Ex Parte Jacinto et al

Board of Patent Appeals and Interferences

Sep 30, 2009

10769195 (B.P.A.I. Sep. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MONICA A. JACINTO
and DALLIS ANN HARDWICK
____________

Appeal 2009-003016
Application 10/769,195
Technology Center 1700
____________

Decided: September 30, 2009
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3-6, and 8-31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
The invention relates to a nickel-based metal alloy useful as rocket
engine components (Spec. 1, [0002]). Claims 11, 22, and 31 are illustrative:
11. A nickel-based alloy, comprising:
at least about 71 weight percent nickel;
about 13.5 to about 16.5 weight percent cobalt;
less than about 9 weight percent chromium;
about 1 to about 2 weight percent aluminum;
about 2 to about 4 weight percent titanium; and
having a threshold extinguishing pressure of at least about
4,000 per square inch.

22. A rocket engine for operating in an environment including at
least about 4000 psi of oxygen and subject to tensile stresses of at least about
145,000 pounds per square inch including a nickel alloy, from which the
rocket engine at least partially is formed of nickel-based metal alloy
comprising:

at least about 60 weight percent nickel;
about 1 to 4 weight percent aluminum;
about 1 to 4 weight percent titanium;
a threshold extinguishing pressure of at least about 4,000
pounds per square inch; and
a tensile strength of at least about 145,000 pounds per square
inch.

31. A metal alloy comprising:
a threshold extinguishing pressure of at least about 4,000
pounds per square inch; and

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a tensile strength of at least about 145,000 pounds per square
inch.

The Examiner relies upon the following prior art references as
evidence of unpatentability:
McKannan US 5,023,050 Jun. 11, 1991
Smith US 5,403,547 Apr. 4, 1995
DeLuca US 2003/0041930 A1 Mar. 6, 2003
Ballocci (as translated) FR 2,534,167 Apr. 14, 1984
Willi (as translated) DE 3,428,316 Feb. 13, 1986
Surikova (as translated) RU 2,038,401 Jun. 27, 1995

The Examiner rejected all the claims under 35 U.S.C. § 103(a) as
follows:
1) claims 11-21, 25-27, 30, and 31 as being unpatentable over
Surikova;
2) claims 1, 3, 4, 6, 8-10, 17-21, 25-28, and 31 as being unpatentable
over Ballocci;
3) claims 1, 3-6, 8-21, 25-27, and 29-31 as being unpatentable over
Willi;
4) claims 22, 23, and 31 as being unpatentable over McKannan;
5) claims 22-24, and 31 as being unpatentable over Smith; and
6) claims 17-27 and 31 as being unpatentable over DeLuca.

At the outset, we note that Appellants’ main argument is the same for
each of the above listed six grounds of rejection (see, App. Br. 5, 6, 7, 8).
Each of grounds 1-3 as listed above include independent claim 11, each of
ground 4-6 include independent claim 22, and each of grounds 1-6 include
independent claim 31.
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Further, in each ground of rejection, none of the claims included
therein are separately argued except:
a) independent claim 31, included in all six grounds of rejection, is
separately argued for the same reason in each separate ground (id.); and
b) dependent claim 29 of the rejection based on Willi is separately
argued (App. Br. 6).
We will address Appellants’ arguments accordingly in the analysis
section below, focusing on claim 11 for grounds 1-3 and claim 22 for
grounds 4-6; see 37 C.F.R. § 41.37(c)(1)(vii)(2006).
ISSUE
Appellants do not dispute the Examiner’s findings that each of the six
references discloses ranges for the components of a nickel-based metal alloy
that overlap or encompass the claimed ranges described in the Specification
and recited in each respective independent claim as rejected over the
respective reference(s).1 Rather, Appellants’ argument for each ground of
rejection is that they have provided evidence (the Jacinto Declaration2) that
“brings into doubt” whether the prior art alloys of the applied references
having overlapping composition ranges would inherently have the claimed
threshold extinguishing pressure (App. Br. 5, 6, 7, 8). Appellants also
contend that the Examiner has not provided evidence “establishing a desire
within the field to optimize [the] composition to improve threshold
extinguishing pressure” (Reply Br. 2).
Accordingly, the main issue on appeal is:

