HOGANAS AB (PUBL)Download PDFPatent Trials and Appeals BoardNov 27, 20202020002442 (P.T.A.B. Nov. 27, 2020) Copy Citation 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. 15/549,878 08/09/2017 Ulrika PERSSON 0078834-000113 9727 21839 7590 11/27/2020 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER GAMINO, CARLOS J ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 11/27/2020 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ULRIKA PERSSON and OWE MÅRS ____________ Appeal 2020-002442 Application 15/549,878 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision refers to the Specification filed Aug. 9, 2017 (“Spec.”); Final Office Action dated May 15, 2019 (“Final Act.”); Advisory Action dated Sept. 6, 2019 (“Advisory Act.”); Appeal Brief filed Nov. 8, 2019 (“Appeal Br.”); Examiner’s Answer dated Dec. 12, 2019 (“Ans.”); and Reply Brief filed Feb. 6, 2020 (“Reply Br. “). Appeal 2020-002442 Application 15/549,878 2 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to finally reject claims 1, 5, and 7–9.3 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on November 17, 2020.4 We AFFIRM. CLAIMED SUBJECT MATTER The invention relates to a nickel-based brazing filler metal in the form of an alloy containing or consisting of between 20 wt. % and 35 wt. % chromium, between 7 wt. % and 15 wt. % iron, between 2.5 wt. % and 9 wt. % silicon, between 0 wt. % and 15 wt. % molybdenum, unavoidable impurities, and the balance being nickel. Spec. 4:1–4; Abstract. Claim 1 illustrates the subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A nickel based brazing filler metal consisting of: Chromium (Cr): 28-35wt% Iron (Fe): 7-15wt% Silicon (Si): 3-8wt% Molybdenum (Mo): 5-10wt% Inevitable impurities 1wt% max, whereof C is below 0.05% 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies HOGANAS AB (PUBL) as the real party in interest. Appeal Br. 2. 3 Claims 2–4 and 6 are cancelled and claims 10–14 are withdrawn. Appeal Br. 2; Listing of Claims filed Nov. 21, 2018. 4 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2020-002442 Application 15/549,878 3 Balanced with nickel (Ni). Appeal Br., Claims App. 1. REFERENCES The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Name Reference Date Kitashima et al. (“Kitashima”) US 4,325,994 Apr. 20, 1982 Persson US 2012/0183807 A1 July 19, 2012 REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections: 1. Claims 1, 5, and 7–9 are rejected under 35 U.S.C. § 103 as being unpatentable over Kitashima (“Rejection 1”). Final Act. 2. 2. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Kitashima as applied to claim 1 above, and further in view of Persson (“Rejection 2”). Final Act. 4. OPINION Having considered the respective positions the Examiner and Appellant advance in light of this appeal record, based essentially on the factual findings and reasons the Examiner provides in the Answer, Advisory Action, and Final Office Action, and the reasons we discuss below, we affirm the Examiner’s rejections. Rejection 1: Claims 1, 5, and 7–9 as Obvious over Kitashima The Examiner rejects claims 1, 5, and 7–9 under § 103 as obvious over Kitashima. Final Act. 2–4. Appellant presents argument for the Appeal 2020-002442 Application 15/549,878 4 patentability of independent claims 1, 5, and 7 as a group but does not present separate argument for the patentability of claims 8 and 9. Appeal Br. 5, 12. We select claim 1 as representative, and claims 5 and 7–9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that Kitashima suggests a nickel-based metal satisfying the limitations of claim 1 and concludes the reference would have rendered the claim obvious. Final Act. 2–4 (citing Kitashima 3:39–42, 3:45–60, 3:62–68, 4:1–14, 11:18–27 (claim 1), Table 1 (samples 35, 36)). Appellant argues the Examiner’s rejection should be reversed because the cited art fails to disclose a nickel-based brazing filler metal consisting of Cr, Fe, Si, Mo, and impurities at the recited weight percentages, which is balanced with nickel. Appeal Br. 5; Reply Br. 2–3. In particular, relying on samples 35 and 36 of Table 1 of Kitashima, Appellant argues the weight percentages of the elements in the metal Kitashima discloses do not overlap the claimed ranges. Appeal Br. 6–7 (arguing “neither sample 35 nor sample 26 contains all of the foregoing in ranges that overlap the [claimed] ranges” and “the Kitashima compositional proportions do not overlap”); see also Reply Br. 2 (“Kitashima fails to disclose a specific example consisting of the claimed elements in the claimed ranges.”). Appellant contends the “consisting of” recitation of claim 1 requires the claimed metal to have Ni, Cr, Si, Fe, Mo, and impurities within specific ranges. Id. at 3. Appellant further argues one of ordinary skill in the art would not have arrived at the claimed metal based on Kitashima’s disclosures. Appeal Br. 8. In particular, Appellant contends Kitashima provides no guidance as to how one of ordinary skill in the art can arrive at a Ni-based alloy (alloyed with only Cr, Fe, Mo and Si) to be used as a brazing material Appeal 2020-002442 Application 15/549,878 5 for brazing super-austenitic stainless steel parts with high corrosion resistance. Id. at 8–9; see also Reply Br. 6 (arguing the “numerous combinations of elements” Kitashima discloses would not provide guidance to one skilled in the art to arrive at the claimed nickel-based brazing filler metal). Appellant also argues that, in contrast to the claimed metal, Kitashima is directed to a coating metal for preventing crevice corrosion of austenitic stainless steel and not a brazing material. Appeal Br. 9, 11 (arguing “Kitashima is not concerned with improving brazing filler materials”); see also Reply Br. 7 (arguing the “technical solutions of Kitashima are not germane to the problems being solved by Appellant nor to one skilled in the art considering a brazing composition”). Appellant contends that, unlike the claimed invention, which is directed to improved brazing filler materials, the problem being solved by Kitashima is to generate a coating composition that is effective for preventing crevice corrosion, wherein Cr is included to enhance passivity, Mo is included to prevent corrosion, Fe is included to improve workability, and Si and/or B is/are included to reduce melting temperature and improve wettability. Id. at 7; see also Appeal Br. 10 (arguing brazing is a “fundamentally different process” than the coating process of Kitashima). We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection based essentially on the factual findings, analysis, and conclusions the Examiner provides at pages 3–5 of the Answer, page 2 of the Advisory Action, and pages 2–4 of the Final Office Action, which a preponderance of the evidence supports. As the Examiner finds (Final Act. 2), Kitashima discloses a nickel-based metal alloy consisting of Appeal 2020-002442 Application 15/549,878 6 Ni, Cr, Fe, Si, Mo, and inevitable impurities, including having 15–35 wt.