MTU Aero Engines AG

Patent Trials and Appeals Board

Jul 23, 2020

2019004628 (P.T.A.B. Jul. 23, 2020)

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.
15/142,068 04/29/2016 Thomas GOEHLER 6570-P50286 7356
13897 7590 07/23/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
HEVEY, JOHN A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS GOEHLER, RALF RETTIG, ROBERT F. SINGER,
STEFFEN NEUMEIER, and NILS RITTER

Appeal 2019-004628
Application 15/142,068
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as MTU Aero
Engines AG. Appeal Br. 3.
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2
Appellant’s invention is directed to a nickel-based alloy which is
substantially free of rhenium but has the creep resistance of a nickel-based
superalloy of the second generation and a density which is lower than
comparable alloys (Spec. 1:9–11; Claim 21).
Claim 21 is representative of the subject matter on appeal:
21. A nickel base alloy exhibiting high creep resistance and
being substantially free of rhenium, wherein the alloy
comprises the following elements in % by weight relative to the
total weight of the alloy:
aluminum from 3.0 to 7.7
cobalt from 0 to 16.8
chromium from 3 to 11.8
molybdenum from 3.3 to 11.3
tantalum from 0 to 3.9
titanium from 0 to 6.0
tungsten from 0 to 11.3
carbon from 0 to 0.05
phosphorus from 0 to 0.015
copper from 0 to 0.05
zirconium from 0 to 0.015
silicon from 0 to 6.0
sulfur from 0 to 0.001
iron from 0 to 0.15
manganese from 0 to 0.05
boron from 0 to 6.0
hafnium from 0 to 4.0
yttrium from 0 to 0.002
niobium from 0 to 8.0
germanium from 0 to 8.0,
remainder nickel and unavoidable impurities, the concentration
of Ni being at least 67 at.%.

