Ex Parte Aimone et al

Patent Trial and Appeal Board

Mar 29, 2017

12109765 (P.T.A.B. Mar. 29, 2017)

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.
12/109,765 04/25/2008 Paul R. Aimone HCS-022/7309742001 4141
23517 7590 03/31/2017
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004
EXAMINER
TAKEUCHI, YOSHITOSHI
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
kcatalano@morganlewis.com
patents @ morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL R. AIMONE1
and Evan Hinshaw
Appeal 2015-007391
Application 12/109,765
Technology Center 1700
Before TERRY J. OWENS, MARKNAGUMO, and AVELYN M. ROSS,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Paul R. Aimone and Evan Hinshaw (“Starck”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 36,
39, 42, and 43. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as H.C. Starck Inc. (“Starck”)
(Appeal Brief, filed 7 April 2015 (“Br.”), 2.)
2 Office action mailed 28 August 2014 (“Final Rejection”; cited as “FR”),
as applied to the claims as amended on 7 April 2015, after filing of the
Notice of appeal, which were approved and entered on 20 April 2015.
Appeal 2015-007391
Application 12/109,765
OPINION
A. Introduction3
According to the ’765 Specification, “[p]ure tantalum and tantalum
alloys begin to become significantly hydrogen embrittled at hydrogen
concentrations greater than 100 ppm.” (Spec. 1 [0006].) “Where tantalum
and tantalum alloys are used in the CPI [chemical processing industry] to
contain very hot and concentrated acids,” the Specification continues,
“hydrogen embrittlement, rather than a loss of wall thickness due to
corrosion, is the predominant failure mechanism.” (Id.) The Specification
reveals that “[t]he starting tantalum is pure or substantially pure,” and that
“[substantially pure tantalum would be a tantalum alloy which has up to
about 11% by weight of non-tantalum components.” (Id. at 4 [00025].)
The subject matter on appeal relates to tantalum-tungsten-platinum
(Ta-W-Pt) alloys that are said to be resistant to aqueous corrosion, especially
corrosion from acids. (Spec. 1 [0004].) These alloys are also said to be
resistant to hydrogen absorption and the subsequent hydrogen embrittlement.
(Id.) In particular, the claimed Ta-W-Pt alloys are said to be superior in
these properties to pure Ta and to Ta-3W, which is also known as “NRC76.”
(Id.) The alloy Ta-3W is described as a tantalum-tungsten alloy containing
about 3% tungsten. (Id. at 5 [00029].) The Ta-3W-Pt alloy is of particular
interest, and is said to be made by microalloying the Ta-3W alloy with Pt.
(Id.) Platinum is said to be the most preferred additive because “platinum
3 Application 12/109,765, Tantalum Based Alloy That Is Resistant to
Aqueous Corrosion, filed 25 April 2008, claiming the benefit of provisional
application 60/914,474, filed 27 April 2007. We refer to the
“’765 Specification,” which we cite as “Spec.”
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Application 12/109,765
has the greatest number of free electrons to theoretically pull in additional
oxygen atoms to close the holes in the Ta2Os oxide layer and/or provide sites
of low hydrogen overvoltage thereby stabilizing the Ta20s oxide layer.”
{Id. at 5-6 1 [00030].)
Claim 36 is representative and reads:
A tantalum alloy resistant to aqueous corrosion and
consisting essentially of
Ta-3W and Pt, wherein
the Pt is present in an amount of at least 1,000 ppm and
at most 2,000 ppm.
(Claims App., Br. 14; paragraphing added.)
The Examiner maintains the following grounds of rejection4,5,e:
A. Claims 42 and 43 stand rejected under 35 U.S.C. § 112(2).
B. Claims 36, 39, 42, and 43 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings4 5 6 7 of
Kaiser8 and Schussler.9
4 Examiner’s Answer mailed 25 June 2015 (“Ans.”).
5 Because this application was filed before the 16 March 2013 effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
6 The amendment filed after the Notice of Appeal (see n.2, supra), cancelled
sole independent claim 26 and rewrote all claims in independent form,
incorporating all limitations of the claims from which they depended.
