Ex Parte Wang et al

Patent Trial and Appeal Board

May 23, 2016

11955673 (P.T.A.B. May. 23, 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.
11/955,673 12/13/2007 Yucong Wang P000119-PTC-CHE 6075
76438 7590 05/23/2016
VIVACQUA LAW, PLLC
3101 East Eisenhower Parkway
Suite 1
ANN ARBOR, MI 48108
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
05/23/2016 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 THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUCONG WANG, RICHARD DAVID RICCHI, LAIN ZHOU,
YINJIANG WU, QINGWENG DUAN, and TUANWEI YANG
____________

Appeal 2014-006450
Application 11/955,673
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 15,
16, and 23–25.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Appellants state that the Real Party in Interest is “GM Global
Technology Operations LLC” (Appeal Brief filed January 24, 2014,
hereinafter “Appeal Br.,” 2).
2 See Appeal Br. 7; Final Office Action entered July 24, 2013 (hereinafter
“Final Act.”) 3–8; Advisory Action entered January 30, 2014.
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Application 11/955,673

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BACKGROUND
The subject matter on appeal relates to titanium boride-reinforced
metal alloys (Specification, hereinafter “Spec.,” ¶ 1). Claim 15, the sole
independent claim on appeal, is reproduced from page 20 of the Appeal
Brief (Claims App.) as follows:
15. A powder metallurgy method comprising:
placing a plurality of precursor powder materials comprising
substantially pure titanium powder with a titanium
particle size of from 9 micrometers to 75
micrometers,
from about three percent to about ten percent by weight
titanium hydride powder,
an alloying material powder with an alloying-material
particle size of from 5 micrometers to 7 5
micrometers, and
TiB2 powder with a diboride particle size of from 5
micrometers to 7 5 micrometers into a titanium-
based mixing container;
substantially replacing an ambient atmosphere in said mixing
container with an inert fluid;
rotating an agitator in said titanium-based mixing container at a
rotational speed of at least 3600 rotations per minute for
at least four hours until a mixture of precursor powder
materials results, in which mixture of precursor powder
materials a substantial removal of oxide layers from
surfaces of said substantially pure titanium powder has
occurred from mechanical friction between agitated
powders of the plurality of precursor powder materials;
compacting said mixture of precursor powder materials; and
sintering said compacted mixture of precursor compacted
powder materials at from 1200 °C to 1450 °C to form a
structural component comprising a metal matrix
composite having a thermodynamically stable TiB
reinforcement phase in a titanium-alloy matrix, said
structural component being selected from the group
consisting of valves, retainers, valve springs, connecting
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rods, bolts, fasteners, coil suspension springs, and
exhaust system components.

THE REJECTION
Claims 15, 16, and 23–25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moxson et al. (Moxson)3 in view of Kobayashi et al.
(Kobayashi)4 (Examiner’s Answer entered March 10, 2014, hereinafter
“Ans.,” 4–10; Final Act. 3–8).

DISCUSSION
The Examiner found that Moxson describes a method including every
step recited in claim 15 except for the “mixing features” specified in the
claim (Ans. 4–5). The Examiner found, however, that Kobayashi discloses a
method of ball-milling a powder mixture comprising placing a powder
mixture into a container under an inert atmosphere and subjecting the
mixture to mechanical grinding for a predetermined time (e.g., up to 5 hours)
at a predetermined rotating speed (e.g. up to 4,000 rpm) (id. at 5). Based on
these findings, the Examiner concluded that “[i]t would have been obvious
to one of ordinary skill in the art . . . to ballmill[] the powder mixture of
Moxson . . . in order to generate collision energy causing the particles to be
mixed and react to form a composite material as disclosed by Kobayashi . . .
.” (id.).
The Appellants raise several issues. First, they contend that although
Moxson describes the production of porous structures using titanium
precursor powders having a particle size of minus 100 mesh (i.e., particle

