Ex Parte Cui et al

Patent Trials and Appeals Board

Mar 27, 2019

14706151 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/706,151 05/07/2015 Yan Cui
13152 7590 03/28/2019
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
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.
279054/22113-0227 4551
EXAMINER
JOHNSON, JONATHAN J
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
03/28/2019 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 YAN CUI, GANJIANG FENG,
SRIKANTH CHANDRUDU KOTTILINGAM,
MATTHEW LA YLOCK, and
BRIAN LEE TOLLISON
Appeal2018-003988
Application 14/706, 151
Technology Center 1700
Before ROMULO H. DELMENDO, JENNIFER R. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1-9. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, General Electric Company (Application
Data Sheet filed May 7, 2015, 5). According to the Brief, the real parties in
interest are the named Inventors and General Electric Company (Appeal
Brief filed October 20, 2017 ("Appeal Br."), 1).
2 Appeal Br. 3-9; Reply Brief filed March 2, 2018 ("Reply Br."), 1-7; Final
Office Action entered May 11, 2017 ("Final Act."), 2-8; Examiner's Answer
entered January 9, 2018 ("Ans."), 3-8.
Appeal2018-003988
Application 14/706, 151
I. BACKGROUND
The subject matter on appeal relates to an article formed from a
nickel-based superalloy (Specification filed May 7, 2015 ("Spec."), ,r 1).
According to the Inventors, the article may be fabricated from superalloy
compositions free from Eta ( a hexagonal close-packed form of intermetallic
Nh Ti as well as segregated titanium metal in the solidified alloy) phase and
reduced TCP phases (i.e., topologically close-packed phases----e.g., µ and CT
phases) for hot gas path components in gas turbines and gas turbine engines
(id. ,r,r 5, 12).
Representative claim 1 is reproduced from the Claims Appendix
(Appeal Br. 11 ), as follows:
1. An article comprising a composition, wherein the
composition comprises, by weight percent:
about 20.0% to about 22.0% chromium (Cr);
about 18.0% to about 20.0% cobalt (Co);
about 1.0% to about 2.0% tungsten (W);
about 3.0% to about 6.0% niobium (Nb);
about 0.5% to about 1.5% titanium (Ti);
about 2.0% to about 3.0% aluminum (Al);
about 0.5% to about 1.5% molybdenum (Mo);
about 0.03% to about 0.18% carbon (C);
up to about 0.15% tantalum (Ta);
up to about 0.20% hafnium (Hf);
up to about 0.20% iron (Fe);
balance nickel (Ni) and incidental impurities, and
wherein amount of Al is present according to the following
formula:
Al :S -(0.5 *Ti)+ 3.75
and the composition is weldable, has a microstructure
comprising between about 35 vol% and 45 vol% gamma prime
(y') and is substantially devoid of Eta and reduced content of TCP
phases at elevated working temperatures.
2
Appeal2018-003988
Application 14/706, 151
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains rejections under 35 U.S.C. § 103
(AIA) of claims 1-9 as unpatentable over: (A) Izumida et al. 3 ("Izumida")
alone; and (B) Izumida in view of Augustins Lecallier et al. 4 ("Augustins
Lecallier") (Ans. 3-8; Final Act. 2-8).
III. DISCUSSION
Rejection A. The Appellant argues claims 1-9 together, focusing on
claim 1 (Appeal Br. 3-7). Therefore, we confine our discussion to claim 1,
which we select as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv).
As provided by this rule, claims 2-9 stand or fall with claim 1.
