Ex Parte Cetel

Board of Patent Appeals and Interferences

Aug 30, 2011

10023565 (B.P.A.I. Aug. 30, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/023,565 12/18/2001 Alan D. Cetel EH-10559 2683
7590 08/31/2011
Pratt & Whitney
Legal Department-Patent Group
Mail Stop 132-13
400 Main Street
East Hartford, CT 06108
EXAMINER
SHEEHAN, JOHN P
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
08/31/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN D. CETEL and DILIP M. SHAH
____________

Appeal 2011-008247
Application 10/023,565
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/023,565

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3 and 5-14.1 (Examiner’s Answer entered April 8,
2011, hereinafter “Ans.”) This is the second time the appealed claims have
come before us. Previously, we affirmed the Examiner’s rejections of
claims 1-3 and 5-14 under 35 U.S.C. § 103(a). (See Decision in Appeal No.
2008-3158, July 21, 2008.) We are now asked to review the Examiner’s
rejections of the claims as amended over the same prior art. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is a directionally solidified article
comprising a corrosion and oxidation resistant superalloy. (Spec. [015]-
[018], and [026].)
Claim 1, reproduced below, is representative of the subject matter on
appeal (with underlining to show the added limitations relative to the
previously appealed claims) (App. Br. 7, Claim App’x):
1. A directionally solidified article having more than one
crystal comprising a high strength, corrosion and oxidation
resistant nickel base superalloy which comprises a matrix and
from about 0.4 to 1.5 vol. % of a phase based on tantalum
carbide, the alloy consisting essentially of, in weight percent,
of: 10 – 13.5% chromium; 8 – 10% cobalt; 1.25 – 2.5%
molybdenum; 3.25 – 4.25% tungsten; 4.5 – 6% tantalum; 3.25 –
4.5 % aluminum; 3 – 4.75% titanium; 0.0025 – 0.025% boron;
up to about 0.05% zirconium; 0.05 – 0.15 % carbon; and having

1 Claim 4 has been cancelled. (Supplemental Appeal Brief filed July 24,
2007, hereinafter “App. Br.,” 2).
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no intentional addition of niobium; no intentional addition of
hafnium; and
balance essentially nickel; wherein aluminum + titanium
is between about 6.5 – 8 %;
said article having at least comparable hot corrosion
resistance (measured at 1600°F) and at least twice the oxidation
resistance (measured at 2000°F) when compared with a
directionally solidified having a nominal composition of 14 Cr,
4.9 Ti, 1.5 Mo, 3.8 W, 2.8 Ta, 3 Al, 9.5 Co, 0.01 B, 0.02 Zr, 0.1
C, and balance Ni, and without application of a solution heat
treatement [sic].

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mitsuhashi EP 0 855 449 A1 Jan. 23, 1998
Esser WO 99/67435 Dec. 29, 1999

The following rejections are before us on appeal:
(I) claims 1-3 and 5-14 stand rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement;
(II) claims 1-3 and 5-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Esser; and
(III) claims 1-3 and 5-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mitsuhashi.

Rejection (I)
The Examiner found that Appellants did not have support in the
application as filed for “without application of a solution heat treatment” as
recited in representative claim 1. (Ans. 4.)
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Appellants contend that support for the recitation may be found in the
Specification, paras. [009], [014], and [018]. (App. Br. 3-4.)

Rejections (II) and (III)
In rejecting the appealed claims over Esser and Mitsuhashi, the
Examiner determined that the recited “without application of a solution heat
treatment” is a process limitation, and Appellants have not provided any
persuasive evidence that the recited alloy has a different microstructure and
properties than the alloys produced by Esser and Mitsuhashi. (Ans. 7, 11,
14-15, 17-18.)
Alternatively, the Examiner determined that the products produced by
Esser and Mitsuhashi, prior to heat-treatment, would be in the state recited in
the claims. (Ans. 8, 11, 15-16, 18.)
Regarding the Examiner’s position that the solution heat-treated
articles of Esser and Mitsuhashi would have the same properties as articles
not subject to solution heat treatment, Appellants contend that “the
Examiner’s conclusion improperly ignores the implication that the heat
treatment history of the article or alloy, or lack of heat treatment history,
affects the microstructure of the article/alloy with regard to properties and
size, shape, or presence of microstructural features.” (App. Br. 4, 5.)
Appellants also argue that the Examiner’s position is “unsupported
speculation.” (Reply Brief filed April 14, 2011, hereinafter “Reply Br.” 2.)
Regarding the articles of Esser and Mitsuhashi in their untreated state,
Appellants contend that Esser does not consider such an intermediate article
suitable for use as a gas turbine engine component because it would not
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exhibit the required level of stress rupture strength. (App. Br. 4-5; Reply Br.
2, citing Esser, page 8.)

