Ex Parte Boileau et al

Patent Trials and Appeals Board

Mar 27, 2019

14068101 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/068,101 10/31/2013
28395 7590 03/29/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
James Maurice Boileau
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83360298 3833
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MAURICE BOILEAU, TIMOTHY J.
POTTER, PAUL GEORGE SANDERS, MATTHEW JOHN
ZALUZEC, PRA V ANSU SEKHAR MOHANTY, and
VIKRAM V ARADARRAJAN
Appeal2018-004609
Application 14/068, 101
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In our Decision, we refer to the Specification filed October 31, 2013
("Spec."); the Final Office Action dated March 23, 2017 ("Final Act."); the
Appeal Brief filed December 15, 2017 ("App. Br."); the Examiner's Answer
dated January 30, 2018 ("Ans."); and the Reply Brief filed March 30, 2018
("Reply Br.").
Appeal2018-004609
Application 14/068, 101
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-8, 10, 15-18, 21, and 24--29. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
The claims are directed to composite metal alloy materials. The
materials are said to solve one or more problems of the prior art by
providing composite metal alloy materials that are lightweight, yet have the
requisite wear, friction, corrosion, and/or lubrication properties. Spec. ,r 3.
Claims 1 and 18, reproduced below from the Claims Appendix with key
limitations italicized, illustrate the claimed subject matter:
1. An alloy composite material comprising:
an aluminum alloy layer; and
a thermal spray alloy layer of 30 to 40% Mn, 1 to 6% Al,
47 to 76% Fe and 3-5% Cr by weight selected to not exceed
100% by weight, being absent of a ferritic phase, and in
overlaying contact with the aluminum alloy layer.
18. An alloy composite material comprising:
an aluminum alloy layer; and
a thermal spray alloy layer of 30 to 40% Mn and 47 to
70% Fe by weight being essentially free of aferritic phase, and
in overlaying contact with the aluminum alloy layer, wherein
the aluminum alloy layer and the thermal spray alloy layer have
a mechanical compatibility to each other of 20 to 60 MP a as
determined using tests specified by ASTM C633 test.
2 Appellants are the applicants, Ford Global Technologies, LLC and The
Regents of the University of Michigan, identified as the real parties in
interest. App. Br. 1.
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Appeal2018-004609
Application 14/068, 101
REJECTIONS
The Examiner maintains and Appellants seek review of the rejection
of all pending claims under 35 U.S.C. § 112(a)3 for failing to comply with
the enablement requirement. Final Act. 2---6; App. Br. 2-12.
OPINION
The Examiner finds that the pending claims fail to comply with the
enablement requirement because they contain subject matter that was not
described in the Specification in such a way as to enable one skilled in the
art to which they pertain, or with which they are most nearly connected, to
make and/or use the invention. Final Act. 2. More specifically, the
Examiner finds that independent claims 1 and 21 recite a thermal spray alloy
layer that is "absent of a ferritic phase," but the Specification fails to make
clear what conditions are necessary to produce a thermal spray alloy layer
"absent of a ferritic phase" instead of merely being "essentially free of a
ferritic phase," as recited in independent claim 18. Id. The Examiner notes
that Applicants, in responding to a prior art rejection, argued:
Applicant's specification also discloses processing conditions
relating to application of the disclosed compositions. See, e.g.,
[0068]-[0071]. Applicants' disclosure supports that a
composition may not solely determine the microstructure.
Further, Zimmer' s disclosure shows that the microstructure is
not necessarily defined by the composition.
Final Act. 3 ( emphasis added) ( citing Applicants' June 1, 2016 Remarks in
response to an Office Action). The Examiner finds that "[t]he process
parameters referenced by Applicant's Counsel do not set forth what
3 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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Appeal2018-004609
Application 14/068, 101
conditions are necessary in order to produce a product that has an absence of
ferritic phases rather than on[ e] that is merely essentially free of ferritic
phase." Id.
Appellants argue that the claims are enabled because one reasonably
skilled in the art could make or use the invention from the disclosures in the
application coupled with information known in the art without undue
experimentation. App. Br. 2. Appellants argue each of the Wands factors
supports enablement. Id. at 3-12; Reply Br. 2-5.
In the Answer, the Examiner finds (1) Appellants do not set forth
which process parameters result in a product being absent of ferritic phase;
(2) Appellants have made inconsistent arguments as to the formation of the
phases; and (3) the Wands factors support lack of enablement. Ans. 8-25.
Enablement is a question of law. In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000). A specification complies with the 35 U.S.C. § 112(a)
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). The
Examiner bears an initial burden of setting forth a reasonable explanation as
to why he or she believes that the scope of protection provided by that claim
is not adequately enabled by the description of the invention provided in the
specification of the application, including sufficient reasons for doubting any
assertions in the specification as to the scope of enablement Wright, 999
F.2d at 1561-62. The disclosure in the specification defining the subject
matter sought to be patented must be taken as in compliance with the
enabling requirement of section 112 unless there is reason to doubt the
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Appeal2018-004609
Application 14/068, 101
objective truth of the statements contained therein which must be relied on
for enabling support. In re lvfar::occhi, 439 F.2d 220,223 (CCPA 1971).
In the instant case, the Examiner focuses on a comment rnade in
response to a prior art rejection in an earlier phase of prosecution, rather than
on the disclosure in the application. See Final Act 3; Ans. 9, 10 (relying on
Appellants' argument over prior art that the disclosure supports that a
composition may not solely detennine the microstructure); Ans. 18 (stating
that Appellants argued that the thermal spray composition cannot detennine
the microstructure). The Examiner finds that Appellants have not set forth
process pararneters that are necessary in order to produce a product that has
an absence of foffitic phase. Ans. 10.
The Specification discloses, inter cdia, that "the thermal spray alloy
layer with approximately less than 30% Mn may not remain 100% austenitic
throughout the entire temperature range" and "[t]he additions of Mn to
exceed approximately 30% leads to the formation of the stable austenitic
microstructure." Spec. ,r 59. Figure 5 of the application is reproduced
below:
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Appeal2018-004609
Application 14/068, 101
40 5G
FIG. 5
J.6%.~.I + 3-5%Cr·
CONT~IN:NG.UOYS
Figure 5 is a graph demonstrating the effect of alloy content on phase
stability in Fe/30-40% Mn/0.1---0.3% C ferrous alloys. Spec. ,r,r 11, 65.
Figure 5 indicates that such alloys are absent a ferritic phase when the
thermal spray alloy layer comprises 1---6% Al and 3-5% Cr by weight. Thus,
the Specification and figures of the application enable a thermal spray alloy
layer absent of a ferritic phase.
The Examiner's analysis of the Wands factors also does not persuade
us that the claims lack enablement. For example, the Examiner finds that the
breadth of scope of the product of claim 1 "could be an unfathomable
number of different products" based on claim 1 's requirement of "an
aluminum alloy layer." Ans. 13. This assertion, however, fails to take into
account the other limitations in claim 1, viz., a thermal spray alloy layer
comprised of specific ranges of specific elements having specific properties.
Because we find that the Specification adequately enables the scope of
the claims, we do not sustain the rejection of claim 1. For the same reasons,
we do not sustain the rejection of claims 2-8, 10, 15-18, 21, and 24--29.
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Appeal2018-004609
Application 14/068, 101
DECISION
The rejection of claims 1-8, 10, 15-18, 21, and 24--29 is reversed.
REVERSED
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