Ex Parte Hansen

Board of Patent Appeals and Interferences

Dec 8, 2011

11595141 (B.P.A.I. Dec. 8, 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.
11/595,141 11/09/2006 James O. Hansen 67,097-727; 3129 6660
54549 7590 12/08/2011
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
12/08/2011 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 JAMES O. HANSEN
____________

Appeal 2010-001721
Application 11/595,141
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A powder metallurgy method comprising:

(a) forming a member from a titanium alloy powder; and
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Application 11/595,141

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(b) controlling an average size of a carbide phase in the titanium alloy
powder to establish a desired average size of a carbide phase in the member.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berczik 5,176,762 Jan. 5, 1993
Li US 2002/0108682 A1 Aug. 15, 2002
Tjong, S.C. et al., Microstructural and mechanical characteristics of in situ
metal matrix composites, Materials Science and Engineering, 29, pp. 49-113
(2000).

Eylon, D. et al., Titanium Powder Metallurgy Alloys and Composites, Vol.
7, ASM Handbooks Online, ASM International, 29 pages (2002).

Callister, William D. Jr., Materials Science and Engineering, An
Introduction, Sixth Ed., John & Wiley & Sons, pp. 300-302, 370-376
(2003).

THE REJECTIONS
1. Claims 1-16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Eylon in view of Berczik, and further in view of
Callister, Jr.
2. Claims 17 and 18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Eylon in view of Berczik with evidence from Li and
further in view of Callister, Jr.
3. Claim 19 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Eylon in view Berczik with evidence from Li, further in view of
Callister, Jr., and further in view of Tjong.

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4. Claim 20 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Eylon in view of Berczik, in view of Callister, Jr., and further in view
of Tjong.
ISSUE
Did the Examiner err in determining that the applied art suggests the
claimed invention, and in particular, the aspect of claim 1 pertaining to a
powder metallurgy method involving a step of “controlling an average size
of a carbide phase in the titanium alloy powder to establish a desired average
size of a carbide phase in the member”?
We answer this question in the affirmative and REVERSE.

ANALYSIS
(with Findings of Fact and Principles of Law)

Appellant’s Specification indicates that Appellant’s method allows for
a smaller average size of the carbide phase in a work piece (Spec. para.
[0016]) by controlling the average size of a carbide phase in the titanium
allow powder (Spec. paras. [0010]-[0012] and [0015]).
Appellant’s basic position is that the applied art does not teach a
method that involves a step of “controlling an average size of a carbide
phase in the titanium alloy powder to establish a desired average size of a
carbide phase in the member.” Appellant argues that the heat treatments of
Callister, Jr. are for parts, components, or test pieces that have already been
formed, and not for powder materials. Reply Br. 2. Similarly, Appellant
argues that Eylon teaches using heat treatments for consolidated parts, and
not for powder material. Id. Appellant therefore concludes that controlling
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Application 11/595,141

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the size of the carbide phase in the powder is not taught by the applied art.
Reply Br. 3. We agree, for the following reasons.
With regard to Callister, Jr., in the Examiner’s statement of the
rejection, the Examiner does not make findings that Callister, Jr. is directed
to “controlling the size of the carbide phase in the powder to establish a
desired average size of a carbide phase in the member”. Ans. 4-5. On the
other hand, it is Appellant’s position that Callister, Jr. is directed to
conventional precipitation hardening. Br. 4. Appellant points to Table
11.11 on page 370 of Callister, Jr. as evidence that Callister, Jr. is directed to
heat treatments for parts, components or test pieces, rather than for powder
material. In his response to argument, the Examiner does not dispute that
Table 11.11 indicates heat treatments for parts, components, or test pieces,
as stated by Appellant. Rather, the Examiner discusses the process related to
precipitation heat treatment, but makes no mention of whether Callister, Jr.
suggests “controlling an average size of a carbide phase in the titanium alloy
powder to establish a desired average size of a carbide phase in the member”
as claimed. Ans. 12.
With regard to Eylon, in his statement of the rejection, the Examiner
does not indicate that Eylon is directed to “controlling the size of the carbide
phase in the powder to establish a desired average size of a carbide phase in
the member” (e.g., that the heat treatments are for powder material rather
than for parts, components or test pieces). Ans. 3-4. However, in his
response to argument, the Examiner admits 1) that Eylon teaches heat
treatments are suitable for powder metallurgy compacts [emphasis added]
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and 2) that the “Post compaction Treatments” section of Eylon is drawn to
“articles” [emphasis added] produced by powder metallurgy. Ans., para.
bridging pp. 12-13. Hence, because the materials in Eylon are compacts or
articles, the material is not powder material, as expressed by Appellants on
pages 4-5 of the Brief, and on pages 2-3 of the Reply Brief.
In view of the above, we thus agree with Appellant that both Eylon
and Callister, Jr.1 do not suggest the concept of “controlling an average size
of a carbide phase in the titanium alloy powder to establish a desired average
size of a carbide phase in the member” because each of these references is
not controlling the carbide phase in a titanium alloy powder, and each is also
not doing so “to establish a desired average size of a carbide phase in the
member.” It appears that the Examiner’s position may be that heat treatment
methods for ingot metallurgy are applicable to powder metallurgy. See, for
example, the Examiner’s statement that Eylon is contrary to the position that
“treatment . . . would not be applicable to powder metallurgy” near the top
of page 14 of the Answer. However, this is not the relevant issue because
absent from the Examiner’s rejection is an explanation of how the applied
art suggests “controlling an average size of a carbide phase in the titanium
alloy powder to establish a desired average size of a carbide phase in the
member”. In order to establish a prima facie case of obviousness, the
Examiner must show that each limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. See, e.g., In re Fine, 837
F.2d 1071, 1074 (Fed. Cir. 1988).

1 We need not address Berczik in resolving the issue before us. Ans. 4.
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In view of the above, we therefore reverse Rejection 1. Because the
other secondary references applied in the other rejections (Rejections 2-4) do
not cure the deficiencies in the combination of references applied in
Rejection 1, we also reverse these rejections.
CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.
REVERSED

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