Ex Parte Wilson

Patent Trial and Appeal Board

Aug 19, 2016

11746307 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111746,307 0510912007
28841 7590
ConocoPhillips Company
600 North Dairy Ashford
Houston, TX 77079-1175
08/23/2016
FIRST NAMED INVENTOR
Stuart L. Wilson
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.
34267US 2436
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
Legal-IP@conocophillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STUART L. WILSON
Appeal2015-003497
Application 11/746,307
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1through5 and 7 through 12. We have jurisdiction under 35 U.S.C.
§ 6(b ).
STATEMENT OF THE CASE
Appellant's invention is generally directed to a method of welding a
structure that comprises, inter alia, forming a structure fabricated from 36%
Ni-Fe alloy base material having a seam region, and welding the structure
along the seam region with a 36% Ni-Fe alloy filler of exactly the same
composition as the base material. Br. 6. Appellant's Specification explains
that 36% Ni-Fe alloy has a very low coefficient of thermal expansion,
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Application 11/746,307
making it useful for forming structures such as pipe that are used for the
transport or storage of a cryogenic liquid. Spec. i-f 14. Appellant's
Specification further explains that a mismatch in the coefficient of thermal
expansion between a base material and a material used to fill or weld seams
in a cryogenic structure could cause the welded structure to fail under
cryogenic conditions. Spec. i-f 13. Appellant's Specification indicates that
using a filler material for welding seams in a cryogenic structure that has
exactly or substantially the same composition as the base material
advantageously avoids a coefficient of thermal expansion mismatch between
the materials. Spec. i-f 26.
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method of welding a structure comprising:
forming a structure of desired wall thickness, length, and
seam region, wherein the structure is fabricated from 36% Ni-
p e alloy base material;
welding the structure along the seam region with 36%
Ni-Fe alloy filler of exactly the same composition as the 36%
Ni-Fe alloy base material such that excess weld reinforcement
is left as part of a weld bead at the seam region;
cold working the weld bead such that the thickness at the
seam region is reduced; and
heat treating the seam region under conditions effective
to cause the seam region to have an ultimate tensile strength,
yield strength, or both about equal to or greater than the base
material, wherein the heat treating is performed at temperatures
in a range of from about 760°C to about 870°C for a time
effective to recrystallize the seam region.
Br. 13, Claims Appendix.
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Application 11/746,307
Appellant (see Br., generally) requests review of the Examiner's final
rejection1 of claims 1-5 and 7-12 under 35 U.S.C. § 103(a) as unpatentable
over Nishimoto et al. (US 6,528,012 B2, issued March 4, 2003)
("Nishimoto") in view of Sines et al. (US 4,490, 186, issued December 25,
19 84) (''Sin es").
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejection under 35 U.S.C. § 103(a)
of claims 1-5 and 7-12. We add the following for emphasis.2
The Examiner finds that Nishimoto discloses a method of welding that
comprises forming a structure including a seam region fabricated from a low
thermal expansion coefficient base material comprising Fe-36% Ni alloy,
corresponding to the base material recited in claim 1, and welding the
structure along the seam region with a Fe-Ni alloy low thermal expansion
coefficient weld metal comprising 30-45% Ni by weight, which is designed
to have a coefficient of thermal expansion similar to that of the base
material. Final Act. 3--4. The Examiner finds that the composition of the
weld metal disclosed in Nishimoto overlaps the composition of the filler
material recited in claim 1 (compare Spec. Table 2 with Nishimoto col. 4,
11. 34--58), and concludes that it would have been obvious to one of ordinary
skill in the art at the time of the invention to use a 36% Ni-Fe alloy filler of
exactly the same composition as the 36% Ni-Fe alloy base material with a
1 Final Office Action entered June 30, 2014.
2 Appellant argues claims 1-5 and 7-12 together. See Appeal Brief,
generally. Therefore, we select claim 1 as representative, and claims 2-5
and 7-12 will stand or fall with claim 1.
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Application 11/746,307
reasonable expectation of success because Nishimoto discloses the same
utility over the range of the weld metal composition. Final Act. 3.
Appellant does not dispute the Examiner's reliance on Sines for
disclosing cold working a weld zone to reduce its thickness, followed by
annealing to cause recrystallization in the weld zone, and also do not dispute
the Examiner's conclusion that it would have been obvious to one of
ordinary skill in the art at the time of the invention to optimize the annealing
temperature to ensure a fully recrystallized seam region. Compare Final
Act. 3--4 with Br. 8-11. Nor does Appellant dispute the Examiner's finding
that the welded structure of Nishimoto in view of Sines is produced by a
process that is identical or substantially identical to the process recited in
claim 1, and the Examiner's conclusion that the seam region ofNishimoto's
welded structure would therefore have an ultimate tensile strength, yield
strength, or both, about equal to or greater than the base material, as recited
in claim 1. Compare Final Act. 4--5 with Br. 8-11.
Appellant argues that Nishimoto discloses broad ranges for the
amounts of the components that are included in the base and filler materials,
and argue that Nishimoto does not disclose or suggest that the base and filler
