Ex Parte Hanusiak et al

Patent Trial and Appeal Board

Oct 30, 2017

13414769 (P.T.A.B. Oct. 30, 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.
13/414,769 03/08/2012 William M. Hanusiak FPP-4314-108 3389
23117 7590 11/01/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WYSZOMIERSKI, GEORGE P
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM M. HANUSIAK and DALE R. McBRIDE
Appeal 2017-000579
Application 13/414,7691
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
SHELDON M. McGEE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 3-5, and 7 under 35 U.S.C. § 103(a) over
Yolton '4042 in view of Yolton '610.3 We have jurisdiction under 35 U.S.C.
§6.
We AFFIRM.
1 Appellants identify FMW Composite Systems, Inc. as the real party in
interest. Appeal Br. 3.
2 Yolton et al., US 4,544,404, issued October 1, 1985 (“Yolton '404”).
3 Yolton et al., US 5,213,610, issued May 25, 1993 (“Yolton '610”).
Appeal 2017-000579
Application 13/414,769
THE INVENTION
The subject matter of the claims on appeal relates to an apparatus for
producing titanium metal powder that includes an atomization chamber
having an inner wall coated with or formed entirely of commercially pure
titanium to prevent contamination of the titanium metal powder.
Specification filed March 8, 2012, (“Spec.”) 2; Abstract. Independent
claims 1 and 7 both require the inner wall of an atomization chamber to be
coated with or formed entirely of commercially pure titanium.
Claim 1 is representative.
1. Apparatus for producing titanium metal powder from a
melt including titanium powder metal, comprising an
atomization chamber having an inner wall that is coated with or
formed entirely of commercially pure titanium to prevent
contamination of titanium metal powder therein.
Appeal Brief filed December 15, 2015 (“Appeal Br.”), Claims Appendix, 11.
Appellants argue the claims as a group on the basis of limitations in
common with independent claim 1—having an inner wall that is coated with
or formed entirely of commercially pure titanium. Appeal Br. 6-10. All
claims stand or fall, accordingly, with claim 1, which we deem
representative. 37 C.F.R. § 41.37(c)(l)(iv).
DISCUSSION4
We have reviewed the ground of rejection as set forth by the
Examiner, Appellants’ arguments and proffered evidence, and the
4 In this discussion, we refer to the Specification, the Non-Final Office
Action dated March 12, 2015 (“Non-Final Act.”), the Final Office Action
dated August 21, 2015 (“Final Act.”), the Appeal Brief (supplemented April
14, 2016, to correct defect), the Examiner’s Answer dated September 14,
2016 (“Ans.”), and the Reply Brief filed October 3, 2016 (“Reply Br.”).
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Examiner’s response. On this record, we are unpersuaded that the Examiner
erred reversibly in determining that one of ordinary skill in the art, armed
with the knowledge of Yolton '404 and Yolton '610, would have been led to
the subject matter of the claims within the meaning of 35 U.S.C. § 103(a).
We add the following.
Both Yolton '404 and Yolton '610 are directed to methods and
apparatus for atomizing titanium by subjecting a free-falling stream of
molten titanium to impingement with an inert gas jet and collecting the
resulting, solidified particles. Yolton '404, Abstract; Yolton '610, Abstract.
Both are also concerned with avoiding the contamination of the
resulting, solidified particles. See, e.g., Yolton '404, col. 1,11. 42^16 (“[A]
primary object of the present invention [is] to . . . [protect] the molten
titanium . . . from contamination during the entire atomizing process.”),
col. 3,11. 9-11 (“[T]he titanium is protected against contamination while in
the molten state and prior to solidification of the atomized particles for
collection.”); Yolton '610, col. 3,11. 36-39 (describing use of graphite for
portions of the device because “it is relatively non-reactive with molten
titanium”), 11. 58-60 (describing preferred use of commercially pure titanium
in the apparatus because “[commercially pure titanium is compatible with
molten titanium so that contamination of the melt is not a problem”).
As relied on by the Examiner, both references reasonably teach the
use of titanium as a suitable material to avoid the contamination of atomized
titanium particles with other elements by eliminating potential contact of the
molten titanium and resulting particles with any material other than titanium.
See Ans. 4. More particularly, the Examiner finds that it was known in the
art to protect a material against contamination by coating parts of the
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apparatus containing such a material with a coating or lining of that same
material such that “[a]ny transfer of matter from the apparatus to the
material being processed would ‘contaminate’ it with that same material, and
thus not contaminate it at all.” Non-Final Act. 3; see also Final Act. 2-3.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to include in an apparatus
for producing titanium metal power from a melt an “atomization chamber
having an inner wall that is coated with or formed entirely of commercially
pure titanium to prevent contamination of titanium metal powder therein”
(claim 1). Non-Final Act. 3 (cited in Final Act. 2); Ans. 4.
Appellants contend that the Yolton references do not teach or suggest
the use of titanium for the atomization chamber because these references are
concerned rather with the contamination from refractory metals that would
otherwise contact the molten mass of titanium. Appeal Br. 7-8. Appellants
emphasize the “high temperatures and long residence times” in arguing that
the references’ teaching as to the use of titanium to coat or cover the
crucible, nozzle, or tundish does not apply to the atomization chamber.
Appeal Br. 7-8; Reply Br. 1.
Appellants highlight the use of stainless steel for the atomizing
chamber in Yolton '404 and for the corresponding cooling tower 60 in
Yolton '610. Appeal Br. 7. Appellants rely on Yolton '610 for teaching both
that “the cooling tower must be constructed of a material that is acceptable
for contact with titanium powder” and that “stainless steel is the preferred
