Ex Parte Parkos et al

Patent Trial and Appeal Board

Jun 25, 2013

11654410 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/654,410 01/17/2007 Joseph Parkos PA-2718-A;
67097-756PUS1
7082
54549 7590 06/25/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
REMAVEGE, CHRISTOPHER
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
06/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEALS
BOARD
____________

Ex parte JOSEPH PARKOS, CURTIS H. RIEWE, and
JAMES O. HANSEN
____________

Appeal 2012-005216
Application 11/654,410
Technology Center 1700
____________

Before HUBERT C. LORIN, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-10, 15-17, and 19-24. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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Claim 1 is illustrative:
1. A method of surface treating a metallic article, comprising the
step:
(a) chemically removing a surface layer having titanium alloy
alpha-phase precipitation to expose a core having titanium
alloy beta-phase.

The only other independent claim 21 is similar to claim 1 but recites
details of an acid solution used to remove the surface layer.
The Examiner maintains the following rejections:
(a) claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by
Davis1, as evidenced by Beardmore2;
(b) claims 1 and 3 as anticipated under 35 U.S.C. § 102(b) by
Takahashi3 (Ans. 5-6; see also Final 3, 13);
(c) claims 2, 4, 6-8, and 15-23 as unpatentable under 35 U.S.C. §
103(a) over Davis (as evidenced by Beardmore4), further with
Heubusch5;
(d) claim 5 as unpatentable under 35 U.S.C. § 103(a) over Davis
(as evidenced by Beardmore), further with Heubusch and Hirai6;
(e) claims 9 and 24 as unpatentable under 35 U.S.C. § 103(a) over
the combined prior art of Davis and Beardmore.
As an initial matter, we note that Appellants have provided no rebuttal
to the Examiner’s § 102 rejection of claims 1 and 3 based on Takehashi

1 US 2001/0045936 A1, pub. Mar. 11, 2004.
2 Beardmore, Roymech: "Properties of Titanium."
3 US 2006/0062685 A1, pub. Mar. 23, 2006.
4 The Examiner’s omission of the Beardmore evidentiary reference is
deemed to be an inadvertent oversight, since the dependent claims of
rejections (c) and (d) depend from claim 1 which relies upon such evidence.
5 US 4,432,808, pat. Feb. 21, 1984.
6 US 5,116,430, pat. May 26, 1992.
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(rejection (b) in the above listing) (App. Br. generally). Accordingly, we
summarily affirm the § 102 rejection based on Takehashi.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
The Examiner has the initial burden of establishing a prima facie case
of anticipation based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 102(b). In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”).
Inherency “may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto
Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), quoting In re Oelrich, 666 F.2d
578, 581 (CCPA 1981)). An inherent characteristic must be inevitable. See
Oelrich, 666 F.2d at 581.

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner’s finding that the claimed subject matter of
representative claim 1 is anticipated within the meaning of § 102 in view of
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the applied prior art of Davis as evidenced by Beardmore. A preponderance
of the evidence also supports the Examiner’s § 103 rejections. Accordingly,
we will sustain all of the Examiner’s rejections for essentially those reasons
expressed in the Answer, including the Examiner’s Response to Argument
section, and we add the following primarily for emphasis.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
After consideration of the record before us, we agree with the
Examiner that Beardmore exemplifies that a pure alpha-phase titanium alloy
would not be useful as an aircraft turbine blade, and thus only a beta
titanium alloy, or alpha-beta titanium alloy, would be used as an aircraft
turbine blade that is subjected to high temperatures (e.g., Ans. 17).
Appellants’ Specification makes it clear that the broadest reasonable
interpretation of “a core having titanium alloy beta-phase” as recited in
claims 1 and 21 plainly encompasses both beta and alpha-beta titanium
alloys (see, e.g., Spec. para. [0006] (“the core includes either single phase
beta titanium or alpha precipitates in a beta titanium matrix”)).
A preponderance of the evidence supports the Examiner’s position
(Ans.17). Notably, Appellants have not directed our attention to any
evidence to refute the Examiner’s reasonable determination that Beardmore
is evidence that a pure alpha-phase titanium alloy would not be useful for an
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aircraft turbine blade (generally App. Br., Reply Br.7). Appellants have also
not directed our attention to any portion of the Specification that limits the
definition of “a core having titanium alloy beta-phase” to exclude a beta
titanium alloy, or alpha-beta titanium alloy, as evidenced in Beardmore.
Accordingly, we affirm the Examiner’s anticipation rejection (a), as
well as summarily affirm the unchallenged anticipation rejection (b). (see
also, Ans. 4 (“this rejection is neither acknowledged nor challenged in the
appeal brief.”))
With respect to the § 103 rejection listed herein as (c), Appellants’
main argument is that the parameters of acid concentration have not been
established as result effective variables (App. Br. 5). However, it is well
settled that, generally speaking, it would have been obvious for an artisan
with ordinary skill to develop workable or even optimum ranges for result-
effective parameters such as time, temperature, and concentration/amounts
of chemical reactants. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir.
1990); In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d
454, 456 (CCPA 1955). Appellants have not refuted with sufficient
specificity the Examiner’s reasonable position that the relative
concentrations of nitric acid and hydrofluoric acid are result-effective
variables for chemically removing/etching a surface layer of an oxidized
alpha-phase layer on blades made from titanium alloys (e.g., Ans. 7, 18;
Davis para. [0033]).
Appellants have not made any additional arguments for the § 103
rejections listed as (d) and (e).

7 The Reply Brief filed Oct. 17, 2011 only consists of a single closing
signature page.
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Therefore, a preponderance of the evidence supports all of the
Examiner’s § 103 rejections, and we also affirm these § 103 rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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