Ex Parte Cetel

Board of Patent Appeals and Interferences

Jul 21, 2008

10023565 (B.P.A.I. Jul. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

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

Appeal 2008-3158
Application 10/023,565
Technology Center 1700
____________

Decided: July 21, 2008
____________

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

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1-3 and 5-14.1 (Examiner’s Answer

1 Claim 4 has been cancelled. (Third Supplemental Appeal Brief filed July
24, 2007, hereinafter “App. Br.,” 6).
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entered, Oct. 26, 2007, hereinafter “Ans.”). We have jurisdiction pursuant to
35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is a directionally solidified article
comprising a corrosion and oxidation resistant superalloy including about
0.4 to 1.5 vol. % of a phase based on tantalum carbide. (Spec. [015] and
[018]). The superalloy is composed of the following elements: 10 – 13.5%
chromium, 8 – 10% cobalt, 1.25 – 2.5% molybdenum, 3.25 – 4.25%
tungsten, 5.5 – 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,
with no intentional addition of niobium or hafnium, where the balance is
essentially nickel, and the sum of aluminum + titanium is between about 6.5
– 8%. (Spec. [026] and Original Claim 1). Appellants claim that the article
has 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 alloy having a nominal composition of 14
chromium (Cr), 4.9 titanium (Ti), 1.5 molybdenum (Mo), 3.8 tungsten (W),
2.8 tantalum (Ta), 3 aluminum (Al), 9.5 cobalt (Co), 0.01 boron (B), 0.02
zirconium (Zr), 0.1 carbon (C), and balance nickel (Ni). (Spec. [026] and
Original Claim 1).
Appellants also claim a high strength corrosion resistant superalloy
adapted for use in columnar grain directionally solidified articles having 12
% chromium, 9 % cobalt, 1.9 % molybdenum, 3.8 % tungsten, 5 %
tantalum, 3.6 % aluminum, 4.1 % titanium, 0.015 % boron, 0.1 % carbon, no
intentional addition of zirconium (less than about 0.02%), no intentional
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amount of niobium, where the balance is essentially nickel and incidental
impurities, and where aluminum + titanium is about 7.7 %. (Spec. [026] and
Original Claim 12). The article is characterized by oxidation resistance at
2000°F of roughly 2.5X and creep rupture life at 1400°F of roughly 2.4X
when compared to a similar article 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. (Spec. [017] and [026]).

Claims 1 and 12, reproduced below, are representative of the subject
matter on appeal.
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; 5.5 – 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
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.

12. A high strength, corrosion resistant, nickel base superalloy
adapted for use in columnar grain directionally solidified
articles, comprising in weight percent of about 12 % chromium;
9 % cobalt; 1.9 % molybdenum; 3.8 % tungsten; 5 % tantalum;
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3.6 % aluminum; 4.1 % titanium; 0.015 % boron; 0.1 % carbon;
and having no intentional addition (and in any event less than
about 0.02%) zirconium and no intentional amount of niobium;
balance essentially nickel and incidental impurities, and
wherein aluminum + titanium is about 7.7 %; and including a
matrix containing from about 0.4 to 1.5 vol. % of a phase based
on tantalum carbide, the article is characterized by oxidation
resistance at 2000°F of roughly 2.5X and creep rupture life at
1400°F of roughly 2.4X compared to a similar article 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.

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: (1) claims 1-3 and
5-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Esser; and (2) claims 1-3 and 5-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mitsuhashi (Ans. 3-9).2

