Ex Parte MUHA et al

Patent Trial and Appeal Board

Aug 31, 2016

13403368 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/403,368 02/23/2012 Joseph F. MUHA
66376 7590 09/02/2016
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 SIX PPG PLACE
PITTSBURGH, PA 15222-5479
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.
APM-2170CON/120091CON 1721
EXAMINER
ZHU, WEIPING
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):
maria.dunn@atimetals.com
A TIDocketing@atimetals.com
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH F. MUHA, ANDRZEJ L.
WOJCIESZYNSKI, and BRIAN J. MCTIERNAN1
Appeal2015-000996
Application 13/403,368
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
RAEL YNN P. GUEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as ATI Powder Metals LLC, a
wholly-owned subsidiary of Allegheny Technologies Incorporated. Appeal
Br. 1.
Appeal2014-002200
Application 12/512, 109
STATEMENT OF THE CASE
Appellants appeal2 under 35 U.S.C. § 134(a) from the rejection of
claims 11-28 and 33-38 under 35 U.S.C. § 103(a) as unpatentable over
Dorsch3 in view of Alger. 4 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a method from producing a maraging steel
article with a specific composition using a powder metallurgy processing
method. Spec. i-f 1.
According to the Specification, the process leads to improved
resistance to high temperature or cyclic heating and cooling of maraging
steel articles. Id. i-f 2. The articles made from the process exhibit favorable
thermal fatigue resistance and strength, but also reduced thermal fatigue
cracking. Id. The inventors believe that an increased cobalt content and a
decreased nickel content may be at least partially responsible for the
improvement in thermal fatigue resistance. Appeal Br. 6.
Claim 18, with limitations of particular importance highlighted, is
illustrative of the subject matter encompassed by the claims:
18. A method for producing a maraging steel article, the
method comprising:
2 In our opinion below, we refer to the Specification filed February 23, 2012
("Spec."), Final Office Action mailed May 21, 2014 ("Final Act."), the
Appeal Brief filed August 29, 2014 ("Appeal Br."), the Examiner's Answer
mailed October 14, 2014 ("Ans."), and the Reply Brief filed October 22,
2014 ("Reply Br.").
3 US Patent 5,447,800, issued September 5, 1995, to Carl J. Dorsch, et al.
4 US Patent 5,599,404, issued February 4, 1997, to Donald L. Alger.
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Application 12/512, 109
hot isostatic pressing a prealloyed steel powder to
produce a fully dense article, the steel consisting of, in weight
percent:
0.01 to 0.08 carbon;
0.10 to 1.00 manganese;
0.01 to 1.00 silicon;
2.50 to 6.00 chromium;
6.00 to 10.00 molybdenum;
1.00 to 4.00 nickel;
greater than 11.00 to 14.00 cobalt;
0.005 to less than 0.05 sulfur;
balance iron and incidental elements and impurities;
solution-annealing the fully dense article, wherein the
solution-annealing comprises heating the article at a
temperature in the range of 1740°F to 1925°F;
hardening the solution-annealed article, wherein the
hardening comprises heating the article at a temperature in the
range of 1050°F to 1360°F, wherein the fully dense steel has a
hardness of less than 40 HRC before the hardening and a
hardness of greater than 45 HRC after the hardening; and
applying at least one of a chemical vapor deposition
coating and a physical vapor deposition coating to the fully
dense article
Appeal Br. 26 (Claims App'x). The other independent claims 11and21
have identical alloy composition ranges, but claim 21 includes "comprising"
instead of "consisting of' transitional language. Id. at 29. Dependent claims
include narrower compositional ranges, the narrowest of which is
represented by claim 20, which recites steel consisting of, in weight percent:
0.01 to 0.04 carbon;
0.20 to 0.40 manganese;
0.15 to 0.40 silicon;
4.70 to 5.30 chromium;
7.50 to 8.50 molybdenum;
1.70 to 2.30 nickel;
greater than 11. 00 to 12. 00 cobalt;
0.01 to 0.03 sulfur;
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Application 12/512, 109
balance iron and incidental elements and impurities.