7 The Examiner presents arguments based on each reference as the primary
reference, with the other reference as the secondary reference.
8 Hans Kaiser, Process for the production of alloys of high melting-point
having ductile properties, U.S. Patent No. 1,167,827 (1916).
9 Mortimer Schussler and Victor T. Bates, Tantalum-Tungsten Alloy, U.S.
Patent No. 3,592,639 (1971).
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Application 12/109,765
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
A. Indefiniteness
Claim 42 reads:
A tantalum alloy resistant to aqueous corrosion and
consisting essentially of Ta-3 W and Pt, wherein
(i) the tantalum alloy consists of Ta-3W and Pt, and
(ii) the Pt is present in an amount of at least 1,000 ppm and
at most 2,000 ppm.
(Claims App., Br. 14, paragraphing and emphasis added.)
The Examiner holds claim 42 to be indefinite because
it is not clear whether the limitation “consists of’ in “wherein
the tantalum alloy consists of Ta-3 W and Pt” (emphasis
added) is intended to further limit the entire composition
tantalum alloy of claim 26 to only that of Ta, 3% W and Pt in
the claimed range (closed) or if it refers only to the Ta-3W
component.
(FR2,11. 11-14.)
We shall not sustain this rejection. Our reviewing court has explained
when the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear
in describing and defining the claimed invention, and
thereafter the applicant fails to provide a satisfactory
response, the USPTO can properly reject the claim as failing
to meet the statutory requirements of § 112(b).
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
In this case, we have no difficulty determining that the “consists of’
transitional phrase limits the alloy “consisting essentially of’ Ta-3W-Pt to
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Application 12/109,765
the named elements in the recited amounts. The Examiner has not
satisfactorily explained how the “notice” (FR 2,11. 20—22) that an alloy
made from powders of the pure components may refer to the totality of the
powder composition, or that each powder may have the alloy composition,
etc., reveals any ambiguity or lack of clarity in the claimed composition.
B. Obviousness
Starck urges first that the rejection for obviousness should be reversed
because “[t]he teachings of Kaiser and Schussler regarding the production
and requisite properties are incompatible.” (Br. 6,11. 15—16.) In particular,
Starck argues, Kaiser discloses only sintered bodies {id. at 5,1. 11), and
“sintering” does not involve melting the component particles {id. at 6,11. 8—
9). In contrast, Starck urges, Schussler requires repeated electron-beam
melting of the component blends of powders in order to achieve an
essentially homogeneous alloy of one phase that is cold workable. {Id. at 5,
I. 21, through 6,1. 3.) Moreover, in Starck’s view, Kaiser’s teachings cover
so many combinations of metals that, even in light of Schussler’s focus on
tantalum alloys containing 1.5 to 3.5 weight percent tungsten,10 there would
not have been motivation to make the precise alloys claimed here. {Id. at 5,
II. 17-19.)
We do not find these arguments persuasive of harmful error in the
rejection for obviousness. Both Kaiser and Schussler are concerned with
cold-workable alloys. Kaiser teaches that the “second additional metal is of
such a nature that it will result in the thorough alloying of the metals or the
10 Schussler’s alloys preferably also contain 0.05 to 0.5 weight percent
columbium [niobium], (Schussler, col. 2,11. 1—5.)
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Application 12/109,765
formation of a solid solution.” (Kaiser, 11. 32—35.) Kaiser teaches further
that platinum is especially efficacious (id. at 11. 39-46) and that the method
by which it is introduced is not particularly important (id. at 11. 47—52). In
this regard, we find that the teachings in the ’765 Specification that “all
numerical values, unless otherwise specifically noted, are understood to be
modified by the word ‘about’” (Spec. 4 [00024]) and that 11% by weight of
impurities may be present in “substantially pure tantalum” (id. at [00025])
appear to characterize the general understanding of the art. Schussler
teaches Ta-W alloys that overlap the Ta-3W alloys recited in the appealed
claims. Starck has not directed our attention to credible evidence of record
that the amount of tungsten in this range is so critical that Ta-3W alloys
would not have been expected to be similar to the embodiment Ta-2.5W,
which is described by Schussler at columns 3^4. We conclude that Starck
has not come forward with sufficient evidence and argument that the
combination of teachings, although somewhat diffuse, are insufficient to
establish a prima facie case of obviousness.
