United Technologies Corporation

Patent Trials and Appeals Board

Dec 9, 2020

2020000285 (P.T.A.B. Dec. 9, 2020)

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.
14/591,137 01/07/2015 Shahram Amini 71353US02;67097-2807PUS1 5199
54549 7590 12/09/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
WANG, NICHOLAS A
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
12/09/2020 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHAHRAM AMINI, CHRISTOPHER W. STROCK,
SERGEI F. BURLATSKY, and DMITRI NOVIKOV

Appeal 2020-000285
Application 14/591,137
Technology Center 1700
____________

Before JEFFREY T. SMITH, DEBRA L. DENNETT, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject pending claims 1, 3, 4, and 8–11.2 Pending
claims 5–7 and 20 have been withdrawn and are not subject to this appeal.
(Appeal Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 2.
2 Appellant submitted a response dated January 19, 2019 in which claim 21
was cancelled. The Advisory Action dated February 5, 2019 indicates that
the amendment was not entered. However, the Advisory Action in section
15 (status of claims) indicates that claims 1, 3, 4, and 8–11 stand rejected
and claims 5–7 and 20 have been withdrawn from consideration. In light of
the statements in the Advisory Action, we determined claim 21 is not
presented for our review.
Appeal 2020-000285
Application 14/591,137

2
We reverse.

STATEMENT OF THE CASE
Appellant’s invention is generally directed to an article that includes a
MAX phase solid having a formula Mn+1AXn ,where n=l–3, where M is an
early transition metal, A is an A-group element and X includes at least one
of carbon and nitrogen, and a high temperature melting point metallic
material interspersed with the MAX phase solid. (Spec. ¶ 4.) Independent
claim 1 is representative of the appealed subject matter and is reproduced
below:
1. An article comprising:
a MAX phase solid in the form of particles, the MAX phase solid
having a formula Mn+1AXn ,where n=1–3, M is an early transition
metal, A is an A-group element, and X includes at least one of
carbon and nitrogen; and
a high temperature melting point metallic material through which
the particles of the MAX phase solid are dispersed such that the
particles are spaced apart and the metallic material surrounds the
particles, the high temperature melting point metallic material is
a metal or an alloy having a base metal selected from the group
consisting of Zr, Y, Sc, Be, Co, Fe, Ni, and combinations thereof,
and a ratio, in volume percent, of the high temperature melting
point metallic material to the MAX phase solid is from 70:30 to
95:5, wherein the high temperature melting point metallic
material and the MAX phase solid together define a porosity of
50 vol% to 80 vol%.

Claims Appendix.
Appellant requests review of the Examiner’s rejection of claims 1, 3,
4, and 8–11 under 35 U.S.C. § 103 as obvious over Barsoum (US
2010/0055492 A1; published Mar. 4, 2010) in view of Sun (Z.M. Sun et al.,
Appeal 2020-000285
Application 14/591,137

3
Microstructure and mechanical properties of porous Ti3SiC2, Acta
Materialia 53 (2005) 4359–4366) or, alternatively, further in view of Liang
(Y. Liang et al., Electrodeposition and characterization of Ni/Ti3Si(Al)C2
composite coatings, J. Mater. Sci. Technol., 2011, 27(11), 1016–1024).3
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential)).
After review of the respective positions Appellant and the Examiner
provide, we determine that Appellant has identified reversible error in the
Examiner’s rejection under 35 U.S.C. § 103.
We limit our discussion to the independent claim 1 as Appellant
argues in the Appeal Brief. (Appeal Br. 3–6).
The Examiner finds Barsoum discloses a composite material
comprising a Mn+1AXn phase particles, wherein M is an early transition
metal, A is an A-group element, and X is one or both of C and N, and n
ranges from 1 to 3, and “low melting point” material. (Final Act. 4; see
Barsoum Abstr. ¶ 6.) The Examiner finds Barsoum suggests dispersing the
MAX phase particles through a metallic material such that the particles are
spaced apart and surrounded. (Final Act. 4; Barsoum ¶¶ 35, 74, 101.) The