ISSUES
Therefore, the dispositive issues in this appeal are:
(1) Did the Examiner err in finding that Appellants’ Specification
does not provide sufficient support for the recitation “without application of
a solution heat treatment” as recited in representative claim 1?
(2) Did the Examiner provide a sufficient basis for the position that
the articles and alloys disclosed in Esser and Mitsuhashi either prior to heat
treatment or after heat treatment are sufficiently structurally similar to shift
the burden to Appellants to prove that the recited articles or alloys are
structurally different than the articles or alloys disclosed in Esser and
Mitsuhashi?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states:
Where needed, the present composition after being cast in
directionally solidified form can be heat treated in order to
improve the mechanical properties of the alloy by controlling
the gamma prime particle size in accordance, e.g., with the
teachings of U.S. Pat. No.4, 116,723 which is also expressly
incorporated herein by reference. However, such articles as
cast may have adequate creep strength (depending upon their
intended use) such that solution heat treatment is unnecessary.
(Spec. [018]).
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2. Esser discloses:
The DS columnar grain castings were cooled to room
temperature under vacuum in the chamber, removed from the
mold in conventional manner using a mechanical knock-out
procedure, heat treated at 1250 degrees C (2282 degrees F) for
4 hours, analyzed for chemistry, and machined to specimen
configuration. (p. 8).

3. Mitsuhashi states:
In the method of the present invention for producing a large-
size cast article or a large-size cast turbine blade of columnar
Ni-base heat-resistant alloy, the solid-solution heat-treatment is
conducted for the purpose of promoting dissolution of the γ'
phase which is a precipitation strengthening phase, so as to
ensure micro-fine dispersion of the γ' phase through an aging
treatment which is to be conducted subsequently. The solid-
solution heat treatment. when conducted at a temperature below
1200°C, cannot provide satisfactory dissolution of the γ' phase,
while the solid-solution heat treatment when conducted at a
temperature exceeding 1265°C causes local melting of the
casting. Such a locally molten portion causes a microscopic
defect, with the result that the fatigue strength is undesirably
reduced

4. Mitsuhashi states:
The large-size cast article of columnar Ni-base heat-resistant
alloy, having high resistance to intergranular corrosion at high
temperature, can be produced by a process which comprises the
steps of: preparing a large-size casting or a large-size turbine
blade casting of a a [sic] columnar Ni-base heat-resistant alloy
by using a uni-directional solidifying apparatus, by pulling a
chill plate at a speed of 200 to 350 mm/h while the mold
temperature is held within a range of from 1480 to 1530°C,
conducting an HIP by holding the casting for 1 to 5 hours at a
temperature of 1180 to 1265°C [2156 to 2309 °F] under a
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pressure of from 900 to 1600 atm., conducting a solid-solution
heat treatment by holding the casting for 2 to 5 hours at a
temperature of from 1200 to 1265°C [2172 to 2309 °F] and
subjecting the casting to a two-staged aging heat treatment
having a first stage of holding the casting for 2 to 10 hours at a
temperature of from 950 to 1080°C and a second stage of
holding the casting for 16 to 24 hours at a temperature of from
760 to 870°C. (p. 8, ll. 35-44).

PRINCIPLES OF LAW
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis omitted).
Compliance with the written description requirement is a question of fact.
Id. at 1562-63.
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441
F.2d 660, 664 (CCPA 1971). “‘[T]he PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. . . . Whether the rejection is based on
‘inherency’ under 35 U.S.C. s [sic] 102, on ‘prima facie obviousness’ under
35 U.S.C. s [sic] 103, jointly or alternatively, the burden of proof is the same
. . . (footnote omitted).’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980)
(quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).