3 2004/0096350 A1 published May 20, 2004.
4 2002/0055041 A1 published May 9, 2002.
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sizes of up to 120 microns), “the production of dense alloys for structural
components . . . would be adversely affected by the inclusion of particles
larger than the claimed upper limit of 75 µm” (Appeal Br. 11–12). Second,
the Appellants argue that the Examiner failed to establish a prima facie case
of obviousness because Moxson fails to teach or suggest any amount for
titanium hydride, “much less that the precursor powders include from about
3% to about 10% by weight titanium hydride, as recited in claim 15” (id. at
13). Third, the Appellants contend that Kobayashi does not provide a
reasonable expectation of success in implementing the disclosed mechanical
grinding technique to remove oxide layers and produce a compacted powder,
which when sintered, forms a TiB-reinforcement phase (id. at 15). Fourth,
according to the Appellants, “there is no evidence that any specific product
described by Moxson or attainable by a plain reading of Moxson will or
must include a TiB reinforcement phase” (id. at 17).
We agree with the Appellants on the second and third issues and
reverse on those bases. Regarding the third issue, Moxson describes a
method for manufacturing flat or shaped titanium aluminide articles and
layered metal matrix composites—e.g. lightweight plates and sheets for
aircraft and automotive applications (Abst.; ¶ 44). Specifically, Moxson
describes forming a porous preform of reactive powder alloy or a porous
multi-layer composite preform consisting of reactive powder metals and
alloys by consolidation using certain specified techniques—i.e., low-
temperature loose sintering in vacuum, high temperature loose sintering in
vacuum, low-pressure sintering in an inert gas, cold pressing, direct powder
rolling, isostatic or die pressing (Abst.). In contrast to the subject matter of
claim 15, Moxson lacks any teaching concerning supplying the precursor
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powder materials into a titanium-based mixing container and rotating an
agitator in the container at a rotation speed of at least 3600 rpm for at least 4
hours to effect substantial removal of oxide layers from surfaces of the
substantially pure titanium powder.
In an attempt to resolve this key difference, the Examiner relied on
Kobayashi (Ans. 5), which does in fact teach the use of physical energy
(e.g., by ball milling at 4000 rpm for 0–5 hours) to facilitate mixing and
reaction of materials (¶¶ 86, 103, 254). But, as the Appellants point out
(Appeal Br. 15), Kobayashi’s disclosure is directed to amorphous nickel-
lithium oxide composites for batteries—not an alloy for a structural
component as in Moxson (Abst.). The Examiner failed to provide evidence,
or otherwise offer a sufficient explanation based on facts or technical
reasoning, establishing that Kobayashi’s ball milling technique for
producing amorphous nickel-lithium oxide composites for batteries would
be suitable in the production of Moxson’s structural parts based on titanium.
In this regard, we find no merit in the Examiner’s position that “[t]he
claimed and Moxson . . . in view of Kobayashi[]’s composite components are
identical in structure or composition and are produced by identical or
substantially identical processes” and, therefore, the modified prior art
method “would produce the same structural component of a titanium alloy
metal-matrix composite having a TiB reinforcing phase” (Ans. 10). In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“The Board’s theory that
these two fastening devices in Wilson were capable of being intermingled to
perform the same function as the third and first fastening elements in claim
76 is insufficient to show that the latter device was inherent in
Wilson. Indeed, the Board's analysis rests upon the very kind of probability
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or possibility—the odd use of fasteners with other than their mates—that this
court has pointed out is insufficient to establish inherency.”).
Regarding the second issue, the Examiner concluded that a person of
ordinary skill in the art would have arrived at an amount of “about three
percent to about ten percent by weight” for the titanium hydride powder, as
recited in claim 15, “in order to achieve desired sinterability and oxidation
resistance of the powder blend with an expectation of success” (Ans. 9).
Consistent with the Appellants’ argument (Appeal Br. 13–14), the Examiner
failed to establish that optimization of the amount for Moxson’s titanium
hydride, which is for enhancing the oxidation resistance of the powders
during sintering and lowering the cost of pure titanium (Moxson ¶ 63),
necessarily results in an amount falling within the Appellants’ specified
range for the titanium hydride, which is provided not only for reducing the
presence of oxygen in the sintered product while avoiding non-uniform
cracking during sintering but also for increasing component density as the
decomposed titanium hydride fills up the interstitial spaces between other
mixed powders (Spec. ¶ 25).
For these reasons, we cannot uphold the Examiner’s rejection.
The Examiner’s final decision to reject claims 15, 16, and 23–25 is
reversed.

REVERSED