1 With the exception of claim 31, which recites no specific component
ingredients and is addressed separately.
2 The Jacinto Declaration was filed under 37 C.F.R. §1.132 on July 17, 2006.
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Have Appellants established that the Examiner reversibly erred in
rejecting the claims under 35 U.S.C. § 103 over any one of the six primary
references in light of the Jacinto Declaration evidence, or that the Examiner
reversibly erred in establishing that one of ordinary skill in the art would
have optimized the components of the metal alloy of each primary reference
to obtain the desired properties?
We answer both parts of this question in the negative.
FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
Appellants’ Specification and Background of the Invention
Appellants admit in the Background section of their Specification
(Spec.) that substantially burn resistant materials are desirable for preburner
and turbomachinery components of rocket engines (Spec. 1, [0003]).
The “threshold extinguishing pressure” is a measure of the burn
resistance of an alloy (Spec. 9, [0032]; see also Spec. 8 [0030]).
Appellants admit as prior art “Monel Alloy K-500™”, which is an
alloy containing mainly nickel, copper and aluminum (Spec. 2, [0005]).
Claim 31 encompasses any metal alloy “having a threshold
extinguishing pressure of at least about 4,000 pounds per square inch; and a
tensile strength of at least about 145,000 pounds per square inch.”
As seen in Appellants’ Fig. 1, Monel K-500™ alloy has a tensile
strength and threshold extinguishing pressure (i.e., burn resistance) above
the minimums required by Appellants’ claim 31. Appellants’ Fig. 1 shows
that Monel K-500™ has a threshold extinguishing pressure of about 10,000
psi and a tensile strength over 150 ksi (over 150,000 psi).
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Appellants’ Specification does not provide any specific guidance as to
how the achieve the claimed minimum threshold extinguishing pressure of
“at least about 4000 psi” (i.e., burn resistance) as recited in each independent
claim. To the contrary, Appellants’ Specification states “[t]herefore,
providing the various elemental components in selected ranges provides or
achieves the selected aspects, such as a selected burn resistance and a
selected strength.” (Spec. 5, ll. 25-27).
Appellants detail the amounts of alloy components for 5 specific
examples (Spec. 8, Table 1). Each example alloy has an extinguishing
threshold pressure in excess of 6000 psi, with 3 of the 5 examples each
having an extinguishing threshold pressure of 10,000 psi (id.). In contrast,
each independent claim recites a minimum extinguishing threshold pressure
of “at least about 4000 psi”.
Appellants’ Specification further describes four prior art
commercially available nickel-based alloys (i.e., Waspaloy®, Alloy 718®,
Haynes 214™ and MA 754®) (Spec. 9, Table 2). None of these
commercially available nickel-based alloys contain components in the
ranges as described and claimed in the instant Specification and claims.
Appellants admit “there continues to exist a need for superior burn
resistance and high tensile strength metal alloys for use in high temperature
and high pressure oxygen environments”, such as for components of rocket
engines (Spec. 1, [0008]).
The Applied Prior Art References
Appellants have not disputed the Examiner’s findings that each
primary reference (i.e., Surikova, Ballocci, Willi, McKannan, Smith, and
DeLuca) describes a nickel-based metal alloy having component ingredients
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that encompass or overlap the claimed ranges of the components recited in
each independent claim included in the respective rejection (see, Ans. 3-26;
generally App. Br., Reply Br.).
The references do not explicitly describe that the respective
alloys described therein have the claimed threshold extinguishing
pressure (i.e., burn resistance) as required by each independent claim
(that is, claims 1, 11, 17, 22, 25, 28 and 31), or the claimed tensile
strength as required by independent claims 17, 22, 25 and claim 31.
However, each reference describes that it is desirable for the
nickel-based alloy to have high strength and function in a high
temperature environment. Specifically;
- Surikova describes that the nickel-based metal alloy “will
function in conditions of high temperature, wear, and stresses” (p. 2)
and that “high long-term strength” is desirable (id.);