Id. at 29 (emphasis added). Further dependent claims, such as claim 34,
recite a cobalt range of 11.17 to 14.00 weight percent. Id. at 32.
ANALYSIS
The Examiner rejects all the claims on appeal as obvious over Dorsch
in view of Alger.
There is no dispute that, as found by the Examiner, Dorsch discloses
processing a steel article having the pressing, solution-annealing, and
hardening steps of the claimed invention. Final Act. 2-3. The Examiner
finds that Dorsch teaches temperature and concentration ranges that overlap
the claimed ranges, rendering the claimed ranges obvious, with the
exception of the sulfur content and the cobalt content. Id. at 3. The
Examiner acknowledges that Dorsch teaches a preferred sulfur content of
0.05 to 0.30 % by weight, which does not overlap the ranges recited in the
claims of 0.005 to less than 0.05 % by weight (claim 18) and 0.01 to 0.03 %
by weight (claim 20). Id. The Examiner also acknowledges that Dorsch
teaches a preferred range of cobalt of "up to 11. O" % by weight, which does
not overlap the range ranges recited in the claims with a lower range end of
"greater than 11.00" (claims 18 and 20). Id. Nonetheless, the Examiner
concludes that sulfur and cobalt concentrations within the ranges recited in
the claims would have been obvious in light of these teachings because
[t]he highest Co weight content of 11 % disclosed by Dorsch et
al. ('800) and the lowest sulfur content of 0.05 wt.% disclosed
by Dorsch et al. ('800) (col. 3, lines 46-50) are close enough to
the claimed lowest Co contents (e.g. 11.17%) and the highest
sulfur contents respectively that one ordinary skilled in the art
would have expected similar properties.
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Application 12/512, 109
Id.
Appellants contend that the Examiner's conclusion that the
concentrations "are close enough" is conclusory and unsupported statements
that lack evidentiary support of obviousness as to the particularly recited
ranges in the claims. Appeal Br. 9.
Appellants' arguments raise three issues:
A. Have Appellants identified a reversible error in the Examiner's
finding that the prior art would have suggested forming
compositions comprising a maraging steel in light of the specific
working embodiment recited in Table I;
B. Have Appellants identified a reversible error in the Examiner's
finding of a reason for the skilled artisan to have found the ranges
obvious in view of the prior art; and
C. Have Appellants established that Dorsch teaches away from the
ranges recited in the claims?
Appellants present arguments substantially identical for each of the
independent claims and do not argue any dependent claims separately.
Appeal Br. 10, 22-23; Reply Br. 3-8. For these arguments, we select claim
18 as representative to decide the issues on appeal.
Issue A: Maraging steel
For the reasons that follow, we determine that Appellants have not
identified a reversible error in the Examiner's finding that Dorsch teaches a
method of preparing a maraging steel article having identical elemental
components.
Appellants' arguments are directed only to the working example
provided in Table I of Dorsch. Appeal Br. 11-12. Yet, Dorsch includes
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Application 12/512, 109
additional disclosure that is specific to using the powdered steel process of
Dorsch with "maraging and precipitation hardening steels." See Dorsch, col.
4, 11. 38-53. Dorsch states that:
Maraging steels and precipitation-hardening steels which are
suitable for use as die casting die components and other hot
work tooling components consist of, in weight percent, up to
0.20 carbon, up to 1.0 manganese, up to 0.04 phosphorus, up to
0.50 silicon, up to 19.0 nickel, up to 18.0 chromium, up to 8.0
molybdenum, up to 6.0 tungsten, up to 11.0 cobalt, up to 4.0
copper, up to 2.0 niobium, up to 2.0 titanium, up to 2.0
aluminum, balance iron and incidental impurities.
Id. at col. 4, 11. 45-53.
It is of no moment that Dorsch has a particular preference for the steel
compositions of Table I (id. at col. 2, 1. 53 (stating that Table I is preferred)),
where Dorsch clearly includes the use of either "AISI hot work tool steel" or
"maraging or precipitation-hardening steel" as alternatives. Id. at col. 3, 11.
5-13.
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir.
