Ex Parte Smashey

Patent Trial and Appeal Board

Dec 19, 2012

10371005 (P.T.A.B. Dec. 19, 2012)

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.
10/371,005 02/20/2003 Russell W. Smashey 13DV-12869-1
(07783-0018-
9769
31450 7590 12/20/2012
MCNEES WALLACE & NURICK LLC
100 PINE STREET
P.O. BOX 1166
HARRISBURG, PA 17108-1166
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/20/2012 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 RUSSELL W. SMASHEY
____________

Appeal 2010-004006
Application 10/371,005
Technology Center 3700
____________

Before JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Russell W. Smashey (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 15-22 and 24-34. Appellant
cancelled claims 1-14 and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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The Claimed Subject Matter
The claimed subject matter relates to “superalloy weld wire for use in
repair of superalloy articles for which inclusion control is important.” Spec.
1, ll. 6-7. Claims 15, 21, and 31 are independent and claim 15, reproduced
below, with emphasis added, is illustrative of the subject matter on appeal.
15. Superalloy weld wire having low inclusion content
manufactured by a process comprising the steps of:
casting a molten superalloy having a preselected
composition into a mold having at least one ingot cavity in the
shape of a rod having a diameter of less than about 1/2 inch, the
superalloy comprising hafnium and having a substantial
absence of Zr, Ti and V;
directionally solidifying a rod-shaped ingot by feeding an
advancing solidification interface with molten metal to
eliminate creation of shrinkage cavities and simultaneously
causing impurities and inclusions to segregate as slag to the top
of an unsolidified ingot, wherein such impurities and inclusions
include hafnia, while growing grains into the molten metal
parallel to the axial direction of the rod-shaped ingot, the
directionally solidified rod-shaped ingot having hafnium with a
substantial absence of hafnia;
following completion of solidification, removing a
portion of the rod-shaped ingot having inclusions and
impurities;
cutting the rod-shaped ingot into a plurality of
preselected lengths;
placing a plurality the preselected cut lengths of rod into
a container;
filling the remaining volume of the container with an
inert oxide;
capping the container;
sealing the capped container;
extruding the rod-filled container so as to form wire for
welding having a preselected diameter;
removing the wire from the container; [and]
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grinding to remove impurities from the exterior of the
wire and to achieve the final preselected diameter.

The Rejections
The following Examiner’s rejections are before us for review:
I. claims 15-19, 21, 22, 24-27, and 31-34 under 35 U.S.C.
§ 103(a) as unpatentable over Hunt (US 4,209,122, issued Jun. 24, 1980) and
Walker (US 3,783,032, issued Jan. 1, 1974);
II. claims 20, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable
over Hunt, Walker, and Jackson (US 4,055,447, issued Oct. 25, 1977); and
III. claim 30 under 35 U.S.C. § 103(a) as unpatentable over Hunt,
Walker, Jackson, and Duhl (US 3,700,433, issued Oct. 24, 1972).

OPINION
Rejection I – Obviousness based on Hunt and Walker
Independent claim 15
At the outset, we note that independent claim 15 recites a product-by-
process. See Manual of Patent Examining Procedure (MPEP) § 2113 (citing
In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) (citations omitted)
(“[E]ven though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself. The
patentability of the product does not depend on its method of production.”).
Thus, in assessing the Examiner’s rejection of claim 15 with respect to the
combination of Hunt and Walker, the product of claim 15, namely, a
“[s]uperalloy weld wire,” is limited by the structure implied from the
process steps including, inter alia, the presence of hafnium and the
substantial absence of zirconium or Zr, titanium or Ti, vanadium or V, and
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hafnia (i.e., an oxide of hafnium) in the superalloy’s composition. See In re
Garnero, 412 F.2d 276, 279 (CCPA 1979) (The structure implied by the
process steps should be considered when assessing the patentability of
product-by-process claims over the prior art, especially where the product
can only be defined by the process steps by which the product is made, or
where the manufacturing steps would be expected to impart distinctive
structural characteristics to the final product).
The Examiner finds that Hunt substantially discloses the subject
matter of independent claim 15, including a “high performance alloy
(superalloy[])”; however, Hunt fails to disclose any composition which
includes the presence of hafnium. Ans. 3-4 and 8. To cure the deficiency of
Hunt, the Examiner turns to Walker to teach a directionally solidified nickel-
based alloy having the specific composition disclosed at column 2, lines 24-
37 which includes up to 2 % by weight of hafnium. Ans. 4. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to use the alloy taught by Walker . . . in the Hunt system because these are
merely specific types of nickel alloys, which have been disclosed by Hunt’s
high performance alloys (i.e.[,] nickel superalloys)” and “to shape, size or
form the prior art alloy [in] any shape, size or form, because change of
shape, size or form has been held an obvious variant in any art.”1
Appellant argues that “Hunt and Walker, either alone or in
combination, fail[] to teach or suggest the present invention,” and “[o]nly
impermissible hindsight would lead one of ordinary skill in the art to
combine Hunt and Walker.” App. Br. 5. More particularly, Appellant