- Ballocci describes superalloys based on nickel useful in
various applications, including in the “aeronautical, and aerospace
industries for the fabrication of parts that operate when hot” (p. 3);
- Willi describes a nickel-based superalloy for use in
components that are highly stressed thermally, “e.g., in gas turbines”
(p. 4) and for use in high temperature-reactors “without losing
strength and ductility at high temperature” (p. 6). Willi also describes
the prior art metal alloys as useful in “jet engines” (p. 6); and
- McKannan, Smith, and DeLuca each describe high strength
nickel based metal superalloys useful as rocket engine components
(e.g., McKannan col. 1, ll. 13-15; Smith col. 17, ll. 52-56; Deluca p. 2,
[0023]).
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One of ordinary skill in the art would have appreciated that a nickel-
based metal alloy composition with high burn resistance and high tensile
strength is desirable.
One of ordinary skill in the art would have reasonably expected that
the nickel content affects the properties, e.g., the strength as well as the burn
resistance, of the alloy.
One of ordinary skill in the art would have known that aluminum and
titanium are known gamma prime formers which help achieve a selected
strength of an alloy (Spec. 4 [0019]-[0021]). Accordingly, one of ordinary
skill in the art would have reasonably expected that the aluminum and
titanium content affect the tensile strength of the alloy.
One of ordinary skill in the art would have reasonably expected that
the cobalt and chromium content affects the properties of the alloy.
The Jacinto Declaration
The Jacinto Declaration is relied upon by Appellants to show that the
“composition of Izumida (EP1154027) would not necessarily have the
claimed threshold extinguishing pressure because other alloys having
composition ranges that overlap Izumida (Waspaloy, Alloy 718, and Alloy
625) do not exhibit the claimed threshold extinguishing pressure as shown in
Figure 1 of Appellant’s application.” (App. Br. 4).
None of these commercially available nickel-based alloys contain
components in the ranges as described in the instant Specification and/or as
recited in the instant claims (e.g., claims 11 and 22).
Izumida is not relied upon by the Examiner in any of the rejections on
appeal.
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PRINCIPLES OF LAW
It is well settled that reliance upon inherency is not improper even
though a rejection is based on 35 U.S.C. § 103 instead of § 102. In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teaching of a prior
art reference, a question of fact, arises both in the context of anticipation and
obviousness.” (citation omitted)).
Appellants have chosen to describe the invention, in part, in terms of
certain physical characteristics (properties) of the resulting product (nickel-
based metal alloys) described in their Specification. Merely choosing to
describe the invention in terms of variables not present in the prior art does
not render the claimed subject matter patentable. In re Skoner, 517 F.2d
947, 950 (CCPA 1975).
Inherency does not require a person of ordinary skill in the art to have
recognized an inherent disclosure at the time of the invention. Schering
Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373, 1377 (Fed. Cir. 2003).
An inherent function or property is not necessarily known. Atlas Powder
Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49 (Fed. Cir. 1999). Further, as
explained in In re Papesch, 315 F.2d 381, 391 (CCPA 1963), “a compound
and all of its properties are inseparable; they are one and the same thing.”
The analysis of whether the subject matter of a claim is obvious “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court [or this Board] can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
When claimed ranges overlap or lie inside ranges disclosed by the
prior art for every component in a claim, a prima facie case of obviousness is
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established. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
Indeed, the law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Moreover, as our reviewing court stated in In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (emphasis added):
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.… We have also
held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have
expected them to have the same properties. Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

