Ex Parte Briggs

Board of Patent Appeals and Interferences

Mar 31, 2010

10459396 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT D. BRIGGS
____________

Appeal 2009-005722
Application 10459,396
Technology Center 1700
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Decided: March 31, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 19-21, 24-28, 30-32, and 43-53. We
have jurisdiction pursuant to 35 U.S.C. § 6.

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Appellant’s claimed invention is directed to a method of heat treating a
titanium based alloy of a specified composition wherein the alloy is cooled
from a first temperature above a beta transus temperature1 of the specified
alloy to a second specified temperature below the alloy beta transus
temperature at a cooling rate of less than 30° F/min.
Claim 19 is illustrative and reproduced below:
19. A method of heat treating a titanium-based alloy consisting of about 5
wt.% aluminum, about 5 wt.% molybdenum, about 5 wt.% vanadium, and
about 3 wt.% chromium with the balance consisting of titanium and minor
impurities, comprising:
cooling the alloy from a first temperature above a beta transus temperature
of the alloy to a second temperature below the beta transus temperature at a
cooling rate of less than 30° F/minute, wherein the second temperature is”
less than 100° F.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Ibaraki 4,098,623 Jul. 4, 1978

Gerd Lutjering and James C. Williams: Titantium Springer-Verlag. Online
version at: http://www.knovel.com/knovel2/Toc.jsp?BookID=1116&VerticallD=)
(pp, 177-201).

ASM International, Material Park Ohio, Properties and Selection:
Nonferrous Alloys and Special-Purpose Materials, Vol. 2, “Wrought
Titanium and Titanium Alloys, pp. 608-610 (1996).

Claims 19-21, 24-28, 30, and 43-51 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Ibaraki in view of Lutjering. Claims 31,

1 Microstructure changes to the beta phase above the beta transus
temperature (Spec. 1).
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32, 52, and 53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ibaraki in view of Lutjering and the ASM Handbook.
We reverse the stated rejections essentially for reasons set forth in the
Appeal Brief and Reply Brief.
The Examiner acknowledges that Ibaraki does not disclose a titanium
alloy as claimed, that is an alloy consisting of about 5 weight percent
aluminum, about 5 weight percent molybdenum, about 5 weight percent
vanadium, and about 3 weight percent chromium, balance consisting of
titanium and minor impurities (Ans. 4; claim 19). However, the Examiner
asserts that it would have been obvious to select an alloy, as claimed, as the
alloy subject to the treatment method of Ibaraki because Ibaraki does not
limit the treatment disclosed therein to a specified alloy (Ans. 4). As for the
claimed cooling rate, Ibaraki teaches furnace cooling as an optional
subsequent cooling step, which option the Examiner contends would provide
a cooling rate corresponding to Appellant’s cooling rate as evidenced by the
additional information provided by Lutjering with respect to furnace
cooling. Id.
Appellant urges, inter alia, that Ibaraki’s process is directed to
treating titanium alloys having an abnormal alpha phase structure, such as a
Ti-6Al-4V alloy (App. Br. 11). Appellant argues that the Examiner has not
established that a titanium alloy composition, as the claimed process is
limited to treating, would have been an obvious selection for subjecting to
Ibaraki’s process because the Examiner has not provided evidence
establishing that such an alloy suffers from an abnormal structure as
Ibaraki’s process is directed to, or would have otherwise been an obvious
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alloy to select for treatment by Ibaraki’s process (App. Br. 11-12; Reply Br.
2-3).

PRINCIPAL ISSUE
Has the Examiner established that it would have been obvious to one
of ordinary skill in the art to select a titanium alloy consisting of about 5
weight percent aluminum, about 5 weight percent molybdenum, about 5
weight percent vanadium, and about 3 weight percent chromium, balance
consisting of titanium and minor impurities, for treatment in the process of
Ibaraki?

PRINCIPLES OF LAW
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
A sustainable obviousness rejection must be accompanied by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
Rejections based on § 103(a) must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention
from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

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FINDINGS OF FACT
Ibaraki is concerned with heat treating titanium alloys having an
abnormal alpha phase structure (col. 2, ll. 3-35; Examples 1 and 2).
Compare figures 1a and 2a of Ibaraki with figures 1b and 2b of Ibaraki,
respectively.
Ibaraki discloses the use of two through ten successive cycles of
heating and cooling between a low temperature (between room temperature
and 600° C) and a high temperature (850° C - 1000° C) in a vacuum or
neutral atmosphere, and then cooling to room temperature using furnace or
spontaneous cooling (col. 2, ll. 17-35; Examples 1 and 2).
Lutjering discloses an example of lamellar microstructure variation as
a function of cooling rate for a Ti-6242 alloy wherein the cooling rate varied
from a slow cooling rate of 1° C/min., which was described as typical for
furnace cooling, to a fast cooling rate of 8000° C/min. (p. 178, ll. 6-15).
The Specification provides that “[t]o achieve a commercially
acceptable titanium alloy, it is well known in the art that the alloy must be
cooled very quickly to limit the precipitation of alpha phase at the grain
boundaries” (Spec., para. 0006).