2 Appellant appeals the provisional obviousness-type double patenting
rejection of claims 1-3 and 5-14 over US 2004/0200549 (copending U.S.
Application No. 10/315,704). A search of the PTO’s Patent Application
Locating and Monitoring (PALM) system indicates that the application
10/315,704 was abandoned on June 15, 2006 (Notice of Abandonment
mailed June 15, 2006). Accordingly, because application 10/315,704 has
been abandoned, the Examiner’s provisional obviousness-type double
patenting rejection is moot. See, MPEP § 804(I)(c) (Rev. 6, Aug. 2006).
We give no further discussion of the moot provisional rejection in this
Decision.
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Regarding the rejection of claims 1-3 and 5-14 under 35 U.S.C. §
103(a) as being unpatentable over Esser, the Examiner found that Esser
teaches directionally solidified nickel based superalloys having compositions
that overlap the alloys recited in Appellants’ claims. (Ans. 3-5). The
Examiner stated that the differences between Esser and the present claims
are: (1) Esser does not teach the exact same alloy proportions; (2) Esser does
not disclose the use of Zr; and (3) Esser is silent with respect to the claimed
corrosion and oxidation resistance. (Ans. 5). The Examiner determined that
the claimed alloys would have been obvious in view of Esser because: (1)
the proportions of Zr recited by the claims include 0%; (2) the proportions of
elements in Esser’s alloys overlap the claimed proportions; and (3) since
Esser’s alloys have compositions that overlap the claimed alloys and have
the same amount of tantalum carbide phase, Esser’s alloys would be
expected to possess all the same properties recited in the claims. (Ans. 5 and
6).
Regarding the rejection of claims 1-3 and 5-14 under 35 U.S.C. §
103(a) as being unpatentable over Mitsuhashi, the Examiner found that
Mitsuhashi teaches nickel base columnar grain directionally solidified
superalloy having a composition that overlaps the alloy recited in
Appellants’ claims. (Ans. 6-8). The Examiner found that the differences
between the present claims and Mitsuhashi were that: (1) Mitsuhashi does
not teach the exact same alloy proportions; (2) Mitsuhashi does not disclose
the use of zirconium; and (3) Mitsuhashi is silent with respect to the
properties recited in the claims and the presence of tantalum carbides. The
Examiner determined that the claimed alloys would have been obvious to
one of ordinary skill in the art because: (1) Appellants’ claims do not require
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the presence of zirconium; (2) the proportions of Mitsuhashi’s alloy overlap
with the proportions of the alloy recited in the claims; and (3) since
Mitsuhashi’s alloys have compositions that overlap the claimed alloys,
Mitsuhashi’s alloys would be expected to have the same properties as recited
in the claims. (Ans. 8 and 9).
Regarding Esser, Appellants contend that the zirconium content in
Esser’s alloys does not overlap with the present claims. (App. Br. 4).
Appellants argue that there is no mention of zirconium content or carbon
content in one embodiment of Esser, and no mention of any zirconium in a
particularly preferred embodiment of Esser. (App. Br. 3 and 4). Appellants
argue that Esser teaches away from the present invention because Esser
suggests that lower B levels would result in a useless alloy. (App. Br. 4).
Appellants also argue that Esser does not teach or suggest the corrosion or
oxidation resistance properties of the alloy, and that the improvement in
these properties of the alloy is unexpected given the similarity between the
compositional values in the claims and the compositional values in Esser.
(App. Br. 4).
Regarding Mitsuhashi, Appellants contend that the alloys disclosed
therein contain small amounts of other elements that are not present in the
claimed alloys. (App. Br. 5). Appellants also contend that while Mitsuhashi
teaches that the absence of zirconium is beneficial in conjunction with the
heat treatments applied, these heat treatments are not required in the present
invention. (App. Br. 5). Appellants further argue that Mitsuhashi suggests
that lower boron levels do not produce alloys that are useful for directionally
solidified parts. (App. Br. 5). Appellants argue that while Mitsuhashi
requires the zirconium content to be below 5 ppm, the alloys of the present
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claims “exhibit significantly higher Zr contents.” (App. Br. 5). Appellants
further argue that Mitsuhashi does not teach or suggest the corrosion or
oxidation resistance properties of the alloy, and that the improvement in
these properties of the alloy is unexpected given the similarity between the
compositional values in the claims and the compositional values in
Mitsuhashi. (App. Br. 5).

