AMETEK, Inc.

Patent Trials and Appeals Board

Apr 12, 2021

2020005013 (P.T.A.B. Apr. 12, 2021)

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.
14/478,231 09/05/2014 Ryan A. SMITH AMT-8039US 9708
23122 7590 04/12/2021
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/12/2021 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN A. SMITH, MUKTESH PALIWAL, and
KERRY B. DALEY
Appeal 2020-005013
Application 14/478,231
Technology Center 3700
Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
BRETT C. MARTIN, Administrative Patent Judges.
WOOD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final decision to reject claims 1, 3–9, and 11–22. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as AMETEK, INC. Appeal
Br. 1.
Appeal 2020-005013
Application 14/478,231

2
CLAIMED SUBJECT MATTER
The claims are directed to a nickel-chromium alloy and method of
making the same. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An alloy comprising nickel and chromium having a
combined wt. % of nickel and chromium of at least 97 wt. %,
wherein the chromium accounts for 33 to 50 wt. % of the alloy,
wherein the alloy is provided in strip form, and wherein the
strip has a tensile elongation as determined using ASTM ES of
at least 30% and a tensile strength as determined using ASTM
E8 of 101.2 ksi or less.
REFERENCES
Name Reference Date
Zvanut US 3,848,109 Nov. 12, 1974
Scorey US 4,373,970 Feb. 15, 1983
Cheney US 8,973,806 B2 Mar. 10, 2015
Corrigan US 2005/0000603 A1 Jan. 6, 2005
Paliwal US 2015/0078950 A1 Mar. 19, 2015
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 3–7, 9, 11–15 102(a)(1) Blejde
1, 3–7, 9, 11–15 103 Blejde, Corrigan
8, 16 103 Blejde, Corrigan,
Cheney, Zvanut
17, 18, 20, 21 103 Blejde, Scorey, Paliwal,
Corrigan
19, 22 103 Blejde, Scorey, Paliwal,
Corrigan, Cheney,
Zvanut

Appeal 2020-005013
Application 14/478,231

3
OPINION
Claims 1, 3–7, 9, and 11–15: Rejected as Anticipated by
Blejde or, Alternatively, as Unpatentable over Blejde and Corrigan
Independent Claim 1 recites an alloy, in strip form, comprising nickel
and chromium having a combined weight percentage (“wt. %”) of at least 97
wt. %, wherein the chromium accounts for 33 to 50 wt. %, and the alloy strip
has “a tensile elongation as determined using ASTM E8 of at least 30% and
a tensile strength as determined using ASTM E8 of 101.2 ksi or less.”
Appeal Br. 10 (Claims App.). Independent claim 9 is similar. Id. at 11.
The Examiner finds that Blejde teaches an alloy strip having the
claimed weight percentages of nickel and chromium and a tensile elongation
of at least 30%. Final Act. 2–3 (citing Blejde ¶¶ 8–22). The Examiner
determines that “the recitation of using ASTM E8 renders the claim as a
product by process wherein the determination of patentability is based on the
product itself and not on its method.” Id. at 3 (citing MPEP § 2113). The
Examiner alternatively finds that Corrigan teaches that “it is known to test or
determine a nickel alloy using ASTM E8 for its tensile elongation and
strength,” and determines that it would have been obvious to one of ordinary
skill in the art “to determine the tensile elongation and tensile strength using
ASTM E8 at room temperature.” Id. at 4 (citing Corrigan ¶ 32). The
Examiner further determines that it would have been obvious “to use the
ASTM E8 process at the standard atmospheric pressure of 101.3 ksi which is
well known in the art, or 101.2 ksi or less as recited as being lacking
criticality when compared to 101.3 ksi of the standard atmospheric pressure
as the ASTM E8 is performed at room temperature.” Id.
Appeal 2020-005013
Application 14/478,231