ANALYSIS
Rejection of Claims 19-21, 24-28, 30, and 43-51
All of the appealed claims require a step of cooling a heat treated
titanium alloy consisting of about 5 weight percent aluminum, about 5
weight percent molybdenum, about 5 weight percent vanadium, and about 3
weight percent chromium, balance consisting of titanium and minor
impurities at various cooling rates, all less than 30° F/min. from a first
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temperature above a beta transus temperature of the alloy to a second
temperature below the beta transus temperature (less than 100° F for
independent claim 19 and less than 700° F for independent claim 43).
The Examiner relies on Ibaraki for allegedly disclosing a titanium
alloy heat treating process wherein a cooling rate (furnace cooling)
corresponding to Appellant’s claimed cooling rate can be employed (Ans. 3-
4). As for the required alloy, the Examiner maintains that Ibaraki’s process
would have been obviously applicable to an alloy as claimed because Ibaraki
does not limit the disclosed process to a specific alloy (Ans. 4). Therein lays
a critical flaw with the Examiner’s stated rejection.
In particular and as noted above, Appellant’s dispute the Examiner’s
determination that the process of Ibaraki has been shown to be applicable to
all titanium alloys given that Ibaraki teaches that they are addressing
titanium alloys having a specified structural abnormality (abnormal alpha
phase) with their process and that the Examiner has not established that the
alloy to which Appellant’s process is restricted is the type of alloy that
Ibaraki would teach an ordinarily skilled artisan as being addressable with
Ibaraki’s process (App. Br. 11-12). In response to Appellant’s argument, the
Examiner repeats the rejection allegation and notes that the rejected claims
do not recite the argued feature concerning an abnormal alpha phase (Ans.
10-11). “The Examiner’s rationale, however, is incorrect”, as correctly
pointed out by Appellant (Reply Br. 2).
After all, the Examiner carries the burden of producing evidence that
reasonably substantiates the Examiner’s proffered rationale that would have
led one of ordinary skill in the art to apply the method of Ibaraki to another
alloy; that is, the specific alloy that is required by Appellant’s claims. Here,
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the Examiner has not substantiated that the specified alloy that is the subject
of Appellant’s claims is subject to the abnormal structure of the titanium
alloys that Ibaraki addresses or otherwise explained why one of ordinary
skill in the art would have applied the particular method of Ibaraki to a
titanium alloy consisting of about 5 weight percent aluminum, about 5
weight percent molybdenum, about 5 weight percent vanadium, and about 3
weight percent chromium, balance consisting of titanium and minor
impurities, as Appellant’s claims are directed to. The Examiner has not
shown that Lutjering is directed to such an alloy.
Accordingly, even if we agree with the Examiner that Ibaraki’s step of
furnace cooling an alloy, such as the exemplified Ti-6Al-4V alloy, to room
temperature after subjecting that alloy to several heating (850° C – 1000° C)
and cooling (room temperature to 600° C) steps, constitutes a teaching or
suggestion to cool such an alloy from a first temperature above a beta
transus temperature to a second temperature below the beta transus
temperature at a cooling rate less than 30° F/min based on the disclosure of a
typical furnace cooling rate of 1° C/min of Lutjering, the Examiner has not
reasonably established why one of ordinary skill in the art would have
applied the Ibaraki process to Appellant’s specified alloy absent evidence
that Appellant‘s alloy would have been expected to have an abnormal alpha
phase structure, as the alloys that Ibaraki addresses with the process
disclosed therein.
It follows that we will not sustain the Examiner’s first stated
obviousness rejection, on this record.

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Rejection of Claims 31, 32, 52, and 53
Concerning the separate obviousness rejection of dependent claims
31, 32, 52, and 53, the Examiner further relies on the ASM Handbook for
allegedly suggesting the obviousness of features added by the separately
rejected dependent claims. The Examiner does not rely on the additionally
applied ASM Handbook to establish the obviousness of employing a
titanium alloy consisting of about 5 weight percent aluminum, about 5
weight percent molybdenum, about 5 weight percent vanadium, and about 3
weight percent chromium, balance consisting of titanium and minor
impurities, in the process of Ibaraki.
Consequently, we, likewise, reverse the Examiner’s second stated
obviousness rejection for reasons set forth above with respect to the first
stated rejection.

CONCLUSION
The Examiner has not established that it would have been obvious to
one of ordinary skill in the art to select a titanium alloy consisting of about 5
weight percent aluminum, about 5 weight percent molybdenum, about 5
weight percent vanadium, and about 3 weight percent chromium, balance
consisting of titanium and minor impurities, for treatment in the process of
Ibaraki.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED
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Application 10/459,396

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