2020001246 (P.T.A.B. Dec. 10, 2020)

ArcelorMittal

Patent Trials and Appeals BoardDec 10, 2020

2020001246 (P.T.A.B. Dec. 10, 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. 13/738,257 01/10/2013 Tanya Ros Yanez 20704.1009 EC 3200 3550 23280 7590 12/10/2020 Davidson, Davidson & Kappel, LLC 589 8th Avenue 22nd Floor New York, NY 10018 EXAMINER WU, JENNY R ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 12/10/2020 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TANYA ROS YANEZ and AMAR KUMAR DE Appeal 2020-001246 Application 13/738,257 Technology Center 1700 Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and BRIAN D. RANGE, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge, CONCURRING. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4, 7–12, 14, 17–22, and 25–28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as ArcelorMittal. (Appeal Br. 2). Appeal 2020-001246 Application 13/738,257 2 CLAIMED SUBJECT MATTER The claims are directed to a nickel aluminide alloy and a furnace roll comprising the alloy. Claims 1 and 25, reproduced below, are illustrative of the claimed subject matter: 1. A nickel-aluminide alloy comprising: 0.15 wt % or less Zr; 2.5 to 3.0 wt. % Mo; 7.5 to 8.5 wt.% Cr; and 7.5 to 8.5 wt.% Al; at least 80 wt.% Ni; and a remainder being Ni. 25. A nickel-aluminide alloy comprising: 0.15 wt % or less Zr; 2.5 to 3.0 wt. % Mo; 7.5 to 8.5 wt.% Cr; and 7.5 to 8.5 wt.% Al; and a remainder being Ni, wherein the alloy contains no more than trace amounts of the other elements from group IVB, VB and VIB of the periodic table. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Brill-Edwards US 3,617,685 Nov. 2, 1971 Liu US 5,108,700 Apr. 28, 1992 Ray US 2004/0055725 A1 Mar 25, 2004 REJECTIONS The claims stand rejected under 35 U.S.C. § 103(a) as follows: claims 1, 2, 4, 7–10, and 25 over Brill-Edwards as evidenced by Ray; claims 11, 12, 14, 17–22, and 26–28 over Brill-Edwards in view of admitted Appeal 2020-001246 Application 13/738,257 3 prior art and Ray; claims 1, 4, 7–10, and 25 over Liu; and claims 11, 14, 17– 22, and 26–28 over Liu in view of admitted prior art. 2 OPINION Rejections involving Brill-Edwards Brill-Edwards discloses a nickel-base superalloy containing about 5– 12 wt% Cr, about 3–8 wt% Mo, about 2.3–10 wt% Ta (where the combined Mo and Ta is about 5–14 wt%), about 5-15.5 wt% Co, up to about 7 wt% Ti, up to about 8 wt% Al (where the combined Ti and Al is about 5–9 wt%), up to about 0.3 wt% C, up to about 0.05 wt% B, up to about 1 wt% Zr, up to about 2 wt% Hf, up to about 2 wt% Fe, and the balance essentially nickel (col. 1, ll. 32, 38–46).3 The Examiner finds (Final Rej. 3–4): Regarding Ni at least 80%, the fact US'685 discloses Cr 5-12%, combined of Mo and Ta 5-14%, combined Ti and Al 5-9% and Co 5- 15% (Claim 1 Col 4 lines 52-62) suggests minimum 20% wt% combined weight of elements including Cr, Mo, Ta, Al, Ti and Co, leaving 80wt% remaining Ni in the composition. The fact there is no minimum amount required for additional element of C, B, Zr, Hf and Fe suggests C, B, Zr, Hf and Fe may be 0%. Thus, 80wt% of Ni meets instant claimed "at least 80% Ni". Even if combined weight of elements Cr, Mo, Ta, Al, Ti and Co is 20.3%, leaving 79.6% Ni remaining in the composition, 79.6% is still considered close to instant claim 1 required “at least 80%” due to close enough according to MPEP 2144.05 I. 2 The Examiner relies upon admitted prior art for a disclosure of use of Ni3Al alloy to form a furnace roll (claimed in independent claims 11 and 26) (Final Rej. 6, 11). 3 The Examiner relies upon Ray for evidence that Brill-Edwards’s Ni-base superalloy is a nickel-aluminide alloy (Final Rej. 3), Appeal 2020-001246 Application 13/738,257 4 The Appellant’s independent claims require 7.5–8.5 wt% Cr and 7.5– 8.5 wt% Al. Thus, to meet the Appellant’s claims, Brill-Edwards’s composition must contain at least 7.5 wt% Cr and at least 7.5 wt% Al, and therefore cannot contain 5 wt% Cr and 5 wt% combined Al and Ti as found by the Examiner. Brill-Edwards’s composition also contains at least 3 wt% Mo and a least 2.3 wt% Ta. Consequently, Brill-Edwards’s composition’s maximum Ni content is 74.7 wt%, which is less than the at least 80 wt% required by the Appellant’s claims 1 and 11. The Appellant’s claims 25 and 26 require that the alloy contains no more than trace amounts of the other elements from group IVB, VB and VIB of the periodic table. Brill Edwards’s composition contains at least about 2.3 wt% Ta, which is more than a trace amount of a group VB element. Rejections involving Liu Liu claims: 1. A nickel aluminide composition consisting essentially of nickel and, in at. %, from about 14 to about 18% aluminum, from about 6 to about 9% chromium, from about 0.1 to about 1.5% zirconium, from about 0.015 to about 0.3% boron, and from about 0.5 to about 4% of one or more elements selected from the group consisting of molybdenum and niobium. The Examiner converts the 0.1 at% zirconium in that claim to 0.17 wt% (Final Rej. 8). The Examiner states that “0.17 wt% is considered close to presently claimed 0.15% or less according to MPEP 2144.05 I.” (Final Rej. 8). The Examiner provides no evidence that Liu’s about 0.17 wt% Zr is sufficiently close to the Appellant’s 0.15 wt% Zr to have suggested 0.15 wt% Zr to one of ordinary skill in the art. Appeal 2020-001246 Application 13/738,257 5 The Examiner finds (Final Rej. 8–9): [T]he fact Liu expressly disclose[s] varying amounts of Zr (Col[.] 