4
Appellant responds that “Blejde is silent regarding the temperature
conditions under which tensile elongation is measured,” and “ASTM E8
requires the testing of mechanical properties of the alloy to occur at room
temperature.” Appeal Br. 4–5. According to Appellant, “tensile elongation
properties vary significantly according to temperature,” and the Examiner
“has not established that the composition disclosed by Blejde would exhibit
the stated tensile elongation under the room temperature conditions of
ASTM E8.” Id. at 4–5.
Appellant further argues that Blejde does not disclose an alloy strip
having a tensile strength of 101.2 ksi or less as determined using ASTM E8.
Id. Appellant notes that Blejde expressly discloses that the tensile strength
of its alloy strips is at least 900 MPa, whereas the claimed upper limit for
tensile strength corresponds to 700 MPa. Id. at 5–6. Appellant contends
that the Examiner incorrectly “appears to suggest that the alloy’s tensile
strength is directly derivable from the atmospheric conditions at which the
alloy is tested.” Id. at 6. Finally, Appellant asserts that the other references
of record “are silent with respect to tensile strength.” Id.
In the Answer, the Examiner responds that “under the guidelines of
MPEP 2112.01 if the composition is physically the same, it must have the
same properties, and thus Blejde which shows the same composition as that
of the claimed composition, the claimed properties of tensile elongation and
tensile strength must also be inherently present in the alloy of Blejde as in
the claimed composition.” Ans. 7–8. The Examiner acknowledges that “the
tensile strength of 101.2 ksi or less is not explicitly shown by Blejde,” but
Blejde implicitly teaches this parameter because it teaches that the lower the
tensile strength, the higher the tensile elongation. Id. at 8 (citing Blejde ¶ 8).
Appeal 2020-005013
Application 14/478,231

5
Thus, according to the Examiner, “the elongation strength at lower pressure
of 101.2 ksi (equivalent to 698 MPa) would have a higher elongation
percentage of at least 30% when the alloy is subjected to the ASTM E8 at
room temperature.”
Appellant replies that evidence of record rebuts the Examiner’s
finding that the claimed tensile strength and tensile elongation are inherent
in any alloy having the claimed nickel and chromium content. Reply Br. 2.
Appellant refers, for example, to U.S. Patent No. 3,519,419 to Gibson
(“Gibson”), which teaches an alloy containing amounts of nickel and
chromium in the recited ranges, but which has a tensile elongation—
measured at room temperature—of only 10%. Reply Br. 2. Appellant also
relies on the Declaration of Mark Robinson (May 29, 2017), who, according
to Appellant, testifies that “alloys having the same concentrations of nickel
and chromium, but different microstructures, can vary significantly in room
temperature tensile strength and tensile elongation.” Id. at 3 (citing
Robinson Decl. ¶¶ 10–14). Appellant further notes that Blejde “supports the
link between microstructure and tensile elongation/tensile strength.” Id.
(citing Blejde ¶ 7).
We determine not to sustain this rejection. First, we are not persuaded
that Blejde discloses a nickel/chromium alloy having the claimed tensile
elongation. The Examiner does not dispute that the ASTM E8 test
procedure that claims 1 and 9 require to determine tensile elongation
requires testing at room temperature, and that Blejde does not disclose the
temperature at which it tested the tensile elongation of its alloy strip.
Corrigan does not cure this defect; at best, it supports a finding that the
ASTM E8 test procedure was known in the art. Corrigan ¶ 32. On the other
Appeal 2020-005013
Application 14/478,231

