Ex Parte StammDownload PDFPatent Trials and Appeals BoardMay 31, 201914236785 - (D) (P.T.A.B. May. 31, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/236,785 04/17/2014 119119 7590 Ostrolenk Faber LLP 845 THIRD A VENUE New York, NY 10022 06/04/2019 FIRST NAMED INVENTOR Werner Stamm 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. P/5070-109 (V29443) 9728 EXAMINER LA VILLA, MICHAEL EUGENE ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 06/04/2019 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): pat@ostrolenk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WERNER STAMM Appeal2017-006996 Application 14/236,785 Technology Center 1700 Before BEYERL YA. FRANKLIN, JEFFREY R. SNAY, and JANEE. INGLESE, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In accordance with 37 C.F.R. § 41.52, Appellant timely filed a Request for Rehearing ("Request" or "Req.") of our Decision, mailed January 14, 2019 ("Decision" or "Dec."), affirming the Examiner's rejections of claims 2, 5, 9, 11-13, 15, 16, and 19-23 as unpatentable under 35 U.S.C. § 103. We have reconsidered our Decision of March 1, 2019, in light of Appellant's comments in the Request, and we find no error in the disposition of the rejections. Appeal2017-006996 Application 14/236,785 A request for rehearing "must state with particularity the points believed to have been misapprehended or overlooked by the Board." 37 C.F.R. § 4I.52(a)(l). In the Request, Appellant contends that, in considering the Examiner's rejection over Sommer and Schmitz ("Rejection II"), the Board improperly referred to an earlier Office Action, dated September 9, 2015. Req. 3. However, our reference to the earlier Office Action was both proper and necessary. The appealed Office Action issued May 17, 2016. See Br. 1. That Office Action rejected Appellant's claims over Sommer and Schmitz "for the reasons of record in the Office Action mailed on 17 February 2016." Final Act. 4. The February 2016 Office Action in tum rejected Appellant's claims over Sommer and Schmitz "for the reasons of record in the Office Action mailed on 9 September 2015." February 17, 2016 Non-Final Office Action 3. For those reasons, we necessarily looked to the 2015 Office Action for the Examiner's reasoning in support of the appealed prior art rejections. Rejection II Regarding the merits of Rejection II, Appellant argues that, contrary to the Board's characterization at page 5 of the Decision, the Examiner did not find Schmitz provides a reason to omit Si and Hf from the EC6 Alloy in Sommer. Req. 3--4. Appellant contends the Board misunderstood or overlooked Appellant's argument to that effect, which Appellant states is found at page 8, lines 6-8, of the Appeal Brief. However, we do not find Appellant's argument in the Appeal Brief. At the cited passage, Appellant argued against purported "[p ]icking and choosing" from the prior art in connection with the argument that Schmitz purportedly teaches away from 2 Appeal2017-006996 Application 14/236,785 the Cr concentration range recited in claim 12. App. Br. 8. Neither Si nor Hf is mentioned. Moreover, the Examiner found as follows: Schmitz teaches that essential elements of effective MCrAlY alloys are M, Cr, Al, and Y, which implies that other alloying ingredients are non-essential and may be omitted. Schmitz teaches that other alloying ingredients that can be omitted or included in MCrAlY alloys are Si, Ta, and Hf. 2015 Final Act. 5. The Examiner found, therefore, that one of ordinary skill would have had a reason to omit Si and Hf from Sommer's MCrAlY composition. Id. The Board accurately characterized the Examiner's position in the Decision. Dec. 5 ("The Examiner finds that Schmitz provides a reason to omit Si and Hf from Sommer' s alloy because Schmitz identifies those components as non-essential and optional in a protective coating such as that of Sommer."). To the extent that Appellant now argues that Schmitz would not have provided a reason to omit only Si and Hf, that argument was not raised in the Briefs and is not supported by evidence in the Request. 1 Moreover, Appellant does not present evidence or technical reasoning in the Request to show why Si and Hf would not have been omitted unless Ta also were omitted. Appellant's new argument, therefore, does not persuade us of error in the Examiner's findings that Si and Hf would have been viewed as non-essential and suitable for omission from Sommer's MCrAlY composition for that reason. 1 Appellant points to page 2, lines 4--7, of the Reply Brief as an earlier occurrence of the argument that Schmitz would not have suggested omission of some but not all non-essential components. Req. 6. However, the cited passage in the Reply Brief challenges why a person skilled in the art would omit any ingredient, not whether one would have had a reason to selectively omit some non-essential ingredients but not others. Reply Br. 2. 