Ex Parte Woodfield et al

Patent Trial and Appeal Board

Jun 14, 2016

12135338 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/135,338 06/09/2008
31450 7590 06/16/2016
GENERAL ELECTRIC COMPANY
GLOBAL PATENT OPERATION-AVIATION
3135 Easton Turnpike
Fairfield, CT 06828
FIRST NAMED INVENTOR
Andrew Philip WOODFIELD
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.
132656 (21635-0129-Cl) 3564
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
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 ANDREW PHILIP WOODFIELD,
CLIFFORD EARL SHAMBLEN, ERIC ALLEN OTT, and
MICHAEL FRANCIS XAVIER GIGLIOTTI
Appeal2014-008223
Application 12/135,338
Technology Center 1700
Before MARK NAGUMO, CHRISTOPHER M. KAISER, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
Appeal2014-008223
Application 12/135,338
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-14, and 17-22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
OPINION
A. Introduction
The claims relate to "the production of metallic articles without
melting." (Spec. ,-i 1.)3 As "[n]o joining operations are needed," the metal
articles so produced are said to be free of "irregularities that are otherwise
present in the article due to melting and casting" which may be
advantageous over the "premature failure of conventional cast or cast-and-
worked articles." (Id. ,-i 5.)
The method is more specifically directed to producing a metal article
using "elements that are otherwise thermophysically incompatible" such as
using an "alloying element [that] is thermophysically melt incompatible with
[a] base metal" so that the resultant metal article has "[a] net macroscopic
composition ... intentionally varied spatially according to a pre-selected
pattern." (Id. ,-i,-i 8 and 10.) In embodiments, the metal articles are produced
by "furnishing a mixture of nonmetallic precursor compounds of [] metallic
1 The Real Party in Interest is identified as the named inventors and the
assignee General Electric Company. (Appeal Brief filed April 16, 2014
("Br."), 1.)
2 Rejection mailed 12 November, 2013 (hereinafter "FR."). Claims 2, 15,
16, and 23 have been canceled. (Br. 2.)
3 Application 12/135,338, Method for Producing a Metallic Article Having a
Graded Composition, Without Melting, filed 09 June 2009, is a continuation
of Application 10/896,702, filed 22 July 2004 (now U.S. Patent 7,384,596).
We refer to the '"338 Specification," which we cite as "Spec."
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Application 12/135,338
constituent elements," "chemically reducing the mixture of nonmetallic
precursor compounds to produce an initial metallic material, without melting
the initial metallic material," and consolidating the "initial metallic material .
. . to produce a consolidated metallic article, without melting[.]" (Id. ii 7.)
The '338 Specification broadly provides that "[a]ny operable type of
consolidation may be used" in this particular method. (Id. ii 57.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A method for preparing a metallic article made of
metallic constituent elements, comprising the steps of
furnishing a chemically reduced initial metallic material
formed from chemically reducing a mixture of nonmetallic
precursor compounds of the metallic constituent elements,
without melting the initial metallic material; and
consolidating the initial metallic material to produce a
consolidated metallic article, without melting the initial metallic
material and without melting the consolidated metallic article,
wherein a net macroscopic metallic composition of the
consolidated metallic article varies spatially in the metal matrix
of the metallic article according to a preselected pattern;
wherein the initial metallic material includes more base
metal than any other metallic element, wherein the base metal
is titanium.
(Br. 17, Claims Appendix) (emphasis added).)
Claim 14, reproduced below, is another independent claim on appeal:
A method for preparing a metallic article made of
metallic constituent elements, comprising the steps of
furnishing a chemically reduced initial metallic material
formed from chemically reducing a mixture of nonmetallic
precursor compounds of the metallic constituent elements,
without melting the initial metallic material, wherein the initial
metallic material includes more base metal than any other
metallic element, the base metal being titanium; and
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consolidating the initial metallic material to produce a
consolidated metallic article in the form of a gas turbine engine
disk starting shape, without melting the initial metallic material
and without melting the consolidated metallic article, wherein a
net macroscopic metallic composition of the consolidated
metallic article varies spatially in the metal matrix of the
metallic article according to a preselected pattern.
(Id. at 18.)
The Examiner maintains the following grounds of rejection:
A. Claims 1, 3, 5-9, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over JP '9584 and Conley. 5 (FR.
2.)
