Ex Parte Nadendla et al

Patent Trial and Appeal BoardNov 29, 2018

13822870 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/822,870 05/28/2013 25005 7590 12/03/2018 Intellectual Property Dept. Dewitt Ross & Stevens SC 2 East Mifflin Street Suite 600 Madison, WI 53703-2865 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Hari Babu Nadendla 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. 78104.166 2471 EXAMINER WU,JENNYR ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 12/03/2018 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): IP-DOCKET@dewittross.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARI BABU NADENDLA and MAGDALENA NOW AK Appeal2018-000148 Application 13/822,870 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's September 15, 2016 decision finally rejecting claims 12-29 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We affirm-in-part. 1 Appellants state that the real party in interest is Brunel University (Appeal Br. 2). Appeal 2018-000148 Application 13/822,870 CLAIMED SUBJECT MATTER Appellants' invention is directed to a method for refining or reducing the grain size of aluminum-silicon alloys and magnesium alloys (Spec. 1: 1- 3). According to the Specification, such grain refinement imparts casting benefits and improves mechanical properties in metal alloys. Id. at 1:5-10. The Specification describes the addition of grain refiners, such as niobium diboride (NbB2) and aluminum niobate (AhNb ), in alloy production because these substances are said to promote the inoculation of metal alloy crystals. Id. at 1:6-8; see generally id. at 5:3-19. Independent claims 12, 18, and 24 are reproduced below from the Claims Appendix of the Appeal Brief ( emphasis added): 12. A method of refining the grain size of (i) an alloy comprising aluminum and at least 3% w/w silicon or (ii) an alloy comprising magnesium, comprising the steps of (a) adding sufficient niobium and boron to [(i) Jan alloy comprising aluminum and at least 3% w/w silicon or (ii) an alloy comprising magnesium in order to form niobium diboride and Al3Nb, or (b) adding niobium diboride and Al3Nb to the alloy of step (a), or ( c) any combination thereof, to refine the grain size of the alloy. 18. A method of refining the grain size of (i) an alloy comprising aluminum and at least 3% w/w silicon or (ii) an alloy comprising magnesium, comprising the steps of (a) adding sufficient niobium and boron to a portion of a first alloy comprising aluminum and at least 3% w/w silicon or (ii) an alloy comprising magnesium in order to form niobium diboride and Al3Nb, and 2 Appeal 2018-000148 Application 13/822,870 (b) adding the product of step (a) to a portion of a second alloy, wherein the first and second alloy are the same or different, to refine the grain size of the alloy. 24. A method of producing a masterbatch alloy for refining the grain size of a bulk alloy which is (i) an alloy comprising alumin[]um and at least 3% w/w silicon or (ii) an alloy comprising magnesium, comprising the step of (a) adding sufficient niobium and boron to a portion of [(i) Jan alloy comprising aluminum and at least 3% w/w silicon or (ii) an alloy comprising magnesium in order to form niobium diboride and Al3Nb, to refine the grain size of the alloy. DISCUSSION The only rejection on appeal is the rejection of claims 12-29 as obvious over Brupbacher2 in view of Pandey. 3 Appellants' arguments urging reversal of the rejection focus on limitations recited in independent claims 12, 18, and 24. Dependent claims 13-17 and 19-23 will stand or fall with each of their respective independent claims; dependent claims 25-29 will stand or fall with claim 24. 37 C.F.R. Â§ 4I.37(c)(l)(iv). In rejecting claims 12 and 24, the Examiner finds that Brupbacher's Example 3 teaches or suggests mixing and heating niobium, boron, and aluminum powders to form a first composite comprising the claimed grain refiner NbB2 in an aluminum solvent metal matrix (Ans. 4, 6; see also Brupbacher 15:1-15). The Examiner further finds Brupbacher teaches that diluting this first composite in aluminum metal results in the formation of a second 2 Brupbacher et al., US 4,915,903, issued April 10, 1990. 3 Pandey, US 2010/0143177 Al, published June 10, 2010. 3 Appeal 2018-000148 Application 13/822,870 composite, which comprises a dispersion of second phase particles, e.g., NbB2, within an intermediate metal matrix, e.g., the claimed grain refiner AbNb (Ans. 4 (citing Brupbacher Abstract, claim 29 step (c)). According to the Examiner: Brupbacher expressly discloses ... that after diluting [the] first composition of Example 3 in aluminum host metal, [this] will form a final composite comprising a dispersion of second phase particles within an intermetallic containing matrix. Then Brupbacher's claims 40, 42 further demonstrate[ that] the intermetallic containing matrix comprises NbA1[3]; and claim 44 [ requires that] the second phase particles [ are selected from the group consisting ofJ NbB[2]. (Ans. 4--5, citing Brupbacher Abstract, claim 29 (steps (c), (d) and (e)). Thus, the Examiner concludes that Brupbacher's