ISSUE
The following issue is before us on this appeal: Have Appellants
shown that the Examiner erred in rejecting the appealed claims as being
obvious to one of ordinary skill in the art over the cited prior art of record?
We answer the question in the negative.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states:
The generally preferred composition of the present invention
consists essentially of, in weight percent, about 10 - 14.5%
chromium; 8 - 10% cobalt; 1.25 - 2.5% molybdenum; 3.25 -
4.25% tungsten; 4.5 - 6% tantalum; 3.25 - 4.5% aluminum; 3 -
5% titanium; 0.0025 - 0.025% boron; up to about 0.02%
zirconium; 0.05 - 0.15% carbon; and having no intentional
addition of niobium; no intentional addition of hafnium; and
balance essentially nickel; wherein aluminum + titanium is
between about 6.5 - 8%. The alloy also includes roughly about
0.4 to 1.5 vol. % of a phase based on tantalum carbide. More
preferably, the alloy comprises about 11- 13% chromium; 8.25
- 9.75% cobalt; 1.5 - 2.25% molybdenum; 3.4 - 4.3% tungsten;
4.7 - 5.5% tantalum; 3.3 - 4% aluminum; 3.75 - 4.3% titanium;
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0.008 - 0.025% boron; up to about 0.02% zirconium; 0.08 -
0.13 carbon; wherein aluminum + titanium is between about 7 -
8%. Most preferably, the alloy comprises about 12%
chromium; 9% cobalt; 1.9% molybdenum; 3.8% tungsten; 5%
tantalum; 3.6% aluminum; 4.1% titanium; 0.015% boron; less
than 0.02% zirconium; 0.10% carbon; and having no intentional
addition of zirconium (any in any event less than about 0.02 Zr)
and no intentional addition of niobium; no intentional addition
of hafnium; balance essentially nickel. (Spec. [026]).

2. Appellants’ Specification states:
We discovered that even small additions of zirconium
detrimentally affected the castability of part, particularly large
parts such as land based gas turbine engine blades. Articles
having more than about 0.02 wt. % zirconium tended to tear
after on investment casting, during cooling and solidification of
the molten material. While not fully understood, the tearing
problem was obviated where zirconium was present in less than
about 0.02 wt. percent. Accordingly, the inventive composition
includes no intentional additions of zirconium, and whether or
not it is practical to tolerate about up to about 0.02 wt. %, we
prefer less. (Spec. [027]).

3. Appellants’ Specification states:
Alloy Cr Ti Mo W Ta Al Co B Zr C Hf
GTD 111 14 4.9 1.5 3.8 2.8 3 9.5 0.01 0.02 0.1 0
4,597,809 12.2 4.2 1.9 3.8 5 3.6 9 0 0 0.07 0
Mod1 11.56 4.03 1.84 3.75 5.1 3.55 8.9 0.005 0.014 0.07 0.49
Mod2 11.68 4.04 1.83 3.72 4.96 3.58 8.86 0.005 0.015 0.06 0.88
Mod3 12.25 4.01 1.83 3.69 5.01 3.5 8.82 0.018 0.091 0.11 0.48
Mod4 11.94 4.03 1.84 3.75 5.15 3.55 8.93 0.008 0.02 0.06 0.01
Mod5 11.61 4.05 1.84 3.74 5.29 3.57 8.89 0.008 0.032 0.07 0.49
Mod6 11.9 4 1.82 3.7 4.93 3.52 8.79 0.019 0.103 0.12 0.94

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The articles to be evaluated were investment cast, and then
given similar heat treatments - a solution heat treat at about
2050° F for 2 hours, followed by precipitation heat treat at 1975
F for 4 hours, followed by stabilization heat treat at about 1550°
F for 24 hours. In some cases, articles were solution heat
treated at 2150 - 2200° F for less time, but showed no
significant increase in properties. (Spec [028]).

4. Appellants’ Specification does not indicate that heat treatments
applied at temperatures above 2200°F would be detrimental to the
claimed articles.
5. Claim 1 sets forth a range that includes more than 0.005 % by
weight (0.0025 to-0.025%) and the amount of boron in claim 12
(0.015%) is greater than 0.005% by weight.
6. Table I in Esser is reproduced below:

Table I shows the compositional make up of a comparison alloy (#1) as
well as two alloys according to Esser’s invention (#1A and 2).

