Ex Parte Mihalisin et al

Board of Patent Appeals and Interferences

May 19, 2003

09276858 (B.P.A.I. May. 19, 2003)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. MIHALISIN, JOHN CORRIGAN,
GILBERT M. GRATTI and RUSSEL G. VOGT
____________
Appeal No. 2002-2142
Application No. 09/276,858
____________
ON BRIEF
____________
Before GARRIS, TIMM, and JEFFREY T. SMITH, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal the decision of the Primary Examiner finally rejecting claims 1-20,
which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 134.
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Application No. 09/276,858
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THE CLAIMED SUBJECT MATTER
The claims are directed to a method of making nickel-based superalloy single crystal
castings with a particular amount of carbon content. According to Appellants, increasing the
carbon content beyond a specified alloy carbon level reduces the formation of surface scale on
the cast superalloy and also reduces the formation of recrystallized grains after heat treatment
(specification at 3, ll. 10-19). Claims 1, 5, and 9 are illustrative of the subject matter on appeal:
1. A method of reducing as-cast metallic surface scale formed on a single crystal
casting made by solidifying a molten nickel base superalloy that includes Cr, Co,
Mo, W, Ta, and Al, comprising
providing said nickel base superalloy with a C concentration high enough
to substantially reduce formation of said as-cast metallic surface scale during
solidification, and
solidifying said molten nickel base superalloy in a mold to form said
single crystal casting.
5. A method of reducing as-cast metallic surface scale formed on a single crystal
casting made by solidifying a molten nickel base superalloy consisting essentially
of, in weight %, about 6% to 6.8% Cr, about 8% to 10% Co, about 0.5% to 0. 7%
Mo, about 5.0% to 6.6% W, about 6.3% to 7% Ta, about 5.4% to 5.8% Al, about
0.6% to 1.2% Ti, about 0.05% to 0.3% Hf, up to about 100 ppm by weight B, up
to 50 ppm by weight Mg, and balance essentially Ni, comprising
providing said nickel base superalloy with a C concentration greater than
0.04 weight % effective to substantially reduce formation of said as-cast metallic
surface scale when the superalloy is solidified as a single crystal casting, and
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solidifying said molten nickel base superalloy in a mold to form said
single crystal casting.
9. A method of reducing as-cast metallic surface scale formed on a single crystal
casting made by solidifying a molten nickel base superalloy that includes Cr, Co,
Mo, W, Ta, and Al, comprising
providing said nickel base superalloy with a C concentration controlled in
accordance with the equation,
% area fraction scale = -0.193 X carbon content in ppm + 86 effective to
substantially reduce formation of said as-cast metallic scale when the superalloy is
solidified as a single crystal, casting, and
solidifying said molten superalloy in a mold to form said single crystal
casting.
THE EVIDENCE
As evidence of unpatentability, the Examiner relies upon the following prior art
reference:
Wukusick et al. (Wukusick) 5,100,484 Mar. 31, 1992
THE REJECTIONS
Claims 1-20 stand rejected as follows: under 35 U.S.C. § 102(b) as being anticipated by
Wukusick (Answer at 4-5) and under 35 U.S.C. § 103(a) as being unpatentable over Wukusick
(Answer at 5-6).
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Application No. 09/276,858
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THE GROUPING OF THE CLAIMS
In the section of the Brief entitled “GROUPING OF THE CLAIMS”, Appellants state
that claims 1-20 do not stand or fall together (Brief at 6). We consider the claims separately only
to the extent Appellants present separate substantive arguments in the argument section of the
Brief. See 37 CFR § 1.192(c)(7) and (8)(2001).
OPINION
We affirm the decision of the Examiner to reject claims 1-4, 9-11, 17, and 18 under 35
U.S.C. § 102(b) and claims 1-20 under 35 U.S.C. § 103(a). However, we reverse the decision of
the Examiner with respect to the rejection of claims 5-8, 12-16, 19, and 20 under 35 U.S.C.
