Ex Parte Bryan

Patent Trial and Appeal Board

Dec 13, 2017

12903851 (P.T.A.B. Dec. 13, 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.
12/903,851 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.
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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
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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
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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
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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
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