2 line 5) leads [t]o different YS [(yield strength)] and elongation as illustrated in Figure 2a and 2b suggests Zr amount is a result effective variable to be adjusted. If a particular parameter is recognized as a result-effective variable as Liu disclosed, then the determination of the optimum or workable ranges of said parameter might be characterized as routine experimentation. The Examiner concludes (Final Rej. 9): [I]t would have been obvious to one skilled in the art to have adjusted the result-effective variable of Zr amount, in the Nickel-aluminide alloy of Liu in order to achieve a desired VS and elongation. See MPEP 2144.05 II. The result effective variable in Liu’s Figures 2a and 2b is Mo concentration, not Zr concentration. The yield strength values for all three Zr concentrations (0.3 at%, 0.5 at%, and 1.0 at%) are along the same curves, with points for 0.3 at% Zr falling between points for 0.5 at% Zr and 1.0 at% Zr. Thus, the Examiner has not set forth a factual basis that is sufficient to support a conclusion of obviousness of the Appellant’s claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejections. CONCLUSION The Examiner’s rejections are reversed. Appeal 2020-001246 Application 13/738,257 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 7– 10, 25 103(a) Brill-Edwards, Ray 1, 2, 4, 7– 10, 25 11, 12, 14, 17–22, 26– 28 103(a) Brill-Edwards, admitted prior art, Ray 11, 12, 14, 17–22, 26– 28 1, 4, 7–10, 25 103(a) Liu 1, 4, 7–10, 25 11, 14, 17– 22, 26–28 103(a) Liu, admitted prior art 11, 14, 17– 22, 26–28 Overall Outcome 1, 2, 4, 7– 12, 14, 17– 22, 25–28 REVERSED Appeal 2020-001246 Application 13/738,257 7 BAUMEISTER, Administrative Patent Judge, concurring. I agree with the Majority’s finding and conclusions. I write separately because I would exercise the Board’s discretionary authority under 37 C.F.R. § 41.50(b) and newly reject claims 1, 2, 4, 7 to 12, 14, 17 to 22, 27, and 28 under 35 U.S.C. § 112(b) (or pre-AIA § 112, ¶ 2). Independent claim 1, for example, sets forth the claimed invention, as follows (with emphasis added): 1. A nickel-aluminide alloy comprising: 0.15 wt[.]% or less Zr; 2.5 to 3.0 wt.% Mo; 7.5 to 8.5 wt.% Cr; and 7.5 to 8.5 wt.% Al; at least 80 wt.% Ni; and a remainder being Ni. Due to the manner in which claim 1 twice recites the inclusion of nickel in the alloy, in combination with the fact that claim 1’s preamble recites that the alloy comprises the recited elements, the metes and bounds of claim protection being sought for claim 1 are not reasonably clear. I, therefore, would reject claim 1 under 35 U.S.C. § 112(b) (or pre-AIA § 112, ¶ 2,) as being indefinite. The metes and bounds of claim 1 would have been reasonably clear if the last limitation, “a remainder being Ni,” were omitted from the claim. In such a hypothetical case, it would be reasonably clear that claim 1 is setting forth a nickel-aluminide alloy that contains the recited amounts of Zr, Mo, Cr, Al, and Ni, and that the alloy also optionally could comprise one or more additional, unclaimed elements, so long as the elements’ combined weight percentages allows the weight percentage of the nickel to be greater than or Appeal 2020-001246 Application 13/738,257 8 equal to 80%. But claim 1’s further inclusion of the last limitation, “a remainder being Ni,” renders it less than reasonably clear how that last limitation is intended to further limit the other limitations of claim 1 and what the claim language, read as a whole, means. Presumably, the last limitation, “a remainder being Ni,” is intended to further limit claim 1 beyond merely requiring a nickel concentration of 80 weight percent or more. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). In light of claim 1 already setting forth that the nickel concentration has to be at least 80 weight percent, the only additional meaning that reasonably can be ascribed to the further requirement of “a remainder being Ni” is that claim 1 does not permit the alloy to contain any further elements beyond Zr, Mo, Cr, Al, and Ni. But this interpretation does not seem reasonable because claim 1 also employs the open-ended transition term “comprising,” which usually would indicate that while the named elements are essential, other elements may be added and still form a construct within the scope of the claim. