Ex Parte Woodcraft et al

Patent Trial and Appeal Board

Dec 26, 2017

15026261 (P.T.A.B. Dec. 26, 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.
15/026,261 03/31/2016 Valentina A. Woodcraft 75173-US-PCT 1013
109 7590 12/28/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
12/28/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALENTINA A. WOODCRAFT
and EUGENE L. LIENING1
Appeal 2017-008599
Application 15/026,261
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1—5 under 35 U.S.C. § 103(a) as unpatentable over
1 The Applicant and real party in interest are Dow Global Technologies LLC.
Appeal 2017-008599
Application 15/026,261
Gambale2 in view of Bieber3 and Geving et al.4 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Independent claim 1, the sole claim at issue on appeal, is reproduced below
from the Claims Appendix of the Appeal Brief dated September 1, 2016 (“Br.”).
The limitation at issue is italicized.
1. A process comprising:
(a) providing a tantalum-coated metal alloy substrate prepared
by providing a precipitation hardened metal alloy substrate and
applying tantalum to the substrate while sustaining a temperature
greater than 700 degrees Celsius, characterized by resulting in a
homogeneous tantalum coating over the metal alloy substrate;
(b) heat annealing the tantalum-coated metal alloy substrate by
heating to an annealing temperature for the tantalum-coated metal
alloy substrate, holding at the annealing temperature for a period of
time and then quenching to a temperature below 50 degrees Celsius;
(c) heating the tantalum-coated metal substrate to the
precipitation hardening temperature of the metal alloy substrate; and
(d) cooling the tantalum-coated metal alloy substrate to a
temperature below 50 degrees Celsius;
wherein the process is further characterized by carrying out steps (b)-
(d) under a tantalum-inert gas atmosphere and by quenching in step
(b) and cooling in step (d) being carried out by flowing a tantalum-
inert gas having a temperature of less than 50 degrees Celsius over the
tantalum-coated metal alloy substrate.
Br. 11.
2 Dean Gambale, Tantalum Surface Alloys Prevent Corrosion, Advanced Materials
& Processes 23—25 (Jun. 2010) (“Gambale”).
3 US 3,342,590, issued September 19, 1967 (“Bieber”).
4 US 6,814,926 B2, issued November 9, 2004 (“Geving”).
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Appeal 2017-008599
Application 15/026,261
The Appellants disclose that examples of tantalum-inert gases include gases
selected from the noble gases (helium, neon, argon, krypton, and xenon) and air,
and any component of air, at temperatures up to 300°C. Spec. 6,11. 16—19.
B. DISCUSSION
The Examiner finds Gambale discloses a process of coating a stainless steel
substrate with a uniform layer of tantalum, corresponding to step (a) of the claimed
process. Non-Final Act. 3.5 The Examiner relies on Bieber to show that annealing
and precipitation hardening stainless steel is a well-known technique. In particular,
the Examiner finds Bieber discloses a process comprising “annealing, cooling,
precipitating aging, and cooling . . . , which meets the heat treatment conditions as
recited in steps (b) — (d) of instant claim [1].” Non-Final Act. 3. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art “to
apply proper heat treatment as demonstrated by [Bieber] in the process of
[Gambale] in order to obtain the desired precipitated hardening result.” Non-Final
Act. 3.
The Examiner finds Gambale in view of Bieber “does not specify heat
treatment being performed in a Ta-inert gas atmosphere as recited in the instant
claim 1.” Non-Final Act. 3. Nonetheless, the Examiner finds Geving teaches a
process of manufacturing a powder including stainless steel and tantalum, wherein
argon gas is applied in a heat treatment process (infiltrating process), which
includes precipitation hardening. Non-Final Act. 3 (citing Geving, col. 9,11. 43—
67); Ans. 46 (citing Geving, col. 8,1. 58—col. 9,1. 23; Geving claims 1, 3, 4).
5 Non-Final Office Action dated July 22, 2016.
6 Examiner’s Answer dated November 1, 2016.
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Appeal 2017-008599
Application 15/026,261
Geving’s invention relates to a powder blend for use in a selective laser
sintering process and a method of forming three-dimensional parts using the