B. Independent claim 14 and claims 17-22 which depend from
claim 14, as well as claims 4, 10, 11 which depend from claim
1, stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP '958, Conley, and Cairns. 6 (FR. 5.)
.LA:..ppellants seek our reviev"1 of the rejections of independent claim l 7
and independent claim 14.8
4 Toyoaki Ishibachi, et al., Manufacturing Method for Sintered High-Alloy
Steel, JP 57-164958 (published Oct. 09, 1982) ("JP '958").
5 Edward V. Conley, Method of Making Composite Cermet Articles and the
Articles, U.S. Patent 5,541,006 (issued July 30, 1996) ("Conley").
6 Robert Lacock Cairns & John Stanwood Benjamin, Iron-Chromium-
Aluminum Alloys With Improved High Temperature Properties, U.S. Patent
3,992,161 (issued Nov. 16, 1976) ("Cairns").
7 Claims 3, 5-9, 12 and 13 stand and fall with claim 1. (Br. 3.)
8 Claims 4, 10, 11 and 17-22 stand and fall with claim 14. (Br. 13.)
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 1
Appellants raise four issues on appeal: (1) the teachings in JP '958
regarding the claimed "base metal"; (2) the teachings in Conley regarding
the recited "net macroscopic metallic composition of [a] consolidated
metallic article [which] varies spatially in the metal matrix of the metallic
article according to a preselected pattern"; (3) whether JP '958 teaches away
from Conley's teaching of a composition that varies spatially; and ( 4)
whether JP '958 relates to a steel alloy may be modified based on Conley
which relates to cermets. We address each issue in tum.
JP '958
Appellants argue that the Examiner erred in considering the teachings
of JP '958. In particular, the passage of interest in JP '958 provides: "The
alloy manufactured in the present invention contains 5-60% ... of two or
more of the following W, Mo, Cr, V, Co, Ti, Nb, Ta, 0.5-5% C, and 2% or
less N with the remainder being Fe and the inevitable impurities." (JP '958,
7 (cited in Br. 4 ). ) Appellants argue that because this passage "teaches that
the combination of at least two metals out of the eight metals listed make up
between 5% and 60% of the composition," it "does not ... disclose that one
of the eight metals may make up a majority, or even a plurality, of the
composition." (Br. 4.) Appellants also argue that the Examiner erred in
failing to recognize that JP '958 discloses a production method for a "steel"
alloy and a "martensitic" matrix, indicating that iron is the only base metal
disclosed in the reference. (Id. at 4-5.) In Appellants' view, "the use of any
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other element besides iron would no longer form the steel structure taught by
JP '958." (Reply 3.)9
The Examiner responds that this particular passage in JP '958
"suggest[s] that Ti or anyone ofW, Mo, Cr, V, Co, Nb, Ta and Fe could be
used as the base metal (i.e. more than 50% by weight) which would be more
than any other metallic elements." (Ans. 3.) Based on this interpretation,
the Examiner finds that JP '958 supports the obviousness findings.
"All the disclosures in a reference must be evaluated, including
nonpreferred embodiments, and a reference is not limited to the disclosure of
specific working examples." In re Mills, 470 F.2d 649, 651 (CCPA 1972).
It is therefore not necessary that the objective disclosed in the prior art, for
example, the objective for producing an alloy be the same as Appellants'
objective for doing the same. See KSR Int'!. Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007). The fact that JP '958 describes "a steel alloy" in various
places does not change the fact that it describes an alloy that "contains 5-
60% ... of two or more of the following W, Mo, Cr, V, Co, Ti, Nb, Ta"
"with the remainder being Fe and the inevitable impurities." (JP '958 at 7.)
The '338 Specification provides that by "furnishing a mixture of
nonmetallic precursor compounds of the metallic constituent elements," the
resultant product "comprises more of a base metal than any other metallic
element, with the base metal in the form of [a] chemically reducible
precursor compound." (Spec. ,-i 6.) Appellants thus provide that a skilled
artisan "would recognize [that] a base metal is the principal constituent of
any alloy, representing a majority, or at least plurality, of the composition."