§ 102(b).
Anticipation
Anticipation of a claim under § 102 can be found only if the prior art reference discloses
something embodying every element of the claim. In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986). However, that does not mean that the reference must expressly
disclose every limitation. A prior art reference may anticipate when a claim limitation not
expressly found in the thing described in the reference is nonetheless inherent in it. In re Best,
562 F.2d 1252, 1254-55, 195 USPQ 430, 432-34 (CCPA 1977). Moreover, merely choosing to
describe the process using different terminology does not render the method patentable. In re
Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975).
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Appellants have chosen to describe their invention in terms of a process of obtaining
certain physical characteristics when making a nickel base superalloy single crystal casting. For
instance, claim 1 is directed to a method of reducing as-cast metallic surface scale. But that does
not change the essence of the process which is really a method of forming a single crystal casting
by molding a nickel base superalloy of a particular composition. Wukusick describes a process
of forming single crystal castings of nickel base superalloys. In the instances that Wukusick
describes a process of making single crystal castings of compositions with the inherent properties
recited in the claim, that claim is anticipated.
Particularly, we find that claims 1-4, 9-11, 17, and 18 are anticipated by Wukusick.
Focusing on claim 1 to illustrate, we note that this claim is directed to forming single crystal
castings of nickel base superalloy containing Cr, Co, Mo, W, Ta, Al. In addition, the alloy
contains C in a concentration “high enough to substantially reduce formation of said as-cast
metallic surface scale during solidification.” According to Appellants’ specification, carbon
concentrations greater than 0.04 wt. % are effective to substantially reduce as-cast metallic scale
(specification at 7, ll. 9-13). Not only does Wukusick describe nickel base superalloy
compositions with carbon concentrations greater than 0.04 wt. % (Table I, preferred and most
preferred), those alloy compositions contain Cr, Co, Mo, W, Ta, and Al in concentrations
encompassed by the range of alloy compositions described in the specification at page 6, lines
20-25 for which an increase in carbon content of greater than 0.04 wt.% results in scale reduction
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(specification at 7, ll. 9-13). Therefore, there is a strong evidentiary basis to believe that the
preferred and most preferred compositions of Wukusick will result in cast single crystal articles
having the required reduced scale.
Wukusick describes processes of making single crystal castings of alloys containing
preferably 0.04-0.06, and most preferably, 0.05 weight % carbon (Table I). Appellants
themselves indicate that this level of carbon results in reducing scale and grain recrystallization
in various different alloy compositions containing the elements specified by Wukusick
(specification at 4-7). This is sufficient for a finding of anticipation for those claims which cover
compositions described by Wukusick, such as claims 1-4, 9-11, 17, and 18. See Best, 562 F.2d at
1254, 195 USPQ at 433; see also King, 801 F.2d at 1326, 231 USPQ at 138.
Claims 5-8, 12-16, 19, and 20, on the other hand, are limited to compositions containing
alloying elements in ranges outside what is taught as preferred and most preferred by Wukusick
(see Brief at 9). Moreover, while Wukusick more broadly describes a base composition
encompassing the alloy composition of, for instance, claim 5, this portion of Wukusick fails to
clearly and unequivocally disclose the claimed invention or direct those skilled in the art to the
invention without any need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference. In re Arkley, 455 F.2d 586, 587, 172
USPQ 524, 526 (CCPA 1972).
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As we find that anticipation is limited to the subject matter of claims 1-4, 9-11, 17, and
18, we address the arguments for those claims only.
Appellants argue that they have overcome problems not recognized and not solved by the
Wukusick patent (Brief at 7-8). “A reference may be from an entirely different field of endeavor
than that of the claimed invention or may be directed to an entirely different problem from the
one addressed by the inventor, yet the reference will still anticipate if it explicitly or inherently
discloses every limitation recited in the claims.” In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997). “[M]erely discovering and claiming a new benefit of an
old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Here, there is reason to believe that casting the
preferred and most preferred compositions of Wukusick as taught by Wukusick will result in a
reduction in scale and grain recrystallization as required by independent claims 1, 9, and 17.