material for the cooling tower.” Appeal Br. 7 (citing Yolton '610, col. 7,
11. 57-60); see also Reply Br. 1. Relying on the teaching of stainless steel as
the preferred material, Appellants contend that it would not have been
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obvious to one skilled in the art to use to use commercially pure titanium.
Reply Br. 1-2. Appellants further contend that this amounts to a teaching
away. Reply Br. 2.
Appellants contend that “Yolton and the other inventors [had] never
recognized the problem with using stainless steel in titanium atomization
chambers.” Appeal Br. 7-8 (citing Spec. 2). Appellants rely on the
declaration of Charles Yolton dated January 21, 2015 (“Yolton Decl’n”) as
evidence that “it was always assumed by those skilled in the art that coating
the inner wall of an atomization chamber or forming it entirely of stainless
steel would be adequate to prevent contamination of the titanium metal
powder therein.” Appeal Br. 8-9; see also Yolton Decl’n || 10, 12-13.
Appellants further contend that “it was only within the knowledge of one
skilled in the art, at the time of the invention, to coat the parts of an
apparatus formed of copper or a refractory material that was known to
contaminate titanium because of the very high temperatures and long
residence times.” Appeal Br. 8; see also Reply Br. 2.
On this record, we do not find Appellants’ arguments persuasive of
reversible error because the prior art teaches that use of titanium metal itself,
i.e., commercially pure titanium, prevents the contamination of titanium
powder by eliminating contact of the titanium to be formed into powder, and
the titanium power, with any material other than titanium. Non-Final Act. 3;
Ans. 4. Appellants’ arguments that the Yolton references are limited to
coating or forming refractory elements with titanium are not persuasive
because it is manifest that titanium itself, for the reasons set forth by the
Examiner, is “a material that is acceptable for contact with titanium powder”
(Yolton '610, col. 7,11. 58-59) in order to avoid contamination with other
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materials, even if “[sjtainless steel is the preferred material” (Yolton '610,
col. 7,11. 59-60). Cf. Merck & Co., Inc. v. Biocraft Labs. Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“[D]isclos[ing] a multitude of effective combinations
does not render any particular formulation less obvious.”); see also In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (A reference’s disclosure is not
limited to its preferred embodiments, but is available for all that it discloses
and suggests to one of ordinary skill in the art.).
It further follows that we find no support for any teaching away in the
preferred use of stainless steel because it does not reasonably lead the skilled
artisan away from the invention. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
(“We will not read into a reference a teaching away from a process where no
such language exists.”). “A reference does not teach away ... if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) {quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)).
Further, we are apprised of no error because, as properly applied, “the
[obviousness] 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.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take
into account not only specific teachings of the reference but also the
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inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
As to Appellants’ contention that no one recognized that the use of
stainless steel in titanium atomization chambers would not be adequate to
avoid the possible contamination, we find it unpersuasive of reversible error
because it fails to address squarely that the skilled artisan desiring titanium
metal powder free of contamination by other metals would have also been
led to the use of titanium metal itself on the basis that it is the most
acceptable material for contact with titanium powder in order to avoid
contamination. Yolton’s Declaration proffered to the contrary has been fully
considered, but does not persuade us that the skilled artisan would not
reasonably draw from Yolton '404 and Yolton '610 to use an “atomization
chamber having an inner wall that is coated with or formed entirely of
commercially pure titanium to prevent contamination” (claim 1). Cf. In re
Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”).
The proffered opinion is grounded on the fact that it was assumed that
the use of stainless steel in atomization chambers would be adequate (see,
e.g., Yolton Decl’n 112) and on the declarant’s failure to recognize that
there were problems due to contamination of atomized titanium when
stainless steel was used in titanium atomization chambers (Yolton Decl’n
113 (quoting Spec. 2, first full paragraph)). We find no adequate
explanation, however, as to what those skilled in the art would have
considered an acceptable level of contamination, that such a level would
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have been considered acceptable for all known uses of the titanium powder,
or that greater purity was not desired. See generally Yolton Decl’n. In the
absence of such explanation, we find the opinion that the skilled artisan,
informed by Yolton '404 and Yolton '610, would not have been led to use
titanium in the atomization chamber in the manner claimed in order to
prevent contamination of the titanium metal powder fails to bear the weight
required of it in light of these references teaching the skilled artisan both to
avoid contamination and that contamination can best be avoided by the using
titanium for all portions of the apparatus contacting the titanium metal
powder, or its molten precursor.
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness of claim 1. Claims 3-5 and 7
have not been separately argued and, therefore, fall with claim 1.
DECISION
The Examiner’s rejections of the claims under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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