2007) ("[T]he teaching of a prior art patent is not limited to its preferred
embodiment."); Merck & Co v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) ("[A ]11 disclosures of the prior art, including unpreferred
embodiments, must be considered.") (quoting In re Lamberti, 545 F .2d 7 4 7,
7 50 ( CCP A 197 6) ). Disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F .2d 442, 446 n.3 (CCP A 1971 ).
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Appellants have not identified a reversible error in the Examiner's
finding that Dorsch teaches using a powdered maraging steel alloy.
Issue B: Modification of the preferred ranges of Dorsch
The disclosure of Dorsch quoted above teaches concentration ranges
for carbon, manganese, silicon, nickel, chromium, and molybdenum that are
either encompassed by or overlap the ranges recited in claim 18. Dorsch,
col. 4, 11. 45-53. It is undisputed that the amounts of sulfur and cobalt taught
in the maraging steel description of Dorsch does not overlap the ranges for
these elements recited in the claims.
Appellants argue that Dorsch only teaches maraging steels generally,
and includes no description of any particular maraging steel species, and
particularly a species falling within the more narrow ranges recited in the
claims. Appeal Br. 12; Reply Br. 2--4.
It has been often said that when a claimed range overlaps, is close to,
or within a broader range disclosed in the prior art, the claimed range is
prima facie obvious. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1321-22 (Fed. Cir. 2004). When
"the difference between the claimed invention and the prior art
is the range or value of a particular variable," then a patent
should not issue if "the difference in range or value is minor."
Haynes Int'! v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed.
Cir. 1993); see also Titanium Metals Corp. of Am. v. Banner,
778 F.2d 775, 783 (Fed. Cir. 1985).
Iron Grip, 392 F.3d at 1322. This principle applies even in the case of
alloys for which several different elements have encompassed or
overlapping ranges. See In re Harris, 409 F.3d 1339 (Fed. Cir. 2005).
The case of Titanium Metals, 778 F.2d at 783 (emphasis added),
explains why claimed ranges that are close to, or encompassed by, the prior
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Application 12/512, 109
art make compelling evidence of obviousness in stating that "[t]he
proportions are so close that prima facie one skilled in the art would have
expected them to have the same properties." See also KSR Int'! v. Teleflex
Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability."); see also In re
Gyurik, 596 F.2d 1012, 1018 (CCPA 1979) (holding that when the similarity
in chemical structures and functions between the prior art and claimed
compounds is sufficiently close, a prima facie case of obviousness is
established.). It is this reasonable expectation of substantially identical
properties or functions based on similarities or closeness of the ranges
involved, which distinguished these types of range cases from the chemical
genus and species cases argued by Appellants, in which certain changes in
chemical structure (e.g. the presence or absence of functional groups) can
lead to substantially different properties. 5 See Appeal Br. 14--16 (relying
heavily on In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) and similar cases
that hold a generic chemical formula, by itself and without further reasoning
or evidence, does not render obvious a species of the disclosed formula);
Reply Br. 3--4, 6-7.
When predictable results can be expected within or near ranges
described in the prior art, the selection of any particular amount would have
been obvious. The alloy recited in claim 18 is analogous to the alloy in In re
Peterson, 315 F.3d 125, 1329-30 (Fed. Cir. 2003) and similar cases. In
Peterson, the court stated:
5 Additionally, Appellants' reliance on Atofina v. Great Lakes Chem. Corp,
441 F.3d 991, 999 (Fed. Cir. 2006) is not persuasive. Atofina is directed
specifically to a rejection based on anticipation under 35 U.S.C. § 102(b).
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Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In
fact, when, as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap. 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.
Peterson, 315 F.3d at 1329-1330; KSR, 550 U.S. at 421 (An improvement in
the art is obvious if "it is likely the product not of innovation but of ordinary
skill and common sense."); In re Aller, 220 F.2d 454, 456 (CCPA 1955)
("[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation."). Therefore, we agree with the Examiner that in these
types of range cases, there is no need for the prior art to expressly describe
the resulting effect of altering each element because, absent evidence of
unexpectedly superior results, the skilled artisan would expect these ranges
to represent ranges for workable, if not optimized, results for the intended
purpose. Here, Dorsch teaches workable elemental ranges for maraging
steel used for hot work tooling components.