The discovery of an optimum value of a variable in a known product
or process is usually a matter of obviousness for one of ordinary skill in the
art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007).
This is also the kind of situation that requires an appellant to show secondary
considerations such as unexpected results or criticality to overcome the
prima facie case. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In
re Woodruff, 919 F.2d at 1578.
The recognition of another advantage flowing naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the difference would have otherwise been obvious. See, e.g., Ex parte
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Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017 (Fed.
Cir. 1986).

ANALYSIS
Applying the preceding legal principles to the Factual Findings of the
record in this appeal, we determine that Appellants have not shown that the
evidence fails to support the Examiner’s conclusion of obviousness.
Appellants’ contention with respect to each ground of rejection is that
the Examiner has not established that it is inherent that the alloys of the
applied prior art have the claimed property of “a threshold extinguishing
pressure of at least about 4000 pounds per square inch”(App. Br. 4).
Appellants rely upon the evidence presented in the Jacinto Declaration (id.).
Appellants contend this evidence “calls into doubt” whether the alloys of the
applied references have the claimed property (App. Br. 5).
We do not find Appellants’ evidence persuasive of any error in
the Examiner’s determination of obviousness in any of the six grounds
of rejection. The fact that other alloys having ranges of components
that do not fall within the claimed ranges do not have the claimed
property is not persuasive evidence that the alloys of the applied
references do not have the claimed property (see FF).
Moreover, we understand the Examiner’s position to be that
since it would have been prima facie obvious to “select the claimed
[ranges]” out of the known overlapping and/or encompassing ranges
set out in each of the six alternatively applied references (see, e.g.,
Ans. 4), the claimed properties would inherently follow. The
Examiner also takes the position that achieving the claimed properties
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(threshold extinguishing pressure and tensile strength) would have
been obvious
because the normal desire of scientists or artisans to improve
upon what is already generally known provides the motivation
to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages. MPEP 2112.01 I &
2144.05 II.
(Ans. 30).

We determine that on the facts of this case, the Examiner’s
position is reasonable.
Appellants’ Specification does not provide any specific guidance as to
how to achieve the claimed minimum threshold extinguishing pressure (i.e.,
burn resistance (see FF) as recited in claims 11 and 22. Furthermore,
Appellants’ contention that the Examiner has not provided any evidence
establishing a desire within the field to optimize nickel-based compositions
to improve the threshold extinguishing pressure (Reply Br. 2) is not
persuasive, since Appellants admit in the Background of their invention that
high burn resistance was a known desirable property for rocket engines (see
FF). Additionally, all six references focus on the desirability of a high
strength nickel-based alloy for use in high temperature applications, with
four of the six applied references specifically teaching use of nickel-based
alloys for aerospace or rocket engine applications (id.).
One of ordinary skill in the art is also a “person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421. One of ordinary skill in the art
would have recognized from the applied prior art that the amounts of each
component of an alloy was a result effective variable for achieving at least
the desirable property of strength in high temperature environments.
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Optimizing known result effective variables is ordinarily prima facie
obvious. See In re Boesch, 617 F.2d at 276.
Based on our findings and those of the Examiner, the subject matter of
Appellants' claims would have been obvious to one of ordinary skill in the
relevant art. Appellants do not dispute that the Examiner’s claimed ranges
for each element are either encompassed within or overlap with those
disclosed by each applied references (see FF). Given such a situation, the
skilled artisan would have known to try various combinations of the alloy
components to optimize the alloy’s properties and/or to respond to market
forces.
“When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp.” KSR, 550 U.S. at 421. “Granting patent protection to
advances that would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining previously
known elements, deprive prior inventions of their value or utility.” Id. at
419.
In this case, alloys are developed in response to “market pressure”
since “there continues to exist a need for superior burn resistant and high
tensile strength metal alloys” as noted by Appellants in their “Background”
section (see e.g, Spec. [0008]). Thus, advances would have been expected to
occur “in the ordinary course without real innovation.” Given such a
situation, the claims would have been obvious to one of ordinary skill in the
relevant art.
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Appellants have not argued that a person of ordinary skill in the art
utilizing the metals and methods disclosed in any one of the six alternatively
applied references would not have been capable of achieving the claimed
threshold extinguishing pressure, or the claimed tensile strength (see
generally App. Br.; Reply Br.). One skilled in the art would have been
motivated by the applied reference’s teachings (see FF) to vary such result-
effective variables as the amounts of the components of the alloy to obtain
metal alloys having needed characteristics, e.g., strength and burn resistance,
for given applications sought in the market and would have had a reasonable
expectation of success in doing so.3
Furthermore, where the Examiner establishes a reasonable basis to
conclude that the claimed invention would have been obvious, as here, (that
is, based on overlapping and/or encompassing ranges) the burden shifts to
the Appellants to rebut the prima facie case by providing evidence of
unexpected results or a showing that the prior art teaches away from the
claimed invention in any material respect. See In re Geisler, 116 F.3d at
1469-70. Appellants have not contended, much less shown, that the claimed
ranges provide unexpected results, nor have they shown that the prior art
teaches away from the claimed invention in any material respect (see
generally App. Br.; Reply Br.).