3 The complete statement of the rejection on appeal appears in the November
26, 2018 Final Action. (Final Act. 4–9.)
Appeal 2020-000285
Application 14/591,137

4
Examiner finds Barsoum discloses the metal component is made of a low
melting point metal —i.e., having a melting point of less than about 1800°C.
(Final Act. 4–5; Barsoum ¶ 26.) In light of this disclosure, the Examiner
determines a person of ordinary skill in the art would have reasonably been
able to envisage the selection of Y, Sc, Be, Co, Fe, or Ni from the group of
metals disclosed by Barsoum. (Final Act. 5.) The Examiner further
determines that Barsoum discloses Mg and Co are art-recognized
equivalents for the purpose of achieving solid materials with high damping
capabilities. (Final Act. 5; Barsoum ¶ 88.) Based on this, the Examiner
concludes it would have been obvious to select Co as the metal material.
(Final Act. 5.) The Examiner alternatively cites Liang as evidence
suggesting the selection of Ni as the low melting point metal in Barsoum
would have been obvious. (Final Act. 5.)
Addressing the claim requirement for the porosity of the composite to
be between 50 to 80 volume percent, the Examiner turns to Sun for
disclosing “a MAX phase having a porosity of approximately 43% by
volume” which provides a high energy dissipation property as compared to
fully dense articles. (Final Act. 6; see Sun 4362–4364.) Alternatively, the
Examiner determines Sun establishes that the porosity of an article is a
result-effective variable which affects the overall entry dissipation by a
MAX phase material. (Final Act. 6.) The Examiner determines that it
would have been obvious to one of ordinary skill in the art to modify the
article from the combined teachings of the cited art to include the porosity
level disclosed by Sun to achieve desirable energy dissipation properties, as
Sun teaches. (Final Act. 6–7.)
Appeal 2020-000285
Application 14/591,137

5
As Appellant argues (Appeal Br. 5–6), the Examiner does not provide
evidence supporting the conclusion that it would have been obvious to
modify the porosity of Barsoum’s composite material (“the high temperature
melting point metallic material and the MAX phase solid together”) to be
between 50 vol% to 80 vol% as required by independent claim 1. The
Examiner has not identified where Sun discloses the porosity is a property of
the Max phase material and matrix metal. Sun is silent with regard to a
porosity of a metal matrix and therefore fails to support the Examiner’s
position. (See Abstract). On this record, the Examiner has not explained
adequately or directed us to any portion of Sun or other objective evidence
that Sun’s disclosed porosity of approximately 43% by volume is
sufficiently close to the claimed porosity of 50 vol% to 80 vol% to render
obvious the claimed invention.
The Examiner’s alternative determination that Sun recognizes
porosity as a result-effective variable is also not supported by the present
record. It is well established that optimization of a prior art range flows
from the normal desire of scientists or artisans to improve upon what is
already generally known. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1366–
68 (Fed. Cir. 2007). But it is equally well established that when the
parameter optimized was not recognized to be a result-effective variable,
optimization would not have been obvious. In re Antonie, 559 F.2d 618,
620 (CCPA 1977). The Examiner has not identified evidence in the present
record that the prior art recognized the need for the porosity of the composite
(“the high temperature melting point metallic material and the MAX phase
solid together”) to be between 50 vol% to 80 vol% as required by
independent claim 1. Furthermore, as discussed above, the Examiner has not
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Application 14/591,137

6
identified where Sun discloses the porosity is a property of the Max phase
material and matrix metal. Because the disclosed porosity of Sun is different
than the claimed porosity, there is no basis to conclude that the claimed
porosity is a result-effective variable.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1, 3, 4, and 8–11 rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Barsoum and Sun, or the alternative combination
with Liang.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 8–11 103 Barsoum, Sun, 1, 3, 4, 8–
11
1, 3, 4, 8–11 103 Barsoum, Sun,
Liang
1, 3, 4, 8–
11
Overall
Outcome
1, 3, 4, 8–
11

REVERSED