The Examiner finds that Izumida describes an article made from a
composition having the same metallic elements in amount ranges that
overlap those recited in claim 1, including amounts for Al and Ti that satisfy
the mathematical relationship recited in the claim, and, therefore, a prima
facie case of obviousness exists as to the elements and their respective
amounts (Ans. 3). The Examiner also finds that Izumida teaches controlling
gamma prime precipitation to achieve excellent resistance to sag at high
temperatures, and, therefore, gamma prime precipitation amount is a result-
effective variable, which a person having ordinary skill in the art would have
optimized using routine skill (id.). In addition, the Examiner finds that
Izumida teaches Eta phase results in poor control of gamma prime
precipitation and the presence of TCP phases decreases creep fracture
strength and ductility (id. at 4). The Examiner concludes from these
3 US 6,478,897 Bl, issued November 12, 2002.
4 US 2007/0227630 Al, published October 4, 2007.
3
Appeal2018-003988
Application 14/706, 151
findings that a person having ordinary skill in the art would have found it
obvious to suppress Eta and TCP phases to ensure better control of gamma
prime precipitation and desired creep fracture strength and ductility (id.). As
for the "weldable" limitation recited in claim 1, the Examiner finds that
because Izumida teaches the same or substantially the same Ni-based alloy
composition, the prior art alloy composition would also be weldable (id.).
The Appellant contends that Izumida "discloses exceedingly broad
nickel-based alloys which cannot reasonably be relied upon to disclose each
and every possible alloy composition which falls within the clearly
overstated ranges" and that the Examiner's "reliance on these ranges is, for
all intents and purposes, scarcely one step shy of asserting the periodic table
as a reference" (Appeal Br. 3). According to the Appellant, Izumida teaches
approximately 1. 8 million species based on "a conservative calculation" and,
therefore, does not render the "claimed species" obvious (id. at 4--5 ( citing
In re Baird, 16 F.3d 380,383 (Fed. Cir. 1994)). In addition, the Appellant
argues that "[ t ]he Examiner erred in concluding that all of the [ specified
property] limitations are obvious solely in view of an overlap in
composition" (id. at 6). Furthermore, the Appellant argues that Izumida
does not disclose the absence of Eta but, instead, an effective amount of
precipitation by limiting Ti to 0.1-5 wt% (id. at 7).
The Appellant's arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Izumida describes a Ni-based or Ni-Co-based heat-resistant alloy that
is excellent in resistance to sag at high temperatures ranging from 600-
7000C, making the alloy suitable for use as spring materials for various parts
that require heat-resistant quality, such as engine parts, parts for nuclear
4
Appeal2018-003988
Application 14/706, 151
power generation, and turbine parts (Izmnida, Abstract and col. 1, 11. 6-10).
Specifically, the alloy composition specified in claim 1 and Izumida's alloy
composition are compared, as follows:
Element Claim 1 Izumida
Cr about 20.0-22.0 wt.% 5-25 wt.%
Co about 18.0-20.0 wt.% 0 or 1-30 wt.%**
w about 1.0-2.0 wt.% 0.5-15 wt.%*
Nb about 3.0-6.0 wt.% 0.5-5 wt.%*
Ti about 0.5-1.5 wt.% 0.1-5 wt.%*
Al about 2.0-3.0 wt.% 0.2-8 wt.%
Mo about 0.5-1.5 wt.% 1-18 wt.%*
C about 0.03---0.18 wt.% 0.01---0.40 wt.%
Ta up to about 0.15 wt.% 1-10 wt.%*
Hf up to about 0.20 wt.% 0
Fe up to about 0.20 wt.% 0 or 3-20 wt.%**
Other balance Ni and 0.005---0.01 wt.% B*,
incidental impurities Ni, and unavoidable
impurities
* Izumida teaches that Mo, W, Nb, Ta, Ti, and B are each present as part of
"at least one constituent" making up component (b) (id.).
** Izumida discloses that "at least one" of Fe or Co is present. Thus, the
Examiner need not establish overlapping amounts of Fe because Izumida's
disclosed Co concentration fully encompasses that recited in claim 1.
Alternatively, "up to about 0.20 wt.% iron (Fe)" (emphasis added) in claim 1
reads on O wt.% Fe, as disclosed in Izumida.
