Ex Parte Kononenko et al

Patent Trial and Appeal Board

Aug 31, 2016

13167233 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/167,233 06/23/2011 Yuriy G. Kononenko
54549 7590 09/02/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
PA17170A;
67097-1458PUS1
CONFIRMATION NO.
7592
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte YURIY G. KONONENKO, IGOR V. BELOUSOV
VADIM IVANOVICH, ANDRII MARYNSKYI, and
CARL R. SODERBERG
Appeal2015-000208
Application 13/167,233
Technology Center 1700
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
BRIAND. RANGE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000208
Application 13/167,233
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
16-18 and 20-27. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention is directed to superalloy components having a
surface zone that includes an oxygen dopant in an amount sufficient to pin
any new grain boundaries in the surface zone that occur under a
recrystallization condition of 1080°C/1976°F for 4 hours (Spec. ,-r 4; claim
16).
Claim 16 is illustrative:
16. A superalloy article comprising:
a nickel-based superalloy body that has a surface zone, the surface zone
including oxygen dopant in an amount sufficient to pin any new grain
boundaries in the surface zone that occur under a recrystallization condition
of 1080°C/197 6°F for 4 hours, the amount of oxygen dopant being
insufficient to produce a continuous oxide scale on the surface of the
nickel-based superalloy body.
Appellants appeal the following rejections:
1. Claims 16-18, and 20-27 are rejected under 35 U.S.C. § 112, i-f 1, as
failing to comply with the enablement requirement.
2. Claims 16-18, and 20-27 are rejected under 35 U.S.C. § 112, i-f 2, as
failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.
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3. Claims 16-18, and 20-27 are rejected under 35 U.S.C. § 102(b) as
anticipated, or, alternatively, under 35 U.S.C. § 103(a) as obvious
over Li et al, Oxidation Behavior of a Single-Crystal Ni-Base
Superalloy in Air. I: At 800 and 900°C, Oxidation of Metals, Vol.
59, Nos. 5/6, June 2003.
FINDINGS OF FACT & ANALYSIS
REJECTION (1): Enablement
The Examiner concludes that claim 16 is not enabled because the
Specification does not set forth how much oxygen would be sufficient
to pin any new grain boundaries in the surface zone that occur under a
recrystallization condition of 1080°C/1976°F for 4 hours (Final Act. 3).
The Examiner has the initial burden to establish a reasonable basis to
question the enablement provided for the claimed invention. In re Wright,
999 F.2d 1557, 1562 (Fed. Cir. 1993) (examiner must provide a reasonable
explanation as to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). A specification disclosure that
contains a teaching of the manner and process of making and using the
invention in terms which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken as in
compliance with the enablement requirement unless there is a reason to
doubt the objective truth of the statements contained therein which must be
relied upon for enabling support. In re Marzocchi, 439 F.2d 220, 223
(CCP A 1971 ). "It is incumbent upon the Patent Office, whenever a rejection
on this basis [lack of enablement] is made, to explain why it doubts the truth
or accuracy of any statement in a supporting disclosure and to back up
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assertions of its own with acceptable evidence or reasoning which is
inconsistent with the contested statement. Otherwise, there would be no need
for the applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure." Id. at 224. The minimal requirement is
for the examiner to give reasons explaining the uncertainty of the
enablement. In re Bowen, 492 F .2d 859, 862-63 ( CCP A 197 4 ). Enablement
requires that the specification teach those in the art to make and use the
invention without undue experimentation. In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached by weighing
many factual considerations. Id.
In the present case, Appellants argue that the Specification provides
ample guidance for determining an oxygen content required to pin grain
boundaries without undue experimentation (App. Br. 3). Appellants contend
that the defined recrystallization condition provides a means to evaluate
whether sufficient oxygen dopant is present in the superalloy article (App.
Br. 3). Appellants argue that the Specification describes an example where a
treatment is applied to a superalloy to dope oxygen into the alloy and the
Specification describes that the treatment can vary depending upon the
composition of the superalloy. Id. Appellants contend that even if the
experimentation is complex, the experimentation required to make and use
the claimed superalloy article is not undue (App. Br. 4).