(Br. 4.) Appellants do not argue that a "base metal" of an alloy should be
9 Reply Brief, filed 10 July 2014 ("Reply").
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defined to require the base metal to constitute more than 50% of the alloy
composition. (See id.) Appellants in fact acknowledge that JP '958
discloses a steel alloy having an iron content of as low as "33%" which
Appellants consider "entirely consistent with the disclosure of JP '958 that
iron would be the base metal." (Id. at 4.)
Based on the teaching in JP '958 that an alloy (such as a steel alloy)
may contain 33% of iron with the remaining 67% being "two or more of the
following W, Mo, Cr, V, Co, Ti, Nb, Ta" and impurities (JP '958 at 7), the
Examiner has found that one of ordinary skill in the art at the time of the
invention would have had a reason to use titanium in an alloy where the
titanium content may be greater than that of iron. Appellants have shown no
harmful error in the Examiner's findings based on the definition of "base
metal" as provided in the '338 Specification and the Appeal Brief.
Conley
Appellants next argue that Conley does not disclose a product having
"a net macroscopic metallic composition ... [that] varies spatially in the
metal matrix of the metallic article according to a preselected pattern" as
recited. Appellants do not dispute that Conley teaches the "spatial variation
of a cermet" 10 but argue that Conley is directed to "a cermet [which] is
different from a metallic composition." (Reply 4 and 5 (emphasis in
original); Br. 7-8 (urging that the Examiner erred in recognizing that "a
cermet and a metallic composition are not the same").) Without providing
10 Cermet is a material that "comprises a hard component and a binder."
(Conley 8, 11. 22-23.) The hard component of a cermet may include
carbides which may include one or more metals. (Id. at 8:24-36.) The
binder component may include glasses, ceramics or "single metals." (Id. at
8:38-39, 46-47.)
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an explanation as to how the difference in composition of these materials
would have prevented a skilled artisan to combine the teachings in Conley
with those in JP '958, Appellants conclude that the Examiner erred in
applying Conley to the claim at issue.
We are not persuaded by Appellants' arguments. Other than stating
that cermet and metal have different compositions, Appellants do not explain
why, for example, different specific properties of cermets and metals would
have discouraged the skilled artisan from combining them, or that the
properties of the resultant product from the claimed process could not have
been met as a result of these differences between cermets and metals.
Appellants do not address the Examiner's finding that the skilled artisan
would have considered the fact that the cermet may compositionally include
a "metallic component" when considering the overall teachings of Conley.
(See FR. 3--4; see also Conley, 8, 11. 21-27, 37--41.) Because Appellants
have not shown, based on evidence in the record, that a skilled artisan would
have found claim 1 non-obvious based on the collective teachings of a
"metal alloy" in JP '958 and a cermet with a varying composition which
may include a metal component in Conley, Appellants have not shown that
the Examiner erred harmfully in considering the teachings in Conley.
Collective Teachings in JP '958 & Conley
Appellants also argue that the Examiner erred in considering the
collective teachings of JP '958 and Conley because the discussion in JP '958
about an alloy having "uniformly dispersed" carbide or carbide and nitrite
teaches away from the cermet having a variant macroscopic composition in
Conley. (Br. 9-12; Reply 6.)
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If a prior art reference discloses a different solution to a similar
problem, it does not teach away from the claimed subject matter unless the
prior art reference also criticizes, discredits or otherwise discourages the
solution claimed. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Here,
Appellants do not dispute the Examiner's finding that, similar to the '338
Specification which seeks to provide "an improved approach for making
articles having property requirements that vary according to position with
the article" (Spec. iJ 4), Conley describes a method of making articles
"having at least two regions exhibiting at least one different property. (See
Ans. 4-5; see also Conley at 2, 11. 22-25.) Appellants also do not dispute
the Examiner's finding that JP '958 teaches a powder metallurgy method to
manufacture an alloy that has a particular structure with certain improved
properties. (Ans. 4-5; see JP '958 at 4, 13.)
Appellants assert that, given the teaching of the "uniformly dispersed"
carbide in JP '958, a skilled artisan would "be discouraged from spatially
varying the carbide content." (Br. 9-11; Reply 5.) Appellants, however, do
not address (much less show error in) the Examiner's findings that a skilled
artisan would not have precluded an alloy (one that contains the "uniformly
dispersed" carbide) from having a particular metallic portion with a variant
macroscopic composition as recited. (See Ans. 5.) Appellants accordingly
have not shown harmful error in the Examiner's finding that JP '958 does
not disparage varying the metallic composition in such a way as to exclude
such a composition from the alloy. (Ans. 5; see Br. 11; see also Reply 6.)
