Ex Parte Suzuki et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612571013 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/571,013 0913012009 6147 7590 06/01/2016 GENERAL ELECTRIC COMPANY GLOBAL RESEARCH ONE RESEARCH CIRCLE BLDG. Kl-3A59 NISKAYUNA, NY 12309 FIRST NAMED INVENTOR Akane Suzuki 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. 238870-3 1240 EXAMINER ROE, JESSEE RANDALL ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKANE SUZUKI, MICHAEL FRANCIS XAVIER GIGLIOTTI, JR., SHYH-CHIN HUANG, and PAZHAYANNUR RAMANATHAN SUBRAMANIAN Appeal2014-009408 Application 12/571,013 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1 through 12. We have jurisdiction under 35 U.S.C. § 6. Appeal2014-009408 Application 12/571,013 Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A rhenium-free, nickel-based alloy comprising from about 4.0 wt% to about 10 wt% cobalt (Co), from about 4.0 wt% to about 7.7 wt% chromium (Cr), from about 0.5 wt% to about 2.5 wt% molybdenum (Mo), from about 4.5 wt% to about 9 wt% tungsten (W), from about 4.0 wt% to about 6.5 wt% aluminum (Al), from about 1.5 wt% to about 3 .0 wt% titanium (Ti), from about 4.0 wt% to about 9 .0 wt% tantalum (Ta), from about 0.15 wt% to about 1.0 wt% hafnium (Ht), from about 0.01 wt% to about 0.05 wt% carbon (C), from about 0.001 wt% to about 0.004 wt% boron (B), with the remainder being nickel (Ni) and incidental impurities, and wherein: Al+0.56Ti is from about 6 wt% to about 8.0 wt%; Ti/ Al is greater than about 0.35; Al+0.56Ti+0.15Ta+0.15Hf is from about 7 wt% to about 10.0 wt%; and Mo+0.52W is from about 3.0 wt% to about 5.7 wt%. Appellants (see Appeal Brief, generally) request review of the following rejections from the Examiner's final office action: I. Claims 1-6 and 11-12 rejected under 35 U.S.C. § 103(a) as unpatentable over Wukusick (US 5,154,884, issued October 13, 1992). II. Claims 7-10 rejected under 35 U.S.C. § 103(a) as unpatentable over Wukusick and Huang (US 6,217 ,2 86 B 1, issued April 17, 2001 ). III. Claims 1-6 and 11-12 rejected under 35 U.S.C. § 103(a) as unpatentable over Ross (US 5,399,313, issued March 21, 1995). 2 Appeal2014-009408 Application 12/571,013 IV. Claims 7-10 rejected under 35 U.S.C. § 103(a) as unpatentable over Ross and Huang. In addition, the Examiner maintains the following rejection (Ans. 18- 19; Final Act. 20---21): 1 V. Claim 1 rejected on the ground of nonstatutory double patenting as unpatentable over claims 1---6 of U.S. Patent No. 8,226,886. OPINION Rejections I and 1112 Claim 1 is directed to rhenium-free, nickel-based alloys comprising several elements combined in specific ranges and where additional compositional formulas define a relationship between some elemental components. 1 The Examiner also maintained a provisional rejection of claims 1, 4 and 7- 12 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1, 6 and 11-16 of copending Application No.12/570,861. Ans. 19-23; Final Act. 21-25. This rejection is not before us on appeal given that the copending application has been abandoned. 2 Appellants argue independent claims 1 and 4 together and do not present separate arguments for dependent claims 2, 5, 11, and 12. See Appeal Brief, generally. Appellants present separate arguments for dependent claims 3 and 6. Id. at 21, 30. However, these separate arguments differ from the arguments presented for the independent claims only in their focus on the specifically claimed range of amounts of tantalum. Id. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal and limit our discussion to this claim. Claims 2, 4, 5, 11, and 12 stand or fall together with independent claim 1. Claims 3 and 6 will be addressed separately. 3 Appeal2014-009408 Application 12/571,013 After review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner and add the following. The Examiner found Wukusick and Ross each discloses a nickel- based alloy for use as a gas turbine blade containing all of the elemental components recited in claim 1 in amounts that overlap the claimed ranges. Final Act. 3--4, 11-12; Wukusick Abstract, col. 3, lines 25-38, col. 9 (Table 1); Ross Abstract, col. 1, lines 49-58, col. 4, 11. 