7. The boron content in Esser’s comparative example #1 is 0.001%
and the boron content in the examples according to Esser’s
invention, #1A and #2, are 0.01% and 0.011%, respectively.
(Table I).
8. Esser states:
The present invention modifies the aforementioned nickel base
superalloy to include boron in the alloy in an amount
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discovered effective to provide substantial transverse stress
rupture strength and ductility of a DS columnar grain casting
produced from the alloy as compared to a similar casting
without boron present. Preferably, the nickel base superalloy is
modified by the inclusion of boron in the range of about
0.003% to about 0.015%, preferably 0.010% to 0.015%, by
weight of the superalloy composition to this end. In
conjunction with addition of boron to the superalloy
composition, the carbon concentration is controlled in a
preferred range of about 0.05% to about 0.11% by weight of the
superalloy composition. (p. 5).

9. Esser states:
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).

10. Table 1 of Mitsuhashi is reproduced below:

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Table 1 shows the compositional make up of 8 alloys according to
Mitsuhashi’s invention. (p. 12).
11. 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
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).

12. Mitsuhashi states:
The present inventors also have made a study to improve
resistance to intergranular corrosion of large-size cast turbine
blades at high temperature, and discovered that the a [sic]
columnar Ni-base heat-resistant alloy casting exhibits improved
resistance to intergranular corrosion at high temperature, when
the columnar Ni-base heat-resistant alloy casting is produced by
a process which comprises the steps of: preparing a melt of an
Ni-base heat-resistant alloy having a composition in which the
Zr content is limited to trace amounts and which contains, by
weight, Cr: from 12.0 to 14.3 %, Co: from 8.5 to 11.0%, Mo:
from 1.0 to 3.5%, W: from 3.5 to 6.2%, Ta: from 3.0 to 5.5%,
Al: from 3.5 to 4.5 %, Ti: from 2.0 to 3.2 %, C: from 0.04 to
0.12 %, B: from 0.005 to 0.05 %, Zr: from 0.001 to 5 ppm, and
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the balance substantially Ni and incidental impurities…. (p. 3, l.
56 through p. 4, l. 5.)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when the ‘differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
The prior art must be considered as a whole, including non-preferred
embodiments disclosed therein. See Merck & Co. v. Biocraft Laboratories,
874 F.2d 804, (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). In addition,
“[t]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990). Such a showing must be based on evidence, not argument or
speculation. In re Mayne, 104 F.3d 1339, 1343-44 (Fed. Cir. 1997), In re
Schulze, 346 F.2d 600, 602 (CCPA 1965). Further, the evidence must be
reasonably commensurate in scope with the claimed invention. In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).

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ANALYSIS
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 and address
claim 12 where appropriate pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2006).3

The rejection of claims 1-3 and 5-14 under 35 U.S.C. § 103(a) as being
unpatentable over Esser

We are not persuaded by Appellants’ arguments that attempt to
distinguish Esser from the claimed invention based on the zirconium and
carbon content of the claimed alloys. Specifically, Appellants have not
rebutted the Examiner’s finding that the amounts of zirconium claimed
include alloys containing no zirconium. Appellants have presented no
evidence that the limitations “up to about 0.05% zirconium” and “having no
intentional addition (and in any event less than about 0.02%) zirconium” in
claims 1 and 12 respectively, exclude the alloys disclosed in Esser.
Appellants’ argument that in Esser, “there is no mention of any Zr content,
although the absence of another embodiment that does include any Zr (and
the ‘consisting’ language) suggests that there is no Zr in this ‘most
preferred’ alloy,” appears to support the Examiner’s finding that Esser’s
alloys contain no zirconium. (App. Br. 4, Ans. 12-13).
Regarding the carbon content of Esser’s alloys, Appellants
acknowledge that Esser teaches embodiments of alloys containing carbon.

