13084608 (P.T.A.B. Apr. 3, 2018)

Ex Parte Bruck

Patent Trial and Appeal BoardApr 3, 2018

13084608 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/084,608 04/12/2011 28524 7590 04/05/2018 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR Gerald J. Bruck 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. 2010Pl5436US 1457 EXAMINER GAMINO, CARLOS J ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 04/05/2018 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): ipdadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERALD J. BRUCK Appeal2016-004584 Application 13/084,608 Technology Center 1700 Before ROMULO H. DELMENDO, DONNA M. PRAISS, and JENNIFER R. GUPTA, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 In this Opinion, we refer to the Specification filed April 12, 2011 ("Spec."), the Final Office Action dated July 16, 2015 ("Final Act."), the Appeal Brief filed August 27, 2015 ("Br."), the Examiner's Answer dated February 26, 2016 ("Ans."), the Reply Brief filed April 1, 2016 ("Reply Br."), the Declaration of Gerald J. Bruck filed March 14, 2014 ("Bruck Deel."), and the Email string between Jerry J. Bruck and Keith Kruger dated March 12, 2014, filed March 14, 2014 ("Haynes Email"). 2 The real party in interest is identified as Siemens Energy, Inc. App. Br. 1. Appeal2016-004584 Application 13/084,608 The invention relates to "post heat-treatment metalworking of an alloy that has previously been strengthened in a heat treatment with reactive gasses." Spec. 1 :4--5. According to the Specification, the cobalt-based alloy material NS-163Â® manufactured by Haynes International "cannot be further processed by forming or welding because it is fully strengthened and not amendable to such metalworking" after fabrication and heat treatment. Id. at 1: 11-23. Claim 1 is illustrative (disputed limitations italicized): 1. A method of metalworking a substrate previously strengthened in a gas heat treatment to form precipitates throughout an entire volume of the substrate, the precipitates comprising an active chemical element incorporated during the gas heat treatment, the method comprising: melting a portion of the substrate during a full penetration metalworking process to form a molten portion; generating a metalworking atmosphere consisting of the active chemical element in a gas state during the metalworking process; exposing a full thickness of the molten portion to the metalworking atmosphere during the metalworking process and while cooling the molten portion into an unrestrengthened solidified portion abutting the melted portion; cooling the unrestrengthened solidified portion while exposing the unrestrengthened solidified portion to the metalworking atmosphere to form a restrengthened solidified portion comprising precipitates comprising the active chemical element, wherein the precipitates are present throughout an entire volume of the solidified portion; and exposing the molten portion, the unrestrengthened solidified portion, and the restrengthened solidified portion to the metalworking atmosphere in a manner sufficient to both shield the molten portion, the unrestrengthened solidified portion, and the restrengthened solidified portion and to return 2 Appeal2016-004584 Application 13/084,608 the restrengthened solidified portion to a strength of a remainder of the substrate, wherein the substrate consists of NS-163â„¢, a wrought, cobalt-based alloy consisting of: Co-28Cr-21Fe-9Ni-1.25Ti- 1 Nb, wherein the substrate comprises a substrate chemical element that reacts with the active chemical element to strengthen the substrate, wherein the active chemical element comprises nitrogen, and wherein the precipitates comprise nitrides. App. Br. 15 (Claims Appendix). Independent claim 15 is similar to claim 1, but starts by reciting "strengthening a first substrate piece and a second substrate piece in a gas heat treatment to form precipitates throughout an entire volume of the first substrate piece and the second substrate piece, the precipitates comprising an active chemical element incorporated during the gas heat treatment" prior to the steps of welding and exposing to a metalworking atmosphere. Id. 17 (Claims Appendix); App. Br. 14. The Examiner maintains (Ans. 2) the following rejections (Final Act. 2-22): 1. Claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement. 2. Claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. 3 Appeal2016-004584 Application 13/084,608 3. Claims 1-3, 5-7, and 9 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Haynes3 in view of Choufl and McAninch. 5 4. Claims 1-3, 5-7, 9, 22, and 23 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Haynes in view of Chouf, McAninch, and Banas. 6 5. Claims 15-18 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Haynes in view of Chouf. 