1 To support this proposition, the Examiner cites to In re Rose, 220 F.2d 459
(CCPA 1955).
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argues that if the Examiner’s rejection relies on the composition of the high
performance nickel alloy disclosed in Hunt, Hunt’s high performance alloy
does not teach the inclusion of hafnium together with the absence of hafnia
in order to satisfy claim 15. App. Br. 14. Further, Appellant argues that
“Walker fails to cure the deficiencies of Hunt,” because if the Examiner’s
rejection relies on the composition of the directionally solidified nickel-
based superalloy in Walker, then Walker’s superalloy, although containing
hafnium, also contains titanium or Ti in an amount sufficient to preclude
satisfying the limitation of a substantial absence of Ti in claim 15. App. Br.
4-5.
The Examiner responds to Appellant’s arguments by indicating that
Hunt does not disclose the use of titanium or Ti, Walker teaches a
composition containing hafnium, and both Hunt and Walker teach using a
controlled atmosphere, i.e., a non-oxidizing atmosphere in Hunt and flowing
argon in Walker, so that hafnia, an oxide of hafnium, would not form. Ans.
8.
The Examiner’s rejection appears to be replacing the high
performance alloy of Hunt with a specific composition of Walker’s
directionally solidified superalloy. Ans. 3-5. Alternatively, the Examiner’s
Response to Argument appears to be using the composition of Hunt’s high
performance alloy and modifying it to contain hafnium and be directionally
solidified by the teaching of Walker. Ans. 7-12. In either case, we agree
with Appellant that the Examiner’s combination cannot stand for the
following reasons.
If the Examiner is modifying Hunt to replace the high performance
alloy disclosed therein with Walker’s superalloy, claim 15’s limitation of “a
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substantial absence of Ti” is not met because the composition of Walker’s
superalloy includes 3.3 to 4.3 weight percent of titanium. Walker, col. 2, l.
27. Although Appellant’s Specification does not have an explicit definition
of how much titanium can be present in order to still be considered “a
substantial absence,” the Specification does set forth a preferred composition
of Reneʹ 142 as a superalloy upon which the process of the present invention
can be implemented to produce superalloy weld wire. Spec. 9, l. 25 to Spec.
10, l. 22. The preferred composition of Reneʹ 142 has “up to 0.02% Ti
(max).” Spec. 10, l. 21. In addition, we note that the word “substantially” is
often used to mean largely but not wholly what is specified. See, e.g., York
Products, Inc., v. Central Tractor Farm & Family Center, 99 F.3d 1568,
1572-73 (Fed. Cir. 1996); see also, Amhil Enterprises Ltd. v. Wawa, Inc., 81
F.3d, 1554, 1562, (Fed. Cir. 1996). Thus, in light of the Specification, one
of ordinary skill in the art would construe the claim recitation of a
substantial absence of Ti to mean that titanium is largely, but not wholly
absent and would interpret Walker’s deliberate inclusion of titanium at a
level of 3.3 to 4.3 weight percent as failing to satisfy the claim limitation of
a substantial absence of titanium.
Alternatively, if the Examiner is modifying Hunt’s composition of
high performance alloy to include hafnium by the teaching of Walker, the
Examiner has failed to articulate a reason with a rational underpinning as to
why it would have been obvious to one of ordinary skill in the art to do this.
Ans. 4-5 and 7-12; see also, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (holding that “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness.”). Although the Examiner articulates two different reasons for
combining Hunt and Walker, neither articulated reason is supported by any
rational underpinning as to why it would have been obvious to one of
ordinary skill in the art to include the hafnium of Walker in the composition
of Hunt. Instead, the first reason attempts to articulate a rational
underpinning as to why it would have been obvious to one of ordinary skill
in the art to use the Walker composition instead of the composition of Hunt.
Ans. 4. The second reason attempts to articulate a rational underpinning as
to why it would have been obvious to one of ordinary skill in the art to
modify the shape, size, or form of the prior art alloy.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 15 under 35 U.S.C. § 103(a) as unpatentable over Hunt