3 Appeal2017-006996 Application 14/236,785 Appellant repeats arguments from the Appeal Brief that the relied upon prior art fails to teach selection of element proportions to avoid brittle phases. Req. 7-10. Appellant also argues that avoidance of brittle phases is based on the combination of Co, Cr, and Al, and is not dependent on the Cr content alone. 2 Id. at 9. However, as is noted in the Decision, Sommer discloses a nickel-based alloy that meets all of the compositional requirements of claim 12, except that Sommer's disclosed alloy additionally includes Si and Hf. Dec. 5 ( citing 2015 Final Act. 5); see also Sommer Table 2(b ), example EC6. As discussed above, the Examiner presented evidence that Si and Hf would have been deemed non-essential. Appellant does not argue that Si and/or Hf would have impacted brittle phase formation. Thus, Appellant's repeated argument does not persuade us of error in the Examiner's finding that the brittle phase avoidance recited in claim 12 would have been composition-dependent and therefore satisfied by the composition suggested by the prior art. See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."). Appellant contends the Board overlooked Appellant's argument that prior art references-which were neither cited nor relied upon by the Examiner in support of Rejection II---disclose Cr concentration ranges that 2 Appellant's particular arguments in the Appeal Brief regarding compositional differences and their effect on brittle phase avoidance addressed only Cr. See App. Br. 6. 4 Appeal2017-006996 Application 14/236,785 include values exceeding the upper end of the range recited in claim 12. Req. 10-11. This argument is addressed in the Decision. See Dec. 5---6 ("Appellant does not explain why chromium concentrations disclosed in any of these references negates Sommer' s disclosure in Example EC6 of an alloy having 14% chromium-a value which falls within Appellant's recited chromium range of 14--16%."). Appellant additionally argues we overlooked Declaration evidence presented by Dr. Werner Stamm. Req. 12- 13. Dr. Stamm's Declaration evidence is addressed at page 6 of the Decision. In the Request, Appellant argues that the Declaration "establishes that the alloy recited in claim 12 was devised based on a design concept that is contrary to conventional thinking at the time." Req. 13. Appellant does not, however, relate the unspecified conventional thinking to any of the relied upon prior art in this case. Rejections III-VIII With regard to Rejections III-VIII, Appellant repeats the argument that the Board misunderstood or overlooked an earlier argument that the relied-upon prior art fails to teach the specific combination of alloying elements recited in the claims, not only the recited Cr concentration. Req. 15-16. However, generic statements that the prior art fails to teach the claimed invention are not sufficient to reveal, with particularity, reversible error in the Examiner's grounds of rejection. Appellant's particular arguments in the Appeal Brief addressing the recited alloying elements were directed solely to whether the prior art taught the recited chromium concentration. See e.g. App. Br. 11, 15, and 20 ("There is no teaching in the cited references directing the skilled person to this very narrow Cr range to 5 Appeal2017-006996 Application 14/236,785 avoid formation of brittle phases such as the ones recited in claims 21 and 22."). Those arguments are addressed in the Decision and above. Dec. 5-6. Appellant also argues that a determination of obviousness premised on overlapping concentration ranges cannot apply to a rejection that involves multiple prior art references. Req. 18. Appellant does not point to precedent to support that proposition. In any event, in this case, the overlapping Cr concentration ranges found by the Examiner and argued by Appellant in the Appeal Brief appear in each instance in a single prior art reference. See Stamm claim 16 (15-21 % chromium); Khan claim 1 (16-20% chromium); Goebel 5:48-51 (15% chromium). 3 Finally, Appellant argues that claim 12 would not have been obvious over Stamm's claim 16, Khan's claim 1, or Goebel's teaching at column 5, lines 48-51, each taken in isolation. Req. 19-20. Claim 12 was not rejected over Stamm or Goebel alone. Regarding Khan, Appellant argues that Khan's claim 1 does not specify Ta. Id. at 19. However, Khan's non- disclosure of Ta in claim 1 does not negate Khan's relied-upon teaching that Ta may be included. Khan ,r 14, claim 7. Based on the foregoing, Appellants' Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed March 1, 2019, and is final for the purposes of judicial review. See 37 C.F.R. § 4I.52(a)(l). 3 Rejections III and IV rely on Stamm for the recited Cr concentration. Rejections V and VI rely on Khan. Rejections VII and VIII rely on Goebel. See Dec. 7. 6 Appeal2017-006996 Application 14/236,785 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)(v)(20IO). DENIED 7 Copy with citationCopy as parenthetical citation