Ex Parte Crook

Patent Trials and Appeals Board

May 28, 2019

13871405 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/871,405 04/26/2013
23464 7590 05/30/2019
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Paul Crook
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.
0021499-882349 2278
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL CROOK1
Appeal2017-010526
Application 13/871,405
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This decides an appeal under 35 U.S.C. § 134(a) from the Dec. 5,
2016 final rejection of claims 1-14. An oral hearing was held on May 14,
2019. 2 We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Haynes International Inc. is the real party in interest. (App. Br. 1 ).
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2017-010526
Application 13/871,405
The following rejections are presented for appeal:
Claims 1-12 and 14 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Nishiyama (EP 1717330 Al).
Claim 13 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Nishiyama in view of the article by Larry R. Cunningham, "Columbium
(Niobium) and Tantalum" (1991) ("Cunningham").
Appellant's invention relates to a nickel-chromium-molybdenum-
copper alloy resistant to 70% sulfuric acid at 93°C and 50% sodium
hydroxide at 121 °C. (Spec. 1 ). Claim 1 is illustrative of the subject matter
on appeal and is reproduced below:
1. A nickel-chromium-molybdenum-copper alloy resistant to
70% sulfuric acid at 93°C and 50% sodium hydroxide at 121 °C,
consisting essentially of:
27 to 33 wt.% chromium
4.9 to 7.8 wt.% molybdenum
3.5 to 6.0 wt.% copper
up to 3.0 wt.% iron
0.3 to 1.0 wt.% manganese
0.1 to 0.5 wt.% aluminum
0.1 to 0.8 wt.% silicon
0.01 to 0.11 wt.% carbon
up to 0.13 wt.% nitrogen
up to 0.05 wt.% magnesium
up to 0.05 wt.% rare earth elements
up to 0.56 wt.% titanium
up to 1.12 wt.% niobium
up to 2.24 wt.% tantalum
2
Appeal2017-010526
Application 13/871,405
up to 2.24 wt.% hafnium
with a balance of nickel and impurities.
OPINI0N3
We have reviewed each of Appellant's arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's conclusion that the claimed subject matter is unpatentable within
the meaning of§ 103 in view of the applied prior art. Appellant's arguments
and evidence do not show reversible error in the Examiner's obviousness
determination.
Accordingly, we will sustain the Examiner's§ 103 rejections for
essentially those reasons expressed in the Answer and the Final Action, and
we add the following primarily for emphasis.
Appellant first argues that Nishiyama is non-analogous art, because it
is directed to a different field of endeavor and is not concerned with the
problem that the Appellant was trying to solve. (App. Br. 7-9). Appellant
argues that Nishiyama is directed to a different field of endeavor, that of a
"Metal Tube for Use in Carburizing Gas Atmosphere," and not reasonably
pertinent to the particular problem with which the inventor was concerned
-a nickel-chromium-molybdenum-copper alloy resistant to 70% sulfuric
acid at 93°C and 50% sodium hydroxide at 121 °C. (App. Br. 7).
3 Appellant's arguments for the patentability are directed to independent
claim 1. Appellant has also not presented substantive arguments addressing
separately rejected claim 13 (App. Br. 14). Consequently, the non-argued
claims will stand or fall with independent claim 1. See 37 C. F. R.
§ 4I.37(c)(l)(iv). We limit our initial discussion to independent claim 1.
3
Appeal2017-010526
Application 13/871,405
Thus, the first issue with respect to this rejection is: did the Examiner
err in finding that Nishiyama is analogous art? We answer this question in
the negative.
Nishiyama is directed to a nickel-chromium-molybdenum-copper
alloy that is a base metal suitable for forming a metal tube for use in a
carburizing gas atmosphere. (Nishiyama ,r,r 28-31 ). The present invention
is directed to nickel-chromium-molybdenum-copper alloys that provide a
useful combination of resistance to 70% sulfuric acid at 93°C and resistance
to 50% sodium hydroxide at 121 °C.
With respect to issue of analogous art:
Two criteria are relevant in determining whether prior art is
analogous: "(1) whether the art is from the same field of endeavor,
regardless of the problem addressed[;] and (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still
is reasonably pertinent to the particular problem with which the
inventor is involved." Comaper Corp. v. Antee, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed.
