Ex Parte Ridge et alDownload PDFPatent Trial and Appeal BoardOct 31, 201713898720 (P.T.A.B. Oct. 31, 2017) Copy Citation 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. 13/898,720 05/21/2013 Jeremy RIDGE 262896/22113-0143 3895 13152 7590 11/01/2017 McNees Wallace & Nurick LLC 100 Pine Street P.O. Box 1166 Harrisburg, PA 17108-1166 EXAMINER LUK, VANESSA TIBAY ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 11/01/2017 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 JEREMY RIDGE, TED F. MAJKA, and JOHN RANDOLPH WOOD ____________________ Appeal 2017-000490 Application 13/898,720 Technology Center 1700 ____________________ Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–8, 10–14, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In this decision, we refer to the Final Office Action mailed February 11, 2016 (“Final Act.”), the Appeal Brief filed May 19, 2016 (“Appeal Br.”), the Examiner’s Answer mailed August 24, 2016 (“Ans.”), and the Reply Brief filed October 7, 2016 (“Reply Br.”). 2 Appellant is the Applicant, which is General Electric Company. Appellant identifies the real party in interest as the inventors, Jeremy Ridge, Ted. R. Majka, and John Randolph Wood, and the Assignee/Appellant, General Electric Company. Appeal Br. 1. Appeal 2017-000490 Application 13/898,720 2 The subject matter on appeal relates to martensitic alloy compositions. Spec. ¶ 1. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal. 1. A wind turbine shaft, comprising a martensitic alloy, the martensitic alloy including, by weight: about 0.38% to about 0.43% C; about 0.15% to about 0.30% Si; about 1.00% to about 1.25% Mn; about 0.75% to about 0.90% Ni; about 1.00% to about 1.30% Cr; about 0.25% to about 0.35% Mo; about 0.05% to about 0.12% V; up to about 0.015% S; up to about 0.015% P; up to about 0.15% Cu; and balance iron and incidental impurities; wherein the wind turbine shaft includes a fracture apparent transition temperature at a surface of the wind turbine shaft of less than -40 °C and a hardenability corresponding to an ideal diameter of greater than about 10 inches. Appeal Br. 15 (Claims Appendix). REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1: Claims 1–8, 10, 12–14, 16, and 17 under 35 U.S.C. § 103 as unpatentable over Beguinot et al. (US 5,645,794, published July 8, 1997) (“Beguinot”) in view of H. Burrier, Hardenability of Carbon and Low-Alloy Steels, 1 ASM Handbook 464–484 (1990) (“Burrier”), Johan et Appeal 2017-000490 Application 13/898,720 3 al. (US 2009/0288742 A1, published November 26, 2009) (“Johan”) and Jensen (US 2009/0107255 A1, published April 30, 2009) (“Jensen”) (Final Act. 2; Ans. 2); Rejection 2: Claim 11 under 35 U.S.C. § 103 as unpatentable over Beguinot in view of Burrier, Johan, Jensen, and Fukaya et al. (EP 1 602 742 A1, published December 7, 2005) (“Fukaya”) (Final Act. 5; Ans. 2); and Rejection 3: Claims 1–8, 10–14, 16, and 17 under 35 U.S.C. § 103 as unpatentable over Fukaya, Burrier, Johan, and Jensen (Final Act. 5; Ans. 3). DISCUSSION Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellant’s claims is unpatentable over the applied prior art. We sustain the Examiner’s § 103 rejections essentially for the reasons set out by the Examiner in the Final Action and Answer. We add the following. Rejection 1 Appellant argues the claims subject to the first-stated ground of rejection as a group. We select claim 1 as representative and the remaining claims subject to the rejection will stand or fall with claim 1. The Examiner finds that Beguinot teaches a martensitic alloy containing elements by weight that overlap, aside from carbon, with the elements by weight in the martensitic alloy required by claim 1. Final Act. 3 (citing Beguinot Abstract, 2:24–67, 4:46–48). Specifically, the elemental Appeal 2017-000490 Application 13/898,720 4 components of Appellant’s claimed alloy (claim 1) and Beguinot’s alloy are compared in a table prepared by the Examiner, which is reproduced below. The table above compares the elemental components in claim 1’s alloy with the elemental components in Beguinot’s alloy. As shown in the table above, claim 1’s alloy includes, by weight, “about 0.38% to about 0.43%” carbon. Beguinot’s alloy contains at most 0.35 wt.% carbon, which is slightly below the amount of carbon required by the alloy of claim 1. As the Examiner finds, however, “about” is interpreted as encompassing values slightly above or below the recited endpoints. Thus, the Examiner interprets, and Appellant does not dispute, that Beguinot’s martensitic alloy’s carbon content of 0.35 wt.