powder blend.7 Geving, col. 1,11. 8—12. According to Geving, “[t]he method
begins with process 10, which is the selective laser sintering of a blended metal
powder to form a ‘green’ article.” Geving, col. 6,11. 38-40. Geving discloses that
the powder blend “is a metal powder [i.e., a steel alloy] blended with or coated by
a polymeric binder system and also includes a high melting temperature fine
particulate metallic, intermetallic, or ceramic.” Geving, col. 6,11. 43 47. Geving
discloses that “[sjuitable high melting temperature fine particulate metallic,
intermetallic or ceramic materials” include tantalum. Geving, col. 7,11. 37-41.
Geving discloses that the presence of the high melting temperature fine
metallic, intermetallic or ceramic particles (e.g., tantalum) positioned along
interstitial spaces of the article reduces liquid phase sintering shrinkage and
distortion of the steel alloy particles. Geving, col. 9,11. 27—31. Thus, in process
18, an infiltrant which is placed in the oven or furnace in contact with the article,
melts and spontaneously infiltrates the article, resulting in a fully dense article.
Geving, col. 9,11. 32—35.
The Appellants argue that Geving teaches carrying out heat treatments to
harden the articles in an air atmosphere to a temperature of 840°C, which is not a
tantalum-inert gas above 300°C. Br. 9 (citing Geving, col. 9,11. 44—50; Spec. 6,11.
18—19). Indeed, Geving discloses:
7 The invention disclosed in Geving relates generally to the field of solid freeform
fabrication (SFF) of parts. Geving, col. 1,11. 8—9. Geving discloses that “SFF
generally refers to the manufacture of articles in a layer-wise or additive fashion
directly from computer-aided-design (CAD) databases in an automated fashion.”
Geving, col. 1,11. 14—16.
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Appeal 2017-008599
Application 15/026,261
An additional heat treatment process 20 can then be performed
to further harden the articles. After the articles from process 18 have
been cooled to room temperature, they are placed in a preheated oven
in an air atmosphere and over about a 15 minute period brought from
room temperature to a temperature of about 700° C. Thereafter the
temperature is gradually raised from 700° C. to 840° C. over a two
hour period. The articles are then left at this temperature for one hour.
Geving, col. 9,11. 44—52 (italics added).
Significantly, the portions of Geving relied on by the Examiner (i.e., column
8, line 58—column 9, line 23 and claims 1, 3, and 4) do not expressly disclose “heat
annealing” or “precipitation hardening” in an argon atmosphere (or any other
tantalum-inert gas atmosphere) as recited in claim 1. See Br. 9—10. Moreover, the
Examiner does not identify heating conditions in Geving that correspond to heat
annealing and precipitation hardening as recited in steps (b) and (c), respectively,
of the claimed process.
To the extent the Examiner is taking the position that Geving’s method
inherently includes precipitation hardening,8 the facts relied on by the Examiner
are not sufficient to support a finding of inherency. See In re Rijckaert, 9 F.3d
1531, 1534 (Fed. Cir. 1993) (“The mere fact that a certain thing may result from a
given set of circumstances is not sufficient [to establish inherency.]”), quoting In
re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981).
Finally, we note the Examiner’s reason for combining Geving with Gambale
and Bieber (i.e., applying a tantalum-inert gas, such as argon, “in the heat
treatment” of Gambale’s modified process “in order to obtain surface protection
result”) relies on a portion of Geving that describes quenching an article in an
argon atmosphere. See Non-Final 4 (citing Geving, col. 9,1. 44—col. 10,1. 2).
8 See Ans. 4 (finding that Geving teaches a cooling rate that is similar to the
cooling rate recited in Appellants’ claim 5).
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Appeal 2017-008599
Application 15/026,261
Based on the foregoing, we find there would have been no reason to use an
argon atmosphere in the heat annealing and precipitation hardening steps of
Gambale’s modified process (corresponding to steps (b) and (c) in the claimed
process) based on the portions of Geving relied on by the Examiner. Therefore,
the § 103(a) rejection of claims 1—5 is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
6