Appellants argue that not all of the elements of the alloy recited in
claim 18 fall within or overlap the ranges described in Dorsch. Appeal. Br.
8; Reply Br. 5-6.
Dorsch teaches a cobalt range of "up to 11.0" % by weight. Under the
principles discussed above, and without evidence to the contrary, the skilled
artisan would have expected substantially identical results from an alloy
having a cobalt concentration of 11.0 % by weight, as taught by Dorsch, and
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an alloy having a cobalt concentration "greater than 11.0" % by weight,
which encompasses a very small amount greater than 11.0 % by weight.
Without evidence to the contrary, we agree with the Examiner that the
skilled artisan would have expected substantially similar results from an
alloy having a cobalt concentration of 11.0 % by weight, as taught by
Dorsch, and an alloy having a cobalt concentration of 11.17 % by weight,
which is within the range recited in claim 34.
Thus, we agree with the Examiner that the cobalt concentration taught
by Dorsch is indeed close enough to an amount encompassed by the range
recited in the claims that the skilled artisan would have expected the same
results.
Dorsch is further directed to an alloy having 0.05 to 0.30 % sulfur by
weight. Dorsch, col. 3, 11. 8-13. Without evidence to the contrary, the
skilled artisan would have expected substantially identical results from an
alloy having a sulfur concentration of 0.05 % by weight, as taught by
Dorsch, and an alloy having a sulfur concentration "less than 0.05" % by
weight, which encompasses a very small amount less than 0.05 % by weight.
Similarly, without evidence to the contrary, we agree with the Examiner that
the skilled artisan would have expected substantially similar results from an
alloy having a cobalt concentration of 0.05 % by weight, as taught by
Dorsch, and an alloy having a cobalt concentration of 0.03 % by weight,
which is within the range recited in claim 24.
Moreover, the prior art clearly recognizes the concentration of sulfur
to be a result effective variable. According to Dorsch:
The sulfur additions in the steel make it machinable at the high
hardness needed for die casting applications (35 to 50 HRC),
but die components manufactured from the currently available
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prehardened die blocks exhibit short service life because the
sulfur in the steel reduces thermal fatigue resistance and impact
toughness, which in tum reduce die performance and die
service life.
Id. at col. 1, 11. 50---57. While sulfur was useful for machinability, for
"prehardened die blocks," the use of sulfur greater than 0.028% by weight
reduced thermal fatigue resistance beyond acceptable levels due to "the
effect of the inclusions produced by higher sulfur levels." Id. at col. 1, 1. 63-
col. 2, 1. 2. In particular, Dorsch teaches that the industry standard
maximum sulfur content for AISI H13 steel was 0.005 weight percent,
because thermal fatigue failure could not be assured with higher sulfur
contents. Dorsch, col. 2, 11. 2-13.
Yet, Dorsch achieves high thermal fatigue resistance despite the use
of sulfur in an amount greater than 0.028% by weight "with the use of
[powdered] prealloyed particles" such that "the sulfur is uniformly
distributed therein and thus the resulting sulfides in the fully dense
consolidated mass of the prealloyed particles are small, and uniformly
distributed, and most of them are generally spherical." Id. at col. 3, 11. 14--
18, 27-32. According to Dorsch, "the segregation of sulfur that is inherent
within cast ingots of AISI H13 and other conventional wrought steels is
eliminated to in tum avoid the presence of conventional, relatively thick,
elongated, sulfide stringers in die blocks forged from these ingots." Id. at
col. 3, 11. 23-26. Thus, Dorsch achieves good machinability with an increase
in sulfur, without suffering the usual thermal fatigue resistance typically
experienced with a higher sulfur content using conventional processes.