52-57. The Examiner concludes that it would have been obvious and a matter of routine investigation to select the claimed amounts because Wukusick and Ross each discloses the same utility throughout the disclosed ranges. Final Act. 3, 11-12. Regarding the compositional formula defining a relationship between some elemental components, the Examiner determined that "there is no invention in the discovery of a general formula if it covers a composition described in the prior art." Id. at 4, 12. Appellants argue the overlap of weight percentages is not sufficient to establish prima facie obviousness because Wukusick and Ross each discloses a broad genus of compositions and provides no motivation to select the claimed compositions from the broadly disclosed genus. App. Br. 7-8, 24. According to Appellants, the Examiner improperly relied on Appellants' disclosure of alloys that overlap possible species in the broad genus of the cited prior art to select Appellants' species and provides no evidence supporting the contention that it would only take routine investigation by the skilled artisan to select the particular metals and/or amounts thereof from either Wukusick or Ross's broad genus. Id. at 7, 12-13, 17, 24--25. 4 Appeal2014-009408 Application 12/571,013 We are unpersuaded by these arguments and agree with the Examiner's determination of obviousness. Our reviewing court has held [A] prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. [Citations omitted.] Where the "claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap." In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir. 1997) (when the teachings of a prior art reference discloses a range that touches or overlaps the range recited in the claim, the burden is on applicant to rebut prima facie obviousness, e.g., by showing unexpected properties within the claimed range); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ("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. . . . These cases have consistently held that in 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."). The Examiner has established a reasonable basis to conclude that the claimed invention would have been obvious from the cited art by pointing to portions of Wukusick and Ross disclosing amounts for the claimed elemental components of the alloy that touch or overlap the ranges recited in the claim. Final Act. 3--4, 11-12; Wukusick Abstract, col. 3, lines 25-38, col. 9 (Table 1); Ross Abstract, col. 1, lines 49-58, col. 4, 11. 52-57. As such, an alloy falling within the scope of the claimed invention would have 5 Appeal2014-009408 Application 12/571,013 been obvious to a person of ordinary skill in the art based on the disclosures of Wukusick and Ross. Appellants have not adequately explained why one skilled in the art would not have been capable of arriving to the claimed alloys from the teachings of the cited references. Appellants argue the references' exemplified amounts teach away from the use of amounts for Cr, Ti, and Ta outside the overlapping ranges, including the ranges for Ta in dependent claims 3 and 6, is also unavailing. App. Br. 15, 18, 21, 26, 30. In their arguments, Appellants acknowledge the broader ranges disclosed by the references for each elemental component that overlap or touch the claimed ranges for each elemental component. Id. Thus, Appellants do not adequately explain patentable distinction of the claimed invention. Wukusick Appellants also argue Wukusick specifically teaches away from addition of C and/or B. App. Br. 15; Wukusick col. 5, 11. 50-58. According to Appellants, the Examiner relies on Wukusick's comparative examples Alloy 3 and Alloy 5 to teach the addition of C and B that are outside the scope ofWukusick's invention. App. Br. 15-16; Wukusick col. 9 (Table 1); col. 11, 11. 15-28. We are also unpersuaded by these arguments. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the 6 Appeal2014-009408 Application 12/571,013 benefits, both lost and gained, should be weighed against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). The Examiner determined that a person of ordinary skill in the art would have recognized that alloys could contain minor amounts of the grain boundary modifiers C and B. Ans. 26. Wukusick would have suggested to one skilled in the art to include minor amounts of C and B. Ans. 30; Wukusick col. 5, 11. 50-58. Appellants argue Alloys 3 and 5 are outside the scope of Wukusick' s invention and do not show improvement in the combination of properties desired by Wukusick. App. Br. 15-16; Wukusick col. 5, 11. 50-58, col. 11, 11. 19-20. However, this argument does not show error in the Examiner's determination. Wukusick discloses that the grain boundary modifiers C and B are melting point depressants that limit obtaining maximum strengths in alloys from alloying and heat treatment. Wukusick col. 5, 11. 