s paragraph 22 as describing the use
of tantalum to complement or as a substitute for yttrium. Answer 25. The
Examiner also points to Stamm’s paragraph 27 as supporting this finding.
Id. In that paragraph, Stamm describes the inclusion of 0–20 wt. % further
optional alloy elements such as hafnium, silicon, tantalum, zirconium,
tungsten, magnesium, and niobium in the alloy. Stamm ¶ 27.
Appellants argue that these portions of Stamm do not support the
rejection because they do not establish any reason for a person of ordinary
skill in the art to select tantalum alone from the non-exhaustive list of seven
possible additional alloy elements for addition to Stamm’s base alloy.
Appeal Br. 13.
Appeal 2018-003797
Application 13/701,155
10
We are not persuaded that the Examiner reversibly erred in rejecting
claim 15 as unpatentable over the combination of Stamm and Sommer.
Appellants’ arguments only concern Stamm. Appellants cannot establish
patentability by attacking individual references because an obviousness
rejection is based on the combined teachings of all the asserted references.
In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012) (“[T]he test for
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art.”); In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
Here, the Examiner correctly found that Sommer describes the use of
tantalum to reduce the rate of oxide growth. Final Act. 6–7 (citing Sommer
7:19–25). Moreover, Sommer describes the use of between 0.2–1.5 wt. %
tantalum, which overlaps the range set forth in claim 15 (> 1.0 wt. %). See
Sommer Table 1. Sommer, therefore, both describes the use of tantalum in
the required amount and provides a reason for a person of ordinary skill in
the art to use the appropriate amount of tantalum in Stamm’s alloys.
For the reasons set forth above, we affirm the rejection of claims 15,
17, 26, 27, 29, and 30 as unpatentable over the combination of Stamm and
Sommer.
Rejection 3. The Examiner rejected claim 28 as unpatentable over
the combination of Stamm, Sommer, and Schmitz. Final Act. 7. Appellants
argue that the rejection of claim 28 should be reversed because it contains
each of the limitations of independent claim 15. Appeal Br. 14. Because we
have affirmed the rejection of claim 15 as unpatentable over the combination
Appeal 2018-003797
Application 13/701,155
11
of Stamm and Sommer, we also affirm the rejection of claim 28 as
unpatentable over the combination of Stamm, Sommer, and Schmitz.
Rejection 4. The Examiner rejected claims 15–17 and 26–30 as
unpatentable over the combination of Preston and Sommer. Final Act. 8.
Appellants only present substantive argument for reversal of this
rejection with respect to independent claim 15. Appeal Br. 9–10.
Accordingly, we choose claim 15 to represent the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will
stand or fall with claim 15. Id.
In rejecting claim 15, the Examiner found that Preston describes an
alloy composition containing 24–26 wt. % cobalt, 14 wt. % chromium,
10.5–11.5 wt. % aluminum, 0.2–0.6 wt. % yttrium, with the balance of the
alloy being nickel. Final Act. 8 (citing Preston 2:43–4:20). The Examiner
further found that Preston does not exemplify an alloy within the scope of
claim 15, at least because Preston does not describe an alloy containing
tantalum. Id.
For ease of reference, the following table compares claim 15 to the
Examiner’s findings regarding Preston.
Claim 15 Preston
An alloy, consisting of:
24 wt. % to 26 wt. % cobalt; 24–26 wt. %
12 wt. % to 15 wt. % chromium; 14 wt. % Cr
10.5 wt. % to 11.5 wt. % aluminum; 10.5–11.5 wt. % Al
0.1 wt. % to 0.7 wt. % yttrium; 0.2–0.6 wt. % Y
nickel; and Balance Ni
Appeal 2018-003797
Application 13/701,155
12
Claim 15 Preston
at least 1.0 wt. % tantalum.
The Examiner also found that
Sommer teaches comparable alloy compositions, wherein Ta is
included for additional corrosion resistance performance. See
Sommer (Table 1; col. 7, lines 19-25). It would been obvious
to one of ordinary skill in the art at the time of the invention to
prepare any of Preston’s alloys with further small amounts of
Ta taught by Sommer in order to have further protection
conferred by inclusion of Ta.
Id. at 8–9.
Appellants argue that this rejection should be reversed because
Sommer does not describe the use of tantalum alone to increase corrosion
resistance performance. Appeal Br. 9. In particular, Appellants argue that
Sommer describes the use of tantalum and niobium together to increase
corrosion resistance. Id.
This argument is not persuasive. The pertinent portion of Sommer
reads:
Nb and Ta, on the other hand, were found to increase
oxidation resistance by reducing the rate of oxide growth.
Their cumulative effect is stronger than the influence of any one
of them separately. In the presence of Ta even small amounts of
Nb on the order of 0.2 to 0.5 wt % can have a significant effect
on oxidation resistance (compare the preferred composition
with EC3 and EC4 in FIG. 4).