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Also, if Appellant had intended to limit claim 1 to alloys that possess only the elements that are expressly recited, Appellant could have drafted claim 1’s preamble to set forth that the nickel-aluminide alloy either consists of or consists essentially of the recited elements. See In re Herz, 537 F.2d 549, 551–52 (CCPA 1976). (“Consisting essentially of” here is used as a transitional phrase, and as such, it limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel Appeal 2020-001246 Application 13/738,257 9 characteristic(s)” of the claimed invention.); see also MPEP § 2111.03 (“Transitional Phrases”). Furthermore, various dependent claims also provide evidence that claim 1’s last limitation is not intended to limit the scope to alloy that are composed exclusively of Zr, Mo, Cr, Al, and Ni. For example, dependent claim 7 additionally recites, “wherein said alloy [of claim 1] further comprises about 0.015 wt.% B or less.” Dependent claim 8 further limits the boron concentration to about 0.01%. And dependent claim 9 sets forth that the alloy of claim 1 further comprises maximum weight percentages for the additional elements, carbon, silicon, iron, sulfur, manganese, phosphorus, and copper. If the language of claim 1, when read as a whole, were intended to limit the alloy’s composition to Zr, Mo, Cr, Al, and Ni, exclusively, then dependent claims 7–9, for example, would violate statutory provision 35 U.S.C. § 112(d) (pre-AIA § 112, ¶ 4) by adding additional elements to the alloy of claim 1, and, thereby, failing to further limit the scope of claim 1. See pre-AIA § 112, ¶ 4 (“[A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because claim 1 is susceptible to being interpreted to in two different ways, and because neither interpretation seems reasonable for the reasons stated above, unreasonable ambiguity exists in relation to the intended scope of the claim. Language in a claim is unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the Appeal 2020-001246 Application 13/738,257 10 claimed invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is “is amenable to two or more plausible claim constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Ex parte Kristensen, 10 USPQ2d 1701 (BPAI 1989) (Where a claim directed to a device can be read to include the same element twice, the claim may be indefinite.). Independent claim 11 contains a similar ambiguity, setting forth, “[a] furnace roll comprising, [elements of specified compositional ranges]; at least 80 wt.% Ni; and a remainder being Ni.” Accordingly, I would reject independent claims 1 and 11, and also dependent claims 2, 4, 7 to 10, 12, 14, 17 to 22, 27, and 28, as being indefinite under 35 U.S.C. § 112(b) [or pre- AIA § 112, ¶ 2] for the reasons set forth above in relation to claim 1. Independent claims 25 and 26 differ slightly from independent claims 1 and 11. Independent claim 25, for example, reads as follows (emphasis added): 25. A nickel-aluminide alloy comprising: 0.15 wt[.]% or less Zr; 2.5 to 3.0 wt.% Mo; 7.5 to 8.5 wt.% Cr; and 7.5 to 8.5 wt.% Al; a remainder being Ni, wherein the alloy contains no more than trace amounts of the other elements from group IVB, VB and VIB of the periodic table. Claim 25 differs from claim 1, then, because claim 25 does not include a double recitation of the nickel composition. That is, claim 25 omits claim 1’s limitation of “at least 80% wt.% Ni.” Nonetheless, claim 25 still raises some clarity questions regarding the intended metes and bounds of claim protection being sought due to the fact that the preamble employs Appeal 2020-001246 Application 13/738,257 11 the transition term “comprising,” while the claim also recites that a remainder of the alloy is nickel. Standing alone, this claim may well be reasonably clear in meaning that the alloy can contain additional elements beyond the recited elements, and nickel makes up the rest of the alloy. But that interpretation is based on the meaning of the limitation, “a remainder being Ni,” being reasonably clear. And as explained above, the recitation of this limitation in claim 1, in combination with the recitation, “at least 80 wt.% Ni,” raises reasonable doubt as to what the language, “a remainder being Ni,” is intended to mean. As such, I would leave it to the Examiner, upon further prosecution and in light of any future claim amendments and arguments, to additionally consider whether the metes and bounds of claim 25 are reasonably clear. I, likewise, would leave it to the Examiner to consider the clarity of independent claim 26, which recites similar claim language. See MPEP § 1213.01 (“The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.”). And for the reasons discussed above in relation to dependent claims 7–9, I also would leave it to the Examiner, upon further prosecution, to determine whether any of the dependent claims as currently drafted, or as amended in the future, should be reject claims under 35 U.S.C. § 112(d) (or pre-AIA § 112, ¶ 4) for failing to limit the subject matter of the claims from which they depend. See MPEP § 1213.01.