Ex Parte BryanDownload PDFPatent Trial and Appeal BoardDec 13, 201712903851 (P.T.A.B. Dec. 13, 2017) Copy Citation 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. 12/903,851 10/13/2010 David J. Bryan TAV-2184CIP/100487CIP 4742 66376 7590 12/15/2017 ALLEGHENY TECHNOLOGIES INCORPORATED 1000 SIX PPG PLACE PITTSBURGH, PA 15222-5479 EXAMINER LUK, VANESSA TIB AY ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 12/15/2017 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): maria.dunn@atimetals.com ATIDocketing@ atimetals.com uspatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID J. BRYAN Appeal 2017-003366 Application 12/903,851 Technology Center 1700 Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2017-003366 Application 12/903,851 Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. An article of manufacture selected from a titanium alloy fastener and a titanium alloy fastener stock, the article of manufacture including a hot rolled, solution treated and aged alpha/beta titanium alloy comprising, in percent by weight: 3.9 to 4.5 aluminum; 2.2 to 3.0 vanadium; 1.2 to 1.8 iron; 0.24 to 0.3 oxygen; up to 0.08 carbon; up to 0.05 nitrogen; titanium; and up to a total of 0.3 of other elements; wherein the article of manufacture has a longitudinal ultimate tensile strength of at least 180 ksi (1,241 MPa) and a double shear strength of at least 108 ksi (744.6 MPa). Appellant1 requests review of the Examiner’s rejection of claims 1—7 under 35 U.S.C. § 103(a) as unpatentable over Alloy Digest (ATI™425 (High-Strength Titanium Alloy), Alloy Digest, ASM International, dated/corrected July 2004), Hebda (US 2004/0221929 Al, published November 11, 2004), Applicant Admitted Prior Art (AAPA) on paragraph 25 of the Specification (discussing ATI 425® as a commercial version of the alloy taught in US 5,980,655 to Kosaka, issued November 9, 1999), and ATI 1 The real party in interest is identified as ATI Properties LLC, formerly known as ATI Properties, Inc. App. Br. 1. 2 Appeal 2017-003366 Application 12/903,851 2 (ATI 425®-MIL Alloy, Technical Data Sheet, Version 2, dated August 16, 2010).2 App. Br. 6; Final Act. 2; Non-Final Act. 3—6.3 Appellant presents arguments addressing only independent claims 1 an 5 and do not present separate arguments for dependent claims 2—4, 6 and 7. See generally App. Br. Accordingly, we limit our discussion to the issues related to the independent claim 1. Independent claim 5 and dependent claims 2-4, 6 and 7 stand or fall with claim 1. As a preliminary matter, we find the reference designated as ATI 2 and the Hebda reference to be duplicative of the teaching that solution treated and aged titanium alloys can have an ultimate longitudinal tensile strength of at least 180 ksi (1,241 MPa). Non-Final Act. 6; Ans. 6; Hebda 38-40 (including Table 5); ATI 2 5 (Table entitled “Typical Tensile Properties of Solution Treated and Aged Bar”). Accordingly, we will limit our discussion to the Hebda reference for the rejection before us for review on appeal. In view of this, we need not reach Appellant’s arguments and evidence in the form of a declaration of David J. Bryan under 37 C.F.R. § 1.131,4 alleging that ATI 2 is not prior art or proper evidentiary reference against the claimed invention, for disposition of this appeal. 2 The Alloy Digest and ATI 2 references lack numeration on the pages. For the purposes of this opinion, we enumerate the pages beginning with the first page of each reference as page 1. 3 We refer to the Non-Final Action dated October 6, 2014 in discussing the findings by the Examiner. 4 The declaration under 37 C.F.R. § 1.131 was filed on May 23, 2014 and entered into the record by the Examiner in the Non-Final Action dated October 6, 2014. 3 Appeal 2017-003366 Application 12/903,851 OPINION Prior Art Rejection Claim 1 Claim 1 is directed to an article of manufacture that is either a titanium alloy fastener or a titanium alloy fastener stock that includes a hot rolled, solution treated and aged alpha/beta titanium alloy of specific composition and properties. The Examiner finds Alloy Digest discloses an alpha/beta titanium alloy (ATI™ 425 alloy) that differs from the claimed titanium alloy in that Alloy Digest does not disclose the amounts of carbon, nitrogen, and other extraneous elements contained in the alloy. Non-Final Act. 4; Alloy Digest 1. The Examiner relies on the alpha/beta titanium alloys disclosed by Hebda and the admitted prior art, as represented by Kosaka, to establish that the non-essential contents of ATI™ 425 alloy disclosed by Alloy Digest are known in the art. Non-Final Act. 4. Specifically, the Examiner finds Hebda discloses an alpha/beta titanium alloy where the alloy is an embodiment of an alloy disclosed in Kosaka that includes amounts of carbon, nitrogen, and other extraneous elements contained in the alloy that overlap the claimed amounts. Non-Final Act. 4—5; Hebda H 8, 15; Spec. ]Hf 25—27; Kosaka H 15—17. The Examiner determines that one skilled in the art would have reasonably expected that the alloy disclosed by Alloy Digest would include amounts of carbon, nitrogen, and other extraneous elements within the claimed amounts in view of the disclosures of Hebda and