Example 3 discloses or suggests the claimed process step (a) for refining the grain size of (i) an alloy comprising aluminum, 4 whereas Brupbacher's Abstract and claim 29 step ( e) teach that the final composite comprises the claimed grain refiners NbB2 and AbNb (Final Act. 3, 8). The Examiner notes that Brupbacher "does not expressly teach [that] the aluminum metal matrix comprises at least 3 []wt% silicon" as recited in claims 12 and 24. Id. at 3. However, the Examiner finds that Pandey's claim 10 "teaches a method of preparing high strength aluminum alloy 4 The Examiner makes no explicit findings regarding the limitation "(ii) an alloy comprising magnesium" recited in claims 12 and 24 because the claim term "or" suggests that either (i) an alloy comprising aluminum and at least 3% w/w silicon or (ii) an alloy comprising magnesium must be used in the claimed methods (see Final Act. 8). Appellants do not challenge the rejections based on the Examiner's lack of findings regarding the claimed magnesium alloy. See Final Act. 7. Thus, the issue of whether the applied prior art discloses or suggests grain refinement of magnesium alloys is not presently before us. 4 Appeal 2018-000148 Application 13/822,870 comprising 4--25 wt% silicon." Id. at 4. The Examiner further finds that Brupbacher and Pandey both teach methods aimed at increasing dispersion strength. Id. (citing Brupbacher 8:40-45; Pandey ,r,r 33, 78). The Examiner thus determines that "it would have been obvious to one of ordinary skill in the art, at the time of the invention to include [Pandey's] at least 3 wt% of silicon ... in [Brupbacher' s] process ... in order to provide solid solution and precipitation strengthening in the aluminum alloys" (Final Act. 4 ). Claim 24 Appellants argue that the Examiner "has not established prima facie obviousness with respect to Claim 24 because the claim requires the formation of both NbB2 and AhNb" (Appeal Br. 9). Appellants further argue that "the combined teaching of Brupbacher and Pand[ e ]y does not disclose or suggest the formation of an AhNb-containing intermetallic in alloys of the type required by Claim 24." Id. Appellants support these arguments by submitting "Exhibits A, B, and C of Applicants' response filed June 9, 2016," which allegedly "prove that Brupbacher's alloy described in Example 3 does not contain AhNb because it is thermodynamically more favorable to form NbB2 than to form AbNb." Id. at 5. In response, the Examiner asserts that none of Appellants' submitted exhibits reproduce the same process conditions as Brupbacher's Example 3 or claim 29 steps (a}-(d) (Ans. 5). According to the Examiner, Appellants "did not compare the closest prior art of Brupbacher to demonstrate [that] forming Al[3]Nb and NbB[2] is not possible." Id. Therefore, it is incumbent upon Appellants to show that Brupbacher' s Example 3 and claim 29 steps (a}-(d) do not result in the formation of both 5 Appeal 2018-000148 Application 13/822,870 NbB2 and AbNb. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where ... the claimed and prior art products are identical or substantially identical ... , the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."). To meet this burden, Appellants refer to the Rule 13 2 Declaration executed by named inventor Dr. Hari Nadendla on October 4, 2017 (Reply Br. 1--4). As described therein, Dr. Nadendla combined 50 wt% Al and 50 wt% Nb and B powders in a 1 :2 atomic ratio to yield a 50 wt% NbB2 second phase in an aluminum solvent metal matrix under the reaction conditions specified in Brupbacher's Example 3. Id. at 2. Dr. Nadendla then analyzed the reacted compact for the presence of AbNb peaks in X-ray diffraction patterns, but found no indication that AbNb was present. Id.; see also Rule 132 Declaration Exhibits 1, 3. We find that Appellants have established that the Rule 132 Declaration of record is sufficient to show that Brupbacher's reaction conditions, as disclosed in Example 3, would not result in an alloy containing an AbNb intermetallic phase. Thus, we determine from Dr. Nadendla's Rule 132 Declaration that the reaction conditions of Brupbacher's Example 3 is incapable of forming both NbB2 and AbNb as recited in claim 24. Accordingly, we reverse the rejection of claim 24 for the reasons set forth above. Claims 12 and 18 Unlike appealed claim 24, instant claims 12 and 18 recite limitations specifying the addition of niobium diboride and AbNb to an alloy 6 Appeal 2018-000148 Application 13/822,870 comprising aluminum and at least 3% w/w silicon or an alloy comprising magnesium. 