Ex Parte Chai

Patent Trials and Appeals Board

May 1, 2019

13996243 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/996,243 08/20/2013 Guocai Chai
78686 7590 05/03/2019
Sandvik Intellectual Property
4730 Consulate Plaza Drive
Suite 190
Houston, TX 77032
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.
SMT 13549WOUS 7112
EXAMINER
JOHNSON, JONATHAN J
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
corinne.gorski@sandvik.com
patents@sandvik.com
ken.ripple@sandvik.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUOCAI CHAI
Appeal2018-007720
Application 13/996,243
Technology Center 1700
Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and
JEFFREY R. SNAY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
June 20, 2013 ("Spec."); Final Office Action dated Jan. 17, 2017 ("Final"); Appeal
Brief filed Sept. 12, 2017 ("Br."); Examiner's Answer dated Nov. 17, 2017
("Ans.").
Appeal2018-007720
Application 13/996,243
The Appellant2 appeals under 35 U.S.C. § I34(a) from the Examiner's
decision finally rejecting claims 1 and 3-21 under 35 U.S.C. § I03(a) as
unpatentable over Wang3 in view of Gej ima. 4,5,6
We AFFIRM-IN-PART.
According to the Specification, "the introduction of nano twins in metal
materials has proven to be an effective way to obtain materials with high strength
and high ductility." Spec. 1 :30-31. "A twin may be defined as two separate
crystals that share some of the same crystal lattice. For a nano twin the distance
between the separate crystals is less than 1 000 nm." Id. at 2:1-3. According to the
Specification, "[ d]ifferent methods have been shown to have effects on the
inducement of nano twins in different materials .... There is however no known
method improving the strength of titanium that is not formed from powder, such as
e.g. casted titanium." Id. at 1:34--35, 2:15-16. The inventor is said to have
discovered a method of producing a nano twinned commercially pure titanium
material with improved strength from casted titanium. Id. at 2: 18-19, 33-35.
Of the appealed claims, claims 1 and 21 are independent. Independent claim
1 is representative, and is reproduced below.
2 The Appellant identifies Sandvik Intellectual Property AB as the real party in
interest. Br. 3.
3 Wang, et al., Abnormal Strain Hardening in Nanostructured Titanium at High
Strain Rates and Large Strains, 42 J. Mater Sci. 1751-56 (2007) ("Wang").
4 Gejima et al. (US 2007/0163681 Al, pub. July 19, 2007) ("Gejima").
5 The Examiner determined the Appellant's Response After Final Action, dated
June 16, 2017, overcame the final rejection of claims 1 and 3-21 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph. Advisory Action dated July
3, 2017.
6 We have jurisdiction under 35 U.S.C. § 6(b).
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Appeal2018-007720
Application 13/996,243
1. A method of producing a nano twinned commercially pure
titanium material, comprising the steps of:
casting a commercially pure titanium material that apart from
titanium contains not more than 0.05 wt% N, not more than 0.08 wt%
C, not more than 0.015 wt% H, not more than 0.50 wt% Fe, not more
than 0.40 wt% 0, and not more than 0.40 wt% residuals;
bringing the casted material to a temperature at or below 0°C;
and
subsequently imparting plastic deformation to the material at
the temperature and a rate of less than 2% per second such that nano
twins are formed in the material, the material having a yield strength
of above 700 MPa and a tensile strength strength [sic] of above 750
MPa.
Amendment filed Dec. 13, 2016, 2; Br. 26 (Claims Appendix). Independent claim
21 differs from independent claim 1 in that it does not specify the plastic
deformation rate, but requires "a mean nano-scale twin spacing below 1000 nm."
Br. 28 (Claims Appendix).
The Examiner found Wang discloses a method that includes steps of
bringing a titanium material comprising 0.04 wt% N, 0.07 wt% C, 0.01 wt% H,
0.18 wt% Fe, and 0.12 wt% 0 to a temperature of77K (which the Examiner
calculated as equivalent to -196 °C), and imparting plastic deformation to the
material to form nano twins by compression. Final 3 (citing Wang 1752, 1754).
The Examiner found Wang discloses using a strain (deformation) rate of 10-4-104
per second. Id. (citing Wang 1755). The Examiner found that although Wang does
not disclose a casting step, one of ordinary skill in the art would have utilized
casting to preform the titanium material based on Gejima's disclosure that casting
is conventionally used to preform titanium materials. Id. at 3--4 ( citing Gejima
,r 53). The Examiner found that because the claimed method and the method of
Wang in view of Gejima are the same, or substantially the same, the method of
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Application 13/996,243
Wang in view of Gejima necessarily would produce a material having the yield and
tensile strengths recited in independent claims 1 and 21 and the mean nano-scale
twin spacing recited in independent claim 21.
Id. at 4.
The Appellant argues Wang discloses "deformation twins resulted from
severe plastic deformation at slow deformation rates and room temperature," and
that "additional twinning activity was observed with nanostructured UFG-Ti
deformation at the cryogenic temperature (77k)." Br. 7 (citing Wang 1753-54). In
other words, the Appellant contends "Wang teaches introducing deformation and
then introducing additional twinning at cryogenic temperatures." Id. at 8. The
Appellant contends "Wang is silent regarding introducing nano-twins during
plastic deformation subsequent to the material achieving at or below 0°C." Id. The
Appellant thus contends the Examiner reversibly erred in finding Wang, alone or in
combination with Gejima, discloses or suggests "bringing the casted material to a
temperature at or below 0°C; and subsequently imparting plastic deformation to the
material at the temperature" to form nano twins, as recited in independent claims 1
and 21. Id. at 8; see also id. at 23.
For the reasons discussed below, the Appellant's argument is persuasive of
reversible error in the Examiner's obviousness determination as to independent
claim 1 and its dependent claims 3-20, but we sustain the rejection as to
independent claim 21.
The background section of the Specification describes Wang as teaching that
twinning has been observed during the deformation of ultrafine-grained titanium
(UFG-Ti). Spec. 2:4--9. Wang conducted testing to determine "[w]hether and when