6. Claims 10, 11, 20, and 24 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Haynes, Chouf, McAninch, and Banas, and further in view of Speranza. 7 7. Claims 1-3, 5-7, 9-11, 15-18, and 20 are alternatively rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Haynes in view of Chouf and Arnoldy. 8 8. Claims 1-3, 5-7 and 9-11, 15-18, 20, and 22-24 under 35 U.S.C. Â§ 103(a) as being unpatentable over Haynes in view of Chouf, Arnoldy, and Banas. OPINION After reviewing the positions and evidence presented by both Appellant and the Examiner, we affirm the stated rejections for the reasons 3 Haynes International, Inc., A New Alloy Concept: HaynesÂ® NS-163Â® alloy, product brochure (2009). 4 Chouf et al., US 2010/0282723 Al, published Nov. 11, 2010 ("Chouf'). 5 McAninch, US 2010/0059493 Al, published Mar. 11, 2010 ("McAninch"). 6 Banas et al., US 4,000,392, issued Dec. 28, 1976 ("Banas"). 7 Speranza et al., US 6,797,914 B2, issued Sept. 28, 2004 ("Speranza"). 8 Arnoldy, US 3,062,948, issued Nov. 6, 1962 ("Arnoldy"). 4 Appeal2016-004584 Application 13/084,608 provided in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection 1: Enablement The Examiner finds that claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24 do not comply with the enablement requirement for the reasons stated on pages 2--4 of the Final Office Action. Appellant does not separately argue the patentability of claims 2, 3, 5-7, 9-11, 15-18, 20, and 22-24. Therefore, these claims stand or fall with independent claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). Appellant argues that the Examiner erred because, like known process parameters for welding operations that can be varied and form a range of parameters, "heat treating NS-163Â® has several known process parameters and these also may be varied to control the amount of restrengthening, thereby forming a range of heat treating process parameters." App. Br. 8 (citing Hartline9 and an annual meeting notice 10). Appellant asserts that the Specification need not disclose what is well known to those skilled in the arts and it is preferable to omit that which is well-known and already available to the public and Appellant "is not reinventing either set of parameters" but "simply combining the known parameters in a new and non- obvious processes [sic]." Id. at 8-9 (citing In re Buchner, 929 F .2d 660, 661 (Fed. Cir. 1991)). According to Appellant, "the exact same known welding parameters" and "the exact same known heat treating parameters" that are known to those in the art and relied upon by the Examiner for the prior art rejections are also relied upon by Appellant. Id. 9 Hartline et al., US 4,043,839, issued Aug. 23, 1977 ("Hartline"). 10 http://www.tms.org/meetings/annual-11/ Aml lhome.aspx. 5 Appeal2016-004584 Application 13/084,608 The Examiner responds that Hartline is drawn to a different cobalt- based alloy, appears to be done in a precisely controlled temperature and gas environment different from welding, and is extremely vague on the time needed to complete the process. Ans. 2 (citing Hartline 2:24--50). The Examiner notes that none of the alleged well-known welding parameters, such as travel speed, arc depth/width, voltage, amperage, energy density, preheating, post weld heat treating, length of gas exposure, etc., that would result in heating the claimed material long enough to achieve the claimed result. Id. The Examiner further responds: the appellant is suggesting that while they provide no guidance, direction, or examples it would have been obvious to one of ordinary skill in the art at the time of the invention to take the undisclosed patent drawn to a different material and apply the undisclosed welding parameters and "other factors", as noted above, in order to be able to exactly return the claimed material back to its original strength. Due to the numerous and undisclosed other factors that are critical to achieving the claimed results it would require an undue amount of experimentation to achieve the claimed process, provided that one even knows what other factors are critical. Id. at 3. In response to Appellant's case law citation and assertion that the set of parameters needed has not been "reinvented," the Examiner observes that "[A ]ppellant is not stating that the welding parameters for achieving the claimed result [are] known but is only stating that generic welding parameters are known." Id. at 4. In the Reply Brief, Appellant contends the lack of welding parameters disclosed in the Specification compared to the lack of parameters in the cited prior art is a double standard that "does not comport with acceptable practice." Reply Br. 2. Appellant then cites a new reference not argued in 6 Appeal2016-004584 Application 13/084,608 the Appeal Brief to show that heat treatment parameters were known for the Haynes NS-163 Â® alloy specifically. Id. at 3. Appellant contends