and Walker.
Dependent claims 16-19
Each of dependent claims 16-19 depend directly from claim 15. App.
Br., Clms. App’x. Although Appellant argues the specific subject matter of
each of dependent claims 16-19 separately, Appellant also incorporates the
arguments presented for independent claim 15 for each of dependent claims
16-19. App. Br. 6-7. Thus, for the same reasons as discussed supra with
respect to independent claim 15, we do not sustain the Examiner’s rejection
of dependent claims 16-19 under 35 U.S.C. § 103(a) as unpatentable over
Hunt and Walker.
Independent claim 21
Claim 21 is directed to a superalloy weld wire including “a
directionally solidified superalloy” which is either nickel-based or cobalt-
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based, and including hafnium, while also “having a substantial absence of
each of Zr, Ti, and hafnia.” App. Br., Clms. App’x.
The Examiner makes the same findings and Appellant makes the same
arguments as those discussed supra with respect to independent claim 15.
Ans. 3-5; App. Br. 7-8. For the same reasons as those discussed supra with
respect to independent claim 15, we do not sustain the Examiner’s rejection
of independent claim 21 under 35 U.S.C. § 103(a) as unpatentable over Hunt
and Walker.
Dependent claims 22 and 24-27
Each of dependent claims 22 and 24-27 depend, either directly or
indirectly, from claim 21. App. Br., Clms. App’x. Although Appellant
argues the specific subject matter of each of dependent claims 22 and 24-27
separately, Appellant also incorporates the arguments presented for
independent claim 21 for each of dependent claims 22 and 24-27. App. Br.
8-10. For the same reasons as discussed supra with respect to independent
claim 21, we do not sustain the Examiner’s rejection of dependent claims 22
and 24-27 under 35 U.S.C. § 103(a) as unpatentable over Hunt and Walker.
Independent claim 31
Claim 31 is directed to a superalloy weld wire including “a
directionally solidified superalloy” which is either nickel-based or cobalt-
based, and including hafnium and aluminum, while also “having a
substantial absence of each of Zr, Ti, V and hafnia.” App. Br., Clms. App’x.
The Examiner makes the same findings and Appellant makes the same
arguments as those discussed supra with respect to independent claim 15.
Ans. 3-5; App. Br. 10-11. For the same reasons as those discussed supra
with respect to independent claim 15, we do not sustain the Examiner’s
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rejection of independent claim 31 under 35 U.S.C. § 103(a) as unpatentable
over Hunt and Walker.
Dependent claims 32-34
Each of dependent claims 32-34 depend directly from claim 31. App.
Br., Clms. App’x. Although Appellant argues the specific subject matter of
each of dependent claims 32-349 separately, Appellant also incorporates the
arguments presented for independent claim 31 for each of dependent claims
32-34. App. Br. 11-12. Thus, for the same reasons as discussed supra with
respect to independent claim 15, we do not sustain the Examiner’s rejection
of dependent claims 32-34 under 35 U.S.C. § 103(a) as unpatentable over
Hunt and Walker.

Rejection II – Obviousness based on Hunt, Walker, and Jackson
Claim 20 depends indirectly from independent claim 15 and each of
claims 28 and 29 depend directly from independent claim 21. App. Br.,
Clms. App’x. Although Appellant argues each of claims 20, 28, and 29
separately, with respect to each of claims 20, 28, and 29, Appellant argues
that Jackson does not “cure the deficiencies of . . . Hunt and Walker.” Ans.
13-14. We agree. Accordingly, we do not sustain the Examiner’s rejection
of dependent claims 20, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable
over Hunt, Walker, and Jackson.

Rejection III – Obviousness based on Hunt, Walker, Jackson, and Duhl
Claim 30 depends indirectly from independent claim 21. App. Br.,
Clms. App’x. Appellant argues that Duhl does not “cure the deficiencies of .
. . Hunt, Walker, and Jackson.” Ans. 13-14. We agree. Accordingly, we do
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not sustain the Examiner’s rejection of dependent claim 30 under 35 U.S.C.
§ 103(a) as unpatentable over Hunt, Walker, Jackson, and Duhl.

DECISION
We reverse the Examiner’s decision to reject claims 15-22 and 24-34.

REVERSED

Klh