5
Appeal2018-003988
Application 14/706, 151
Thus, the Examiner correctly finds that Izumida describes an alloy
composition having the same metallic elements in amount ranges that
overlap ( or encompass) those recited in claim 1. The Appellant does not
contend otherwise (Appeal Br. 3). As the Examiner explains (Ans. 3), such
a prior art disclosure for multiple metallic elements in amount ranges that
overlap or encompass those recited in the claim creates a prima facie case of
obviousness as to the compositional makeup. In re Peterson, 315 F.3d 1325,
1329--30 (Fed. Cir. 2003).
The Appellant's reliance on Baird is misplaced. That precedent did
not concern amount ranges and, in any event, involved a situation where the
prior art disclosed a generic diphenol formula encompassing an estimated
100 million different diphenols, only one of which-when specific variables
were chosen-was a bisphenol A as required in the claims. Baird, 16 F .3d
at 382. Moreover, in Baird, the prior art disclosure taught away from the
claimed compounds. Id. at 383. The facts in the current appeal are closer to
Peterson than those in Baird.
As for the property limitations recited in claim 1, we discern no error
in the Examiner's findings, which we adopt as our own. Izumida teaches
that excellent resistance to sag at high temperatures is achieved by
controlling y' phase precipitation and that to prevent excessive precipitation
of the Eta phase at the grain boundaries, which detrimentally affects y' phase
precipitation, Ti is limited to 0.1-5.0 wt.% (Izumida, col. 2, 11. 1-9; col. 3,
11. 45-53). In addition, TCP phases decrease creep fracture strength and
ductility (id. at col. 3, 11. 31-38). Given these disclosures, a person having
ordinary skill in the art would have selected, by routine experimentation,
amounts for the metallic components that would result in y' phase
6
Appeal2018-003988
Application 14/706, 151
precipitation and reduction or elimination of the Eta and TCP phases. In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective."); id. ("[A] claim to a product
does not become nonobvious simply because the patent specification
provides a more comprehensive explication of the known relationships
between the variables and the affected properties.").
Finally, we also find no error in the Examiner determination regarding
the "weldable" limitation. See In re Dillon, 919 F.2d 688, 692 (Fed. Cir.
1990) ( en bane) (no requirement to show both a structural similarity between
a claimed and prior art composition and a suggestion in, or expectation from,
the prior art that the claimed composition will have the same or a similar
property or utility as one newly discovered by applicant).
For these reasons, we sustain Rejection A.
Rejection B. Because we have sustained Rejection A, we also sustain
Rejection B for the same reasons. Moreover, Augustins Lecallier provides
additional evidence supporting an obviousness conclusion. Augustins
Lecallier, which relates to alloys for producing turbines or compressor disks
for turbo-machines, teaches that the volume fraction for the gamma prime
phase is preferably in the range of 40-50% to limit risk of quench cracking
while providing very good tensile and creep strength properties (Augustins
Lecallier, Abstract and ,r,r 31-33, 39). Therefore, we agree with the
Examiner that a person having ordinary skill in the art would have been
prompted to provide a gamma prime phase content of 40-50 vol.% in
Izumida's alloy composition "in order to ensure [good] tensile and creep
7
Appeal2018-003988
Application 14/706, 151
strength, and limit the risk of quench cracking, as taught by Augustins
Lecallier" (Ans. 5---6).
The Appellant argues that Augustins Lecallier discloses a "distinct
alloy system from Izumida ... and is designed for a different purpose than
Izumida" (Appeal Br. 8). Augustins Lecallier, however, discloses a
composition that has a structure and utility similar to those described for
Izumida's composition (Augustins Lecallier, Abstract). Cf In re Mayne,
104 F.3d 1339, 1343 (Fed. Cir. 1997) ("Structural relationships often
provide the requisite motivation to modify known compounds to obtain
new compounds.").
For these reasons, we also sustain Rejection B.
IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 1-9 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).
AFFIRMED
8