6
hand, it also discloses that another test procedure, ASTM E21—which is
conducted at “elevated temperatures”—was also known. Id. The Examiner
has not explained why it is more likely that ASTM E8, rather than ASTM
E21, was used to determine Blejde’s tensile elongation.
Second, we are not persuaded that Blejde discloses a nickel/chromium
alloy having the claimed tensile strength. The Examiner does not dispute
that Blejde does not disclose that its alloy has a tensile strength of no more
than 101.2 ksi; instead, the Examiner essentially argues that if Blejde’s alloy
had the claimed tensile strength, it would also have the claimed tensile
elongation:
while the tensile strength of 101. 2 ksi or less is not explicitly
shown by Blejde, the teaching of Blejde is deemed proper to
show such property since Blejde shows the elongation strength
varies with respect to the total elongation wherein lower the
tensile strength pressure, higher percentage the tensile
elongation strength can be achieved as evidenced by the
illustrated examples in Blejde (para 0008). Thus, the elongation
strength at lower pressure of 101.2 ksi (equivalent to 698 MPa)
would have a higher elongation percentage of at least 30%
when the alloy is subjected to the ASTM ES testing at room
temperature.
Ans. 8. But speculation as to what other properties an alloy strip having the
claimed tensile strength might have falls short of establishing that the alloy
strip possesses the claimed the tensile strength in the first place.
Third, we are not persuaded that the claimed tensile elongation and
tensile strength are inherent properties of Blejde’s alloy strip. Blejde itself
rebuts this finding, because its alloy, which contains the claimed weight
percentages of nickel and chromium, does not possess the claimed tensile
strength. Blejde ¶ 7. Blejde thus supports Appellant’s contention that alloy
Appeal 2020-005013
Application 14/478,231

7
strips having similar compositions can have different properties depending
on how the strips are made, which in turn imparts different microstructures.
See also id. ¶ 49 (stating that hot-rolling of cast strip causes strip to have
tensile strength of at least 900 MPa and total elongation of at least 30%).
In sum, we are not persuaded that claims 1 and 9 are anticipated by
Blejde or rendered unpatentable over Blejde and Corrigan, and therefore do
not sustain the Examiner’s rejection of claims 1 and 9, as well as their
dependent claims 3–7 and 11–15.
Claims 8 and 16: Rejected as Unpatentable
over Blejde, Corrigan, and Cheney or Zvanut
Claims 8 and 16 depend from claims 1 and 9, respectively. Appeal
Br. 10, 11 (Claims App.). The Examiner’s rejection of these claims relies on
the Examiner’s determination that claims 1 and 9 are anticipated by Blejde
or rendered unpatentable over Blejde and Corrigan. Final Act. 5. Because
we do not sustain this rejection, we also do not sustain the Examiner’s
rejection of claims 8 and 16.
Claims 17, 18, 20, and 21: Rejected as
Unpatentable over Blejde, Scorey or Paliwal, and Corrigan
Independent claim 17 is drawn to a method of making an alloy strip
having the chemical composition and exhibiting the tensile-elongation
parameter of the alloy strip of claim 1, the method comprising forming a
powder charge comprising nickel and chromium, roll compacting the
powder charge to form a green strip, sintering the green strip to form a
sintered strip, and cold rolling and annealing the sintered strip to form the
alloy strip. Appeal Br. 11 (Claims App.). Claim 20 is similar. Id. at 12.
The Examiner finds that Blejde discloses an alloy strip having the
claimed weight percentages of nickel and chromium, but does not teach the
Appeal 2020-005013
Application 14/478,231