Cir. 1992)). Whether a reference in the prior art is "analogous" is a
fact question. In re Clay, 966 F.2d at 658.
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). ("The
Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550
U.S. 398 (2007), directs us to construe the scope of analogous art broadly,
stating that 'familiar items may have obvious uses beyond their primary
purposes, and a person of ordinary skill often will be able to fit the teachings
of multiple patents together like pieces of a puzzle.' Id. at 402 ( emphasis
added).") Id.
In the instant case, both Nishiyama and the instant Application relate
to compositionally similar nickel-chromium-molybdenum-copper alloys.
4
Appeal2017-010526
Application 13/871,405
See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (approving the
Board's finding that a toothbrush was in the same field of endeavor as a hair
brush because "'the structural similarities between toothbrushes and small
brushes for hair would have led one of ordinary skill in the art working in
the specific field of hairbrushes to consider all similar brushes including
toothbrushes."'). Appellant argues that Nishiyama is not concerned with
corrosion resistance in either 70% sulfuric acid or 50% sodium hydroxide
aqueous solutions. Nishiyama states "[t]his invention relates to a metal tube
which has good high temperature strength and excellent corrosion
resistance." (Nishiyama ,r 1 ). Those of ordinary skill in the nickel-
chromium-molybdenum-copper alloy would recognize that alloys have a
variety of properties that result in a variety of utilities. A person of ordinary
skill in the art would have looked to Nishiyama's nickel-chromium-
molybdenum-copper alloy due to the structural similarities of the alloy
composition relative to the claimed alloy. Consequently, contrary to
Appellant's arguments, Nishiyama is from the same field of endeavor as the
present invention and is concerned with corrosion resistance.
Appellant further argues Nishiyama is not concerned with and makes
no disclosure about corrosion resistance in sulfuric acid and sodium
hydroxide as required by the claimed invention. In support of this position,
Appellant relies on the Declaration under 37 C.F.R. § 1.132 of Dr. Lee M.
Pike, Jr. 4 (App. Br. 9-10). Appellant specifically states:
One skilled in the art of metal tubes for use in carburizing gas
atmospheres would not be able to ascertain that a narrow range of
compositions within the very range of compositions disclosed by
Nishiyama would possess the level of resistance (i.e. a corrosion rate
4 The declaration of Dr. Pike was filed on September 28, 2016 (App. Br. 20).
5
Appeal2017-010526
Application 13/871,405
of less than 0.5 mm/y) to 70% sulfuric acid at 93°C required by the
claims of the pending application. See page 4 of the Declaration of Dr.
Lee Pike filed on September 28, 2016.
As stated by Dr. Pike, "Nishiyama makes no disclosure about corrosion
resistance in either 70% sulfuric acid at 93 °C or 50% sodium hydroxide at
121 °C. Hence, there is no motivation for one seeking to design an alloy that
is corrosion resistant in sodium hydroxide solutions as well as sulfuric acid
solutions to consider Nishiyama. In the event that a skilled person did
consider Nishiyama, that skilled person would recognize that G-30 alloy and
INCOLOY 825 alloy are within the wide range of nickel base alloys
disclosed by Nishiyama. The skilled person would also recognize that G-30
alloy and INCOLOY 825 alloy do not have acceptable corrosion resistance
to 70% sulfuric acid at 93 °C. Hence, the skilled person would not be led by
Nishiyama to the nickel-chromium-molybdenum-copper alloy resistant to
70% sulfuric acid at 93°C and 50% sodium hydroxide at 121 °C that is
disclosed and claimed in the pending application." See Evidence Appendix.
(App. Br. 9-10).
As set forth above, Appellant relies on the Declaration of Dr. Pike as
evidence that the skilled person would not be led by Nishiyama to the
nickel-chromium-molybdenum-copper alloy resistant to 70% sulfuric acid at
93 °C and 50% sodium hydroxide at 121 °C as required by the claimed
invention. A reference is available for all that it teaches to a person of
ordinary skill in the art. See In re Inland Steel Co., 265 F.3d 1354 (CA FC
2001); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989). As set forth above Nishiyama is concerned with an alloy
composition that exhibits excellent corrosion resistance. (Nishiyama ,r 1 ).
