Ex Parte Wang et al

Patent Trial and Appeal BoardMay 23, 2016

11955673 (P.T.A.B. May. 23, 2016)

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. 11/955,673 12/13/2007 Yucong Wang P000119-PTC-CHE 6075 76438 7590 05/23/2016 VIVACQUA LAW, PLLC 3101 East Eisenhower Parkway Suite 1 ANN ARBOR, MI 48108 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 05/23/2016 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 YUCONG WANG, RICHARD DAVID RICCHI, LAIN ZHOU, YINJIANG WU, QINGWENG DUAN, and TUANWEI YANG ____________ Appeal 2014-006450 Application 11/955,673 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JULIA HEANEY, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C. § 134(a) from a final decision of the Primary Examiner to reject claims 15, 16, and 23–25.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Appellants state that the Real Party in Interest is “GM Global Technology Operations LLC” (Appeal Brief filed January 24, 2014, hereinafter “Appeal Br.,” 2). 2 See Appeal Br. 7; Final Office Action entered July 24, 2013 (hereinafter “Final Act.”) 3–8; Advisory Action entered January 30, 2014. Appeal 2014-006450 Application 11/955,673 2 BACKGROUND The subject matter on appeal relates to titanium boride-reinforced metal alloys (Specification, hereinafter “Spec.,” ¶ 1). Claim 15, the sole independent claim on appeal, is reproduced from page 20 of the Appeal Brief (Claims App.) as follows: 15. A powder metallurgy method comprising: placing a plurality of precursor powder materials comprising substantially pure titanium powder with a titanium particle size of from 9 micrometers to 75 micrometers, from about three percent to about ten percent by weight titanium hydride powder, an alloying material powder with an alloying-material particle size of from 5 micrometers to 7 5 micrometers, and TiB2 powder with a diboride particle size of from 5 micrometers to 7 5 micrometers into a titanium- based mixing container; substantially replacing an ambient atmosphere in said mixing container with an inert fluid; rotating an agitator in said titanium-based mixing container at a rotational speed of at least 3600 rotations per minute for at least four hours until a mixture of precursor powder materials results, in which mixture of precursor powder materials a substantial removal of oxide layers from surfaces of said substantially pure titanium powder has occurred from mechanical friction between agitated powders of the plurality of precursor powder materials; compacting said mixture of precursor powder materials; and sintering said compacted mixture of precursor compacted powder materials at from 1200 °C to 1450 °C to form a structural component comprising a metal matrix composite having a thermodynamically stable TiB reinforcement phase in a titanium-alloy matrix, said structural component being selected from the group consisting of valves, retainers, valve springs, connecting Appeal 2014-006450 Application 11/955,673 3 rods, bolts, fasteners, coil suspension springs, and exhaust system components. THE REJECTION Claims 15, 16, and 23–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moxson et al. (Moxson)3 in view of Kobayashi et al. (Kobayashi)4 (Examiner’s Answer entered March 10, 2014, hereinafter “Ans.,” 4–10; Final Act. 3–8). DISCUSSION The Examiner found that Moxson describes a method including every step recited in claim 15 except for the “mixing features” specified in the claim (Ans. 4–5). The Examiner found, however, that Kobayashi discloses a method of ball-milling a powder mixture comprising placing a powder mixture into a container under an inert atmosphere and subjecting the mixture to mechanical grinding for a predetermined time (e.g., up to 5 hours) at a predetermined rotating speed (e.g. up to 4,000 rpm) (id. at 5). Based on these findings, the Examiner concluded that “[i]t would have been obvious to one of ordinary skill in the art . . . to ballmill[] the powder mixture of Moxson . . . in order to generate collision energy causing the particles to be mixed and react to form a composite material as disclosed by Kobayashi . . . .” (id.). The Appellants raise several issues. First, they contend that although Moxson describes the production of porous structures using titanium precursor powders having a particle size of minus 100 mesh (i.e., particle 3 2004/0096350 A1 published May 20, 2004. 