We therefore turn to consider Starck’s arguments based on
unexpected results, supported by the declaration11 filed by Mr. Paul Aimone,
the first-named inventor. Aimone reports (Aimone, | 5), in the Table
reproduced on the following page, hydrogen uptake by pure tantalum,
Ta-3W, Ta + 2000 ppm Pt, and Ta-3W + 2000 ppm Pt obtained under
accelerated aqueous corrosion tests in 36% HC1 at 190°C for six days.
11 Declaration of Paul Aimone under 37 C.F.R. §1.132, filed 7 August 2014,
during examination (“Aimone”).
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Application 12/109,765
{The Table from the Aimone Declaration is reproduced below}
Sample Number Sample Composition Hydrogen Uptake
1 Are tauiNum (Ta) 133 ppm
j Ta-A%W (MW) i 291 ppm
3
....................................... .......
T&+0.2% (2,000 ppm) Pt 24 ppm
4 Ta-r3%W+0.2%Ft 3 ppm
{The table compares hydrogen uptake by Ta and Ta alloys}
Aimone testifies that the hydrogen uptake of Sample 2 (Ta-3W)
is 59% greater than the hydrogen uptake of Sample 1 (pure Ta), and that the
hydrogen uptake of Sample 3 (Ta + 2000 ppm Pt) is 87% less than the
sample uptake of Sample 1. {Id. at | 6.) Assuming that the addition of
2000 ppm of Pt would effect the same percentage reduction in hydrogen
uptake on Sample 2, the expected hydrogen uptake by Sample 4 would be
291 - 0.87 x 291 = 191 x (1.00 -0.87) = 291 x 0.13 ~ 38.
(Id.)
The hydrogen uptake for Sample 4 (Ta-3 W = 2000 ppm Pt), however,
is 3 ppm, a factor of almost 13 less than expected.12
The Examiner objects that the results are not adequate comparisons
with the closest prior art. (Ans. 17—20.) In particular, the Examiner finds
that “comparative sample 3 is representative of a binary tantalum alloy of
the instant invention, albeit not one that is currently claimed. However,
12 Consistently, Figure 4 of the Specification (not reproduced here) indicates
that the hydrogen uptake for NRC76 (i.e., Ta-3 W) ranges from about 7 ppm
for 500 ppm Pt to 1 ppm for 2000 ppm Pt.
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Application 12/109,765
comparative sample 3 is not representative of the tertiary alloy of Kaiser.”
(Ans. 20,11. 1—3; emphasis omitted.)
These objections are misplaced. The comparison presented by
Aimone is based on what would have been the expected reduction in
hydrogen uptake due to the addition of 2000 ppm Pt to Ta-3 W based on the
uptake of hydrogen by Ta, by Ta + 2000 ppm Pt, and by Ta-3W. The
Examiner has not explained why this comparison is not sound. Moreover,
the weight of the evidence favoring the rejection is less than the weight of
the evidence favoring unexpected results, there being no evidence in the art
relied on suggesting that small amounts of Pt would provide enhanced
resistance to hydrogen absorption when added to Ta-3 W. Furthermore, it is
improper to require an applicant to compare to his own invention, as the
Examiner appears to insist must be done. In re Chapman, 357 F.2d 418, 422
(CCPA 1966) (improper to require “comparison of the results of the
invention with the results of the invention.”)
We therefore reverse the appealed rejections.
C. Order
It is ORDERED that the rejection of claims 36, 39, 42, and 43 is
reversed.
REVERSED
8