Ex Parte Huang

Patent Trials and Appeals Board

Jun 18, 2019

14375150 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/375,150 07/29/2014 Erwen Huang
87853 7590 06/20/2019
Dority & Manning, PA and General Electric Company
Post Office Box 1449
Greenville, SC 29602
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.
257200-2/GECM-l-PCT-US 1828
EXAMINER
WALCK, BRIAND
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERWEN HUANG
Appeal2018-007857
Application 14/375,150
Technology Center 1700
Before KAREN M. HASTINGS, GRACE KARAFFA OBERMANN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 1-3, 6, 7, 10-14, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over the combination of Chen et al. (U.S.
2011/0232809 Al, published Sept. 29, 2011, (hereinafter "Chen")) in view
of ASM Handbook, (PHYSICAL METALLURGY OF STAINLESS STEELS, 23 ASM
1 The real party in interest is stated to be General Electric Company ( Appeal
Br. 1).
Appeal2018-007857
Application 14/375,150
Int'l, 199--210 (2012) (hereinafter "ASM")). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight disputed limitation):
1. A forged precipitation-hardened stainless steel alloy
comprising, by weight, about 14.0% to about 16.0% chromium,
about 6.0% to about 8.0% nickel, about 1.25% to about 1.75%
copper, about 1.0% to about 2.0% molybdenum, about 0.001 %
to about 0.05% carbon, a carbide forming element in an amount
of about 0.3% to about 0.8% and greater than about 8 times that
of carbon, the balance iron, and incidental impurities;
wherein the carbide forming element is selected from the
group consisting of titanium, zirconium, tantalum, and a
mixture thereof
Independent claim 1 7 is likewise directed to a stainless steel alloy
similar to claim 1, but limited to zirconium as the carbide forming element.
Appellant argues the claims mainly as a group, and focuses on
independent claim 1, but also presents separate remarks for dependent
claims 6 and 18 (Appeal Br. generally). Appellant relies upon the
arguments for claim 1 for independent claim 1 7 as well as for all the
dependent claims except 6 and 18 (Appeal Br. 8).
ANALYSIS
We review the appealed§ 103 rejection for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
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Application 14/375,150
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellant's
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner's§ 103 rejection for the reasons expressed in
the Final Office Action and the Answer.
We add the following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
We are not persuaded by Appellant's argument that it would not have
been obvious to use the carbide forming materials disclosed by ASM
(zirconium, titanium) as an alternative for the niobium in Chen (e.g., Appeal
Br. 5). Likewise, Appellant's argument that, contrary to the Examiner's
position, Chen teaches away from the use of anything other than niobium
(Appeal Br. 7-8), is also not persuasive.
The Examiner correctly finds that Chen teaches a stainless steel alloy
with components that either match, or overlap, the amount of each
component recited in claim 1, except Chen teaches use of niobium versus
zirconium or titanium (Ans. 2-3). ASM explicitly teaches the use of
zirconium and titanium as an alternative to niobium in stainless steel alloys
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Application 14/375,150
as a carbide former (Ans. 3). Chen further discloses that it is the amount of
niobium that provides an unexpected benefit (Chen ,r 25 (using an Nb/C
ratio "at levels that are higher than previously known provides an
unexpected benefit")).
It is well established that in evaluating references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992).
Contrary to Appellant's argument, a preponderance of the evidence supports
the Examiner's position that an artisan would have reasonably inferred that
using known niobium alternatives in Chen would also produce a satisfactory
stainless steel alloy, and would have been reasonably expected to function
comparable thereto. To the extent there may be any differences, an artisan
of ordinary skill would have weighed the advantages and disadvantages of
each known carbide former component. "The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000).
Appellant has not provided persuasive reasoning or credible evidence
why one of ordinary skill in the art would not have, using no more than
ordinary creativity, predictably used a known alternative carbide former as
exemplified in ASM to the niobium in the stainless steel alloy of Chen (e.g.,
Ans. 3; Appeal Br., and Reply Br. generally). See KSR, 550 U.S. at 421 ("A
person of ordinary skill is also a person of ordinary creativity, not an
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Application 14/375,150
automaton."). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness."). A person of ordinary skill in the art would have had
a reasonable expectation of success for using the known alternatives
disclosed in ASM (zirconium, titanium) in place of the niobium in
Chen. "Obviousness does not require absolute predictability of success ...
all that is required is a reasonable expectation of success." In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-
04 (Fed. Cir. 1988)).
Appellant's arguments with respect to dependent claims 6 and 18 are
likewise unpersuasive of error in the Examiner's rejection for reasons
explained above and set out by the Examiner (e.g., Ans. 5; Appeal Br, 8, 9).
Therefore, we affirm the Examiner's§ 103 rejection of all the claims
on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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