that if a skilled artisan (or artisans if strengthening and welding knowledge are separately known) "can control the process enough to strengthen NS-163Â® to one level, it seems a small step for the one of ordinary skill to control the process to strength the NS-163Â® to a different level, where the different level is the strength of the remainder of the substrate." Id. at 4. We are not persuaded by Appellant's arguments because, even if we were to consider Appellant's new argument and evidence not presented in the Appeal Brief, allegedly evidencing that heat treatment parameters were known for NS-163Â® alloy specifically, Appellant still is not stating that the welding parameters for achieving the claimed result is known. It is well- established law that the test for compliance with the enablement requirement in the first paragraph of 35 U.S.C. Â§ 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). "Enablementisnotprecludedbythe necessity for some experimentation . . . . However, experimentation needed to practice the invention must not be undue experimentation. The key word is 'undue,' not 'experimentation."' Id. at 73 6-3 7. Based on the cited record in this appeal, there are several known process parameters forming a range of heat treating process parameters, the Specification does not cite or incorporate by reference any process parameters for performing the claimed method, nor does the Specification provide guidance as to which parameters are necessary to achieve the claimed result. Therefore, Appellant has not 7 Appeal2016-004584 Application 13/084,608 adequately rebutted the Examiner's finding that undue experimentation is required for a skilled artisan to make and use the claimed invention. Accordingly, we affirm the stated rejection under 35 U.S.C. Â§ 112, first paragraph. Rejection 2: Indefiniteness The Examiner finds that claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24 are unpatentable as indefinite because they omit essential steps for the reasons stated on pages 4--5 of the Final Office Action. Appellant does not separately argue the patentability of claims 2, 3, 5-7, 9-11, 15-18, 20, and 22-24. Therefore, these claims stand or fall with independent claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). Appellant argues that the Examiner erred because "the process steps necessary to the invention are all present" even though "[ t ]he process parameters associated with the process steps are indeed not present." App. Br. 9. Appellant asserts that the missing process parameters are not needed in the claims for the same reasons they are not needed to enable a person of ordinary skill make and use the invention. Id. The Examiner responds that Appellant's assertion that unclaimed steps/adjustments are not performed by the prior art method, which are critical to achieving the claimed result, support the Examiner's position that the claims are not enabled because they are missing an essential step. Ans. 5 (citing App. Br. 12). The Examiner specifically notes that Arnoldy teaches the concept of nitriding while welding, so if the welding parameters which would achieve the required result were well-known, what is the inventive process step over the prior art? Id. at 4. 8 Appeal2016-004584 Application 13/084,608 In the Reply Brief, Appellant asserts that the novel and non-obvious aspects of the invention are "merging the welding operation and the restrengthening operation as claimed, and restrengthening to a strength of a remainder of the substrate as claimed." Reply Br. 2. We are not persuaded by Appellant's arguments. The definiteness of a claim depends on whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 1371 (Fed. Cir. 2005). Appellant does not dispute that the Specification provides no disclosure or guidance for the welding parameters that would achieve the required heat treatment to return the claimed material back to its original strength. Thus, when read in light of the Specification, claim 1 also does not provide one skilled in the art with any bounds for the method steps involving a metalworking atmosphere apart from the description of the result being the restrengthened solidified portion is returned to a strength of a remainder of the substrate. Consequently, the path to that result is not only broad, but unspecified and, therefore, indefinite. Accordingly, we affirm the Examiner's rejection under 35 U.S.C. Â§ 112, second paragraph. Rejections 3---8: Obviousness The Examiner finds that claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24 would have been obvious to one of ordinary skill in the art at the time of the invention for the reasons stated on pages 5-22 of the Final Office Action. Appellant argues the patentability of claims 1-3, 5-7, 9-11, 15-18, 20, and 22-24 as a group and provides additional arguments for claim 15. Therefore, we select claims 1 and 15 as representative; claims 2, 3, 5-7, 9- 9 Appeal2016-004584 Application 13/084,608 11, and 22-24 will stand or fall with claim 1, and claims 16-18 and 20 will stand or fall with claim 15, from which they depend. 