The Examiner analyzed the factors enumerated in Wands, 858 F.2d at
737 (hereinafter the "Wands factors") (Final Act. 2-4). The Examiner's
findings with regard to many of these factors merely restate the relevant
facts of the present appeal; the analysis does not explain how each factor
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weighs in favor of lack of enablement. For example, with regard to the
factor "Relative Skill in the Art" the Examiner finds that the skill would
include "those in the superalloy making art" (Final Act. 4). The Examiner
makes no analysis as to whether the skill level is high or low, or favors
enablement or lack thereof. With regard to the predictability of the art factor,
the Examiner finds that it "[c]ould be predictable or unpredictable." Id. The
Examiner does not make any definitive finding that the superalloy art is
unpredictable so that outside the examples or disclosures in the Specification
undue experimentation would have been required to enable the scope of the
claims. Regarding the quantity of experimentation required factor, the
Examiner finds that the experimentation "could be 'undue'" (Final Act. 4).
The Examiner finds that the number of variables required to determine the
amount of oxygen dopant required to pin the grain boundaries is not enough
to create a heightened disclosure requirement but nonetheless finds that one
must inquire whether one skilled in the art would be required to conduct
undue experimentation due to the breadth of the claims. Id.
Thus, the Examiner provides an insufficient analysis of how the
various Wands factors weigh in favor of lack of enablement. As part of the
lack of enablement analysis, the Examiner finds that Appellants have not
disclosed the oxygen content necessary to pin the grain boundaries during
recrystallization at 1080°C for 4 hours (Final Act. 3-4). However, the
Specification discloses that "[t]he amount of oxygen dopant that is needed to
pin grain boundaries is a function of the material composition, treatment
temperature to introduce the oxygen and level of mechanical stress at the
surface zone 34 ... , which, with the teachings of this disclosure, can all be
easily experimentally determined." (Spec. i-f 20). In other words, Appellants
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via this disclosure in the Specification indicate that level of skill in the art is
such that one of ordinary skill in the art would be able to determine
experimentally the amount of oxygen dopant needed to pin the grain
boundaries that occur at recrystallization condition of 1080°C for 4 hours.
The Examiner's enablement analysis does not provide a reason to doubt the
objective truth of the statements contained the Specification regarding the
level of skill in the art with regard to what would constitute an enabling
disclosure in determining the amount of oxygen dopant to pin grain
boundaries at a recrystallization condition of 1080°C for 4 hours. Marzocchi,
439 F.2d 220 at 223. The Examiner has not established that based on a
consideration of all the analyzed Wands factors, undue experimentation
would be required to make and use the claimed subject matter.
On this record, we reverse the Examiner's§ 112, ,-r 1, lack of
enablement rejection.
REJECTION (2): Indefiniteness
The Examiner finds with respect to the recitation in claim 16 that "the
amount of oxygen dopant being insufficient to produce a continuous oxide
scale on the surface of the superalloy body," this phrase would be a relative
phrase dependent upon the superalloy composition (which is not set forth in
the claim); the phases present within the superalloy composition; the
environment (temperature/pressure) the superalloy is exposed to as well as
the amount of time the superalloy is exposed to that environment; and the
processing history of the superalloy (Final Act. 5). The Examiner finds that
whether or not a nickel-based superalloy is able to form new boundaries
would be relative to the amounts of cobalt and chromium (Ans. 14). The
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Examiner finds that Appellants would need to specify compositions that
would be capable of forming new boundaries. Id.
Appellants argue that the Examiner's rejection is based solely on the
breadth of the claim, not whether one of ordinary skill in the art would
understand what is claimed when the claim is read in light of the
Specification (App. Br. 6).
The preponderance of the evidence favors Appellants' argument of
compliance with§ 112, i-f 2. The Examiner's analysis focuses solely on the
breadth of the claim encompassing many different superalloy compositions.
Breadth, however, is not indefiniteness. In re Miller, 441F.2d689, 693
(CCP A 1971 ). In the present case, when the claim is read in light of the
Specification it is clear that the amount of oxygen dopant present in the
superalloy is enough to pin grain boundaries at recrystallization condition of
1080°C for 4 hours but the oxygen dopant amount is insufficient to produce
a continuous oxide scale on the surface of the superalloy body. There may
be many different superalloy compositions that would meet those
limitations, but that does not make the claim indefinite.
On this record, we reverse the Examiner's § 112, i-f 2, rejection.