have exactly identical compositions, which is a critical feature of their
claimed invention. Br. 8-9. However, we agree with the Examiner that
Nishimoto' s disclosures would have suggested using the same or
substantially similar base and filler materials, for at least the following
reasons.
Nishimoto discloses that when structures formed from a low
coefficient of thermal expansion 36% Ni-Fe alloy base metal are assembled
by welding to produce articles for the transport or storage of cryogenic
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Application 11/746,307
substances such as liquefied natural gas, it is desirable to use a welding
material that has a linear coefficient of thermal expansion similar to that of
the base metal, which can be achieved by using a welding material that is
"similar to that of the base metal." Nishimoto col. 1, 11. 43-59. Nishimoto
further discloses joining Ni-Fe alloy low coefficient of thermal expansion
weld metals (base materials) using Ni-Fe alloy low coefficient of thermal
expansion welding materials (filler) that both contain the same components
in amounts (weight percentage ranges) that are identical or overlap
significantly, including disclosing that both the weld metals and the welding
materials contain a Fe-base alloy comprising 30% to 45% Ni. Nishimoto
col. 3, 1. 65---col. 4, 1. 58. Thus, Nishimoto recognizes the importance of
matching the linear coefficient of thermal expansion of the welding material
to the base material, thus implying or suggesting the use of a welding
material having the same or substantially the same composition as the base
material.
It follows that Nishimoto' s disclosures as a whole would have
suggested to one of ordinary skill in the art at the time of the invention
welding 36% Ni-Fe alloy base metal structures using welding materials
(fillers) having the same or similar composition as the base metal, such as a
36% Ni-Fe alloy filler material, as recited in claim 1. On this record,
Appellant does not adequately explain why the Examiner reversibly errs in
determining that one of ordinary skill in the art would have been led to using
the claimed base and filler alloys from the teachings of the Nishimoto. Nor
does Appellant articulate a patentable distinction between the claimed
method and the methods suggested by Nishimoto. Br. 8-11. Therefore, we
are unpersuaded by Appellant's arguments and agree with the Examiner's
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determination of obviousness. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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 [of obviousness] is even more compelling than in
cases of mere overlap.'")
Moreover, Appellant does not direct us to persuasive reasoning or
evidence-such as factual data- demonstrating that exact identity of base
and filler alloy compositions provides properties or results that would have
been unexpected by one of ordinary skill in the art at the time of the
invention. Br. 8-11. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(indicating that in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
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.).
Appellant further contends that Nishimoto' s primary concern is
"increasing strength by having a filler material that is stronger than the base
material," which is "expressly discouraged by Appellant based on the
inhomogeneous structure that results." Br. 9. However, Appellant has not
directed us to a disclosure in Nishimoto indicating that Nishimoto' s primary
concern is increasing strength via a filler material that is stronger than the
base material, and Appellant does not identify any particular teaching in
Nishimoto indicating that Nishimoto' s filler material is, in fact, stronger than
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the base material. Br. 8-11. Thus, Appellant's unsupported argument is
unpersuasive of reversible error.
Appellant further argues, relying on a Rule 132 Declaration executed
by Satish Gandhi on February 6, 2014 ("the Gandhi Declaration'), that
Nishimoto would have taught one of ordinary skill in the art away from a
filler material having the same composition as the base metal because
Nishimoto discloses alloying additions that exceed those of the base
material, and Nishimoto is concerned with dilution effects of the weld by the
base metal, which do not occur with a matching base and filler material. Br.
9-11; Gandhi Declaration i-f 8. However, neither Appellant nor the
Declarant points to any specific passages or portions in Nishimoto that
contain the asserted disclosures and teachings contrary to the findings
discussed supra. Id. The bases for the Declarant's statements are thus
unclear, and we therefore cannot determine how the Declarant reached the
asserted opinions and conclusions. Accordingly, Appellant's arguments and
the Declarant's assertions are unpersuasive of reversible error due to the
absence of objective, corroborating evidence. Velander v. Garner, 348 F.3d
1359, 1371 (Fed. Cir. 2003) ("[W]hat the Board consistently did was accord
little weight to broad conclusory statements that it determined were
unsupported by corroborating references. It is within the discretion of the
trier of fact to give each item of evidence such weight as it feels
appropriate."); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) ("[T]he Board is entitled to weigh the declarations and conclude
that the lack of factual corroboration warrants discounting the opinions
expressed in the declarations.").
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We accordingly sustain the Examiner's rejection of claims 1-5 and 7-
12 under 35 U.S.C. § 103(a) as obvious over Nishimoto and Sines.
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
TIME PERIOD
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).
AFFIRMED
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