Ex Parte Pillhoefer et al

Patent Trial and Appeal Board

Dec 27, 2016

13961965 (P.T.A.B. Dec. 27, 2016)

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.
13/961,965 08/08/2013 Horst PILLHOEFER 6570-P50081 6620
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
12/29/2016 EXAMINER
MILLER, JR, JOSEPH ALBERT
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MTU AERO ENGINERS AG,
HORST PILLHOEFER, STEFAN MUELLER,
ERWIN BAYER, and THOMAS DAUTL
Appeal 2015-004727
Application 13/961,965
Technology Center 1700
Before DONNA M. PRAISS, AVELYN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
1 In this decision, we refer to the Specification filed Aug. 8, 2013, the Final
Office Action mailed July 11, 2014, the Appeal Brief filed Nov. 11, 2014,
the Examiner’s Answer mailed Jan. 23, 2015, and the Reply Brief filed Mar.
18,2015.
Appeal 2015-004727
Application 13/961,965
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21—40 as indefinite under 35 U.S.C. § 112, second
paragraph, and claims 21 and 24—29 as obvious under 35 U.S.C. § 103(a)3
over Madhava.4
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention relates to a coating and a process for producing such
coating, wherein the coating is “for components which are exposed to high
temperatures and aggressive media, e.g. components of gas turbines and in
particular aircraft engines.” (Spec. 1:11—14). Claim 21, the sole
independent claim, is illustrative (paragraphs and italics added):
21. A process for producing a coating for protecting a
component against high temperatures and aggressive media, the
component being formed by an alloy having one or more metallic
main constituents which make up the largest proportion of the
alloy,
wherein the process comprises chromizing a surface to be
coated and subsequently aluminizing a chromium-rich layer
produced during chromizing, the chromizing being carried out
with a chemical chromium activity of at least 0.4, and
wherein the process affords a coating that has an outer
zone and an inner zone, the outer zone comprising a-chromium
phases in a matrix of a mixture of mixed crystals comprising
2 Appellants identify MTU Aero Engines AG of Munich Germany as the
real party in interest. App. Br. 3.
3 The rejection of claims 21—40 as obvious under 35 U.S.C. § 103(a) over
the combination of Wydra (US 2003/0111140 published June 19, 2003) and
Lee et al. (US 2003/0118448 published June 26, 2003) alone or together
with secondary references stands withdrawn by the Examiner. Ans. 3.
4 Madhava et al., US 2006/0046091 Al, published Mar. 2, 2006
(“Madhava”).
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Application 13/961,965
essentially chromium, aluminum, and the one or more metallic
main constituents of the alloy, and
the inner zone comprising a mixed crystal zone
comprising essentially chromium, aluminum, and the one or
more metallic main constituents of the alloy,
the proportion of chromium in a total coating being
greater than 30% by weight and a proportion of aluminum in a
total coating being at least 5% by weight.
App. Br. 23 (Claims App’x).
OPINION
Indefiniteness of Claims 21—40
The Examiner finds claim 21 and its dependents indefinite because the
term “chemical chromium activity” in the context of the claim 21 recitation:
“chemical chromium activity of greater than or equal to 0.4” is unclear in
meaning and how it is achieved. Final Act. 2; Ans 2. The Examiner finds
that the Specification does not “describe what is meant by this term or how
the activity level is calculated.” Id.
Appellants contend that “the chemical activity of a substance
(element, compound, etc.) is an entity which is well known to (and can
readily be determined by) one of ordinary skill in the art.” App. Br. 6.
Appellants rely upon Wikipedia5 and Introductory University Chemistry6 as
being consistent with each other and evidencing this understanding of one of
ordinary skill in the art. Id. Appellants quote Introductory University
Chemistry’s discussion of chemical activity, specifically, “[cjhemical
activity can in some cases be measured directly, but it is often more
5 http://en.wikipedia.org/wiki/Thermodynamic-activity.
6 http: //dwb .uni. edu/Teacher/NSF/C14/C14Links/www. chem.ualberta. caI
courses/plambeck/p 101/pO 1093 .htm.
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Application 13/961,965
convenient to take advantage of the fact that for many substances the active
mass per unit volume directly proportional to the actual amount of substance
per unit volume. Actual amount of substance per unit volume is an easily
accessible quantity.” Id. at 7. Appellants also quote Introductory University
Chemistry’s statement that “[t]he approximations to activity of
concentration, of pressure, and of constancy for pure substances will not
accurately reflect the actual behavior of matter under all conditions.” Id.
The Examiner responds that Introductory University Chemistry “does
not set forth a clear path to singularly calculate a chemical activity.”
Ans. 4—5. The Examiner also finds that “[t]he Wikipedia source teaches that
‘activity’ is a measure of the ‘effective concentration’ and is a measurement
of the chemical potential. Id. at 5. Certain formulas are provided via
Wikipedia but there is no guidance as to how one would actually calculate
the chemical activity of chromium within the mixed layer formed per instant
claims.” Id. The Examiner’s position is that “the two references do not
describe a common method of calculating” therefore “one of ordinary skill
cannot use either the instant application or the provided references (or any
other known reference) and understand how to calculate the chemical
activity of chromium (or aluminum).” Id. at 5—6.
In the Reply Brief, Appellants contend “there is no evidence of record
which would show that the activity of a metal or other substance in a
mixture cannot be determined with any degree of precision.” Reply Br. 4