Kosaka. Non- Final Act. 5. The Examiner also finds Alloy Digest is silent as to a longitudinal ultimate tensile strength and double shear strength of a fastener made from 4 Appeal 2017-003366 Application 12/903,851 ATI™ 425. Non-Final Act. 5. The Examiner finds Hebda discloses heat treatment of solution treated and aged titanium alloys to obtain an ultimate tensile strength of at least 180 ksi while maintaining some residual ductility. Ans. 6; Hebda 38-40 (including Table 5). The Examiner also determines that the alloy disclosed by Alloy Digest has a chemical composition that falls within the claimed ranges, and is produced by a method of manufacture that is substantially identical to the claimed method (i.e., hot rolled, solution treated, and aged). Non-Final Act. 5; Alloy Digest 1 (Table 1). The Examiner concludes the claimed and the prior art alloys are identical materials that are manufactured by the same processes to produce the same product and, thus, one skilled in the art would have reasonably expected both alloys to have the claimed longitudinal ultimate tensile strength and double shear strength. Non-Final Act. 5—6. Appellant argues it would be improper to infer, without support, that the content ranges of non-essential alloying ingredients in the Kosaka alloy of Hebda are also the content ranges of non-essential alloying ingredients for the ATI™ 425 alloy disclosed in Alloy Digest. App. Br. 12—13. While Appellant acknowledges that titanium alloy ATI 425® is a commercial embodiment of the Kosaka alloy, Appellant contends the levels of carbon, nitrogen, and other extraneous elements for the commercial alloy are not disclosed in Kosaka. App. Br. 13; Spec. 125; Kosaka 117. Therefore, Appellant asserts that the levels of carbon, nitrogen, and other extraneous elements in the alloy referenced in Alloy Digest or in any commercial version of the Kosaka alloy remain undisclosed and cannot be determined from the cited art. App. Br. 13. Appellant further argues that the ranges for the elements in Hebda are significantly broader than the narrower ranges 5 Appeal 2017-003366 Application 12/903,851 claimed and that these claimed narrower ranges are important. App. Br. 14; Spec. 126. We are unpersuaded by these arguments for the reasons presented by the Examiner. Ans. 3—6. Moreover, independent claim 1 is directed to an alpha/beta titanium alloy having up to 0.08 carbon, up to 0.05 nitrogen, and up to a total of 0.3 of other elements. We note that the term “up to” includes zero as a lower limit. In re Mochel, 470 F.2d 638 (CCPA 1974). As noted by both the Examiner and Appellant, Alloy Digest does not expressly recite the amounts of carbon, nitrogen and other extraneous elements in its compound. Non-Final Act. 3^4; App. Br. 10; Alloy Digest 1. However, the use of titanium in Alloy Digest to balance the titanium alloy composition suggests that Alloy Digest contemplated an alpha/beta alloy that has little to no amount of carbon, nitrogen or other elements included. Therefore, Alloy Digest suggests the claimed alpha-beta titanium alloy composition. Given this, Appellant has not adequately distinguished the claimed alloy composition from the alloy composition of the prior art. While Appellant argues that the prior art does not recognize the importance of the claimed narrower ranges of aluminum, vanadium, iron, oxygen, carbon, and nitrogen, we agree with the Examiner that Alloy Digest and Hebda teach alloys with compositions having aluminum, vanadium, iron, oxygen, carbon, and nitrogen that fall within the claimed narrower ranges for these elements. Ans. 5—6. Further, Appellant directs us to no objective evidence of the criticality of the alleged narrowed ranges. Moreover, Appellant acknowledges that the elemental composition of an alpha/beta titanium alloy according to the disclosure in the Specification is encompassed by the alloy composition disclosed in Kosaka (which is used 6 Appeal 2017-003366 Application 12/903,851 by Hebda). Spec. 124. Thus, Appellant has not explained reversible error in the Examiner’s determination of obviousness. Appellant argues neither Alloy Digest nor Hebda discloses an alloy composition having the claimed ultimate tensile strength. App. Br. 8—9, 14. We are also unpersuaded by this argument. As noted by the Examiner, Hebda discloses it was known to heat treat a solution treated and aged titanium alloy to obtain an ultimate tensile strength of at least 180 ksi while maintaining some residual ductility. Ans. 6; Hebda 38-40 (including Table 5). Appellant’s argument does not address this disclosure of Hebda. See generally App. Br. and Reply Br. Appellant has not explained why one skilled in the art would not have modified the titanium alloy of Alloy Digest by heat treating it to obtain a higher ultimate tensile strength, as disclosed by Hebda. Thus, Appellant has not adequately distinguished the claimed titanium alloy from the titanium alloy of the prior art. Accordingly, we affirm the Examiner’s rejections of claims 1—7 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner’s prior art rejection under 35 U.S.C. § 103 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 7 Copy with citationCopy as parenthetical citation