55-58. Wukusick exemplifies 0.06 and 0.05 % C and 0.009 and 0.002 % B for Alloys 3 and 5, respectively. Wukusick col. 9 (Table I). Thus, Wukusick exemplifies using only minor amounts of these elements, which are equivalent to impurity levels. Appellants have not adequately explained how this disclosure of Wukusick teaches away from the claimed invention. Appellants argue Wukusick and Ross disclose hundreds or thousands of possible alloys within their disclosed genus. App. Br. 9, 18-19, 26-27. Thus, Appellants argue Peterson is not applicable to the present claims because the Peterson court did not address a genus issue. App. Br. 8. Instead, Appellants argue the Examiner should follow the holdings of In re Baird, 16 F.3d 380 (Fed. Cir. 1994), and In re Jones, 958 F.2d 347 (Fed. Cir. 7 Appeal2014-009408 Application 12/571,013 1992), that a claimed species or subgenus encompassed by a prior art genus is not sufficient per se to establish prima facie obviousness of the claimed species or subgenus. App. Br. 8-9. Appellants also argue the lead compound analytical framework of Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd. 492 F .3d 1350 (Fed. Cir. 2007) and Otsuka Pharmaceutical Co. v. Sandoz Inc., 678 F.3d 1280 (Fed. Cir. 2012) is applicable. Id. at 5. Appellants' arguments are not specific to the facts of the present case. The claimed invention is not limited to a specific compound. The facts of this case are closer to Harris, also directed to nickel base alloy compositions. See compositional table at Harris, 409 F.3d at 1341 (Fed. Cir. 2005). In Baird, the prior art disclosed a generic formula with a large number of variables that was estimated to encompass more than 100 million different compounds, only one of which was Appellants' claimed compound. Baird, 16 F.3d at 382. Similarly, in Jones, the prior art disclosed a "potentially infinite genus" of substituted ammonium salts, of which Appellants claimed only one. Jones, 958 F.2d at 350. Both Takeda and Otsuka are also directed to addressing the patentability of a compound, based on structural similarities and differences with respect to the prior art compounds in this instance. Takeda, 492 F.3d at 1357; Otsuka, 678 F.3d at 1291. Here, in contrast, Appellants are not claiming a single compound, but rather a range of alloy compositions that undisputedly overlaps the ranges disclosed by Wukusick and Ross (emphasis added). Thus, given the Examiner has established a reasonable basis to conclude that the claimed invention would have been obvious, the burden shifts to the Appellants to rebut the prima facie case by showing that the 8 Appeal2014-009408 Application 12/571,013 particular ranges claimed are critical, generally by showing that the claimed ranges achieve unexpected results relative to the prior art range. Woodruff, 919 F.2d at 1578. However, Appellants have not proffered any showing to support patentability of the claims. App. Br. 25. Accordingly, we sustain the Examiner's prior art rejections of claims 1-6 and 11-12 under 35 U.S.C. § 103(a) as unpatentable over either Wukusick or Ross for the reasons presented by the Examiner and given above. Rejections II and IV Dependent claims 7-10 require the alloy composition to comprise a dendritic structure. Appellants argue Huang, does not disclose or suggest Applicants' claimed alloys and, thus, there is no evidence that the combination of either Wukusick or Ross with Huang would result in Appellants' claimed alloys. App. Br. 23, 31. We are unpersuaded by these arguments. The Examiner relied upon Huang to teach as generally known to cast nickel base alloys, the same type of alloys disclosed by Wukusick and Ross, to render a cast alloy defect-free and produce a dendrite arm spacing between 150 and 800 µm. Final Act. 10, 17-18; Huang col. 3, 11. 54--57, col. 4, 11. 18-35, col. 8, 11. 9-11. Appellants' argument does not address the reason for which the Examiner relied upon Huang. Accordingly, we sustain the Examiner's prior art rejections of claims 7-10 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and given above. 9 Appeal2014-009408 Application 12/571,013 Rejection V Appellants have not contested the rejection of claim 1 on the ground of nonstatutory double patenting as unpatentable over claims 1---6 of U.S. Patent No. 8,226,886. See Appeal Brief, generally. Instead, Appellants state that they will address this rejection upon reversal of the Final Action. Id. at 32. Thus, Appellants have not identified reversible error in the Examiner's obviousness-type double patenting rejections. Accordingly, we AFFIRM the rejections for the reasons presented by the Examiner. Ans. 24-26. ORDER The Examiner's prior art rejections of claims 1-12 under 35 U.S.C. § 103(a) are affirmed. The Examiner's rejection of claim 1 on the ground of nonstatutory double patenting is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 10 Copy with citationCopy as parenthetical citation