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ANALYSIS
Issue (1)
We agree with Appellants, that the Specification sufficiently conveys
to one of ordinary skill in the art that the Appellants were in possession of an
article or superalloy prepared “without the application of a solution heat
treatment” as recited in the appealed claims. Appellants’ Specification
expressly recites “solution heat treatment is unnecessary.” (FF 1.) Thus
Appellants’ Specification provides sufficient support for excluding articles
and alloys produced without solution heat treatment.
Although Appellants’ Specification discusses that solution heat
treatment may not be necessary for adequate creep strength (FF 1), we do
not subscribe to the Examiner’s view that the claims must recite adequate
creep strength in order to exclude solution heat treatment. (Ans. 13.) One of
ordinary skill in the art would have understood from reading the
Specification that solution heat treatment is not performed only in those
instances where the alloy would have adequate creep strength in the absence
of such treatment. (FF 1.) Thus, the additional recitation of adequate creep
strength in the claims is unnecessary. Therefore, we reverse the Examiner’s
rejection of the claims under 35 U.S.C. § 112, first paragraph.

Issue (2)
Appellants have not argued the claims separately. Accordingly, we
largely confine our discussion to appealed claim 1, which contains the claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii). We note also that Appellants rely on the
substantive arguments made over the Esser reference for the Examiner’s
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rejection over Mitsuhashi. (App. Br. 5.) Accordingly, we address
Appellants’ arguments mainly in the context of Esser, and discuss
Mitsuhashi when applicable.
Upon reviewing the evidence of record, we find that the Examiner has
provided a sound basis for the position that the articles of Esser and
Mitsuhashi, prior to heat treatment, would possess the characteristics recited
in the claims to have shifted the burden to Appellants to prove otherwise.
We find no merit in Appellants’ position that Esser did not consider the
articles to be finished articles. (App. Br. 4; Reply Br. 2.) Although it is true
that both Esser and Mitsuhashi disclose heat treatment, this does not detract
from the disclosure in both references that permanent articles are produced.
There is no indication in Esser and Mitsuhashi, that the articles and alloys
produced are not permanent prior to heat treatment. (FF 2, 4.) See In re
Johnson, 162 F.2d 924, 928 (CCPA 1947) (“The flakes produced by the
Braunbeck process are neither transitory or ephemeral but are by nature
tangible and permanent pending the subsequent treatment to which they are
subjected.”). Accordingly, the articles disclosed in Esser and Mitsuhashi,
prior to heat treatment, would appear to meet the recited “without solution
heat treatment.”
Therefore, the Examiner properly shifted the burden to Appellants to
prove that Esser’s and Mitsuhashi’s articles, prior to heat treatment, would
not have possessed the recited properties. Since Appellants have not
provided any persuasive evidence in this regard, we affirm the Examiner’s
decision.
The Examiner’s position that the heat-treated articles produced in
Esser and Mitshuashi would be expected to possess the same properties as
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recited in the claims stands on different footing. (Ans. 7, 10.) There is
evidence on the record, for example, in Appellants’ Specification and in
Mitsuhashi, that the extent of solution heat treatment affects the
microstructure of the resulting alloy article. (FF 1, 3.) Accordingly, to the
extent the Examiner’s reasons for rejecting the claims rely on the heat
treated articles of Esser and Mitsuhashi, we reject the Examiner’s rationale
as unsupported by the evidence of record.

CONCLUSION
In light of the above discussion:
(1) the Examiner erred in finding that Appellants’ Specification does
not provide sufficient support for the recitation “without application of a
solution heat treatment” as recited in representative claim 1; and
(2) the Examiner provided a sufficient basis for the position that the
articles and alloys disclosed in Esser and Mitsuhashi prior to heat treatment
are sufficiently structurally similar to shift the burden to Appellants to prove
that the recited articles or alloys are structurally different than the articles or
alloys disclosed in Esser and Mitsuhashi.

ORDER
The Examiner’s decision rejecting claims 1-3 and 5-14 under 35
U.S.C. § 103(a) is affirmed.
The Examiner’s decision rejecting claims 1-3 and 5-14 under 35
U.S.C. § 112, first paragraph is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a)(1)(iv).
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AFFIRMED

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