REJECTION (3): §§ 102(b)/103(a)
The Examiner finds that Li teaches a superalloy article that is
experimentally processed at a temperature of 800 to 900°C for up to 1925
hours (Final Act. 6). The Examiner finds that since Li discloses the same
composition and the same processing or substantially similar processing, a
superalloy body having a surface zone including oxygen in an amount
sufficient to pin any new grain boundaries in the surface zone that occurs
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under a recrystallization condition of 1080°C/197 6°F for 4 hours would be
expected (Final Act. 6). Alternatively, the Examiner concludes that it would
have been obvious to one having ordinary skill in the art at the time the
invention was made to select the temperature and time of treatment, as set
forth in [0023] of the instant Specification, from that disclosed by Li because
Li discloses the same utility (oxidation behavior of single crystal nickel base
superalloys) (Final Act. 6-7). The Examiner further finds that with respect
to the added recitation "the amount of oxygen dopant being insufficient to
produce a continuous oxide scale on the surface of the superalloy body" in
claim 16, Li teaches that at 800 °C the superalloy exhibited non-uniform
oxidation or highly non-uniform oxidation (non-continuous) (abstract and
conclusions). However, a continuous oxide scale is not disclosed or
suggested and, therefore, Li meets the claim. (Final Act. 7).
Appellants argue that Li fails to characterize the resulting oxidation on
the superalloy as discontinuous as the Examiner finds (App. Br. 7).
Appellants contend that Li's disclosure analyzes the different oxide
morphologies that form on the superalloy and do not indicate that the oxide
is discontinuous. Id. Appellants argue that the Examiner's presumption of
an identical product resulting from the same alloy being processed in the
same manner described in the Specification is unnecessary because Li
discloses that a continuous, multilayer oxide film forms on the alloy after the
treatment (Reply Br. 4-5).
The preponderance of the evidence favors Appellants' argument of
novelty and nonobviousness. With regard to the anticipation rejection, the
Examiner has not established that Li teaches a superalloy made in the same
manner as described in the Specification. Particularly, the Specification
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describes that an oxygen doping treatment includes heating between 800 and
900°C for 2 hours in air (Spec. ,-r 23). The Specification describes that
Figures 5 and 6 show the effect of vacuum annealing (i.e., no air for oxygen
doping) for 3 hours at a temperature of 870 to 1040°C after which time a
recrystallization condition of 1080°C for 4 hours was applied (Spec. i-f 25).
Figure 6 shows that a recrystallization layer 40 forms. Id.
Li discloses heating the superalloy at a temperature of 800 to 900°C
for up to 1925 hours (Li 592 "Experimental Procedures"). Li exemplifies
using a minimum treatment time of 5 hours with a continuous oxide scale
forming on the superalloy (Li 596 Table I; Fig. 3). Li's Figure 3A shows
dendrite and interdendrite formations with an oxide scale formed across the
entire superalloy surface treated for 5 hours at 800°C (Li 596-597, "Scale
Morphologies and Composition at 800°C"). Accordingly, Li does not
disclose within the meaning of35 U.S.C. § 102 the subject matter of claim
1.
With regard to the obviousness rejection, the Examiner finds that Li
discloses treating a superalloy at a temperature of 800 to 900°C for up to
1925 hours. In other words, it appears that Li's treatment time overlaps with
the described treatment time of 2 hours at a temperature of 800 to 900°C.
Ans. 16. Li further describes, however, the shortest treatment time as being
5 hours with longer treatment times taught (Li 596 Table 1 ). Li discloses
that an oxide layer is formed on the surface of the superalloy in dendritic
(i.e., area A in Figure 3a) and interdendritic areas (i.e., area B in Figure 3a)
on a superalloy surface treated for 5 hours at 800°C. The interdendritic
areas are areas between the raised dendritic areas in Figure 3a. Li appears to
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disclose that the oxide formation is continuous over the portion of the article
shown in Figure 3b.
The Examiner focuses on Li's overlapping range of treatment time
(i.e., up to 1925 hours) with the time range disclosed by Appellants (i.e., 2
hours) at a temperature of 800°C (Ans. 16-17). Li teaches, however, using
treatment times longer than 2 hours (i.e., 5 hour minimum treatment time is
disclosed). In other words, Li would have led the ordinarily skilled artisan
away from the treatment times exemplified by Appellants. Accordingly, the
Examiner has not established that Li would have suggested using
Appellants' 2 hour treatment time at 800°C with Li's superalloy treatment.
On this record, we reverse the Examiner's §102(b) and§ 103(a)
rejection over Li.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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