37 C.F.R. Â§ 41.37(c)(l)(iv). Claim 1 Appellant argues that the Examiner erred in rejecting claim 1 over Haynes together with the secondary references because Haynes teaches away from further fabrication such as welding without destrengthening based on the product brochure's teaching "a unique new heat treatment under nitrogen [] imparts a through-thickness dispersion-strengthen phase in the final part at thicknesses up to 0.100" (2.5mm)." App. Br. 10 (quoting Haynes). Appellant contends Haynes evidences that the manufacturer of the NS-163Â® alloy "believed that the material could not be fabricated after heat treating." Id. at 11 (citing Bruck Deel.). Appellant contends that Haynes together with the Haynes email defines the art and evidences that "the industry did/does not know how to rework a previously strengthened NS- 163 Â® substrate without destrengthening it." Id. Appellant also asserts that this evidence establishes an unanswered long-felt need. Id. at 12. Regarding the Examiner's prior art combination, Appellant asserts that there is no teaching or suggesting of controlling the amount of nitridation to reach a strength of the remainder of the substrate as required by the claims. Id. at 12-13. Appellant contends that "[s]ince the [prior art] process parameters associated with forming a weld may not necessarily produce the requisite strength, the weld process may need to be adjusted (within their scope to still produce an acceptable weld)" whereas the claimed method "would still produce a weld, but would also restrengthen to the requisite level." Id. at 12. Appellant concedes that "the original 10 Appeal2016-004584 Application 13/084,608 strengthening process may produce a range of strengths in the treated substrate" but contend that there is no teaching that it would return to the same strength as the remainder of the substrate. Id. at 13. The Examiner responds Haynes does not teach away from the claimed process because "[a ]t best [the quoted sentence] may mean the final part is the part sold by the manufacturer" and it also teaches it is weldable. Ans. 5. According to the Examiner, Appellant's position regarding "final part" is "simply an opinioned definition" and, when Haynes is viewed together with the prior art, one skilled in the art would have known that nitriding can be performed while welding as taught by Arnoldy. Id. at 5---6. The Examiner also responds that Appellant's long-felt need argument lacks objective evidence of an art recognized problem existed in the art for a long period of time without solution and that there was failure by others and not just one other. Id. at 6. The Examiner further responds that the Bruck Declaration establishes that the Haynes company was looking into the process claimed by Appellant, but does not show that the teachings of the prior art would not meet the claimed invention. Id. at 7. Additionally, the Examiner notes that the Bruck Declaration does not provide data or insight into what actual processes the Appellant invented to overcome the prior art rejections. Id. Regarding the degree of re-strengthening not being taught by the prior art, the Examiner responds that a prima facie case of obviousness has been established because the resulting product is produced by an identical or substantially identical process shifting the burden to Appellant to explain within the scope of the claims why the prior art would not achieve the claimed results. Id. at 7-8. 11 Appeal2016-004584 Application 13/084,608 Appellant's arguments are not persuasive of error because Appellant concedes "the combination is close." Reply Br. 5. Appellant's contention that the prior art rejection must fail because the prior art is "not exactly the same" with respect to matching the strength of the restrengthened portion with the strength of the remainder of the substrate (id.) is not persuasive because "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). In addition, Appellant's distinctions over the prior art are based on the substrate produced, however, claim 1 is not directed to a product. The Examiner's obviousness rejection over the cited prior art in this appeal record is based on "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR, 550 U.S. at 418. Appellant does not dispute the Examiner's factual findings regarding the teachings of Chouf and McAninch. We agree with the Examiner that the primary reference Haynes does not teach away from reworking NS-163Â®. A prior art reference evidences teaching away if it "criticize[ s ], discredit[ s ], or otherwise discourage[ s] the solution claimed." In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Haynes is a product sheet that merely evidences the intended use of the product sold by the manufacturer. It does not discourage a person having ordinary skill in the art from pursuing the claimed metalworking method merely because it does not describe further metalworking of the formed "final part." Syntex (US.