MTU Aero Engines AG

Patent Trials and Appeals Board

Oct 13, 2021

2020006330 (P.T.A.B. Oct. 13, 2021)

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.
15/234,072 08/11/2016 Thomas GOEHLER 6570-P50309 2000
13897 7590 10/13/2021
Abel Schillinger, LLP
12414 Alderbrook Drive
Suite 201
Austin, TX 78758
EXAMINER
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS GOEHLER, RALF RETTIG,
ROBERT F. SINGER, and NILS RITTER
____________

Appeal 2020-006330
Application 15/234,072
Technology Center 1700
____________
Before GEORGE C. BEST, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 10–17, and 19–23 of
Application 15/234,072. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6.
For the reasons set forth below, we affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies MTU Aero Engines AG as the real party in interest. Appeal Br. 3.
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Application 15/234,072
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I. BACKGROUND
The ’072 Application describes a nickel-based superalloy, which can
be used in turbomachines such as aeroengines. Spec. 1.
Claim 1 is representative of the ’072 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A nickel-based alloy, where in the alloy has a chemical
composition which comprises, in % by weight:
Al from 3.7 to 7.0
Co from 10 to 20
Cr from 2.1 to 7.2
Mo from 1.1 to 3.0
Re from 5.5 to 9.2
Ru from 3.1 to 8.5
Ta from 4.1 to 11.9
Ti from 0 to 3.3
W from 2.1 to 4.9
C from 0 to 0.05
Si from 0 to 0.1
Mn from 0 to 0.05
P from 0 to 0.015
S from 0 to 0.001
B from 0 to 0.003
Cu from 0 to 0.05
Fe from 0 to 0.15
Hf from 0 to 0.15
Zr from 0 to 0.015
Y from 0 to 0.001
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remainder nickel and unavoidable impurities, and where in a
ratio of fractions of Ta to Al in percent by weight is greater than
or equal to 1 and less than or equal to 2, and a ratio of fractions
of Co to W in percent by weight is greater than or equal to 2
and less than or equal to 5.
Appeal Br. 13–14 (Claims App.).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–6, 8, 10–17, and 19–23 are rejected under 35 U.S.C.
§ 103 as unpatentable over O’Hara.2 Final Act. 4–9.
2. Claims 1–6, 8, and 10–17 are rejected under 35 U.S.C. § 103 as
unpatentable over Zhao.3 Final Act. 9–12.
III. DISCUSSION
A. Rejection of claims 1–6, 8, 10–17, and 19–23 as unpatentable over
O’Hara
Appellant does not present specific arguments for reversal of the
rejection of any particular claim subject to this ground of rejection. See
Appeal Br. 7–9. We select claim 1 as representative of the claims subject to
this ground of rejection and limit our discussion accordingly. 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).
In rejecting claim 1, the Examiner found that O’Hara describes a
genus of nickel-based alloys. Final Act. 4. The Examiner further found that

2 US 5,482,789, issued January 9, 1996.
3 US 6,921,586 B2, issued July 26, 2005.
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O’Hara’s nickel-based alloys contain alloying elements in amounts that
overlap the ranges recited in claim 1.4 Id. at 4–6.
Claim 1 recites the chemical composition of the claimed alloys in
weight percentages. O’Hara, on the other hand, describes its alloys in terms
of atomic percentages. The Examiner, therefore, had to convert O’Hara’s
atomic percentages into weight percentages so that the claimed and
described ranges could be compared. In the Final Action, the Examiner
explained how these calculations were performed. See id. at 5.
On appeal, Appellant does not challenge the mathematical accuracy of
the Examiner’s calculations. See Appeal Br. 7–9. Instead, Appellant
challenges the methodology the Examiner used to determine the minimum
and maximum amounts of each of the alloying elements present in O’Hara’s
genus. Id. at 7–8. In particular, Appellant argues that the Examiner’s
calculations “are without merit because these calculations apparently do not
take into account that a maximum concentration or minimum concentration
in wt.% of a specific element is to be obtained while all of the other
elements (and ratios of elements) are within the ranges recited in the instant
claims.” Id. at 7.
Appellant’s arguments are without merit.