3 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37 (c)(1) (vii) (2004).
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(App. Br. 3). This is consistent with the Examiner’s position that Esser
teaches a preferred embodiment having a carbon content of 0.05 to 0.11%.
(Ans. 13, FF 8). Therefore, Appellants’ arguments are not sufficient to rebut
the Examiner’s determination of obviousness as the carbon content disclosed
in Esser overlaps Appellants’ claimed range of 0.05-0.15% carbon.
Appellants’ argument that Esser teaches away from the present
invention because Esser suggests that lower boron levels result in a useless
alloy does not distinguish Esser from the present claims. Appellants state
that the “lower B levels” in Esser are amounts less than 0.01 wt. %. (App.
Br. 4). However, the workable range disclosed in Esser (0.003%-0.015%)
(FF 8) is fully encompassed by the range set forth in claim 1 (0.0025-
0.025%). Moreover, the boron content in Esser’s examples is within
Appellants’ claimed range at 0.01% and 0.011%. (FF 6). Therefore,
contrary to Appellants’ argument that Esser teaches away from the present
claims, Esser teaches values that are encompassed by Appellants’ claimed
range. See In re Fulton, 391 F.3d at 1201.
In addition, we agree with the Examiner that Appellants have not
produced any evidence that the oxidation or corrosion resistance values as
claimed would have been unexpected. Appellants have not rebutted the
Examiner’s finding that the overlap in percentages as well as the exact same
amount of tantalum carbide present in each alloy means that both alloys
would be expected to possesses all the same properties. (Ans. 14). See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Further, in order to prove
unexpected results, the invention must be compared with the closest prior
art. In re Payne, 606 F.2d 303, 316 (CCPA 1979). In the instant case, the
comparative alloys recited in the claims do not represent the closest prior art.
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Rather, the alloys in Esser, which do not contain any zirconium, represent
the closest prior art. In addition, the examples in Appellants’ Specification
set forth only one embodiment (Mod4) falling within the ranges claimed in
claim 1, and no embodiments falling within the claimed ranges of claim 12.
(FF 3). Compare, for example, the boron content in claim 12. Claim 12
recites 0.015% boron, while Mod4 contains 0.008% boron, which is about
one-half the claimed content. (FF 3). Thus, the alleged unexpected results
are also not commensurate in scope with the claimed alloys. See Id.
Appellants additionally argue that according to Esser, the carbon
content of the alloy gives rise to the desirable results of the alloy, rather than
the boron or zirconium content and Esser’s heat treatment would destroy
parts produced from the alloy of the present invention. (App. Br. 3 and 4).
These arguments do not distinguish the present claims from Esser. Whether
the carbon, boron, or zirconium content of the alloy is responsible for the
desirable results of the alloy is not relevant, because the Examiner found that
the amounts of these components disclosed in Esser overlap or are
encompassed by the amounts disclosed in the claims. In addition, the
temperature of the heat treatment applied in Esser does not distinguish the
claims, which are directed to articles and superalloys and not to methods of
making the articles or superalloys. (Ans. 13).
Further, Appellants’ arguments are inconsistent with both Esser and
the Specification. We agree with the Examiner that Appellants have not
explained how Tables I and II in Esser support their determination that the
carbon content gives rise to the desirable results of the alloy. (Ans. 12).
Table I in Esser shows little variation in the carbon content between the
comparative example (#1, carbon content: 0.7%) and the examples
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according to Esser’s invention (#1A and #2, carbon content: 0.8% and 0.9%,
respectively). (FF 6). In contrast, the boron content in the comparative
example (#1, boron content: 0.001%) and the examples according to Esser’s
invention (#1A and #2, boron content: 0.01% and 0.011%, respectively) is
dramatically different. (FF 6, 7). These results clearly show that
Appellants’ determination is inconsistent with Esser’s disclosure, which
focuses on the amount of boron and not the amount of carbon added to the
alloy. (FF 8).
In addition, Appellants have provided no evidence to support their
statement that the parts of the present invention would be destroyed at the
temperatures applied in Esser. Appellants’ Specification discloses heat
treatments at temperatures of up to 2200°F compared to 2282°F in Esser.
(FF 3 and 9). Appellants’ Specification does not indicate that heat
treatments applied at temperatures above 2200°F would be detrimental to the
claimed articles. (FF 4).
Appellants further contend that at least with respect to B and Zr
content, the Examiner’s citation of In re Peterson, 315 F.3d 1325 (Fed. Cir.
2003) is inapposite. Appellants have not explained this position. As in the
present case, the amounts of the superalloy claimed in Peterson overlapped
or were encompassed in the prior art. 315 F.3d at 1329. The court in
Peterson found that the claims had not been compared to the closest prior
art, that there was no showing of criticality of the amounts of rhenium
commensurate in scope with the claims, and the prior art did not teach away
from the invention. 315 F.3d at 1331-1332. As discussed above, the B and
Zr content of Esser overlaps with or are encompassed by the presently
claimed values. Therefore, Appellants’ arguments are not persuasive.
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The rejection of claims 1-3 and 5-14 under 35 U.S.C. § 103(a) as being
unpatentable over Mitsuhashi

