Ex Parte Suzuki et alDownload PDFPatent Trial and Appeal BoardAug 31, 201613156638 (P.T.A.B. Aug. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/156,638 06/09/2011 6147 7590 09/02/2016 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. 249899-1 5505 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 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): 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, ANDREW JOHN ELLIOTT, MICHAEL FRANCIS XAVIER GIGLIOTTI JR., KATHLEEN BLANCHE MOREY, and PAZHA Y ANNUR SUBRAMANIAN Appeal2015-002824 Application 13/156,638 Technology Center 1700 Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and BRIAND. RANGE, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-3, 5, 7-13, and 22-35 of Application 13/156,638 under 35 U.S.C. § 103(a) as obvious. Final Act. (November 12, 2013). The Examiner also rejected claims 11 and 26 under 35 U.S.C. § 112, ,-i 1 as failing to comply with the written description requirement. Id. Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. 1 General Electric Co. is identified as the real party in interest. Appeal Br. 1. Appeal2015-002824 Application 13/156,638 For the reasons set forth below, we REVERSE. BACKGROUND The '63 8 Application describes a y' -strengthened Co-Ni base alloy that is capable of forming an adherent protective oxide surface layer. Spec. iJ 1. This alloy can be used to make articles for applications where high temperature strength and oxidation resistance are required. Id. Claim 1 is representative of the '638 Application's claims and is reproduced below: 1. An alloy, having high temperature oxidation resistance and high temperature resistance to subsurface oxidation and/or oxide spallation up to at least 1800 °F comprising, in weight percent: about 3.5% to about 4.9% of Al, about 12.2% to about 16.0% of W, about 24.5% to about 32.0% Ni, about 6.5% to about 10.0% Cr, about 5.9% to about 11.0% Ta, and the balance Co and incidental impurities wherein the alloy comprises gamma prime precipitates comprising [(Co,Ni)3(Al,W)] having an Lb crystal structure and wherein the alloy has a gamma prime solvus temperature of at least about 1050°C. Appeal Br. 29 (Claims App.) (some paragraphing added). 2 Appeal2015-002824 Application 13/156,638 REJECTION On appeal, the Examiner maintains2 the following rejection: 1. Claims 1-3, 5, 7-13, and 22-35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ishida. 3 Final Act. 3. DISCUSSION The Examiner found that Ishida describes "a cobalt-base alloy suitable for turbine engine component[s]." Final Act. 3. The Examiner further found that "[t]he amounts of Al, W, Ni, Cr, Ta, Hf, B, Y, La, misch meta1[4J and Co disclosed by Ishida et al. overlap the claimed amounts of Al, W, Ni, Cr, Ta, Hf, B, Y, La, misch metal and Co, which is prima facie evidence of obviousness MPEP 2144.05 I." Id. at 4. Although these findings are correct, the Examiner's analysis omits key step. Because of this omission, we cannot affirm the Examiner's rejection of the '638 Application's claims. Ishida describes its basic alloy composition comprising cobalt, aluminum, and tungsten. Ishida ,-i 6. Ishida further states that, if necessary, the alloy may contain one or more additional components. Id. Ishida then lists 17 additional elements that may be added in varying amounts to the basic alloy composition. Id. ,-i,-i 6-9; see also id. ,-i,-i 27-39. 2 The Examiner has withdrawn the rejection of claims 11 and 26 under 35 U.S.C. § 112, ,-i 1. Advisory Action (January 31, 2014). 3 US 2008/0185078Al, published August 7, 2008. 4 Misch metal (or mischmetal) is a rare earth element alloy, typically including approximately 50% seriatim, 25% lanthanum, and small amounts of neodymium and praseodymium. See Mischmetal, Wikipedia (last modified June 3, 2016 5:57 PM), https://en.wikipedia.org/wiki/Mischmetal. 3 Appeal2015-002824 Application 13/156,638 Ishida, therefore, only describes the subject matter of the claims on appeal in the most generic sense. For example, to arrive at the subject matter of independent claim 1, a person of ordinary skill in the art reading Ishida would have to determine that it was necessary to modify Ishida's basic alloy composition and then would have to select nickel, chromium, and tantalum from the 17 optional elements identified by Ishida. The Examiner asserts that "[i]n [the] instant case, picking a particular (optional) element from a short list is prima facie obviousness." Answer 6. We disagree with the Examiner's implicit finding that Ishida describes a short list of possible modifications to its basic alloy composition. Ishida describes 17 elements that may be added to its basic alloy composition. See Ishida ,-i,-i 6-9. To arrive at the set of elements comprising the alloy recited in Appellants' claim 1, a person of ordinary skill in the art would have to choose three particular elements-nickel, chromium, and tantalum-from Ishida's list of elements which may be added to its basic alloy composition. If such a selection were made purely at random, the skilled artisan would have an extremely small chance of arriving at a modified alloy having the elemental composition set forth in claim 1 in amounts that overlap the recited weight percentages.5 See In re Baird, 16 F.3d 380, 383 (Fed. Cir. 5 The number of different ways to select 3 items from a pool of 17 ("C(l 7, 3)") can be calculated using the following formula: n! C ( n, r) = 1 ( _ ) 1 r. n r. C(l 7, 3) = 680. The Examiner has not identified any reason to add precisely 3 additional elements to Ishida's basic alloy composition. It is more likely that 4 Appeal2015-002824 Application 13/156,638 1994) ("A disclosure of millions of compounds does not render obvious a claim to three compounds .... "). Of course, persons of ordinary skill in the art are unlikely to select particular elements from Ishida's list purely at random. Rather, skilled artisans are likely to use their knowledge to choose specific elements as being of particular interest in creating modified alloys based upon Ishida's basic alloy composition. This process would reduce the number of potential modified alloys being considered. In this case, however, the Examiner has not provided any reason why a person having ordinary skill in the art would have selected nickel, chromium, and tantalum from Ishida' s list of possible additional elements. In the absence of such reasoning, supported by an adequate factual basis, we cannot sustain the Examiner's rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). a person of ordinary skill in the art considering such a modification also would consider modifying Ishida's basic alloy composition by adding either 1 or 2 additional elements. In that case, arriving at the group of elements recited in claim 1 requires a correct choice from a larger pool of possibilities. Using the formula set forth above, we calculate that the relevant pool has 833 possible combinations: C(l 7, 1) + C(l 7, 2) + C(l 7, 3) = 17 + 136 + 680 = 833 In the extreme case-and the Examiner has not identified any limiting principle-there are many more possibilities: L~~ 1 C(l7, r) = 131,071. 5 Appeal2015-002824 Application 13/156,638 CONCLUSION For the reasons set forth above, we reverse the Examiner's rejection of claims 1-3, 5, 7-13, and 22-35 of the '638 Application. REVERSED 6 Copy with citationCopy as parenthetical citation