5 We note that Dr. Nadendla's Rule 132 Declaration did not describe any comparison with the closest prior art of Brupbacher's claim 29 steps (a}-(d) to demonstrate that neither NbB2 nor AbNb are formed by these steps. Even assuming that Dr. Nadendla duplicated the conditions specified in Brupbacher's claim 29 step (c) by diluting "the Al-50wt%NbB2 pellet" resulting from Brupbacher's Example 3 "in liquid aluminum at 700Â°C for 1 hour" (see Rule 132 Declaration 3), Appellants do not direct our attention to any results from an X-ray spectroscopy or diffraction pattern analysis on this "second composite" (see Brupbacher claim 29 step ( c) ). The Rule 132 Declaration of record merely provides that X-ray spectroscopy of four spots within "a compact formed according to Example 3 of Brupbacher is unlikely to yield a composition of matter having a Nb3Al or AbNb intermetallic" (emphasis added) (Rule 132 Declaration 3). Thus, Appellants have not demonstrated reversible error in the Examiner's finding that Brupbacher's "second composite," as recited in claim 29 step ( c ), suggests that it is comprised of a dispersion of second phase particles, such as NbB2, within an intermediate metal matrix, such as the claimed grain refiner AhNb (see Ans. 4). Furthermore, Appellants have not met their burden under Best because Dr. Nadendla's Rule 132 Declaration fails to demonstrate that Brupbacher's 5 Appellants do not contest the Examiner's interpretation of the claim term "the alloy" recited in claims 12 and 18 as encompassing "' an alloy comprising aluminum and at least 3 wt% silicon or an alloy comprising magnesium' in [the] preamble of the claims" (Final Act. 2). 7 Appeal 2018-000148 Application 13/822,870 claim 29 steps (a}-(d) would not result in an alloy containing an AhNb intermetallic phase. See Best, 562 F.2d at 1255. In the alternative, Appellants make the following principal arguments urging reversal of the rejection of claims 12 and 18: (1) the Examiner's reliance on Brupbacher's claim 29 steps (a}-(d) "are irrelevant to Claims 12 [ and] 18 ... because they recite different steps ... none of which are recited in the present claims" (Appeal Br. 4); (2) "Exhibits A, B, and C of Applicants' response filed June 9, 2016 prove that Brupbacher' s alloy described in Example 3 does not contain AhNb because it is thermodynamically more favorable to form NbB2 than to form AhNb" (id. at 5; see also id. at 6-7); and (3) the Examiner's inference that Brupbacher's Example 3 contains AhNb is based on the doctrine of inherency, which "cannot form a proper basis for rejecting the claimed invention as obvious underÂ§ 103." Id. at 8. Appellants' arguments are not persuasive. With respect to argument (1 ), we agree with the Examiner that because the term "comprising" is used to introduce steps in method claims 12 and 18 for refining the grain size of aluminum-silicon and/or magnesium alloys, there is a presumption that the method may contain steps in addition to those explicitly mentioned in the claim (Ans. 3--4). See, e.g., In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) ((citing CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) ("In the patent claim context the term 'comprising' is well understood to mean 'including but not limited to."')). Appellants counterargue in connection with arguments ( 1) and (2) that "[ t ]he steps recited in the combined references must yield the positively 8 Appeal 2018-000148 Application 13/822,870 required AbNb intermetallic phase" (Reply Br. 4 ). In particular, Appellants assert that "both in the evidence previously submitted [i.e., Exhibits A, B, and C of Applicants' response filed June 9, 2016] and Dr. Nadendla's declaration ... , Brupbacher' s protocols will not and do not result in a composition of matter having an AhNb intermetallic." Id. Appellants' arguments are not persuasive because Dr. Nadendla's analysis of a compact formed according to Brupbacher's Example 3 does "not constitute a teaching away from a broader disclosure." In re Susi, 440 F.2d 442,446 n.3 (CCPA 1971). As the Examiner finds, Brupbacher's claims 40 and 42 disclose that the intermetallic containing matrix comprises NbAb and claim 44 requires that the second phase particles are selected from the group consisting ofNbB2 (Ans. 4--5, citing Brupbacher Abstract, claims 29 (steps (c), (d) and (e))). See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) ("[i]t is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art."). As set forth above, neither Appellants' Exhibits A, B, or C, nor Dr. Nadendla's Rule 132 Declaration described any comparison with the closest prior art of Brupbacher's claim 29 steps (a}-(d) to demonstrate that formation of both NbB2 and AbNb does not occur. Appellants' argument (3) is not persuasive because it is well established that when claimed and prior art products are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Best, 562 F.2d at 1255. This is true whether the rejection is under 35 U.S.C. Â§ 102 (anticipation) or 35 U.S.C. Â§ 103 (obviousness), and is based on the fact that the PTO is not 9 Appeal 2018-000148 Application 13/822,870 in a position to manufacture products or to obtain and compare prior art products. Id. Accordingly, we affirm the rejection of claims 12 and 18 for the reasons set forth above and explained in the Examiner's Final Office Action and Answer. CONCLUSION We AFFIRM the rejection of claims 12-23 under 35 U.S.C. Â§ 103(a) as obvious over Brupbacher in view of Pandey. We REVERSE the rejection of claims 24--29 under 35 U.S.C. Â§ 103(a) as obvious over Brupbacher in view of Pandey. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED-IN-PART 10