% overlaps with the carbon content, by weight, of “about 0.38% to about 0.43%,” required by the alloy of claim 1. Compare Final Act. 3, with Appeal Br. 3–7. The Examiner finds that although Beguinot teaches that its steel has good hardenability, it fails to disclose a hardenability corresponding to an ideal diameter of greater than about 10 inches. Final Act. 4. However, the Examiner finds that Burrier teaches that hardenability is primarily a function Appeal 2017-000490 Application 13/898,720 5 of the chemical composition (carbon, alloying elements, and residuals) at the austenitizing temperature, and the grain size of the austenite at the instant of quenching. Ans. 3 (citing Burrier 47). The Examiner also finds that Burrier teaches that the ideal diameter can be calculated using the steel composition and austenite grain sizes. Ans. 4 (citing Burrier 47 (Eq. 2)). Appellant contends that none of the references relied upon by the Examiner discloses or suggests a desirable ideal diameter for a steel alloy, let alone a steel alloy for a wind turbine shaft. Appeal Br. 4. Thus, Appellant argues that the Examiner erred in determining that it would have been obvious in view of Burrier’s teachings to optimize the chemical composition of Beguinot’s alloy to achieve a hardenability corresponding to an ideal diameter of greater than about 10 inches as required by claim 1. Id. Appellant’s argument is persuasive. Burrier teaches an expression for calculating ideal diameter as a measure of hardenability, which primarily is a function of the chemical composition and the grain size at the instant of quenching. Burrier 47. The Examiner finds that Beguinot’s martensitic alloy contains the same compositional elements in amounts that overlap or encompass the amounts recited in claim 1. Final Act. 3. But, the Examiner does not find that Beguinot teaches a particular grain size for its steel alloy. In fact, the Examiner admits that Beguinot is silent in this respect. Final Act. 5. Nor does the Examiner provide a reasoned explanation why one of ordinary skill in the art would have been led to modify Beguinot based on Burrier, Johan, or Jensen, to achieve a particular grain size. Id. Thus, we cannot sustain the Examiner’s rejection of claims 1–8, 10, 12–14, 16 and 17 over Beguinot, Burrier, Johan, and Jensen. Appeal 2017-000490 Application 13/898,720 6 Rejection 2 Claim 11 depends from claim 1 and requires that the martensitic alloy has an average grain size of less than about 62 µm. The Examiner finds that Beguinot is silent as to the grain size of the steel alloy. Final Act. 5. The Examiner finds that Fukaya, which is directed to high-strength martensitic steels for large-scaled forgings, such as manufacturing a forged steel assembled large-scaled crankshaft, teaches that grain size should be minimized and range from ASTM 6 to ASTM 2 (corresponding to 45 microns to 180 microns) so that toughness is enhanced. Final Act. 5 (citing Fukaya ¶¶ 22, 24); Ans. 13. Based on that teaching, the Examiner determines that one of ordinary skill in the art would have been led to ensure that the average grain size of Beguinot’s martensitic alloy is less than about 62 µm during manufacturing in order to improve toughness. Final Act. 5. Appellant argues that the Examiner has not established that Fukaya’s alloys containing nickel in an amount ranging from “0.80 wt. % to 1.20 wt.%” would have grain sizes that fall within or overlap the claimed range of less than about 62 μm as recited in claim 11. Appeal Br. 8. Appellant’s argument is not persuasive of reversible error. As the Examiner finds, Fukaya teaches that generally increasing nickel content increases grain size. Ans. 13 (citing Fukaya ¶¶ 23, 40). Fukaya teaches that its inventive alloys contain nickel in amounts ranging from 0.80 % by mass to 2.5 % by mass, with grain sizes ranging from ASTM 6 (45 μm) to ASTM 2 (180 μm). Id. (citing Abstract ¶¶ 7–8). That disclosure would reasonably teach or suggest to one of ordinary skill in the art that Fukaya’s alloys containing lower quantities of the disclosed nickel range, i.e., toward Appeal 2017-000490 Application 13/898,720 7 0.80 % by mass, would have grain sizes associated with the higher ASTM grain size number, i.e., ASTM 6, which is equivalent to the lower end of the grain size range, i.e., toward 45 μm, which would fall within the range recited in Appellant’s claim 11. Accordingly, we sustain the rejection of claim 11. Rejection 3 Appellant argues the claims subject to the third-stated ground of rejection as a group. We select claim 1 as representative and the remaining claims subject to the rejection will stand or fall with claim 1. The Examiner finds that Fukaya teaches a martensitic alloy containing elements in percent by mass that overlap or encompass the elements by weight in the martensitic alloy required by claim 1. Final Act. 5; Fukaya Abstract, ¶¶ 15–21. Specifically, the elemental components of Appellant’s claimed alloy (claim 1) and Fukaya’s alloy are compared in a table prepared by the Examiner, which is reproduced below. The table above compares the elemental components in claim 1’s alloy with the elemental components in Fukaya’s alloy. Appeal 2017-000490 Application 13/898,720 8 The Examiner finds that Fukaya, which is directed to high-strength martensitic steels for large-scaled forgings, such as manufacturing an integrated type of forged steel assembled large-scaled crankshaft, teaches that grain size should be minimized and range from ASTM 6 to ASTM 2 (corresponding to 45 microns to 180 microns) so that toughness is enhanced. Final Act. 7 (citing Fukaya ¶¶ 1, 9, 22, 24); Ans. 13. The Examiner finds that Fukaya teaches using steel alloys to make crankshafts, but not wind turbine shafts. Final Act. 7. The Examiner finds that Johan teaches that it is known in the art to use martensitic steels in mechanical parts for wind turbines. Id.; Johan Abstract ¶¶ 5, 18, 20–22, 96. The Examiner determines that one of ordinary skill in the art would have been led, based on Johan, to use Fukaya’s hardened steel alloys to make wind turbine shafts because of their high hardness and resistance to wear. See Final Act. 7; Johan ¶ 21. Beguinot does not disclose the fracture apparent transition temperature (FATT)3 at a surface of the wind turbine shaft of less than - 40 ºC. Final Act. 6. Nevertheless, the Examiner finds, and Appellant does not dispute, that because there is substantial overlap between the composition of Fukaya’s alloy and the composition of claim 1’s alloy, and Fukaya’s composition is produced by a method of manufacture that is identical or substantially identical to the method of manufacture disclosed in 3 According to Appellant’s Specification, FATT is the temperature at which the fracture surface of a material is 50% low energy brittle cleavage and 50% high energy ductile fibrous. Spec. ¶ 4. Both a composition of the material as well as the processes for forming and heat treating the material affect FATT. Id. The lower the FATT, the greater the toughness of the material. Id. Appeal 2017-000490 Application 13/898,720 9 Appellant’s Specification, including forging, austenitizing, quenching, and tempering, one of ordinary skill in the art would also expect Beguinot’s alloy to have the same FATT as recited in claim 1. Compare Final Act. 6 and Ans. 17, with Appeal Br. 9–13; compare Fukaya ¶¶ 33–34, with Spec. 12 (original claim 18). The Examiner finds that although Fukaya teaches that its steel has good hardenability, it fails to disclose a hardenability corresponding to an ideal diameter of greater than about 10 inches. Final Act. 6–7. However, the Examiner finds that Burrier teaches that hardenability is primarily a function of the chemical composition at the austenitizing temperature, and the grain size of the austenite at the instant of quenching. Ans. 3 (citing Burrier 47). According to Burrier, an estimate of the ideal diameter can be calculated as a measure of those two parameters. Burrier 47. Based on that teaching, the Examiner determines that one of ordinary skill in the art would have been led to optimize the elemental composition of Fukaya’s alloy to achieve an ideal diameter of greater than about 10 inches. Final Act. 7. Appellant argues that the Examiner’s rejection is improper because it relies on non-analogous references. Appeal Br. 12. Appellant’s argument is not persuasive of reversible error. A reference is analogous prior art if: (1) it is from the same field of endeavor, regardless of the problem addressed, or (2) it is reasonably pertinent to the particular problem with which the inventor was involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellant broadly defines its field of invention as relating to martensitic alloys generally. Spec. ¶ 1. Appellant also discloses that its alloys are well suited for the production of a wide variety of components from martensitic alloy compositions, such as Appeal 2017-000490 Application 13/898,720 10 automotive components, turbine shafts, axles, and various other components used in the energy, automotive, railroad, construction, and mining and agricultural industries. Id. ¶ 11. As the Examiner finds, Fukaya is directed to martensitic-containing steels that possess good hardenability. Ans. 16 (citing Fukaya ¶¶ 10–12). These steels are useful for large-scaled forgings, such as for the manufacturing of an integrated type of forged steel assembled large-scaled crankshaft, which is suitable for use in a diesel engine or the like used in a ship or generator. Fukaya ¶ 1. Thus, Fukaya is in the same field of endeavor as defined in the current application. Accordingly, we are not persuaded that the Examiner erred in finding that Fukaya is analogous art, and thus can be properly relied upon by the Examiner to support an obviousness rejection. Appellant argues that Fukaya does not disclose the fracture apparent transition temperature recited in claim 1. Appeal Br. 11. Because Fukaya is silent as to this property, Appellant argues that the Examiner erred in finding that one of ordinary skill in the art would have been motivated to use Fukaya’s alloy in a wind turbine shaft. Id. Appellant’s arguments are not persuasive of reversible error. As the Examiner finds, the compositional elements are present in Fukaya’s alloy in amounts that overlap the ranges recited in claim 1. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Additionally, the Examiner finds that Fukaya’s process for producing the alloys is performed in a similar manner to those disclosed for Appellant’s claimed alloy. Ans. 17. It is well-established that when a material is produced by a process that is identical or substantially Appeal 2017-000490 Application 13/898,720 11 identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254–56 (CCPA 1977). Such a finding establishes a prima facie case of anticipation or obviousness. In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“[t]he inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”). Appellant does not dispute the commonalities between alloying elements, alloying element quantities, and microstructure between the claimed alloy and Fukaya’s alloy. See Appeal Br. 9–13. Because there is substantial overlap in alloy composition, microstructure, and method of manufacture between Fukaya and the claimed alloy, we are not persuaded of reversible error in the Examiner’s finding that one of ordinary skill in the art would expect the claimed FATT value to also exist in Fukaya’s alloys. Appellant has not presented evidence demonstrating otherwise. Appeal Br. 9–13. In addition, as the Examiner finds, the claimed wind turbine shaft is essentially an intended use of the claimed alloy, and provides no physical features that would structurally distinguish the claimed wind turbine shaft from a generic shaft or Fukaya’s crankshaft. Ans. 15 (citing Fukaya ¶¶ 1, 29, 30). Additionally, the Examiner finds martensitic steels are known for their hardness, wear resistance, and fatigue resistance, and are used for the mechanical parts of a wind turbine (e.g., gear boxes comprising shafts) because of these advantageous properties. Ans. 15 (citing Johan ¶¶ 32, 42, 49–53, 64–67, 96; Jensen ¶ 12). Fukaya’s teaching that its steels possess at least good strength, fatigue, and hardenability properties for shaft articles Appeal 2017-000490 Application 13/898,720 12 (Fukaya ¶¶ 10, 31), would have reasonably suggested to one of ordinary skill in the art that Fukaya’s steel could be used as part of a wind turbine shaft, with a reasonable expectation of success. Appellant argues that the Examiner erred in concluding that that it would have been obvious in view of Burrier’s teachings to optimize the elemental compositions of Fukaya to achieve a hardenability corresponding to an ideal diameter of greater than about 10 inches as required by claim 1. Appeal Br. 10. Appellant’s argument is not persuasive of reversible error. Burrier teaches an expression for calculating ideal diameter as a measure of hardenability, which primarily is a function of the composition and the grain size at the instant of quenching. Burrier 47 (Eq. 2). Like Burrier, Fukaya recognizes the importance of hardenability in manufacturing large-scaled high-strength forgings, and teaches the need to control alloying element proportions to obtain good hardenability. Fukaya ¶¶ 4, 5, 11, 15–20. The Examiner finds, and Appellant does not dispute, that Fukaya’s martensitic alloy contains the same compositional elements in amounts that overlap or encompass the amounts recited in claim 1. Compare Final Act. 5–6, with Appeal Br. 9–13. The Examiner finds that Fukaya teaches its steel preferably has a grain size ranging from ASTM 6 to 2 (corresponding to 45 μm to 180 μm). Final Act. 7. The Examiner also finds that Fukaya’s and Appellant’s method of manufacture are substantially identical—both involving a forging step, an austenitizing step, a quenching step, and a tempering step. Compare Fukaya ¶¶ 33, 34, with Spec. 12 (original claim 18). Based Burrier and Fukaya’s teachings, the Examiner has a reasonable basis for finding that the proportions of elemental components of Appeal 2017-000490 Application 13/898,720 13 the steel alloy and grain size of the alloy are result effective variables that affect the hardenability of the alloy, which can be used to calculate an ideal diameter. In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (A particular parameter must first be recognized as a result effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.). Thus, it would have been obvious and within the level of ordinary skill in the art optimize those variables to achieve hardenability corresponding to an ideal diameter of greater than about 10 inches, as a matter of course. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”); see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). In sum, we have carefully considered Appellant’s arguments, but we are not persuaded of reversible error in the Examiner’s obviousness analysis. Accordingly, we sustain the rejection of claims 1–8, 10–14, 16, and 17. DECISION For the above reasons, the rejection under 35 U.S.C. § 103 of claims 1–8, 10, 12–14, 16, and 17 over Beguinot, Burrier, Johan, and Jensen is reversed, and the rejections under 35 U.S.C. § 103 of claim 11 over Beguinot, Burrier, Johan, Jensen, and Fukaya, and of claims 1–8, 10–14, 16, and 17 over Fukaya, Burrier, Johan, and Jensen, are affirmed. Appeal 2017-000490 Application 13/898,720 14 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 Copy with citationCopy as parenthetical citation