Regarding Appellants’ argument that the alloys of Mitsuhashi include
amounts of other elements that are not presently claimed, we agree with the
Examiner that Mitsuhashi’s alloys do not require the presence of these
additional elements. (Ans. 15). Indeed, Mitsuhashi discloses several
embodiments that do not contain any of the additional elements mentioned
by Appellants. (FF 10). In addition, regarding Appellants’ argument that
the additional elements in Mitsuhashi are not claimed, claim 1 employs the
transitional phrase “consisting essentially of” and claim 12 employs the
transitional phrase “comprising” with respect to the alloy. Regarding claim
1, the transitional phrase “‘consisting essentially of’ limits the scope of a
claim to the specified ingredients and those that do not materially affect the
basic and novel characteristic(s) of a composition.” In re Herz, 537 F.2d
549, 551-52 (CCPA 1976) (emphasis in original). If applicants contend that
additional steps or materials in the prior art are excluded by the recitation of
“consisting essentially of,” applicants have the burden of showing that the
introduction of additional steps or components would materially change the
characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870,
873-74 (CCPA 1964). In the instant case, the Specification is silent
regarding the additional elements that may be present in Mitsuhashi’s alloys
and Appellants have not shown that the presence of the additional elements
would materially affect the basic and novel characteristics of the invention.
Regarding claim 12, we agree with the Examiner that the open transitional
phrase “comprising” does not preclude the additional elements of the alloy
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Application 10/023,565

from the claim. (Ans. 15 and 16). Therefore, Appellants’ arguments are not
persuasive.
Appellants’ contention that the zirconium content in the present alloys
is significantly higher than the zirconium content of Mitsuhashi’s alloys is
not persuasive. (App. Br. 5). As discussed above, Appellants’ claimed
alloys do not require zirconium. In fact Appellants appear to prefer amounts
of zirconium that amount to no intentional addition or less than 0.02% by
weight. (FF 1 and 2). This is consistent with the teaching in Mitsuhashi that
the amount of zirconium is limited to trace amounts, or in amounts of from
0.001 to 5 ppm. (FF 12). Therefore, we agree with the Examiner that the
zirconium content of Mitsuhashi’s alloys overlap with the present claims.
(Ans. 17).
We also agree with the Examiner that Appellants have provided no
evidence to support their position that Mitsuhashi suggests that lower levels
of boron are unsuitable for directionally solidified parts. (Ans. 16). Nor
have Appellants explained how this would distinguish the present claims as
the amounts of boron disclosed in Mitsuhashi are consistent with the
amounts of boron set forth in the present claims. That is, claim 1 recites a
range of 0.0025 to 0.025% boron and claim 12 recites in 0.015% boron,
which overlap or are included in the 0.005% to 0.05 % by weight range
disclosed in Mitsuhashi. (FF 5).
We are not persuaded by Appellants’ arguments regarding the heat
treatments applied in Mitsuhashi. We agree with the Examiner that the
specific heat treatments employed in Mitsuhashi are not relevant to the
present claims. (Ans. 16). As discussed above with respect to Esser, the
present claims are not process claims and incorporate no process limitations.
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Additionally, the heat treatment temperatures applied in the present
invention (up to 2200°F) overlap with the heat treatment temperatures
disclosed in Mitsuhashi (2156°F - 2309°F and 2192°F - 2309°F). (FF 3 and
11). Appellants do not suggest any detrimental affects on parts produced at
temperatures above those discussed in the Specification.
Regarding the claimed oxidation and corrosion resistance and Appellants’
comments with respect to In re Peterson, Appellants’ arguments are not
persuasive for the same reasons as discussed above with respect to Esser.

CONCLUSION
In light of the above discussion, Appellants failed to demonstrate that
the Examiner erred in rejecting claims 1-3 and 5-14 under 35 U.S.C. §
103(a) as being unpatentable over Mitsuhashi or Esser.

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

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Application 10/023,565

tc

PRATT & WHITNEY
LEGAL DEPARTMENT-PATENT GROUP
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