4 2002/0055041 A1 published May 9, 2002. Appeal 2014-006450 Application 11/955,673 4 sizes of up to 120 microns), “the production of dense alloys for structural components . . . would be adversely affected by the inclusion of particles larger than the claimed upper limit of 75 µm” (Appeal Br. 11–12). Second, the Appellants argue that the Examiner failed to establish a prima facie case of obviousness because Moxson fails to teach or suggest any amount for titanium hydride, “much less that the precursor powders include from about 3% to about 10% by weight titanium hydride, as recited in claim 15” (id. at 13). Third, the Appellants contend that Kobayashi does not provide a reasonable expectation of success in implementing the disclosed mechanical grinding technique to remove oxide layers and produce a compacted powder, which when sintered, forms a TiB-reinforcement phase (id. at 15). Fourth, according to the Appellants, “there is no evidence that any specific product described by Moxson or attainable by a plain reading of Moxson will or must include a TiB reinforcement phase” (id. at 17). We agree with the Appellants on the second and third issues and reverse on those bases. Regarding the third issue, Moxson describes a method for manufacturing flat or shaped titanium aluminide articles and layered metal matrix composites—e.g. lightweight plates and sheets for aircraft and automotive applications (Abst.; ¶ 44). Specifically, Moxson describes forming a porous preform of reactive powder alloy or a porous multi-layer composite preform consisting of reactive powder metals and alloys by consolidation using certain specified techniques—i.e., low- temperature loose sintering in vacuum, high temperature loose sintering in vacuum, low-pressure sintering in an inert gas, cold pressing, direct powder rolling, isostatic or die pressing (Abst.). In contrast to the subject matter of claim 15, Moxson lacks any teaching concerning supplying the precursor Appeal 2014-006450 Application 11/955,673 5 powder materials into a titanium-based mixing container and rotating an agitator in the container at a rotation speed of at least 3600 rpm for at least 4 hours to effect substantial removal of oxide layers from surfaces of the substantially pure titanium powder. In an attempt to resolve this key difference, the Examiner relied on Kobayashi (Ans. 5), which does in fact teach the use of physical energy (e.g., by ball milling at 4000 rpm for 0–5 hours) to facilitate mixing and reaction of materials (¶¶ 86, 103, 254). But, as the Appellants point out (Appeal Br. 15), Kobayashi’s disclosure is directed to amorphous nickel- lithium oxide composites for batteries—not an alloy for a structural component as in Moxson (Abst.). The Examiner failed to provide evidence, or otherwise offer a sufficient explanation based on facts or technical reasoning, establishing that Kobayashi’s ball milling technique for producing amorphous nickel-lithium oxide composites for batteries would be suitable in the production of Moxson’s structural parts based on titanium. In this regard, we find no merit in the Examiner’s position that “[t]he claimed and Moxson . . . in view of Kobayashi[]’s composite components are identical in structure or composition and are produced by identical or substantially identical processes” and, therefore, the modified prior art method “would produce the same structural component of a titanium alloy metal-matrix composite having a TiB reinforcing phase” (Ans. 10). In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“The Board’s theory that these two fastening devices in Wilson were capable of being intermingled to perform the same function as the third and first fastening elements in claim 76 is insufficient to show that the latter device was inherent in Wilson. Indeed, the Board's analysis rests upon the very kind of probability Appeal 2014-006450 Application 11/955,673 6 or possibility—the odd use of fasteners with other than their mates—that this court has pointed out is insufficient to establish inherency.”). Regarding the second issue, the Examiner concluded that a person of ordinary skill in the art would have arrived at an amount of “about three percent to about ten percent by weight” for the titanium hydride powder, as recited in claim 15, “in order to achieve desired sinterability and oxidation resistance of the powder blend with an expectation of success” (Ans. 9). Consistent with the Appellants’ argument (Appeal Br. 13–14), the Examiner failed to establish that optimization of the amount for Moxson’s titanium hydride, which is for enhancing the oxidation resistance of the powders during sintering and lowering the cost of pure titanium (Moxson ¶ 63), necessarily results in an amount falling within the Appellants’ specified range for the titanium hydride, which is provided not only for reducing the presence of oxygen in the sintered product while avoiding non-uniform cracking during sintering but also for increasing component density as the decomposed titanium hydride fills up the interstitial spaces between other mixed powders (Spec. ¶ 25). For these reasons, we cannot uphold the Examiner’s rejection. The Examiner’s final decision to reject claims 15, 16, and 23–25 is reversed. REVERSED