Ex Parte Hasselqvist et al

Patent Trial and Appeal Board

Jun 6, 2017

12311873 (P.T.A.B. Jun. 6, 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.
12/311,873 04/16/2009 Magnus Hasselqvist 2006P15678WOUS 5688
22116 7590 06/08/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
ROE, JESSEE RANDALL
Orlando, EL 32817 ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
06/08/2017 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAGNUS HASSELQVIST and GORDON McCOLVIN
Appeal 2016-003620
Application 12/311,873
Technology Center 1700
Before CHUNG K. PAK, JULIA HEANEY, and JANE E. INGLESE,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 49, 52—67, 69, and 70 of
Application 12/311,873. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 This Decision refers to the Specification filed Apr. 16, 2009 (“Spec.”),
Non-Final Rejection dated May 26, 2015 (“Non-Final Act.”), Appeal Brief
filed Aug. 29, 2015 (“App. Br.”), Examiner’s Answer dated Dec. 24, 2015
(“Ans.”), and the Reply Brief filed Feb. 23, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Siemens Aktiengesellschaft.
App. Br. 2.
Appeal 2016-003620
Application 12/311,873
BACKGROUND
The subject matter on appeal relates to a nickel-base superalloy
composition, such as for use in a gas turbine blade. Spec. 1.
Claim 49, reproduced below from the Claims Appendix, is illustrative
of the claimed subject matter:
49. A nickel-base superalloy comprising in a weight
percentage:
Co+ Fe+ Mn 0-20;
A1 4-6;
Cr > 12- 20;
Ta >7.5 - 15;
Ti 0 - <0.45;
V 0-1;
Nb 0 - <0.28;
Mo 0-2.5;
Mo+W+Re+Rh 2-8;
Ru + Os + Ir + Pt + Pd 0-4;
Hf 0-1.5;
C + B +Zr o p Li
Ca+Mg+Cu o p Li
Y + La + Sc + Ce +
Actinides + Lanthanides present in an amount up to 0.5;
Si o p Li
Ni balance;
unavoidable impurities; and
wherein the superalloy has a particle content between about 45
vol. % and about 60 vol. %.
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Appeal 2016-003620
Application 12/311,873
THE REJECTION
Claims 49, 52—67, 69, and 70 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Tamaki3 in view of the ASM Handbook.4
DISCUSSION
Appellants present arguments for independent claims 49 and 67, and
also rely on those arguments with regard to the dependent claims, although
under a separate heading. App. Br. 5—9. We limit our discussion to claim
49 as representative.
Having considered the evidence presented in this Appeal and
each of Appellants’ contentions, we are not persuaded that Appellants
identify reversible error in the rejection. Accordingly, we affirm for the
reasons stated by the Examiner in the Non-Final Office Action and Answer,
which we adopt as our own. We add the following primarily for emphasis.
The Examiner finds that Tamaki discloses a nickel base superalloy
composition having the components recited in claim 49 and present in
weight percentages that overlap the claimed weight percentage ranges,
except that Tamaki does not specify the presence of rare earth elements
yttrium, lanthanum, scandium, cerium, actinides or lanthanides. Ans. 2—3.
The Examiner further finds that the ASM Handbook discloses adding such
rare earth elements to nickel base superalloys at less than one weight percent
in order to improve high temperature performance. Ans. 4 (providing
3 Tamaki et al., US 6,051,083, issued Apr. 18, 2000 (hereinafter “Tamaki”).
4 Joseph R. Davis, Properties and Selection: Nonferrous Alloys and Special-
Purpose Materials, ASM Handbook® vol. 2 (1990) (hereinafter “ASM
Handbook”).
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Appeal 2016-003620
Application 12/311,873
citation to ASM Handbook). The Examiner determines it would have been
obvious to a person of ordinary skill in the art to select the claimed amounts
of the components recited in claim 49 from the amounts disclosed by
Tamaki because Tamaki discloses the same utility throughout the claimed
ranges, and to add less than one weight percent of the rare earth elements as
disclosed by the ASM Handbook, in order to improve high temperature
performance of Tamaki’s nickel base superalloy.5 Ans. 3^4.
Appellants argue that the claimed superalloy would not have been
obvious in view of Tamaki and the ASM Handbook because those
references would not have led a person of ordinary skill in the art to the
“critical balance” of properties provided by the claimed superalloy, namely
both high creep strength and oxidation resistance, and high corrosion
resistance. App. Br. 5—6. Appellants further argue that Tamaki’s “very
broad range” of chromium content includes levels which would provide poor
corrosion resistance, and Tamaki thus fails to recognize the need for
providing adequate chromium for corrosion resistance. Id. at 7—8, citing
Tamaki 16:43—55. Moreover, Appellants argue, modifying Tamaki’s
superalloy to have 12—20 weight percent chromium as claimed would render
Tamaki’s superalloy unsuitable for its intended purpose by substantially
reducing the creep strength which is its aim. Id. at 8.
5 The phrase “Actinides + Lanthanides present in an amount up to 0.5” in
claim 49 does not exclude the presence of no amount of actinides and
lanthanides. In re Mochel, 470 F.2d 638 (CCPA 1972) (explaining that the
term “up to” includes 0 as a lower limit). In the event of further prosecution,
both the Examiner and Appellants should consider whether claim 49 is also
unpatentable over Tamaki alone.
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Appeal 2016-003620
Application 12/311,873
Appellants’ arguments are not persuasive of reversible error.
Appellants present no evidence of probative value that the claimed range of
greater than 12—16 weight percent chromium is critical. See In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference between the
claimed invention and the prior art is a range or other variable within the
claims, “the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range”). The portions of the Specification cited by
Appellants, see Reply Br. 4, do not show criticality of the claimed range
because they merely refer to “as much as 14% Cr without precipitation of
brittle phases” without any specific experimental data, let alone data
commensurate in scope with the claimed range. Appellants' mere arguments
in the Brief or conclusory statements in the Specification cannot take the
place of objective evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Additionally,
contrary to Appellants’ arguments, Tamaki recognizes the beneficial effect of
chromium on hot corrosion and oxidation resistance (Tamaki 16:43—44), and
does not teach improvement of creep strength to the detriment of those
properties. See also In re Skoner, 517 F.2d 947, 948 (CCPA 1975)
(explaining that expected results are evidence of obviousness just as
unexpected results are evidence of unobviousness). The Examiner did not
err in concluding that Tamaki’s “disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
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Appeal 2016-003620
Application 12/311,873
nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423
(CCPA 1971).
ORDER
For the reasons given above, it is ORDERED that the decision of the
Examiner to reject claims 49, 52—67, 69, and 70 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
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