While Dr. Pike contends that Nishiyama encompasses alloy embodiments
that are outside of claimed scope of alloys (for example G-30 alloy and
INCOLOY 825 alloy), neither Dr. Pike nor Appellant explains adequately
how this detracts from Nishiyama' s broader disclosure of alloys that fall
within the claimed scope. See Merck, 87 4 F .2d at 807 ("all disclosures of
6
Appeal2017-010526
Application 13/871,405
the prior art, including unpreferred embodiments, must be considered"
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))).
Appellant further relies on the evidence presented in the Specification
in Tables 1 and 2 as exhibiting alloys within the ranges Nishiyama but
outside the claimed invention. (App. Br. 11-13).
This evidence is also not persuasive. Appellant has not disputed the
Examiner's determination that the amounts of chromium, molybdenum,
copper, iron, manganese, aluminum, silicon, carbon, nitrogen, magnesium,
rare earth metals, titanium, niobium, tantalum and hafnium in Nishiyama
overlap the amounts required by the claimed invention. (Final Act 3;
Nishiyama ,r 31 ). Because the ranges of elements required by claim 1 are
overlapped by ranges of the same elements disclosed in the prior art, the
Examiner reasonably makes a prima facie case of obviousness. In re
Boesch, 617 F.2d 272,275 (CCPA 1980) (where ranges overlap, a prima
facie case of obviousness is made out); see also In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005) (a prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same).
The evidence of record establishes that a person of ordinary skill in the art
would have recognized that the elements disclosed Nishiyama's paragraph
31 would have been suitable for forming a nickel-chromium-molybdenum-
copper alloy a base metal over the entire range described. The evidence
Appellant presents in the Specification and the Declaration of Dr. Pike,
when considered with the record as a whole, is insufficient to rebut the
prima facie case of obviousness based on overlapping ranges. Criticality of
a claimed range may be shown by providing evidence that the claimed range
7
Appeal2017-010526
Application 13/871,405
achieves unexpected results relative to the prior art range. In re Geisler, 116
F.3d 1465, 1470-71 (Fed. Cir. 1997) (quoting In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990)). Appellant has not adequately explained why
the commercial embodiments of Nishiyama are representative of the closest
prior art to the claimed invention. See In re Burckel, 592 F.2d 1175, 1179,
(CCP A 1979). Appellant has also not explained why the showing is
commensurate in scope with the claimed subject matter. See Boesch, at 276.
These showings are especially relevant in this appeal where Nishiyama
discloses structurally similar alloys encompassing the claimed range.
Next Appellant argues they have found a narrow range of alloy
compositions that are corrosion resistant in both 70% sulfuric acid at 93 °C
and 50% sodium hydroxide at 121 °C within the broad composition ranges
disclosed by Nishiyama. (App. Br. 13). According to Appellant, no such
alloy was known prior to the present invention or suggested by Nishiyama.
(Id.).
Appellant's arguments focus on the compositional content of a nickel-
chromium-molybdenum-copper alloy that is resistant to 70% sulfuric acid at
93 °C and 50% sodium hydroxide at 121 °C. However, as we discussed
above, Appellant has not established adequately the criticality of the claimed
ratios and proportions through an appropriate showing. Moreover, as stated
above, Nishiyama is also concerned with corrosion resistance. Therefore, it
is incumbent upon Appellant to establish by a proper showing that they have
invented a alloy composition possessing characteristics or qualities of utility
that are new and materially different from Nishiyama' s compositions. See
In re Swenson 132 F.2d 1020 (CCPA 1948).
8
Appeal2017-010526
Application 13/871,405
Appellant's choice of claim language to describe their claimed alloy
alone is not sufficient to patentably distinguish the claimed invention over
Nishiyama. Cf In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane)
("[I]t is not necessary in order to establish a prima facie case of obviousness
that both a structural similarity between a claimed and prior art compound
( or a key component of a composition) be shown and that there be a
suggestion in or expectation from the prior art that the claimed compound or
composition will have the same or a similar utility as one newly discovered
by applicant."); In re Skoner, 517 F .2d 94 7, 950 (CCP A 197 5).
("Appellants have chosen to describe their invention in terms of certain
physical characteristics .... Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious
in view of [the reference]. [Citation omitted.]"); In re Woodruff, supra.
Accordingly, we sustain the Examiner's obviousness rejections of
claims 1-14 for the reasons presented by the Examiner and given above.
ORDER
The Examiner's obviousness rejections are affirmed.
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).
AFFIRMED
9