Ex Parte Ridge et al

Patent Trial and Appeal Board

Oct 31, 2017

13898720 (P.T.A.B. Oct. 31, 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.
13/898,720 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.
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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
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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
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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
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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.
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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
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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.
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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.
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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
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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
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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
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(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
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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.
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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