3 Indeed, since Appellants’ Specification provides no specific guidance
regarding how to obtain the claimed properties within the described and
claimed ranges, if it is not obvious to optimize the composition of the metal
alloy for these known desirable properties, the question arises whether the
subject matter of the claims is enabled under 35 U.S.C. § 112, ¶ 1 for the full
scope of the claims.

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Accordingly, Appellants have not shown reversible error in the
Examiner’s determination that it would have been obvious to optimize the
properties of the prior art nickel base metal alloys.
Independent Claim 31
We reject Appellants' argument that the Examiner’s rejections are
improper since claim 31 “does not even recite a composition” (App. Br. 5).
The fact that Appellants have chosen to claim any metal alloy having the
claimed properties does not render the Examiner’s rejections improper.4
Appellants have not refuted the Examiner’s findings that the compositions of
the applied prior art overlap or encompass the ranges of the metal alloy
components that are described in Appellants’ Specification as appropriate
ranges wherein the claimed properties result. For the foregoing reasons as
set out in our analysis above and those stated in the Answer, we agree with
the Examiner’s findings in support of obviousness for claim 31 based on
each of the applied references.
Dependent Claim 29
Claim 29 depends from claim 11 and recites that the aluminum is
present in an amount of “about 1 to 1.5 weight percent” (emphasis
provided). Appellants contend that Willi (the only reference applied to
claim 29) does not teach this amount since “at best”, Willi would differ “by
0.5wt%” in the amount of aluminum (Reply Br. 3). The Examiner’s position
is that the claimed and prior art ranges of aluminum are close enough to
expect the same results (Ans. 31, 32). Appellants’ contend that a difference

4 We would be remiss if we did not point out that Appellants’ Fig. 1 shows
that an admitted prior art metal alloy indeed has the claimed properties (see
FF).
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of 0.5 wt.% “seems on its face like it could make a difference in the
properties” (Reply Br. 3; see also App. Br. 7).
It is well established that a prima facie case of obviousness exists
where the claimed range and prior art range do not overlap but are close
enough that an artisan would expect the same results. See, e.g., Geisler, 116
F.3d at 1469; Titanium Metals Corp. v. Banner, 778 F.2d at 782-83.
The burden is on Appellants to establish with objective evidence that
the change is critical, i.e., it leads to a new unexpected result. See Woodruff,
919 F.2d at 1578. Appellants present no convincing evidence of unexpected
results on this record.
Accordingly, Appellants have not shown reversible error in the
Examiner’s determination of obviousness of the subject matter of claim 29.

CONCLUSION
Appellants’ contention that the Jacinto Declaration brings into doubt
whether the prior art alloys of the applied references having overlapping
composition ranges would inherently have the claimed threshold
extinguishing pressure are not persuasive of any reversible error in the
Examiner’s obviousness determination.
Appellants have not shown that the Examiner reversibly erred in
establishing that one of ordinary skill in the art would have optimized the
components of the metal alloy of each primary reference to obtain the
desired properties.

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Appellants have not shown that the Examiner reversibly erred in
rejecting any of the claims in any of the six grounds of rejection made under
35 U.S.C. § 103.
ORDER
We AFFIRM all six of the rejections made by the Examiner under 35
U.S.C. § 103.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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