Ex Parte Aindow et al

Patent Trial and Appeal BoardSep 29, 2014

11501359 (P.T.A.B. Sep. 29, 2014)

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. 11/501,359 08/09/2006 Tai-Tsui Aindow PA-085.11092-US (05-581) 6297 52237 7590 09/29/2014 BACHMAN & LAPOINTE, P.C. c/o CPA Global, Re. Pratt & Whitney P.O. Box 52050 Minneapolis, MN 55402 EXAMINER LUK, VANESSA TIBAY ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 09/29/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAI-TSUI AINDOW and PRABIR R. BHOWAL ____________ Appeal 2012-011814 Application 11/501,3591 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–3, 5, 7, 8 and 10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 5 is illustrative of the claimed subject matter (emphasis added): 5. A process for making wrought titanium alloy based parts, comprising: 1 The Real Party in Interest is United Technologies Corp. App. Br. 1. Appeal 2012-011814 Application 11/501,359 2 melting a quantity of titanium alloy to form a molten titanium alloy, said titanium alloy having a composition of Ti-5.8Al- 4Sn-3.5Zr-0.7Nb-0.5Mo-0.35Si-0.06C or Ti-6Al-2Sn-4Zr-2Mo; adding to said molten titanium alloy a quantity of boron in an amount of about 0.2 weight percent to about 1.3 weight percent of said molten titanium alloy to form a molten boron modified titanium alloy; casting a boron modified titanium alloy based ingot using said molten boron modified titanium alloy; processing said boron modified titanium alloy based ingot into a billet; and forming a wrought titanium alloy part having a duplex microstructure with fully refined transformed beta grains with fine primary alpha grains by forging said boron modified titanium alloy based billet. Independent claim 1 is directed to a similar process to that of claim 5 of casting a boron modified titanium alloy, except that it is limited to adding boron to a molten titanium alloy having the first listed composition of the two alternatives in claim 5 (App. Br. Claims App’x). Independent claim 10 is directed to a product of boron and a titanium alloy as recited in claim 1 (Id.) The Examiner maintains, and Appellants appeal, the following rejections: (a) claims 5, 7, and 8 under 35 U.S.C. 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. 103(a) as being obvious over Miracle (WO 2005/060631 A2 published July 7, 2005, ) in view of Metals Handbook Glossary of Metallurgical and Metalworking Terms METAL HANDBOOK, ASM INTERNATIONAL (2002); and Appeal 2012-011814 Application 11/501,359 3 (b) claims 1 - 3 and 10 under 35 U.S.C. 103(a) as being unpatentable over Miracle in view of Eylon (D. Elylon et al."Titanium and Titanium Alloy Castings," 2 ASM HANDBOOKS ONLINE, ASM INTERNATIONAL (2002) 1–8). Appellants focus on independent claims 1 and 5 (App. Br. 5–13). Appellants explicitly rely upon the arguments for claim 1 for independent claim 10 (App. Br. 13). Appellants state that each of the dependent claims stands or falls with its respective independent claim (App. Br. 9, 13). ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. We are constrained to reverse the Examiner’s anticipation rejection of claims 5, 7 and 8, since, as pointed out by Appellants, Miracle discusses obtaining a product having finely equiaxed microstructures only and does not explicitly mention a duplex microstructure as recited in each claim on appeal (App. Br. 6, 8; Reply Br. 3, 4). See, e.g., Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (A reference must discloses all of the limitations arranged or combined in the same way as recited in the claim in order to anticipate under 35 U.S.C. § 102). However, we are in agreement with the Examiner that the claimed subject matter of representative claim 5 is unpatentable under § 103(a) in view of the applied prior art. Likewise, a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of claims 1 and 10 is unpatentable under § 103(a) in view of the applied prior art. Appeal 2012-011814 Application 11/501,359 4 Accordingly, we sustain all of the Examiner’s prior art rejections for the reasons set forth in the Answer. We add the following primarily for emphasis. In assessing whether a claim to a combination of prior art elements/steps would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). Appellants’ Specification states that “the standard processing route” for Ti-based alloys achieved a “coarse” duplex microstructure (Spec. ¶ [0003]). Appellants explain that there is a need to further refine Ti-based alloys to produce a final microstructure of either “fully refined transformed beta grains or a duplex microstructure with refined transformed beta grains and fine primary alpha grains” (Spec. ¶ [0004]). The only step disclosed by Appellants to achieve either final microstructure is the addition of boron in the amounts of “about 0.2 weight percent to about 1.3 weight percent” of the molten Ti-based alloy, which “refines the as-cast or forged grain structure” (Spec. ¶ [0015]). Indeed, Appellants’ Specification describes every step in their process (except for the addition of the boron to the molten alloy) as Appeal 2012-011814 Application 11/501,359 5 known to one of ordinary skill in the art (Spec. ¶ [0016]). Appellants do not detail any specific steps or processing conditions to achieve the duplex microstructure (Spec. generally). Accordingly, it is apparent from Appellants’ Specification that a duplex microstructure may be achieved by one of ordinary skill in the art using admittedly known TMP (thermo- mechanical processing) steps. As found by the Examiner, Miracle teaches that adding boron in amounts that substantially overlap the claimed amounts to molten Ti-based alloys results in grain refinement (e.g., Ans. 5; noting that the working examples in Miracle use amounts ranging for 0.2% to 1.3%). We are not persuaded by Appellants’ arguments that Miracle teaches away from using conventional TMP steps (e.g., App. Br. 7; Reply Br. generally). Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). As pointed out by the Examiner: Miracle teaches an embodiment in which the aforementioned additional "conventional" TMP step, comprising working and/or heating the cast titanium alloy to the ß and/or α + ß temperature regions, may be applied to boron-containing titanium alloys (paragraphs [003], [005], [029], [047]; Fig. 1). This sequence of steps mirrors those of the instant specification (paragraphs [0012], [0015]). Appeal 2012-011814 Application 11/501,359 6 (Ans. 12). A preponderance of the evidence supports the Examiner’s determination that it would have been obvious to use conventional TMP steps as exemplified by Miracle (and by Appellants as well) with a boron addition to the molten Ti-based alloy as explicitly taught by Miracle for the same purpose as discussed by Appellants to achieve grain refinement, so as to result in a duplex microstructure as claimed. Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used the known grain refinement amounts of boron as exemplified in Miracle (amounts that substantially overlap the claimed amount of “about 0.2 to about 1.3 weight percent” ) in the admitted prior art TMP Ti-based alloy process discussed in Miracle and by Appellants, so as to result in the claimed known duplex microstructure (e.g., Ans. 6, 7, 11, 12; App. Br., Reply Br. generally). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). See also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (holding that the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise be obvious). Furthermore, Appellants have not shown any error in the Examiner’s determination that it would have likewise been obvious to add boron in amounts overlapping the claimed amounts with a known Ti-based alloy such as IMI-834 exemplified in Eylon with the admitted known prior art TMP processing steps exemplified in Miracle and Appellants’ Specification (also see Spec.¶ [0013] (Appellants admit the titanium alloy of claims 1 and 10 is Appeal 2012-011814 Application 11/501,359 7 “commonly utilized in the aerospace industry” and is “commercially available as IMI834”)). Therefore, we affirm the Examiner’s obviousness rejections of all the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED lp