4 Some of the ranges recited in claim 1 encompass O’Hara’s ranges`—e.g.,
Aluminum (claim 1: 3.7–7.0 weight % v. O’Hara: 4.7–6.8 weight %). In
other cases, the ranges recited in claim 1 are encompassed by O’Hara’s
ranges`—e.g., Molybdenum (claim 1: 1.1–3.0 v. O’Hara: 0–3.15 weight %).
In still other cases, the ranges recited in claim 1 intersect with O’Hara’s
ranges`—e.g. Cobalt (claim 1: 10–20 wt % v. O’Hara: 3.5–17.4 wt %). We
use the term “overlap” to describe each of these situations.
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The Examiner explains the correct method to do the conversion from
atomic percentages to weight percentages and determine the minimum and
maximum amounts of each of the alloying elements described in O’Hara.
Thus, Appellant has not demonstrated error in the Examiner’s methodology.
The Examiner found that because O’Hara’s ranges overlapped those
recited in claim 1, O’Hara also describes overlapping ratios of amounts of
tantalum to aluminum and cobalt to tungsten.5 Final Act. 6. Based upon
these findings, the Examiner determined that the subject matter claim 1 was
prima facie obvious. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005)
(a prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art); In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same) In re Boesch, 617
F.2d 272, 275 (CCPA 1980).
Appellant has not persuaded us of the existence of reversible error in
the Examiner’s conclusion.
The ’072 Application and O’Hara each describe a genus of nickel-
based alloys. Because the nature of the overlap is complicated, see footnote
4, a portion of the nickel-based alloys described in O’Hara fall within the
scope of claim 1, while the remaining portion does not. Similarly, some of
the alloys encompassed by claim 1 are not described in O’Hara, while others

5 The Examiner is correct. Using the weight percentages calculated by the
Examiner, O’Hara describes the ratio of:
• Ta to Al in the range of 0.8 to 2.3, which encompasses the
claimed range of 1 to 2; and
• Co to W in the range of 0.5 to 6.0, which encompasses the
claimed range of 2–5.
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are. In other words, claim 1 encompasses a subgenus of O’Hara’s nickel-
based alloys. This suffices to render the subject matter of claim 1 obvious.
A prima facie case of obviousness may be rebutted by a showing that
the claimed subject matter provides unexpected results relative to the prior
art. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). Appellant does not
attempt to make this showing with respect to O’Hara.
In view of the foregoing, we affirm the rejection of claims 1–6, 8, 10–
17, and 19–23 as obvious over O’Hara.
B. Rejection of claims 1–6, 8, and 10–17 as unpatentable over Zhao
Appellant does not present specific arguments for reversal of the
rejection of any particular claim subject to this ground of rejection. See
Appeal Br. 10–11. We select claim 1 as representative of the claims subject
to this ground of rejection and limit our discussion accordingly. 37 C.F.R.
§ 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner found that Zhao describes a genus
of nickel-based alloys. Final Act. 9. The Examiner further found that Zhao’s
nickel-based alloys contain alloying elements in amounts that overlap the
ranges recited in claim 1. Id. at 9–10. The Examiner found that because
Zhao’s ranges overlapped those recited in claim 1, Zhao also describes the
overlapping ratios of amounts of tantalum to aluminum and cobalt to
tungsten.6 Based on these findings, the Examiner determined that claim 1’s
subject matter was prima facie obvious.

6 The Examiner is correct. Using the weight percentages calculated by the
Examiner, Zhao describes the ratio of
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With respect to this rejection, Appellant argues that Zhao does not
describe or suggest that controlling concentration ratios of tantalum to
aluminum and of cobalt to tungsten provides any advantageous effects.
Appeal Br. 10 (citing Spec. 5). We understand Appellant to be arguing that
the claimed invention provides unexpected results relative to the prior art.
The existence of unexpected results is a question of fact. Mayne, 104
F.3d at 1343. A showing of unexpected results must be based upon evidence
rather than argument or speculation. Id. at 1343‒44. To establish the
existence of unexpected results, Appellant must establish: (1) that there
actually is a difference between the results obtained through the claimed
invention and those of the closest prior art; and (2) that the difference would
not have been expected by a person having ordinary skill in the art. In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
In this case, Appellant has not pointed us to any actual evidence
comparing the properties of the claimed alloys with the closest prior art. See
37 C.F.R. § 41.37(c)(1)(iv) (requiring citation to the record); cf. DeSilva v.
DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“A brief must make all
arguments accessible to the judges, rather than ask them to play
archaeologists with the record.”). Nor has Appellant identified any evidence
that the alleged advantages provided by the claimed composition would have
been unexpected by a person having ordinary skill in the art at the time of

• Ta to Al in the range of 0.9 to 2.1, which encompasses the
claimed range of 1 to 2; and
• Co to W in the range of 0.6 to 5.7, which encompasses the
claimed range of 2–5.
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the invention. Appellant, therefore, has not established the existence of
unexpected results.
In view of the foregoing, we affirm the rejection of claims 1–6, 8, and
10–17 as obvious over Zhao.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–17, 19–
23 103 O’Hara
1–6, 8, 10–
17, 19–23
1–6, 8, 10–17 103 Zhao 1–6, 8, 10–17
Overall Outcome 1–6, 8, 10–17, 19–23
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED