Ex Parte SMARSLY

Patent Trials and Appeals Board

Mar 26, 2019

14341955 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/341,955 07/28/2014
13897 7590 03/28/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Wilfried SMARSL Y
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.
6570-P50166 8408
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILFRIED Y. SMARSL Y
Appeal 2018-006315
Application 14/341,955
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the final rejections of
claims 21--40. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant's invention is directed to a NiAl alloy material used in
applications that require increased high-temperature strength, such as a
turbomachine component in an airplane engine (Spec. 1: 11-14). The
material may comprise ternary Laves phases in the presence of Ni, Al, and
1 Appellant identifies the real party in interest as MTU Aero Engines AG
(Appeal Br. 3).
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Application 14/341,955
Ta and/or Nb, particularly in the form ofNiAlTa, NiAlNb and/or
NiAl(Ta,Nb) (id. at 3:18-19, 4:24--29). Ternary Laves phases are said to
ensure that there is a corresponding increase in the strength and the creep
strength of the material (id. at 5:2--4).
Claims 21 and 26 are illustrative ( emphasis added):
21. A material on the basis of intermetallic nickel aluminides
which is suitable for forming a component of a turbomachine,
wherein the material comprises ternary Laves phases and
comprises from 50.1 at.% to 70 at.%Ni,from 0.5 at.% to 10
at.% Ta and, optionally, from 0.5 at.% to 10 at.% Nb,
remainder aluminum, impurities and, optionally, one or more
alloying constituents selected from chromium, iron, hafnium,
molybdenum, carbon, silicon, titanium, vanadium, and
zirconium.
26. The material of claim 21, wherein the material comprises
at least 51 at.%Ni.
Appellant appeals the following rejections:
1. Claim 26 is rejected under 35 U.S.C. § 112(b) as indefinite for failing
to point out and particularly claim the subject matter which the
inventor or a joint inventor regards as the invention.
2. Claims 21--40 are rejected under 35 U.S.C. § 103 as unpatentable over
Rigney et al. (US 6,153,313, issued Nov. 28, 2000, "Rigney") in view
of either B. Zeumer et al., "MECHANICAL PROPERTIES AND HIGH-
TEMPERATURE DEFORMATION BEHAVIOR OF PARTICLE-STRENGTHENED
NIALALLOYS," Materials Science and Engineering, A 192/193:817-23
(1995) ("Zeumer MSEA") or B. Zeumer & G. Sauthoff,
"]NTERMETALLIC NIAL-TA ALLOYS WITH STRENGTHENING LAVES PHASE
FOR HIGH-TEMPERATURE APPLICATIONS. J. BASIC PROPERTIES,"
Intermetallics, 5:563-577 (1997) ("Zeumer I") or B. Zeumer et al.
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Application 14/341,955
"DEFORMATION BEHAVIOUR OF INTERMETALLIC NIAL-TA ALLOYS WITH
STRENGTHENING LAVES PHASE FOR HIGH-TEMPERATURE APPLICATIONS. If.
EFFECTS OF ALLOYING WITH NB AND OTHER ELEMENTS," Intermetallics,
5:641--49 (1997) ("Zeumer II") or B. Zeumer & G. Sauthoff,
"DEFORMATION BEHAVIOUR OF INTERMETALLIC NIAL-TA ALLOYS WITH
STRENGTHENING LAVES PHASE FOR HIGH-TEMPERATURE APPLICATIONS.
III. EFFECTS OF ALLOYING WITH CR," Intermetallics, 6:451--460 (1998)
("Zeumer III").
3. Claims 21-29, 37, and 38 are rejected under 35 U.S.C. § 103 as
unpatentable over Nazmy et al. (US 8,048,368 B2, issued Nov. 1,
2011, "Nazmy") in view of either Zeumer MSEA, Zeumer I, Zeumer
II, or Zeumer III.
4. Claims 21-23, 28, and 29 are rejected under 35 U.S.C. § 103 as
unpatentable over Zeumer III in view of Zeumer I.
5. Claims 24 and 25 are rejected under 35 U.S.C. § 103 as unpatentable
over Zeumer III in view of Zeumer I, and further in view of Zeumer
MSEA.