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). 12 Appeal2016-004584 Application 13/084,608 Therefore, Appellant's assertion that Haynes "teaches the opposite" of the claimed process (Reply Br. 6-7) is not supported by the record. With the Examiner's burden having been met, the burden then shifts to Appellant to overcome the prima facie case with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellant does not direct us to any evidence that the cited prior art processes would not result in the claimed degree of restrengthening of the substrate. Indeed, the precise teachings that Appellant contends are missing from the prior art are the result of the same process details that Appellant asserts are within the level of skill of a person having ordinary skill in the art. App. Br. 8-9, 12. Appellant acknowledges that "the prior art can re- strengthen the weld" but asserts without support that the weld would be restrengthened "to a different strength than that of a remainder of the substrate." Reply Br. 6. Appellant's arguments cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F .3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, Appellant's argument is not credible in view of Appellant's position that controlling the process to strengthen NS-163Â® to a different level is "a small step for[] one of ordinary skill." Reply Br. 4. The Bruck Declaration and Haynes Email that allegedly show a long- felt need to rework NS-163Â® do not support Appellant's argument because both state that the Haynes company "explored repairability welding in the nitride condition, with mixed results." Haynes Email; Bruck Deel. i-f 9. "Mixed results" does not suggest that it was unknown to Haynes how to 13 Appeal2016-004584 Application 13/084,608 rework NS-163Â® or that Haynes did not succeed in some instances in reworking NS-163Â®. "Mixed results" suggests that Haynes was experimenting with repairability welding in the nitride condition ofNS- 163 Â® and achieved the intended result some of the time or under certain process parameter conditions. Therefore, we are not persuaded that the Examiner erred in giving little to no weight to Appellant's evidence of secondary considerations of non-obvious and in determining that claim 1 would have been obvious in view of the cited prior art. In sum, we affirm the Examiner's rejection of claim 1 as obvious over the cited prior art. Claim 15 Regarding claim 15, Appellant contends that because the claimed process starts with virgin NS-163Â®, fabricating and strengthening it before metalworking and restrengthening the destrengthened portion, the process as claimed would be contrary to common sense and Haynes. App. Br. 13-14. According to Appellant, a skilled artisan would simply complete all fabrication initially and then heat treat/strengthen the substrate as taught by Haynes, thus reducing the total number of steps and avoiding potential problems associated with destrengthening. Id. at 14. Appellant's argument that starting with the product as sold by Haynes, strengthening it, then destrengthening it, then restrengthening would have been unobvious because it adds additional steps that make it contrary to common sense is not persuasive of reversible error by the Examiner. Just because a particular modification does not make business sense does not mean that one of ordinary skill would not have made the modification. See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). Moreover, 14 Appeal2016-004584 Application 13/084,608 Appellant's position is not persuasive because it presumes that a person skilled in the art would have the option of starting with NS-163 Â® in a form other than that in which it is provided by the manufacturer. We also find Appellant's arguments for the patentability of claim 15 unpersuasive of error for the reasons discussed above in connection with claim 1, namely, the cited record in this appeal does not support Appellant's position (1) that Haynes teaches away from the combination of cited art, or (2) that the Haynes Email and Bruck Declaration evidence long-felt need, or (3) that such evidence outweighs the Examiner's prima facie case of obviousness. In addition, Appellant's distinctions over the prior art are based on the substrate produced, however, claim 15 is not directed to a product. In sum, we are not persuaded of reversible error in the Examiner's rejection of claim 15. CONCLUSION We affirm all of the Examiner's rejections. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). AFFIRMED 15