Ex Parte Baker et alDownload PDFPatent Trial and Appeal BoardAug 9, 201814823441 (P.T.A.B. Aug. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/823,441 08/11/2015 110407 7590 08/13/2018 Burris Law, PLLC 300 River Place Drive, Suite 1775 Detroit, MI 48207 FIRST NAMED INVENTOR Brian A. Baker 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. 4107-155819 5905 EXAMINER ROE, JESSEE RANDALL ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 08/13/2018 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): docketing@burrisiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN A. BAKER and DEBAJYOTI MAITRA Appeal2016-008672 Application 14/823,441 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's decision rejecting claims 1-11 and 16-19 under 35 U.S.C. § 103(a) as unpatentable over Kudo et al. 2 A hearing was held on June 26, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest, and the Applicant, is said to be Huntington Alloys Corporation. Appeal Brief dated March 23, 2016 ("App. Br."), at 3. 2 US 4,400,211, issued August 23, 1983 ("Kudo"). Appeal2016-008672 Application 14/823,441 Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief. The limitations at issue are italicized. 1. An article of manufacture formed from a solid-solution nickel-based alloy for use in sour gas and oil environments, the alloy comprising, in percent by weight: chromium: min. of 21.0 and max. of 24.0%; iron: min. of 17.0 and max. of 21.0%; molybdenum: min. of 6.5 and max. of 8.0%; copper: min. of 1.0 and max. of 2.5%; tungsten: min. of 0.1 and max. of 1.5%; sol. nitrogen: min. of0.08 and max. of 0.20%; manganese: max. of 4.0%; silicon: max. of 1.0%; carbon: max. of0.015%; aluminum max. of 0.5%; a total amount of niobium, titanium, vanadium, tantalum and zirconium: max of 0.45%; and the balance being nickel and incidental impurities, wherein the article has a cold-worked and aged microstructure, having grain boundaries with no continuous precipitates, wherein upon microstructural examination on a section taken in the longitudinal direction with respect to the direction of cold work, a total area fraction of intermetallic phases, nitrides, and carbides does not exceed 1. 0%, and wherein an area fraction of sigma phase does not exceed 0. 5%. App. Br. 17. B. DISCUSSION 1. Claims 1-9, 11, and 16-19 The Examiner finds that Kudo discloses a nickel-based alloy comprising the claimed elements in amounts that overlap the claimed 2 Appeal2016-008672 Application 14/823,441 amounts. Non-Final Act. 2-3. 3 As for the limitation "a total amount of niobium, titanium, vanadium, tantalum and zirconium: max of 0.45%" recited in claim 1, the Examiner finds that Kudo does not require niobium, titanium, vanadium, tantalum, or zirconium in the disclosed alloy and, thus, satisfies the claim limitation. 4 Non-Final Act. 4. As for the limitation that the article formed from the nickel-based alloy "has a cold-worked and aged microstructure" as recited in claim 1, the Examiner finds that the alloy disclosed in Kudo undergoes a solid solution treatment and is cold worked and aged. Non-Final Act. 4 (citing Kudo, col. 7). Therefore, the Examiner finds that Kudo's alloy has a microstructure as claimed. Non-Final Act. 4--5. According to the Appellants: The Examiner correctly notes that Kudo discloses a broad set of compositional ranges that overlap with the compositional ranges of claim 1 of the present application. The Examiner correctly notes that Kudo discloses the optional presence of one or more of Nb, Ti, Ta, Zr, and Vin a total amount of 0.5-4.0%. The Examiner also correctly notes that Kudo discloses a cold- worked and aged microstructure. App. Br. 10. The Appellants, however, argue that "Kudo fails to teach or suggest at least the combination of the low total amount of niobium, titanium, vanadium, tantalum, and zirconium of claim 1 in combination with the claimed cold-worked and aged microstructure." App. Br. 10 (emphasis added). The Appellants argue that "Kudo only teaches a cold-worked and aged micro structure when the alloy of Kudo includes the presence of one or 3 Non-Final Action dated February 18, 2016. 4 The range "max of 0.45%" encompasses a total amount of 0% of niobium, titanium, vanadium, tantalum, and zirconium. 3 Appeal2016-008672 Application 14/823,441 more of Nb, Ti, Ta, Zr, and Vin a total amount of 0.5-4.0%." App. Br. 11. Thus, the Appellants argue that: Kudo does not teach or suggest a cold-worked and aged micro structure as recited in claim 1 of the present application applied to an alloy having a total amount of niobium, titanium, vanadium, tantalum, and zirconium: max of 0.45%. To the contrary, according to Kudo, the reason for providing a cold- worked and aged microstructure is specifically linked to the presence of one or more of Nb, Ti, Ta, Zr, and Vin a total amount of 0.5-4.0%. App. Br. 13. In response, the Examiner correctly concludes that the claims on appeal are in product-by-process format. It is well settled that the patentability of a claim in product-by-process format is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."). Where a prior art product appears to be identical to the claimed product, the burden is on the Appellants to present evidence establishing an unobvious difference between the claimed product and the prior product. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). In this case, claim 1 recites that "the article has a cold-worked and aged microstructure, having grain boundaries with no continuous 4 Appeal2016-008672 Application 14/823,441 precipitates."5 App. Br. 17. The Examiner finds that the ASM Handbook6 teaches that aluminum, niobium, titanium, tantalum, etc. are precipitated to form they' phase via a heat treatment, including aging and precipitation hardening. Ans. 11. 