Moreover, the fact that Wukusick does not discuss the same problems allegedly
discovered by Appellants does not mean the claimed process is new as required by the patent
statute. See 35 § U.S.C. 101(2001)(“Whoever invents any new ... process or any new ...
improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title.)(emphasis added). A material and its properties are inseparable. In re Papesch, 315
F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963). In obedience with the laws of nature, adding the
amount of carbon specified by Wukusick will result in the properties desired by Appellants. “A
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person of ordinary skill in the art does not need to recognize that a method or structure behaves
according to a law of nature in order to fully and effectively practice the method or structure.”
EMI Group North America Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351, 60
USPQ2d 1423, 1429-30 (Fed. Cir. 2001).
Appellants also argue that the failure of Wukusick to recognize Appellants’ problems and
provide a solution thereto is apparent in the fact that Wukusick discloses a range of 0-0.07
weight % carbon. This range is listed for the base alloy of Table I. The presence of this broader
disclosure does not overcome the fact that Wukusick describes preferred and most preferred
compositions containing the required amount of carbon which would inherently result in the
reduction of scale and grain recrystallization upon casting. Cf. In re Sivaramakrishnan, 673 F.2d
1383, 1384-85, 213 USPQ 441, 442 (CCPA 1982).
Appellants additionally argue that claims 3, 6, 12, and 14 recite that the casting is
substantially free of as-cast metallic scale and that Appellants have overcome problems not
recognized and not solved by the Wukusick patent (Brief at 9). Here we focus on claim 3 as that
is the only claim of the group that we find to be anticipated. Appellants’ own specification
provides evidence that carbon levels of 0.045 (450 ppm) and above result in castings which are
essentially free of scale (Fig. 2 and specification at 11). Therefore, there is reason to believe that
the most preferred alloy composition of Wukusick, which contains 0.05 wt% carbon, would
inherently result in castings which are essentially free of scale as required by claim 3.
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1Should prosecution continue, the Examiner should consider whether claim 9 is sufficiently definite in
accordance with 35 U.S.C. 112, ¶ 2. The scope of carbon concentrations encompassed is somewhat unclear as the
equation is only valid for carbon concentrations between 0 and 450 ppm (see Fig. 2), but the language “effective to
substantially reduce formation of said as-cast metallic scale” relates to concentrations of about 0.04 wt. % (400 ppm)
and above, including concentrations above 450 ppm (specification at 10, ll. 19-23). It is thus not entirely clear what
concentrations are encompassed by the claim.
With respect to claims 9-11, Appellants argue that Wukusick is silent with respect to
controlling carbon content in the manner required by claim 9. Claim 9 recites “providing said
nickel base superalloy with a C concentration controlled in accordance with the equation, % area
fraction scale = -0.193 x carbon content in ppm + 86 effective to substantially reduce formation
of said as-cast metallic scale when the superalloy is solidified as a single crystal casting.” Again,
“[a] person of ordinary skill in the art does not need to recognize that a method or structure
behaves according to a law of nature in order to fully and effectively practice the method or
structure.” EMI Group North America, 268 F.3d at 1351, 60 USPQ2d at 1429-30. The equation
recited in the claim represents what happens to the % area fraction scale in accordance with the
laws of nature as the carbon concentration varies. This law of nature is followed whether or not
one practicing the process of providing carbon in a nickel base superalloy knows it or not.
Wukusick provides carbon in an amount effective to substantially reduce formation of as-cast
metallic scale as required by the claim. The carbon concentration is necessarily controlled in
accordance with the equation.1
We find that claims 1-4, 9-11, 17, and 18 are anticipated by Wukusick because there is
reason to believe that the reduced scale and grain recrystallization properties required by the
claims would be obtained when practicing the preferred and most preferred embodiments of
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Wukusick. Under the circumstances of this case, it is fair to shift the burden to Appellants to
prove that the claimed reduction in scale or grain recrystallization is not obtained when following
the preferred embodiments of Wukusick. See Best, 562 F.2d at 1255, 195 USPQ at 432-33.