8
claimed manufacturing steps. Final Act. 5. The Examiner further finds that
“Scorey or Paliwal shows it is known to form an alloy wherein the alloy
material is provided in a powder form that is roll compacted into a green
strip which goes through sintering, cold rolling, and annealing to from an
alloy strip.” Id. at 6. The Examiner determines that it would have been
obvious to one of ordinary skill in the art “to adapt Blejde, with the claimed
method . . . that is well known in the art.” Id.
Appellant responds that “Blejde teaches a method of continuous
casting using a specific casting apparatus,” and the Examiner “proposes a
modification of the Blejde process/apparatus which would eliminate the very
mechanism by which Blejde achieves the disclosed tensile strength and
tensile elongation properties.” Appeal Br. 7 (citing Blejde ¶¶ 7, 39, Figs. 1–
5); see id. at 8 (“The elimination of Blejde’s specific and unique casting
apparatus in favor of the methods of Scorey and/or Paliwal unquestionably
changes the principle of operation of Blejde.”). Appellant further asserts
that Scorey and Paliwal are directed to different alloys: “Scorey is directed
to copper-nickel-tin alloys, and Paliwal is direct to molybdenum alloys.” Id.
at 8. According to Appellant, the Examiner “has not shown either the
methods of Scorey or Paliwal to be applicable or pertinent to the production
of nickel-chromium alloys.” Id.
The Examiner responds in the Answer that Blejde, Scorey, and
Paliwal are “in the same field of endeavor, which is in the field of forming a
strip alloy.” Ans. 9. The Examiner also responds that the proposed
combination of Blejde and Scorey or Paliwal amount to “applying a known
technique to form a known or similar device/product that would predictably
yield the claimed alloy strip.” Id. at 10 (citing MPEP § 2143).
Appeal 2020-005013
Application 14/478,231

9
“[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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner
asserts that one of ordinary skill in the art would have made Blejde’s alloy
strip using the method of Scorey or Paliwal because that method is “well
known in the art.” Ans. 5. That the limitations are known in the art does
not, but itself, provide a reason to combine the limitations. See KSR 550
U.S. at 418–19 (“[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 . . . because inventions
in most, if not all, instances rely upon building blocks long since uncovered,
and claimed discoveries almost of necessity will be combinations of what, in
some sense, is already known.”). And even though the claimed method
steps may amount to a “known technique,” the Examiner has not persuaded
us that one of ordinary skill in the art would have expected its use with the
constituents of Blejde’s alloy strip “to form a known or similar
device/product that would predictably yield the claimed alloy strip.” Ans.
10. As noted above, Blejde teaches that the tensile properties of its alloy
strip is the result, at least in part, of hot rolling a cast strip. The Examiner
has not given us any reason to believe that one of ordinary skill in the art
would have expected Blejde’s alloy strip using the claimed process,
particularly considering that neither Scorey nor Paliwal use the claimed
method on nickel-chromium alloys, such as those at issue in Blejde.
Appeal 2020-005013
Application 14/478,231

10
In sum, we are not persuaded that one of ordinary skill in the art
would have combined Blejde with Scorey or Paliwal in the manner that the
Examiner proposes. Therefore, we do not sustain the Examiner’s rejection
of claims 17 and 20, as well as their dependent claims 18 and 21, as
unpatentable over Blejde, Scorey or Paliwal, and Corrigan.
Claims 19 and 22: Rejected as Unpatentable over
Blejde, Corrigan, Scorey or Paliwal, and Cheney or Zvanut
Claims 19 and 22 depend from claims 17 and 20, respectively.
Appeal Br. 11, 12 (Claims App.). The Examiner’s rejection of these claims
relies on the Examiner’s determination that claims 17 and 20 are
unpatentable over Blejde, Scorey or Paliwal, and Corrigan. Final Act. 6.
Because we do not sustain this rejection, we also do not sustain the
Examiner’s rejection of claims 19 and 22.
CONCLUSION
The Examiner’s rejections are reversed.
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–7, 9, 11–
15
102(a)(1) Blejde 1, 3–7, 9, 11–15
1, 3–7, 9, 11–
15
103 Blejde, Corrigan 1, 3–7, 9, 11–15
8, 16 103 Blejde, Blejde,
Corrigan, Cheney,
Zvanut
8, 16

Appeal 2020-005013
Application 14/478,231

11
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
17, 18, 20, 21 103 Blejde, Scorey,
Paliwal, Corrigan
17, 18, 20, 21
19, 22 103 Blejde, Scorey,
Paliwal, Corrigan,
Cheney, Zvanut
19, 22
Overall
Outcome
1, 3–9, 11–22

REVERSED