Appellants' assertion that the skilled artisan would "be led in a divergent
direction from Conley" (Br. 11; Reply 6), without analysis or citing any
evidentiary support in the record, is likewise insufficient to show that the
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Examiner erred in this aspect of the obviousness analysis. See DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006) ("We will not read into a reference a teaching away from a process
where no such language exists.").
Appellants' assertions that the Examiner misapplied Fulton, In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) and other case law do not provide
an explanation as to how these cases may be applied based on the facts of
this case to show that JP '958 "suggests that the line of development flowing
from the reference's disclosure is unlikely to be productive of the result
sought by the applicant." Gurley, 27 F.3d at 553. Other than quoting certain
portions of these cases, Appellants have not shown, for example, that the
problems addressed by Conley and JP '958 are so different that the teachings
of Conley would not have been applied to the alloys of JP '958. See Fulton,
391 F.3d at 1201. Appellants in fact do not dispute the Examiner's findings
that JP '958 and Conley are both directed to using powder metallurgy to
produce materials having particular "desired properties." (Ans. 5; see Br. 11
(citing Fulton without providing an analysis based on Fulton using the facts
of this case).) We are not therefore persuaded by Appellants' argument that
the Examiner committed harmful error in the application of Fulton, Gurley,
or other case law.
Modifying JP '958
We are not persuaded by Appellants' argument that modifying the
alloy in JP '958 "would render the material unsuitable for its intended
purpose." (Br. 12; Reply 7.) Appellants again support their assertion based
on the fact that metal and cermet are different materials and the argument
that there is no "teaching or disclosure that a spatially variable formation
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would be compatible with the processing of the crystalline change in the
metal matrix structure." (Br. 12.)
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art. Keller,
642 F.2d 413, 425 (citations omitted).
In this case, Appellants have not analyzed the difference in
composition between cermets and metals under section 103 to show that the
proposed modification would have been beyond the capabilities of a person
of ordinary skill in the art. See KSR, 550 U.S. at 418. Absent such an
assertion supported by evidence, Appellants have not shown harmful error in
the Examiner's findings as to the "inferences and creative steps that a person
of ordinary skill in the art would employ" to overcome those difficulties
within their level of skill. Id. at 418. Because Appellants do not address the
rationale provided by the Examiner, namely, that a skilled artisan would
have the knowledge to apply these references "in order to achieve desirable
properties for high temperature applications at selected regions of [an]
article" such as the article produced by the claimed method (Ans. 5 (citing
Spec. iJ 2)), Appellants have not pointed us to any error in the Examiner's
reasoning in support of the obviousness findings.
Claim 14
Appellants argue that the Examiner erred in rejecting claim 14 for
failure "to cite anything in Conley to suggest that the materials disclosed
therein are in any way comparable to materials utilized on Cairns" and that
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the Examiner's analysis "is nothing more than mere conclusory statements."
(Br. 15; Reply 7-8.)
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR, 550 U.S. at 416 (2007). Here, the Examiner finds that Cairns describes
using "powder metallurgy" to produce an alloy with superior strength and
corrosion resistance suitable for "turbine[] vanes, burner cans and blades"
and "high temperature applications" in general. (Ans. 6 (citing Cairns at 1,
11. 26-30 and 2, 11. 38-54).) Based on these teachings, the Examiner
concludes that, when applying the combined teachings of JP '958, Conley,
and Cairns, the skilled artisan would have found predictable the method of
claim 14 to manufacture the product at issue. Appellants' argument that the
Examiner "has cited nothing in Conley to suggest that the materials
disclosed therein are in anyway comparable to materials utilized on Cairns"
has not pointed us to any harmful error in the Examiner's rationale
supporting that a skilled artisan would have found the combined teachings of
these references to yield "predictable results." KSR, 550 U.S. at 401, 419
("The obviousness analysis cannot be confined by a formalistic conception
of the words teaching, suggestion, and motivation, or by overemphasis on
the importance of published articles and the explicit content of issued
patents.").
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C. Order
For the above reasons, the Examiner's rejections of claims 1, 3-14,
and 17-22 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv) (2009).
AFFIRMED
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