6. Claims 37 and 38 are rejected under 35 U.S.C. § 103 as unpatentable
over Zeumer III in view of Zeumer I, and further view of Rossmann
(US 5,474,421, issued Dec. 12, 1995).
Appellant argues for reversal of Rejection (2) in the following groups
of claims: (I) 21-25, 28, 29, and 37; (II) 26 and 27; (III) 30-36, 39, and 40;
(IV) 38; and (V) 40 (see generally Appeal Br. 7-13). Accordingly, we
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Application 14/341,955
select claims 21, 26, and 30 as representative of claims groups (I), (II), and
(III). 37 C.F.R. § 4I.37(c)(l)(iv).
FINDINGS OF FACT & ANALYSIS
Rejection (1 ): 35 U.S.C. § 112(b ), Indefiniteness
In the examination context, the relevant inquiry under 35 U.S.C.
§ 112(b) "is merely to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis
added) (pre-AIA statute); see also In re Packard, 751 F.3d 1307, 1310 (Fed.
Cir. 2014) ("[a] claim is indefinite when it contains words or phrases whose
meaning is unclear"). "[T]he definiteness of the language employed must be
analyzed-not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art." Moore, 439
F.2d at 1235.
In this instance, the Examiner determines that claim 26 is indefinite
because the limitation "reciting a Ni content of at least 51 at.% has no upper
limit, making it broader than the feature it is intended to limit" (Final Act.
2). The Examiner is of the opinion that Appellant has "drafted other claims
in a manner that suggests that the explicit recitation of a closed range in
dependent claims is necessary" (Ans. 4).
On the other hand, Appellant argues that "claim 26 recites inherently
that the material of claim 21 comprises from 51 at.% to 7 0 at.% Ni" ( Appeal
Br. 7). Appellant further argues that "claim 26 is a dependent claim and thus
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only narrows the corresponding ( closed-ended) concentration range recited
in independent claim 21" (Reply Br. 2).
We, however, agree with the Examiner that dependent claims 24 and
33 explicitly recite and repeat the upper limit recited in their respective
dependent claim, thereby suggesting that the explicit recitation of a closed
range in dependent claims is necessary (see Ans. 4; see also claims 28, 35).
Thus, claim 26 does not reasonably set out and circumscribe a particular Ni
range with a degree of precision and particularity to one of ordinary level of
skill in the art of intermetallic nickel aluminides.
Therefore, we affirm Rejection (1).
Rejections (2}-(3): 35 U.S.C. § 103, Obviousness
Reiection (2):
The Examiner's findings and conclusions regarding Rigney and either
Zeumer MSEA, Zeumer I, Zeumer II, or Zeumer III are located on pages 3-
5 of the Final Office Action and pages 5-9 of the Answer.
Claims Groups (1). (ID. and (III)
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness because the applied prior art fails to teach or
suggest every limitation recited in claims 21, 26, and 30 (Appeal Br. 9). In
particular, Appellant contends that "there is nothing in R[igney] which
teaches or suggests that the alloys disclosed therein should comprise more
than 50 at.% Ni." (id.). Appellant further argues that "if one takes only the
maximum preferred amounts of metals listed in Table I ofR[igney], a ...
corresponding alloy could comprise less than 20 at.% Ni" (id.)( emphasis
omitted). According to Appellant, the Examiner's interpretation of Rigney's
Table 1 is "overly formalistic" and "that none of the alloys in T[able] IV of
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Application 14/341,955
R[igney] contain[] any Ta," which is required to form ternary Laves phases
(Reply Br. 3)( emphasis omitted).
These arguments are unpersuasive because they do not identify
reversible error in the Examiner's finding that Rigney's Table I teaches or
suggests a NiAl alloy comprising a Ni quantity of 64.12 at.% (Ans. 6
( explaining that Table I renders the limitation at issue obvious if the
contribution from the disclosed lower limits of Al, Cr, Ti, Ta, Si, Ca, Hf, Fe,
Y, Ga, and Zr are accounted for)). See In re Burckel, 592 F.2d 1175, 1179
(CCP A 1979) ("[A] reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests.").
Moreover, the Examiner persuasively finds that the exemplified NiAl
alloys in Rigney's Table IV also teach or suggest a Ni quantity that exceeds
50 at.%. (Ans. 6). The Examiner further finds that Rigney teaches that other
elements, such as Ta may be added to the NiAl alloy (id. at 6 ( citing Rigney
3:42--48, 6:44--53; Table I; claim 1)). We, therefore, agree with the
Examiner that "[t]he addition of a third element like Ta to Ni and Al would
[have] permit[ted] the formation of a ternary Laves phase" (Ans. 6-7 (citing
Zeumer MSEA, Zeumer I, Zeumer II, or Zeumer III). See In re Fritch, 972
F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that "[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")).
Appellant argues that Cr is the most preferred element in Rigney
(Appeal Br. 10). Appellant further argues that the ordinarily skilled artisan
would not have been motivated to grow ternary Laves phases in Rigney's
NiAl alloys because Cr is already effective in increasing the creep strength
(id.). According to Appellant, the applied Zeumer references "do not
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suggest that there is a clear-cut correlation between the presence of Laves
phases in, and the creep resistance of, a given alloy" (id. at 11 ( citing, e.g.,
Zeumer III 455-56 ( explaining that "partial replacement of Ta by Cr results
in a distinct reduction of the creep resistance."))).
Appellant's arguments are not persuasive because Rigney teaches that
Ta, like Cr, is similarly suitable as an element in the disclosed alloys (Ans. 6
(citing Rigney 3:42--48, 6:44--53; Table I; claim 1)). As the Examiner
found, Rigney teaches that Ta's presence in the alloy improves spallation
and creep resistance (Ans. 7-8 (citing Rigney 3:42--49; 6: 13-26)). See
Burckel, 592 F.2d at 1179; Fritch, 972 F.2d at 1264. Furthermore, the
Examiner's findings are persuasive that Zeumer's testing of alloys
comprising Ta and Cr in varying amounts resulted in alloys "all with about
24 vol% Laves phases" (Zeumer III Fig. 13 caption; see also Ans. 8). There
is no dispute that Laves phases are generally regarded as providing
strengthening phases and improved behavior ofNiAl-based alloys at high
temperatures (Ans. 8-9 (citing Zeumer III 451, left col.); Spec. 3:18-19,
4:24--29, 5:2--4).
Appellant's arguments thus fail to identify reversible error in the
Examiner's determination that one of ordinary skill in the art would have
been motivated to have grown Zeumer's ternary Laves phases in Rigney's
alloys so that the alloys could maintain their integrity at high temperatures
(Ans. 8).
Therefore, we affirm Rejection (2) of claims groups (I), (II), and (III).
Claims Groups (IV) and (V)
Appellant argues that claims 38 and 40 are drawn to a rotor blade or a
guide vane in a turbine, whereas Zeumer MSEA teaches that "[t]he alloys
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studied are proposed for applications in Diesel engines and gas turbines as
components which are less complex than turbine blades" (Appeal Br. 12, 13
(citing Zeumer MSEA 22, right col.). Appellant further argues that Rigney's
alloys "are to be used as coatings on articles such as turbine blades, not for
the manufacture of turbine blades as such" (Reply Br. 4 ).
Appellant's arguments are not persuasive because Zeumer MSEA
does not exclude the use of particle-strengthened NiAl alloys in turbine
blades. We note, furthermore, that Rigney teaches it was known to form gas
turbine engine components, which encompass the claimed rotor blade and
turbine guide vane, with NiAl intermetallic and other alloying additions for
the purpose of improving high-temperature mechanical strength (Rigney
2:22-30). Appellant's arguments thus fail to identify reversible error in the
Examiner's determination that Rigney, in view of either of the relied upon
Zeumer references, would have rendered claims 38 and 40 obvious (see Ans.
4, 9 (citing Rigney 4:20-36)).
Therefore, we affirm Rejection (2) of claims groups (IV) and (V).
Reiection (3): Claims 21-29. 37. and 38
The Examiner's findings and conclusions regarding Nazmy and either
Zeumer MSEA, Zeumer I, Zeumer II, or Zeumer III are located on pages 5-
6 of the Final Office Action and pages 9-10 of the Answer.
The Examiner finds, inter alia, that Nazmy's nickel aluminide alloy
comprising approximately 43.6-50.5 at.% Al, 0.25-1.5 at.% Ta, 0.08-2.4
at.% Fe, 0.03---0.38 at.% Hf, 0.04---0.84 at.% B, 0---0.95 at.% Ti, 0.04--2.13
at.% Pd, and 41.25-55.99 at.% balance of Ni, teaches or suggests each
limitation and element of the claimed material recited in claim 21, with the
exception of the requisite ternary Laves phases (Final Act. 5 (citing Nazmy
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Abstract; 2:24--33; 1: 18-24; 2:4--15; 4:36-42)). The Examiner relies upon
either Zeumer MSEA, Zeumer I, Zeumer II, or Zeumer III for teaching the
limitation missing from Nazmy (Final Act. 5---6).
Appellant argues that claim 21 is not rendered obvious because
Nazmy's intermetallic nickel aluminide requires Pd and B, whereas these
elements are not required in the claimed subject matter (Appeal Br. 14).
Appellant further argues that claim 21 must be given the broadest reasonable
interpretation in light of the Specification, which does not describe that the
intermetallic nickel aluminide material requires Pd or B (id. at 15).
Appellant's arguments are not persuasive because the presently
claimed subject matter does not preclude the presence of Pd or B.
Composition claim 21 uses the open-ended transitional claim language
"comprises" to introduce elements in the composition. Therefore, there is an
unrebutted presumption that the intermetallic nickel aluminide material may
contain elements in addition to those explicitly mentioned in the claim. 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."')).
Therefore, we affirm Rejection (3).
Rejections (4}-(6): 35 U.S.C. § 103, Obviousness
The Examiner's findings and conclusions regarding Zeumer III and
Zeumer I, and either Zeumer MSEA or Rossmann, are located on pages 6-8
of the Final Office Action and page 10 of the Answer.
It is well understood that "[r]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
fact that a reference may be modified to reflect features of the claimed
invention does not make the modification, and hence the claimed invention,
obvious unless the prior art, knowledge of a person having ordinary skill in
the art, or the nature of the problem to be solved suggested the desirability of
such modification. In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).
The Examiner finds, inter alia, that Zeumer Ill's Alloy No. TC" 5--5
comprising 50.0 at.% Ni, 40.0 at.% Al, 5.0 at.% Ta, and 5.0 at.% Cr
discloses each limitation and element of claim 21 with the exception that it is
silent with respect to the requisite 50.1 at.% to 70 at.% Ni (Final Act. 6-7
( citing Zeumer III 452 Table 1; 451 Section 2)). The Examiner, however,
finds that Alloy No. TC" 5--5 was made in accordance with Zeumer I, which
teaches that the nominal alloy compositions of prepared alloys have a Ni
deviation of+/- 0.5 wt% (Final Act. 7 ( citing Zeumer I 564 Section 2.1 )).
The Examiner concludes that
for Alloy No. TC" 5--5 ... , the addition of 0.5 wt.% Ni to 50.0
at.% Ni means that maximum Ni content is up to approximately
50.71 at.% Ni (using 0.5 wt.% subtracted from Al), which
overlaps the claimed range. Thus, one of ordinary skill in the
art would have understood that Zeumer III 's alloys encompass
Ni contents up to +0.5 wt% the listed value and TC" 5--5 would
fall within the claimed range.
(Final Act. 7) ( emphasis added).
The Examiner, however, has not provided any argument or reasoning
supported by adequate facts to explain why a person of ordinary skill in the
art would have considered Zeumer I's composition deviations when testing
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Zeumer Ill's Alloy No. TC" 5--5. Rather, we conclude that the ordinarily
skilled artisan would have only gleaned from Zeumer Ill's disclosure that
Alloy No. TC" 5--5 comprised 50.0 at.%Ni, 40.0 at.%Al, 5.0 at.% Ta, and
5.0 at.% Cr, without consideration of any such deviations from the nominal
alloy compositions. Therefore, the Examiner has not established a prima
facie case of obviousness based upon articulated reasoning with rationale
underpinnings.
The identified deficiencies in the Examiner's reasoning for combining
the teachings of Zeumer III and Zeumer I are not cured by the application of
either Zeumer MSEA or Rossmann.
Therefore, we reverse Rejection (4), Rejection (5), and Rejection (6).
DECISION
The Examiner's§ 112(b) rejection is affirmed.
Rejections (2) and (3) are affirmed.
Rejections (4), (5), and (6) are reversed.
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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