Appeal Br. 14–15 (Claims Appendix).
Appellant appeals the following rejections:
1. Claims 21–37, and 39 are rejected under 35 U.S.C. § 103 as
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unpatentable over Shaw (GB 2153845 A, published August 29,
1985).
2. Claims 38 and 40 are rejected under 35 U.S.C. § 103 as
unpatentable over Shaw in view of Volek (US 7,887,748 B2,
issued February 15, 2011).
Regarding rejection (1), Appellant’s arguments focus on claims 21, 26,
and 27 only (Appeal Br. 7–12). Any claims not argued separately will stand
or fall with our analysis of claim 21.
Rejection (2) is not separately argued. Rather, Appellant relies on
arguments made regarding rejection (1).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 21 over Shaw are located on pages 3 to 5 of the Final
Action. The Examiner finds that Shaw teaches a nickel-based alloy with
high creep resistance with ranges that overlap the elemental ranges recited in
claim 21 (Final Act. 3–4). The Examiner finds Shaw’s broader range
disclosure includes embodiments where the amounts of Al, Cr, Co, Mo, Hf,
W, and Ni are such that the Shaw’s “hardener factor” requirement is met,
and so is Appellant’s claim requirement to use at least 67% Ni (Final Act.
4). The Examiner finds that the overlapping ranges of the elements
establishes a prima facie case of obviousness (Final Act. 5).
Appellant argues that Shaw does not teach or suggest alloys that
satisfy Shaw’s hardener factor and have a Ni content of at least 67% (Appeal
Br. 7). Appellant contends that Shaw’s alloys B and C include a Ni content
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of about 61%, which is outside the claimed Ni range (Appeal Br. 7).
Appellant argues that example 1 in the Specification is representative of the
claimed invention and has a Ni content of 68.7% (Appeal Br. 7). Appellant
contends that comparative example 2 in the Specification has a Ni content of
63.6% (Appeal Br. 7). Appellant contends that example 1 and comparative
example 2 fall within Shaw’s broad concentration disclosures and have
similar hardener factors as defined by Shaw (Appeal Br. 8). Appellant
argues that Shaw does not appreciate that alloys may differ substantially in
their properties such as density (Appeal Br. 8). We understand Appellant to
argue that embodiments having a Ni content of at least 67% have a lower
density than those with Ni contents less than 67%, despite also satisfying
Shaw’s hardener factor requirement (Appeal Br. 8).
Appellant argues that the Examiner has not explained why one
ordinary skill in the art would have selected particular elemental
concentrations as required by claim 21 (Appeal Br. 8). Appellant argues that
the Examiner fails to point to any explicitly disclosed composition in Shaw
that has a Ni concentration of at least 67 at.% (Appeal Br. 9). Appellant
contends that the obviousness analysis asks whether Shaw teaches or
suggests the claimed composition, not whether the claimed invention is
encompassed by Shaw’s disclosure (Appeal Br. 9). Appellant argues that
the Examiner provides no reason, such as an advantageous property that
might result, for selecting particular amounts of the various elements to
arrive at the claimed invention (Appeal Br. 9). Appellant argues that since
Shaw discloses that the combined concentration of Ni and Co must be higher
than 55 wt.%, the Ni concentration in Shaw’s alloys may be as low as 30
wt.% (Appeal Br. 10).
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Appellant argues that Shaw’s concentration ranges in Table 1 are very
broad and include millions or billions of alloy combinations (Appeal Br. 10–
11). Appellant contends that the degree of overlap between Shaw’s
disclosure and the claimed composition is very small (Appeal Br. 11).
We have fully considered Appellant’s argument and the Examiner’s
position. We find that the preponderance of the evidence favors the
Examiner’s obviousness conclusion. There is no dispute that this appeal
involves alloy compositions with overlapping elemental ranges (Final Act.
4; Appeal Br. 11). Because the ranges overlap, the Examiner has established
a prima facie case of obviousness. See, In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003). “A prima facie case of obviousness typically exists when
the ranges of a claimed composition overlap the ranges disclosed in the prior
art.” We are unpersuaded by Appellant’s argument that there is no
motivation to select the various elements in amounts as recited in the claim
because the Examiner has established that Shaw broadly teaches an alloy
composition that includes the claimed elements in amounts that overlap with
the ranges recited in claim 21 (Final Act. 3-5). Appellant’s argument that
there is no motive to select the various elements in amounts recited in claim
21 is undercut by Shaw’s disclosure of an alloy composition using elements
in amounts that overlap with those recited in claim 21 (i.e., Table 1 “Broad”
embodiment).
Appellant’s arguments regarding Shaw’s examples and the possibility
that Ni might be present in as low an amount of 30% when Co is present in
an amount of 25% are not persuasive. Shaw teaches that Co may not be
included in the composition (i.e., zero percent) (Table 1). That teaching
coupled with Shaw’s teaching that the Ni and Co content should be greater
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than 55% does not limit Shaw to a Ni content below 67%. Moreover, Shaw
is not limited to the embodiments exemplified or preferred. Rather, Shaw is
relevant for all that it teaches including non-preferred embodiments, such as
disclosed in the “broad” composition ranges in Shaw’s Table 1. In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Appellant’s argument, citing In re Baird, 16 F.3d 380 (Fed. Cir.
1994), that there are millions and perhaps billions of alloy combinations in
Shaw’s disclosure is not persuasive because even though Shaw discloses a
multitude of possible combinations such a disclosure does not render any
particular formulation less obvious. See, Merck v. Biocraft, 874 F.2d 804,
807 (Fed. Cir. 1989). The Examiner properly finds that Appellant’s
argument regarding Baird is undermined by Appellant’s claim 21 which is
similarly as broad as Shaw’s composition claims (Ans. 6). Claim 21 and
Shaw’s Table 1 composition claims each include a list of elements with
broad ranges. The facts in Baird are further distinguishable from the present
case in that Baird involves selection of a species from a generic formula
whereas the present case involves prior art disclosures of an alloy with the
same elements as recited in claim 21 in amounts that overlap with the
claimed invention.
We are unpersuaded by Appellant’s argument regarding the lower
density achieved according to the invention with at least 67% Ni relative to
the density achieved for alloys with less than 67% Ni. We note that claim
21 does not recite density as a property in the claim. Nevertheless, the
Examiner finds that Shaw teaches alloys that include Ni content of greater
than 67% in addition to the other elements falling within the claimed ranges
(Final Act. 3–4). Because the alloys found by the Examiner have a
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composition within the claimed ranges, it is reasonable to expect the alloy to
have similar properties, such as density, flowing naturally from the
composition. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
We find that Appellant does not argue or proffer evidence of
unexpected results (Appeal Br. generally).
We affirm the Examiner’s § 103 rejection of claim 21–25, 28–37 and
39 over Shaw. We further affirm the Examiner’s § 103 rejection of claims
38 and 40 over Shaw and Volek.

Claims 26 and 27
Appellant argues that the total percentage of overlap of the ranges in
claims 26 and 27 with Shaw’s composition is even smaller than the overlap
with claim 21 (Appeal Br. 11–12). Appellant contends that the smaller
overlap supports Appellant’s argument that Shaw fails to render obvious the
subject matter of claims 26 and 27 (Appeal Br. 12).
Even though claims 26 and 27 may be narrower than the composition
recited in claim 21, the Examiner correctly finds that these claims overlap
with the composition recited in claims 26 and 27 (Final Act. 3). As noted
above in our discussion of claim 21, the overlapping ranges between the
claims and Shaw create a prima facie case of obviousness. Peterson, 315
F.3d at 1329. Appellant does not proffer any evidence of unexpected results
(Appeal Br. generally).
We affirm the Examiner’s § 103 rejection of claims 26 and 27.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Prior Art Affirmed Reversed
21–37, 39 103 Shaw 21–37, 39
38, 40 103 Shaw,
Volek
38, 40
Overall
Outcome
21–40

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED