11093583 (B.P.A.I. Mar. 15, 2010)

Ex Parte Hu et al

Board of Patent Appeals and InterferencesMar 15, 2010

11093583 (B.P.A.I. Mar. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YIPING HU and RICHARD L. BYE ____________ Appeal 2009-012674 Application 11/093,583 Technology Center 1700 ____________ Decided: March 15, 2010 ____________ Before EDWARD C. KIMLIN, PETER K. KRATZ, and MARK NAGUMO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-7 and 21-23. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6. Claim 1 is illustrative: Appeal 2009-012674 Application 1l/093,583 2 Appeal 2009-012674 Application 1l/093,583 3 The Examiner relies upon the following references as evidence of obviousness: Sileo 5,536,022 Jul. 16, 1996 Nissley 5,780,171 Jul. 14, 1998 Biondo 5,783,318 Jul. 21, 1998 Appellants' claimed invention is directed to a nickel-based super alloy comprising the recited elements. The appealed claims stand rejected under 35 U.S.C. Â§ 103(a) as follows:1 (a) claims 1-5 and 21-23 over Sileo, (b) claim 6 over Sileo in view of Biondo, (c) claim 7 over Sileo in view of Nissley. Appellants do not separately argue any particular claim on appeal. Also, Appellants do not present separate, substantive arguments against separately rejected claims 6 and 7. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants' arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of Â§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. 1 The Examiner has withdrawn the rejection of claims 1-7 and 21-23 under 35 U.S.C. Â§ 112, first paragraph (See Ans. 2, last para.). Appeal 2009-012674 Application 1l/093,583 4 Appellants do not dispute the Examiner's factual finding that Sileo, like Appellants, discloses a nickel-based super alloy comprising the recited elements in amounts which either embrace or overlap the claimed ranges. Indeed, as illustrated in the table provided by the Examiner at pages 4-5 of the Answer, Sileo discloses amounts of C, Al, Ta, Co, Mo, Re, W, and Zr which totally encompass the claimed ranges. Consequently, since it has been generally held that a claimed range is rendered prima facie obvious by a prior art disclosure of a range that overlaps or encompasses the claimed range, we find no error in the Examiner's legal conclusion that nickel-based super alloys within the scope of the appealed claims would have been obvious to one of ordinary skill in the art in view of the Sileo disclosure. See Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999); In re Malgaria, 499 F.2d 1297, 1303 (CCPA 1974). While Appellants point out that Sileo provides a disclosure that encompasses a great number of alloy compositions, the same holds true for the somewhat more limited number of alloys embraced by the appealed claims. Appellants maintain that "the key teaching of Sileo is that boron nitride may be added to the oxidation resistant metal to form an abradable coating" (Br. 14, third para.). However, the relevancy of this argument escapes us inasmuch as Sileo discloses a nickel-based superalloy separate and apart from the boron nitride. Furthermore, the "comprising" language of claim 1 does not exclude the presence of boron nitride in the super alloy composition. Appellants quote MPEP Â§ 2144.08 which states "if the references' disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the Appeal 2009-012674 Application 1l/093,583 5 obviousness of a species when the prior art broadly discloses a genus." However, Appellants have presented no rationale for why it would have been nonobvious for one ordinary skill in the art to arrive at alloy compositions within the broad scope of the appealed claims by making specific selections of elements in amounts within the ranges disclosed by Sileo. Simply citing a proposition that a claimed species might be nonobvious when the prior art discloses a very broad genus is not a substitute for Appellants explaining why, based on the present facts, the claimed genus is nonobvious over a boarder genus disclosed in the prior art. Appellants cite [0035] to [0038] of the present Specification for the testing of three alloys that fall within the genus of Sileo, one of which is Appellants' inventive alloy. According to Appellants, the inventive alloy unexpectedly demonstrated significantly better cyclic oxidation behavior than either of the two other alloys within the scope of the Sileo genus. However, Appellants have not shouldered the burden of demonstrating that the singular inventive example is commensurate in scope with the degree of protection sought by the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). As pointed out by the Examiner, the appealed claims require more than 0 % silicon whereas the inventive example comprises no silicon. Furthermore, Appellants have not demonstrated that the single, inventive example is fairly representative of the vast number of alloy compositions within the scope of the appealed claimed. Nor have Appellants demonstrated that the two alloy compositions offered for comparison represent the closest prior art within the Sileo disclosure. In re Johnson, 747 F.2d 1456, 1461 (Fed. Cir. 1984). In addition, Appellants have not established that the Specification results would be considered truly Appeal 2009-012674 Application 1l/093,583 6 unexpected by one of ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986). It is well settled that the burden of showing unexpected results rests on the party asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Regarding separately rejected claim 6, Appellants have not rebutted the Examiner's legal conclusion that "it would have been obvious to one of ordinary skill in the art at the time the invention was made to prepare the superalloy of U.S. '022 [Sileo] in the form of a weld wire as demonstrated in US '318" (Ans. 7, first para.). Likewise, concerning separately rejected claim 7, Appellants have not rebutted the Examiner's conclusion that "it would have been obvious to one of ordinary skill in the art at the time the invention was made to prepare the superalloy powder comprising substantially spherical particles in the US '022' alloy by the known method of US '171 with expected success" (sentence bridging Ans. pages 7-8). In conclusion, based on the foregoing, the Examiner's decision rejecting the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED cam HONEYWELL/IFL PATENT SERVICES 101 COLUMBIA ROAD P. O. BOX 2245 MORRISTOWN, NJ 07962-2245