Sommer 7:19–25. Sommer, therefore, describes the use of either tantalum
or niobium or more preferably both tantalum and niobium to increase
corrosion resistance. Based on this disclosure, the Examiner correctly found
that Sommer suggests the use of tantalum to increase oxidation (corrosion)
resistance to a person of ordinary skill in the art. See In re Fulton, 391 F.3d
Appeal 2018-003797
Application 13/701,155
13
1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”).
We, therefore, affirm the rejection of claims 15–17 and 26–30 as
unpatentable over the combination of Preston and Sommer.
Rejection 5. The Examiner rejected claims 15–17 and 26–30 as
unpatentable over Khan. Final Act. 9.
Appellants only present substantive argument for reversal of this
rejection with respect to independent claim 15. Appeal Br. 10–11.
Accordingly, we choose claim 15 to represent the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will
stand or fall with claim 15. Id.
In rejecting claim 15, the Examiner found that Khan describes an
alloy that meets all the limitations recited in claim 15 except for the recited
amount of tantalum. Final Act. 9–10. Claim 15 of the ’155 Application
requires at least 1.0 wt, % tantalum. Khan generally describes alloys
containing 0.01–0.5 wt. % tantalum and describe specific examples
containing 0.4 wt. % and 0.5 wt. % tantalum. See Khan claim 1; Khan Table
1; Appeal Br. 11. The Examiner further found that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to prepare any of the suggested
alloy in Khan since they are all described as provided [sic]
effective protection. In doing so, it would be expected that
alloys meeting the claimed compositional requirements would
be obtained. See In re Peterson, 65 USPQ2d 1379 (CAFC
2003). It would have been obvious to one of ordinary skill in
the art at the time of the invention to prepare any of the
suggested alloys with no additional elements since the
characterized composition would be expected to provide
Appeal 2018-003797
Application 13/701,155
14
effective protection. In doing so, it would be expected that
alloys meeting the claimed compositional requirements would
be obtained.
Final Act. 10.
Appellants argue that the rejection of claim 15 should be reversed
because the Examiner has failed to establish a prima facie case of
obviousness because Khan fails to teach or suggest each and every element
of claim 15. Appeal Br. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007)).
We are not persuaded by Appellants’ argument. Appellants do not
address the Examiner’s reliance upon Peterson, which states, in pertinent
part, that “a prima facie case of obviousness exists when the claimed range
and the prior art range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same properties.” In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (concluding that a
claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to
0.1% maximum iron, balance titanium” would have been prima facie
obvious in view of a reference disclosing alloys containing 0.75% nickel,
0.25% molybdenum, balance titanium and 0.94% nickel, 0.31%
molybdenum, balance titanium)).
Appellants do not point us to any case holding that KSR implicitly
overruled either Peterson or Titanium Metals, nor are we aware of any such
case. In the absence of such a ruling, Peterson and Titanium Metals remain
good law.
Nor have Appellants provided any evidence that a person of ordinary
skill in the art would have expected Khan’s alloys with between 0.01 wt. %
Appeal 2018-003797
Application 13/701,155
15
and 0.5 wt. % tantalum to have properties that substantially differ from the
claimed alloys. Appellants, therefore, have not made a factual showing that
the Examiner’s reliance upon Peterson and Titanium Metals is misplaced.
Furthermore, Appellants do not challenge the Examiner’s finding that a
person having ordinary skill in the art would have prepared alloys having the
claimed composition in the course of making the alloy’s described in Khan.
For the reasons set forth above, we affirm the rejection of claims 15–
17 and 26–30 as unpatentable over Khan.
Rejection 6. The Examiner rejected claim 28 as unpatentable over
the combination of Khan and Schmitz. Final Act. 10. Appellants argue that
the rejection of claim 28 should be reversed because it contains each of the
limitations of independent claim 15. Appeal Br. 12. Because we have
affirmed the rejection of claim 15 as unpatentable over the combination of
Khan, we also affirm the rejection of claim 28 as unpatentable over the
combination of Khan and Schmitz.
Rejection 7. The Examiner rejected claims 15–17 and 26–30 as
unpatentable over the accommodation of Goebel and Khan. Final Act. 11.
Appellants only present substantive argument for reversal of this
rejection with respect to independent claim 15. Appeal Br. 11.
Accordingly, we choose claim 15 to represent the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will
stand or fall with claim 15. Id.
The Examiner found that Goebel describes an alloy having the
following composition: 15–45 wt. % chromium, 7–20 wt. % aluminum, and
0.1–5 wt. % yttrium. Final Act. 11 (citing Goebel 3:3–37).
Appeal 2018-003797
Application 13/701,155
16
For ease of reference, the following table compares claim 15 to the
Examiner’s findings regarding Goebel.