dislocation slip or deformation twinning becomes the dominant deformation mode
in nano structured Ti." Wang 17 51. Wang discloses subjecting specimens of
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Appeal2018-007720
Application 13/996,243
ultrafine-grained Ti (UFG-Ti) to quasi-static compression tests under a constant
displacement control mode with initial strain rates of 10-4 s- 1-10-1 s-1 and to
dynamic compression tests at high strain rates of 103 s-1-104 s-1. Id. at 1752. Wang
describes Figures 1 and 2 as illustrating the room temperature compressive true
stress versus true strain curves of UFG-Ti with the strain rate in the range of
10-4 s-1-10-1 s-1 and at high strain rates, respectively. Id. at 1752-53. Wang
discloses that "TEM examinations in quasi-static deformed samples revealed little
evidence of additional twinning activities except at very large strains." Id. at 1753.
According to Wang, "[t]his supports the notion that dislocation slip is the major
mode of deformation in nanostructure Ti at slow deformation rates and room
temperature." Id. (emphasis added). Wang discloses that "[a]dditional and
extensive twinning activities were also observed when nanostructured Ti was
deformed at cryogenic temperature (77K)." Id. at 1754. Wang "noticed that the
twin bands observed in low-temperature deformation is narrower (in the range of
10---50 nm) than those seen at high strain rates[,] ... indicat[ing] that the twinning
activity in nanostructured Ti is closely tied to deformation conditions such as strain
rates and temperatures." Id.
Based on our review of Wang's disclosure, we disagree with the Appellant's
characterization of Wang as "introducing deformation and then introducing
additional twinning at cryogenic temperatures," but failing to teach imparting
plastic deformation after bringing the UFG-Ti to 77 K (i.e., a temperature at or
below 0°C). Br. 8. As noted above, in discussing the TEM examinations of
samples deformed at room temperature, Wang observed that in the samples subject
to dynamic loading rates, deformation twinning was an important event. Wang
1754. In contrast, Wang observed that dislocation slip played a significant role
during plastic deformation ofUFG-Ti and that in the quasi-static deformed
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Application 13/996,243
samples there was "little evidence of additional twinning activities except at very
large strains." Wang 1753 (emphasis added). We find one of ordinary skill in the
art would have understood Wang's use of the term "additional twinning activities"
in discussing the quasi-static compression tests (id.) as referring to twinning
activities that occurred during the mechanical testing. Thus, it would be
inconsistent to read Wang's description of "additional ... twinning activities" at
cryogenic temperature (id. at 1754) in the manner proposed by the Appellant, i.e.,
as referring to an additional step of lowering the temperature to 77 K after
conducting quasi-static or dynamic loading at room temperature. See Br. 8. We
agree with the Examiner that the ordinary artisan would have understood Wang as
describing twinning activities that occurred during a separate set of mechanical
testing conducted at certain loading rates after adjusting temperature to 77 K. See
Final 3; Ans. 4.
However, we agree with the Appellant that Wang fails to disclose the details
of the testing conducted at 77K, in particular, the strain (deformation) rate that was
used. See Br. 8. The Examiner does not provide further explanation or evidence in
the Answer to support a finding that the plastic deformation conducted in Wang at
a temperature of 77 K (i.e., at a temperature at or below 0°C occurred at "a rate of
less than 2% per second" as required by independent claim 1 and its dependent
claims 3-20. Accordingly, we do not sustain the rejection as to these claims.
As noted above, unlike independent claim 1, independent claim 21 does not
require a particular deformation rate. See Br. 28 (Claims Appendix). The
Specification discloses that "[a] relatively low deformation rate is advantageous as
is it keeps the temperature increase in the material at a controllable level, and that
"[i]f the deformation rate is too high the temperature in the material may increase
and negatively affect the predictability of the plastic deformation, such as the
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Application 13/996,243
formation of nano twins." Spec. 3:8-12. The Specification discloses that the
inventive method produces a material having a mean nano-scale twin spacing
below 1000 nm, a yield strength above 700 Mpa and a tensile strength above 750
Mpa. See id. at 4:11-13, 16-21. However, we find no indication that a particular
deformation rate is required to achieve these properties. Because Wang, as
modified by Gejima, discloses a method that utilizes substantially the same
materials as recited in independent claim 21 and discloses that twinning was
observed in samples subject to deformation at cryogenic temperatures, the
Examiner had a reasonable basis for finding that the material produced by Wang's
process would possess the same mean nano-scale twin spacing, yield strength, and
tensile strength. See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even if
no prior art of record explicitly discusses the ... [limitation], [Appellants']
application itself instructs that ... [ the limitation] is not an additional requirement
imposed by the claims on the ... [claimed invention], but rather a property
necessarily present in [the claimed invention]."). "[W]hen the prior art evidence
reasonably allows the PTO to conclude that a claimed feature is present in the prior
art, the evidence 'compels such a conclusion if the applicant produces no evidence
or argument to rebut it."' In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
(quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)). The Appellant has
not shown persuasively that the Examiner erred in finding the features of the
material produced in the claim 21 method necessarily would be present in the
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Application 13/996,243
method of Wang as modified by Gejima. Accordingly, we sustain the rejection as
to claim 21.
In sum, for the reasons discussed above, we reverse the rejection of claims 1
and 3-20, but affirm the rejection of claim 21.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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