The Specification states that sulfur is added to improve machinability,
which is consistent with the teaching of Dorsch. Spec. i-f 26. Using the
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process of Dorsch with the conventional amount of sulfur, namely less than
0.028 % by weight, which would fall within the range recited in the claims
of0--0.03 or 0.01---0.03 % by weight, is not patentably inventive. The skilled
artisan merely accepts that the article will have good, yet somewhat less,
machinability than that described for Dorsch's alloy, which has a higher
amount of sulfur. In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) ("A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use."); see also In re Larson, 340 F.2d 965, 969 (CCPA 1965) ("If this
additional [superior] feature is not desired, it would seem a matter of
obvious choice to eliminate it and the function it serves.").
Appellants point to the Specification as evidence that the maraging
steel articles of the present invention exhibit superior thermal fatigue
resistance and that maraging steel alloy technology is unpredictable. Appeal
Br. 12-13.
Though Appellants allege superior thermal fatigue resistance over the
prior art, Appellants fail to aver in the Specification that the data presented
therein is unexpected or surprising. Moreover, considering that Dorsch
teaches that superior thermal fatigue resistance is expected, likely due to
smaller and more uniformly distributed sulfides (Dorsch, col. 9, 11. 24--45),
any further improvement identified by Appellants would be an improvement
in degree and not in kind over the prior art. See In re Huang, 100 F.3d 135,
139 (Fed. Cir. 1996) ("[E]ven though applicant's modification results in
great improvement and utility over the prior art, it may still not be patentable
if the modification was within the capabilities of one skilled in the art, unless
the claimed ranges 'produce a new and unexpected result which is different
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in kind and not merely in degree from the results of the prior art."') (quoting
In re Aller, 220 F .2d 454, 456 (CCP A 1955).
Further, Appellants' data consists of thermal fatigue resistance
measurements for two alloys, one of which is identified as falling within the
scope of the claimed invention (see Spec. i-fi-133, 40, Fig. 2) the other of
which is identified as ESR H13 (id.). Appellants do not aver that the same
processing method as the alloy of the instant invention, i.e., powder
metallurgy process was used for the ESR H13 steel, which is also described
in a powder alloy process in Dorsch. Moreover, the comparison of two
alloys is insufficient to show similar results over, and thus criticality to, the
full ranges recited in the claims.
Accordingly, Appellants have not identified a reversible error in the
Examiner's determination that using sulfur and cobalt in the process of
Dorsch within the ranges recited in the claims would have been obvious to
one of ordinary skill in the art.
Issue C: Teaching away
Appellants contend that Dorsch teaches away from a sulfur content as
low as recited in the claims because Dorsch teaches that a "sulfur content of
about 0.10 weight percent or more is necessary to make the steel
machinable." Appeal Br. 20 (citing Dorsch, col. 5, 11. 56-61 ); Reply Br. 4--
5. However, we do not find this argument persuasive.
A teaching that a process would be inferior or less desirable is not a
teaching away unless the use would render the process "inoperable." See In
re ICON Health and Fitness Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007);
Gurley, 27 F.3d at 553 ("[I]n general, a reference will teach away if it
suggests that the line of development flowing from the reference's
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disclosure is unlikely to be productive of the result sought by the
applicant."). Here, as discussed above in detail, the prior indicates that
acceptable machinability at sulfur concentrations as low as the industry
standard of 0.005 % by weight, while not ideal, is nonetheless achievable.
Even using the powder metallurgy process taught by Dorsch,
however, thermal fatigue resistance is still reduced with an increase in
sulfur. Dorsch, col. 9, 11. 8-34, Fig. 9; see also Fig. 8 (showing a
machinability trend as a function of sulfur content but only to about 0.075
weight percent). Thus, the skilled artisan seeking maximum thermal fatigue
resistance, at the expense of some machinability, would reduce the sulfur
content. Moreover, the skilled artisan would have been capable of adjusting
the sulfur content, using a power metallurgy process as taught by Dorsch, to
achieve both good machinability and good thermal fatigue resistance,
because the effects of sulfur were well known in the art at the time of the
invention.
Thus, Dorsch does not teach away from using a lower sulfur content
than that disclosed in the preferred amount described in Dorsch, but would
have optimized the sulfur content for either improved machinability or
improved thermal fatigue resistance depending upon the more desired
property.
DECISION
The decision of the Examiner is affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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