(emphasis omitted). Appellants direct us again to the disclosure in
Introductory University Chemistry that “[cjhemical activity can in some
cases be measured directly,” that “[ajctual amount of substance per unit
volume is an easily accessible quantity[,]” and that it is directly proportional
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Application 13/961,965
to the active mass per unit volume for many substances. Id. (quoting
Introductory University Chemistry).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The definiteness of a claim depends on whether one skilled in the
art would understand the bounds of the claim when read in light of the
specification. Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401
F.3d 1367, 1371 (Fed. Cir. 2005). Appellants’ Specification does not
provide any guidance as to how chemical activity is determined, as pointed
out by the Examiner, but discloses that chromizing with a powder pack
provides a chemical chromium activity of greater than or equal to 0.4. Final
Act. 2 (citing Spec. 8:20—25). Appellants do not rely on the Specification to
support the position that one skilled in the art would understand the manner
in which chemical chromium activity is measured for the limitation of
claim 21. Rather, Appellants rely on Wikipedia and Introductory Chemistry
as evidence that one skilled in the art would understand how to calculate
chemical activity of a species.
As the Examiner finds, Wikipedia provides formulas for calculating
chemical activity and Introductory University Chemistry provides an array
of approximations. Ans. 5. The formula provided for activity of a species i
(a,) is given in Wikipedia as:
% — e
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Application 13/961,965
where p, is the chemical potential of the species i under the conditions of
interest, p® is the chemical potential of that species under standard
conditions, R is the gas constant, T is the thermodynamic temperature, and e
is the exponential constant.
In the Reply Brief, Appellants direct us to Introductory University
Chemistry’s measurement of actual amount of substance per unit volume.
Reply Br. 4. We are persuaded on this record that even if the activity of
chromium or aluminum employed in the claimed coating process cannot be
determined with precision, determining the chemical activity of a species is
known in the chemical art and “as precise as the subject matter permits.”
See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385
(Fed. Cir. 1986) (quoting Shatterproof Glass Corp. v. Libbey-Owens Ford
Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (“if the claims, read in light of the
specification, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits, the courts can demand no more”).
Based on the definitions and discussions of chemical activity provided
in this record, we reverse the rejection of claims 21—40 as indefinite under
35 U.S.C. § 112, second paragraph.
Obviousness of Claims 21 and 24—29
The Examiner finds that claims 21 and 24—29 would have been
obvious to one of ordinary skill in the art at the time of the invention for the
reasons stated on pages 8—10 of the Final Action.
Appellants argue that “there is no overlap” between the chromium
concentration recited in claim 21 (greater than 30% by weight) and the
chromium concentration range in Madhava (about 5 to about 30% by
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weight). App. Br. 21. Appellants contend that because Mahava
recommends chromium concentrations “which are significantly lower than
30% by weight” Madhava’s disclosure of about 30% “cannot reasonably be
interpreted to mean ‘greater than 30%’.” Id.1
We are not persuaded by Appellants’ argument. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”). In addition to the disclosure of
chromium in the amount of “about 5 to about 30%” in paragraph 15 cited by
the Examiner, Mahava discloses this same range in paragraph 31 as well as
in claim 1. The narrower ranges preferred by Mahava that Appellants direct
us to do not limit the broader teachings of Mahava. “[A] reference is not
limited to the disclosure of specific working examples.” In re Mills, 470
F.2d 649, 651 (CCPA 1972) (citation omitted).
Appellants’ arguments are unpersuasive for the additional reason that
even a slight overlap between Mahava’s range and the claimed range is
sufficient to support the Examiner’s obviousness rejection. Appellants have
not directed us to any evidence that its range is critical nor does the
Specification indicate criticality of the claimed range. Indeed, the
Specification indicates that the claimed range is merely a preferred
7 Appellants additionally contend in the Reply Brief that this rejection is
assumed to have been withdrawn because the Examiner’s Answer does not
mention this rejection. Reply Br. 2. Because the Examiner’s Answer
indicates that only the rejections over Wydra and Lee are withdrawn, the
rejection over Mahava remains in this appeal. See Ans. 3.
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embodiment. Spec. 7:13 (“[t]he coating can preferably have more than 30%
by weight of chromium.”).
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. . . . [I]n such a situation, the applicant
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) (citations omitted);
see In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“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.”).
In sum, we affirm the Examiner’s rejection of claims 21 and 24—29 as
obvious over Mahava.
CONCLUSION
We reverse the Examiner’s rejection of claims 21—40 as indefinite
under 35U.S.C. § 112, second paragraph. We affirm the Examiner’s
rejection of claims 21 and 24—29 as obvious under 35 U.S.C. § 103(a) over
Mahava.
DECISION
The Examiner’s decision is affirmed-in-part.
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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)(1).
AFFIRMED-IN-PART
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