Appellants have not provided any objective evidence sufficient to meet their burden.
Obviousness
Wukusick discloses the formation of single crystal cast articles of nickel base superalloys
containing the elements required by the claims. With regard to the claims reciting concentration
ranges for elements other than carbon, those ranges are encompassed by the ranges of the base
alloy of Wukusick (Table I). The concentration range of carbon in the base alloy overlaps the
claimed range. A prima facie case of obviousness typically exists when the ranges of a claimed
composition encompass and/or overlap the ranges disclosed in the prior art. E.g., In re Peterson,
315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465,
1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (CCPA 1976); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,
553 (CCPA 1974). In addition, even though the base of alloy of Wukusick is described as
including anywhere from 0 to 0.07 wt. % carbon, Wukusick provides reasons for including small
controlled amounts of carbon to increase grain boundary strength (Wukusick at col. 9, ll. 1-20).
This provides a motivation for including concentrations of carbon above zero.
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Appellants make many of the same arguments with regard to obviousness as made in
regard to anticipation. We incorporate our responses above and add the following which
additionally applies to the issue of obviousness.
With regard to the argument that Wukusick fails to recognize the problems of metallic
scale and of deleterious extraneous grain recrystallization (Brief at 11), the prior art need not
express the same reason or motivation for making the composition as Appellants to establish
unpatentability. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996); see
also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int.1985)(“The fact that appellant has
recognized another advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would otherwise be obvious.”)
“It is a general rule that merely discovering and claiming a new benefit of an old process cannot
render the process again patentable. While the processes encompassed by the claims are not
entirely old, the rule is applicable here to the extent that the claims and the prior art overlap.” In
re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936 (citations omitted).
Appellants quote In re Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966)
for the proposition that: “That which may be inherent is not necessarily known. Obviousness
cannot be predicated on what is unknown.” (Brief at 12). We quite agree. However, in the
present case, obviousness is not predicated on what is unknown. The fact that Wukusick
discloses base alloys with element concentrations encompassing and overlapping the ranges of
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the claims and further indicates that an increased concentration of carbon is desirable provides
the required basis to conclude that it would have been obvious to one of ordinary skill in the art
to formulate alloys of composition within the claimed ranges for production of single crystal
castings therefrom.
This is not to say that Appellants’ claims are unpatentable, rather, the existence of
overlapping or encompassing ranges shifts the burden to the applicants to show that their
invention would not have been obvious. Peterson, 315 F.3d at 1329, 65 USPQ2d at 1383.
Appellants do not state that they are relying upon any objective evidence for a showing of
unexpected results or other secondary considerations which would be sufficient to meet this
burden.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-20 which has not been sufficiently rebutted by
Appellants.
OTHER ISSUES
Should prosecution continue, the Examiner may wish to review U.S. Patent 5,549,765
issued to Mihalisin et al. See, in particular, column 3, lines 9-20 which describes a range of alloy
compositions fully encompassing those of claims such as claim 5. See also Tables 3, 4 and Table
11, CMSX-4 for species of alloys fully within the ranges of various claims or closely adjacent
thereto. This patent is of record (PTO-892 of Paper no. 5).
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CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-4, 9-11, 17, and 18 under
35 U.S.C. § 102(b) and claims 1-20 under 35 U.S.C. § 103(a) is affirmed. The decision of the
Examiner to reject claims 5-8, 12-16, 19, and 20 under 35 U.S.C. § 102(b) is reversed.
Accordingly, the decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
kt/vsh
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EDWARD J. TIMMER
WALNUT WOODS CENTRE
5955 W MAIN STREET
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