Claim 15 Goebel
An alloy, consisting of:
24 wt. % to 26 wt. % cobalt; 25 wt. %
12 wt. % to 15 wt. % chromium; 15 wt. % Cr
10.5 wt. % to 11.5 wt. % aluminum; 11.5 wt. % Al
0.1 wt. % to 0.7 wt. % yttrium; 0.7 wt. % Y
nickel; and Balance Ni
at least 1.0 wt. % tantalum.
The Examiner further found that “Goebel does not exemplify [the]
claimed amount of Co or Y, but teaches that effective alloys may have range
that the claims encompass.” Id. The Examiner further found that, although
Goebel describes the use of further alloy ingredients, Goebel does not
describe the use of tantalum. Id.
The Examiner also found that Khan describes the use of tantalum to
enhance corrosion resistance. Id. at 11–12 (citing Khan ¶ 24). The
Examiner also found that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to vary the amount of Ta in the
suggested range of Khan in the composition of Goebel,
including those amounts that are claimed, since Khan teaches
that effective protective compositions are obtained by further
including Ta and since Goebel teaches that effective protection
is desirable.
Id. at 12.
Appeal 2018-003797
Application 13/701,155
17
Appellants argue that this rejection should be reversed because “all of
[Goebel’s] . . . alloys necessarily include silicon as an essential element.”
Appeal Br. 11. Appellants also argue that Khan’s alloys also include silicon,
“which Appellant’s alloy does not include because Appellant teaches that
silicon impairs ductility.” Id.
Appellants’ first argument is not persuasive. As the Examiner found,
Goebel describes an intermediate coating that does not include silicon.
Answer 24–25. This is because Goebel describes producing an overlay
coating that is then further coated with a silicon rich surface zone. See, e.g.,
Goebel Abstract; 2:55–59; 5:48–51.
Nor is Appellants’ second argument persuasive. Contrary to
Appellants’ argument, Khan describes the use of tantalum in a coating
without necessarily requiring the presence of silicon. The relevant portion
of Khan reads: “Fe is added (wt.-%) 0.01 to 3% in order to enhance the
ductility of the coatings while the additions of 0.5-2.5% Si, 0.2-1.5% Hf,
0.01-0.2% Zr or 0-2% Ta either alone or in combination are provided for
increased oxidation resistance of the deposited coating.” Khan ¶ 24
(emphasis added). In this case, Khan describes the use of the combination of
any or all of four additional elements. This is in contrast to Sommer’s
description of the use of seven optional additional elements that could be
used either alone or in combination. In the case of Khan’s disclosure, we
find that the universe of possible combinations is sufficiently small that a
person of ordinary skill in the art would have found it obvious to arrive at
the claimed combination.
In view of the foregoing, we affirm the rejection of claims 15–17 and
26–30 as unpatentable over the combination of Goebel and Khan.
Appeal 2018-003797
Application 13/701,155
18
Rejection 8. The Examiner rejected claims 15, 17, and 26–28 as
unpatentable over the combination of Hirota and Khan. Final Act. 12.
Appellants only present substantive argument for reversal of this
rejection with respect to independent claim 15. Appeal Br. 12.
Accordingly, we choose claim 15 to represent the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will
stand or fall with claim 15. Id.
Appellants argue for reversal of this rejection because “Khan’s cited
alloys do not teach adding Ta in the claimed amount of Appellant’s alloy
and includes silicon, which Appellant’s alloy does not include.” Appeal
Br. 12.
For the reasons discussed above in connection with the rejection of
claim 15 as unpatentable over the combination of Goebel and Khan, we do
not find this argument persuasive.
In view of the foregoing, we affirm the rejection of claims 15, 17, and
26–28 as unpatentable over the combination of Hirota and Khan.
CONCLUSION
For the reasons set forth above, we:
(1) reverse the rejection of claims 15–17 and 26–30 as unpatentable
over the combination of Sommer and Schmitz;
(2) affirm the rejection of claims 15, 17, 26, 27, 29, and 30 as
unpatentable over the combination of Stamm and Sommer;
(3) affirm the rejection of claim 28 as unpatentable over the
combination of Stamm, Sommer, and Schmitz;
(4) affirm the rejection of claims 15–17 and 26–30 as unpatentable
over the combination of Preston and Sommer;
Appeal 2018-003797
Application 13/701,155
19
(5) affirm the rejection of claims 15–17 and 26–30 as unpatentable
over Khan;
(6) affirm the rejection of claim 28 as unpatentable over the
combination of Khan and Schmitz;
(7) affirm the rejection of claims 15–17 and 26–30 as unpatentable
over the combination of Goebel and Khan; and
(8) affirm the rejection of claims 15, 17, and 26–28 as unpatentable
over the combination of Hirota and Khan.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED