Zhiyue Xu et al.

Patent Trials and Appeals Board

Nov 9, 2020

14641948 - (D) (P.T.A.B. Nov. 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.
14/641,948 03/09/2015 Zhiyue Xu TYI458294USNP
(BAO1307US)
1752
44639 7590 11/09/2020
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
WANG, NICHOLAS A
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
11/09/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHIYUE XU, BOBBY J. SALINAS, and ZHIHUI ZHANG
____________

Appeal 2020-000783
Application 14/641,948
Technology Center 1700
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE,
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 5–17, 22–25, and 27–31.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Baker Hughes Incorporated as the
real party in interest. Appeal Brief filed June 17, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered January 17, 2019 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a low density, selectively degradable composite
material (independent claim 1) and a selectively degradable article
comprising a low density, selectively degradable composite material
(independent claim 27). Appeal Br. 2–3. Claim 1 illustrates the subject
matter on appeal, and reads as follows:
1. A low density, selectively degradable composite material
comprising
a compacted powder mixture of
a first powder, the first powder comprising first metal
particles comprising Mg, Al, Mn, or Zn, or an alloy of any of
the above, or a combination of any of the above, having a first
particle oxidation potential,
a second powder, the second powder comprising low-
density, hollow or porous ceramic, cermet, intermetallic, metal,
or polymer second particles, and
a third metal powder, the third metal powder comprising
third metal particles having an oxidation potential that is
different than the first particle oxidation potential,
the compacted powder mixture having a microstructure
comprising: a matrix comprising the first metal particles; and
the second particles and third particles dispersed within the
matrix, the third particles comprising a network of third
particles extending throughout the matrix,
the low density, selectively degradable composite
material having a density of about 3.5 g/cm3 or less;
wherein the composite material comprises about 15 wt.%
to about 50 wt.% of the first metal particles, about 50 wt.% to
85 wt.% of the second particles, and about 0.5 wt.% to about 10
wt.% of the third metal particles, each based on a weight of the
composite material.

Appeal Br. 14 (Claims Appendix) (emphasis and spacing added).

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REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 6, 2019 (“Ans.”):
I. Claims 1, 9–11, 14–16, and 27–31 under 35 U.S.C. § 103 as
unpatentable over O’Malley3 in view of Yih4 and Cochran,5 as evidenced by
Scientificpolymer;6
II. Claims 5 and 6 under 35 U.S.C. § 103 as unpatentable over
O’Malley in view of Yih, Cochran, and Jamison,7 as evidenced by
Scientificpolymer;
III. Claims 5, 6, 10, and 11 under 35 U.S.C. § 103 as unpatentable
over O’Malley in view of Yih, Cochran, and Agrawal,8 as evidenced by
Scientificpolymer;
IV. Claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over
O’Malley in view of Yih and Cochran, as evidenced by Scientificpolymer
and Venysek;9
V. Claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over
O’Malley in view of Yih, Cochran, and Slipenyuk,10 as evidenced by

3 US 2014/0014339 A1, published January 16, 2014.
4 Yih, et al., A Comparative Study of the Coated filler method and the
Admixture Method of Powder Metallurgy for Making Metal-Matrix
Composite, 32 Journal of Materials Science, 2873–2882 (1997).
5 Cochran, Ceramic Hollow Spheres and Their Applications (1998).
6 Scientificpolymer (2014).
7 US 2014/0231082 A1, published August 21, 2014.
8 US 2013/0000985 A1, published January 3, 2013.
9 Vanysek, CRC Handbook, Electrochemichal Series.
10 Slipenyuk, et al., Properties of P/M Processed Particle Reinforced Metal
Matric Composites Specified by Reinforcement Concentration and Matrix-
to-Reinforcement Particle Size Ratio, 54 Acta Materialia, 157–166 (2006).
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Scientificpolymer; and
VI. Claims 17 and 22–25 under 35 U.S.C. § 103 as unpatentable
over O’Malley in view of Yih, Cochran, and Borisov,11 as evidenced by
Scientificpolymer.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1, 5–17, 22–25, and 27–31 under 35 U.S.C. § 103 for the reasons set
forth in the Appeal and Reply Briefs, and below.
Claim 1 recites, in part, a composite material comprising a compacted
powder mixture of a first powder comprising first metal particles, a second
powder, and a third metal powder. Independent claim 27 recites a
selectively degradable article comprising a composite material as recited in
claim 1.
O’Malley discloses metal composite 200 that is designed to be
disintegrable and is formed from compaction and sintering of powder
particles 12 having particle cores 14 of core material 18 coated with metallic
coating layers 16. O’Malley ¶¶ 21, 32, 33, 42, 44; Fig. 8. O’Malley
discloses that during the compaction and sintering process, metallic coating
layers 16 sinter together to form cellular nanomatrix 216, and particle cores
14 of core material 18 form metal matrix 214 comprising particle core
material 218 dispersed in cellular nanomatrix 216. O’Malley ¶¶ 32, 33, 41,
42, 44; Figs. 6, 7, and 8. O’Malley discloses that “metal matrix 214 and
particle core material 218 also can include an additive particle 222,” which

11 US 5,305,817, issued April 26, 1994.
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“provides a dispersion strengthening mechanism to the metal matrix 214 and
provides an obstacle to, or serves to restrict, the movement of dislocations
within individual particles of the metal matrix 214.” O’Malley ¶ 39.
O’Malley discloses that “[a]dditionally, the additive particle 222 can be
disposed in the cellular nanomatrix 216 to strengthen the metal composite
200.” O’Malley ¶ 39.
The Examiner finds that O’Malley’s particle core material 218
corresponds to the second powder recited in claim 1, and O’Malley’s
additive particle 22212 corresponds to the third metal powder recited in claim
1. The Examiner finds that O’Malley discloses that cellular nanomatrix 216
is initially in the form of a coating on particle core material 218. Final Act.
4. The Examiner finds that O’Malley does “not expressly teach that the
material is in the form of an admixed powder” such that cellular nanomatrix
216 “is in the form of [first] particles as instantly claimed,” and the
Examiner relies on Yih to address this feature missing from O’Malley’s
disclosures. Final Act. 4.
Yih discloses that “[p]owder metallurgical fabrication of a metal-
matrix composite conventionally involves mixing the discontinuous

12 The Examiner refers to additive particles 222 as “disintegration agents
(222)” in the Final Action. Final Act. 4. We find no disclosure in O’Malley,
however, indicating that additive particles 222 and the disintegration agent
described in O’Malley are one and the same. Rather, O’Malley describes
additive particles 222 and the disintegration agent as two distinct
components that can be included in metal composite 200. Compare
O’Malley ¶¶ 31, 36, with O’Malley ¶ 39. Appellant argues that “O’Malley
does not disclose that particles 222 are disintegration agents” as the
Examiner asserts. Appeal Br. 5. We need not determine whether
Appellant’s argument identifies reversible error in the Examiner’s assertions,
however, for disposition of this appeal.
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reinforcement and matrix metal powder and subsequent sintering, which “is
called the admixture method”. Yih p. 2873. Yih discloses that a “less
conventional method of powder metallurgy is the coated filler method,
which involves coating the discontinuous reinforcement with the matrix
metal and subsequent sintering.” Id. Yih describes experiments conducted
to compare the properties of copper-matrix composites containing
molybdenum (Mo) reinforcement (filler) particles formed using the
admixture method to properties of such composites formed using the coated
filler method. Yih p. 2874.
The Examiner finds that Yih discloses that “the admixture method is
favorable for obtaining high porosity, while the filler-coated method
achieves lower porosity.” Final Act. 4–5 (citing Yih p. 2875). In view of
this disclosure in Yih, the Examiner concludes that it would have been
obvious to modify O’Malley’s “material . . . by utilizing the admixture
composition of Yih et al. in order to achieve higher porosity, and lower
density accordingly, as taught by Yih.” Final Act. 5.
Appellant argues that when considered as a whole, the disclosures of
O’Malley and Yih would not have led one of ordinary skill in the art to
replace O’Malley’s metallic coating layers 16 with metallic particles, in
order to form O’Malley’s metal composite 200 using an admixture method
as disclosed in Yih, rather than forming metal composite 200 using the
coated filler method as taught in O’Malley. Appeal Br. 6–8.
The Examiner responds to Appellant’s arguments by asserting in the
Answer that Yih “discloses the powder admixture method and coated
powder method to both be useful method[s] in forming metal matrix
composites,” and, therefore, “one of ordinary skill in the art would have
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reasonably recognized that both of the aforementioned methods can achieve
the metal matrix composite structure of O’Malley et al. absent persuasive
evidence to the contrary.” Ans. 16.
As Appellant points out (Appeal Br. 7), however, O’Malley discloses
that the advantageous and “unexpectedly high disintegration rate of the
metal composite [disclosed] herein is due to the microstructure provided by
the metal matrix and cellular nanomatrix.” O’Malley ¶¶ 21, 56. O’Malley
explains that “such microstructure is provided by using powder metallurgical
processing (e.g., compaction and sintering) of coated powders, wherein the
coating produces the nanocellular matrix and the powder particles produce
the particle core material of the metal matrix.” O’Malley ¶ 56. O’Malley
further explains that “[i]t is believed that the intimate proximity of the
cellular nanomatrix to the particle core material of the metal matrix in the
metal composite produces galvanic sites for rapid and tailorable
disintegration of the metal matrix.” Id.
O’Malley, therefore, indicates that the microstructure of O’Malley’s
metal composite causes its desired high disintegration rate, and indicates that
the microstructure results from forming the composite by compaction and
sintering of coated powders—referred to as the “coated filler” method in
Yih. As discussed above, Yih compares properties—including the
microstructure—of copper-matrix composites containing molybdenum (Mo)
reinforcement (filler) particles formed using the admixture method to
properties of such composites formed using the coated filler method. Yih p.
2874. Yih discloses that when the Mo particle (filler) content was 70 vol %,
“the composites made by the two methods are different in microstructure.”
Yih p. 2874 (emphasis added).
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O’Malley discloses that including metal matrix 214 in an amount
similar to the 70 vol % Mo particle (filler) content Yih discloses results in a
different microstructure when forming a metal composite using the
admixture and coated filler methods. O’Malley ¶ 37. One of ordinary skill
in the art, therefore, reasonably would have understood from Yih’s
disclosures that replacing O’Malley’s metallic coating layers 16 with
metallic particles, and forming O’Malley’s metal composite 200 using the
admixture method as proposed by the Examiner, would change the
microstructure of the resulting composite, and could possibly produce a
microstructure that differs from the microstructure desired by O’Malley that
yields a highly disintegrable metal composite. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) ([A]n obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
Consequently, on the record before us, the Examiner does not
articulate reasoning having rational underpinning sufficient to explain why
one of ordinary skill in the art would have replaced O’Malley’s metallic
coating layers 16 with metallic particles, and formed O’Malley’s metal
composite 200 using an admixture method as disclosed in Yih, rather than
forming metal composite 200 from core material 18 coated with metallic
coating layers 16 as taught in O’Malley. The Examiner, therefore, does not
establish that the combined disclosures of O’Malley and Yih would have
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suggested a composite material comprising a compacted powder mixture of
a first powder comprising first metal particles, a second powder, and a third
metal powder, as required by claims 1 and 27.
We, accordingly, do not sustain the Examiner’s rejection of claims 1
and 27, and rejections of claims 5–17, 22–25, and 28–31, which each depend
from either claim 1 or claim 27, under 35 U.S.C. § 103.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 9–11,
14–16, 27–
31
103 O’Malley, Yih,
Cochran,
Scientificpolymer
1, 9–11, 14–
16, 27–31
5, 6 103 O’Malley, Yih,
Cochran,
Jamison,
Scientificpolymer
5, 6
5, 6, 10, 11 103 O’Malley, Yih,
Cochran,
Agrawal,
Scientificpolymer
5, 6, 10, 11
7, 8 103 O’Malley, Yih,
Cochran,
Scientificpolymer
, Venysek
7, 8
12, 13 103 O’Malley, Yih,
Cochran,
Slipenyuk,
Scientificpolymer
12, 13
17, 22–25 103 O’Malley, Yih,
Cochran,
Borisov,
Scientificpolymer
17, 22–25
Overall
Outcome
1, 5–17, 22–
25, 27–31
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REVERSED