7 In the claimed invention, however, the Examiner explains that: none of these precipitation hardening elements are required and aging or precipitation hardening such a composition lacking the elements aluminum, niobium, titanium, tantalum, etc. would not result in the precipitation of the y' phase. Thus, even if Kudo ... can be interpreted to only perform aging on compositions that have niobium, titanium, tantalum, zirconium and/or vanadium present in an amount of 0.5 to 4.0 weight percent, one having ordinary skill in the art would not expect the scope of the instant invention to necessarily provide a patently distinct product relative to Kudo [because niobium, titanium, tantalum, zirconium, and vanadium are optional in Kudo]. Ans. 11. In other words, the Examiner finds that an aged alloy ( as claimed) that does not include aluminum, niobium, titanium, tantalum, vanadium, and zirconium and an unaged alloy ( as in Kudo) that does not include aluminum, niobium, titanium, tantalum, vanadium, and zirconium are not patentably distinct. The Appellants do not direct us to any evidence to the contrary. Rather, the Appellants argue that "Kudo lacks a clean microstructure [i.e., a 5 Claim 19, the other independent claim on appeal, also recites that "the article has a cold-worked and aged microstructure, having grain boundaries with no continuous precipitates." App. Br. 19. 6 The Examiner cites volume 2, page 430, left column-middle column, of the ASM Handbook. Ans. 11. 7 Examiner's Answer dated July 14, 2016. 5 Appeal2016-008672 Application 14/823,441 micro structure with no precipitates] and fails to recognize the careful balancing of nitride-forming elements with solid solution nitrogen. This is evidenced by comparing the strength and ductility results of the claimed alloy versus Kudo."8 Reply Br. 3. 9 The Appellants also argue that the claimed invention "provides a synergistic combination that results in a clean microstructure, increased strength and ductility, and improved fabricability." 10 Reply Br. 2. Finally, the Appellants argue that the claimed microstructure was tested in accordance with ASTM E562, a standard that was not even published until 2011. The Kudo reference has a priority date of 1981, long before clean microstructure was even recognized as a need in the industry and long before the ASTM test standard was established. Reply Br. 4. The Appellants' arguments are presented for the first time on appeal in the Reply Brief. According to 37 C.F.R. § 41.41(b)(2), arguments raised in the Reply Brief which were not raised in the Appeal Brief or are not responsive to an argument raised for the first time in the Examiner's 8 The Appellants do not direct us to any evidence comparing the strength and ductility results of the claimed alloy and the alloy disclosed in Kudo. The Examiner, on the other hand, finds that the yield strength of Kudo's alloys ranges from 90.9 to 132.7 kgf/mm2 (129 ksi to 189 ksi) (citing Kudo, Table 3) and the yield strength of the claimed alloys ranges from 117 to 163 ksi (citing Appellants' Tables 4, 5). Ans. 11. We note that Kudo's range overlaps the Appellants' range. 9 Reply Brief dated September 14, 2016. 10 The Appellants do not direct us to any evidence demonstrating synergism. See In re Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979) ("Synergism, in and of itself, is not conclusive of unobviousness in that synergism might be expected."). 6 Appeal2016-008672 Application 14/823,441 Answer, will not be considered by the Board unless good cause is shown. In this case, the Appellants' arguments are not responsive to an argument raised for the first time in the Examiner's Answer. Likewise, the Appellants have failed to show good cause why their arguments could not have been presented in the Appeal Brief. Therefore, the Appellants' arguments are untimely and will not be considered on appeal. In sum, a preponderance of the evidence of record supports the Examiner's conclusion of obviousness. Therefore, the§ 103(a) rejection of claim 1 is sustained. The Appellants do not present arguments in support of the separate patentability of any of claims 2-9, 11, and 16-19. Therefore, the§ 103(a) rejection of claims 2-9, 11, and 16-19 also is sustained. 2. Claim 10 Claim 10 depends from claim 1 and recites that "a content of Mo + Yz Wis controlled to be a maximum of 8.5%." App. Br. 18. The Examiner finds that Kudo discloses that "the total content of molybdenum plus one-half tungsten is 7.5 to 12 percent, which overlaps in scope with the instant invention." Non-Final Act. 6. The Appellants do not direct us to any error in the Examiner's finding. Rather, the Appellants argue that "Kudo fails to teach or suggest 'a content of Mo+ Yz Wis controlled to be a maximum of 8.5%." App. Br. 14 ( emphasis added). The Appellants' argument is not persuasive of reversible error. Claim 10 recites a range with an upper limit of 8.5%. 11 It is well-settled that "even 11 The step of controlling the content of Mo + Yz W does not patentably distinguish the claimed alloy from the alloy disclosed in Kudo. In re Thorpe, 777 F .2d at 697. 7 Appeal2016-008672 Application 14/823,441 a slight overlap in range establishes a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). To overcome a prima facie case of obviousness, "the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In this case, the Appellants do not direct us to any evidence establishing that the range recited in claim 10 is critical. Therefore, the § 103(a) rejection of claim 10 is sustained. C. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 8 Copy with citationCopy as parenthetical citation