% Cr, 0–25 wt.% Fe, 0.5–4 wt.% Si, 3–8 wt.% Mo, less than 1 wt.% impurities, and less than 0.05 wt.% C, which overlap and/or encompass the claimed ranges. Kitashima, Abstract, 3:7–16, 3:43–44, 3:57–61, 3:66–68, 4:12–14, 12:43–48, Table 1 (samples 35, 36). Thus, as the Examiner concludes (Final Act. 3), it would have been obvious to one of ordinary skill in the art to have arrived at the metal of claim 1 because “the compositional proportions taught by Kitashima overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness.” Appellant’s arguments do not reveal reversible error in the Examiner’s factual findings, analysis, or conclusions in this regard. Appellant’s arguments that the cited art fails to disclose a nickel-based brazing filler metal consisting of Cr, Fe, Si, Mo, and impurities at the recited weight percentages (Appeal Br. 5) and “Kitashima fails to disclose a specific example consisting of the claimed elements in the claimed ranges” (Reply Br. 2) are not persuasive because it is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). Indeed, where, “the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Appellant also has not proffered or directed us to any objective evidence in this appeal record to suggest the criticality of the claimed ranges or that a metal alloy, which consists of the recited components falling within the claimed ranges, achieves unexpected results relative to the prior art. Peterson, 315 F.3d at Appeal 2020-002442 Application 15/549,878 7 1330 (explaining that “the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious”). Appellant’s argument that samples 35 and 36 of Kitashima do not contain all of the components in ranges that overlap the claimed ranges (Appeal Br. 6–7) is misplaced and not persuasive of reversible error because the Examiner does not rely on samples 35 and 36 of Kitashima in the rejection for showing Kitashima discloses overlapping ranges. Rather, the Examiner relies on samples 35 and 36 for showing that Kitashima discloses and describes alloys consisting of Ni, Cr, Si, Fe, and Mo and that exclude boron, as claimed. See Ans. 3; Final Act. 2. As we previously discuss above, the Examiner relies on other disclosures in Kitashima for teaching or suggesting the claimed ranges. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a prior art reference’s disclosure must be considered for all that it teaches, including “the inferences which one skilled in the art would reasonably be expected to draw therefrom”). Appellant’s arguments regarding Kitashima not providing guidance to one or ordinary skill in the art to arrive at the claimed “nickel based brazing filler metal” as a brazing material to be used for brazing super-austenitic stainless steel parts with high corrosion resistance (Appeal Br. 8–9; Reply Br. 6) are not persuasive because, as the Examiner finds (Ans. 4), they are drawn to an intended use recitation, which does distinguish Appellant’s claimed metal alloy over the prior art. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]erms [that] merely set forth the intended use for . . . an otherwise old composition . . . do not differentiate the claimed composition from those known in the prior art.”). Appeal 2020-002442 Application 15/549,878 8 Where . . . the claimed and prior art products are identical or substantially identical, . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . [The] fairness [of the burden- shifting] is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant’s arguments, without more, do not structurally distinguish the prior art. Rather, as the Examiner finds (Ans. 4), Appellant does not identify any structural differences between the claimed metal alloy and that of Kitashima. As the Examiner explains (Ans. 4), Appellant also does not direct us to persuasive evidence or adequately explain why Kitashima’s metal alloy could not be used as a brazing filler metal, especially since Appellant acknowledges that a suitable brazing filler metal would be a metal having a melting temperature below the melt temperature of the base material but above 450°C (see Spec. 1:13–15). Appellant’s contentions at pages 9–10 of the Appeal Brief that brazing is a “fundamentally different process” than the coating process of Kitashima (Appeal Br. 10) and that “there are fundamental differences” between Kitashima’s thermal spray process and brazing (id. at 9–10) are not persuasive because they are conclusory and Appellant does provide an adequate technical explanation to support them. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, even if true, Appellant’s contentions in this regard do not reveal, and Appellant does not otherwise identify, any structural differences between the claimed metal alloy and the prior art metal alloy of Kitashima. Appeal 2020-002442 Application 15/549,878 9 Appellant’s contentions that it has “discovered that boron is not a suitable temperature depressant for a brazing material . . . if silicon is limited to between 2.5 wt% and 9 wt%” (Reply Br. 3) and “any impurities must be lower than 2 wt% and be in such small amount that the presence of the impurity component does not substantially influence the properties of the brazing filler material” (id. at 3) are equally unpersuasive because they, too, are conclusory and, without more, insufficient to establish reversible error in the Examiner’s rejection. De Blauwe, 736 F.2d at 705; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Moreover, as the Examiner explains (Ans. 4–5), the fact that Appellant may have “recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise [have been] obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, cannot impart patentability to claims to the known composition.”). Appellant’s contentions that Kitashima’s metal alloy and the claimed metal alloy are directed to solving different problems and involve different technical solutions (Appeal Br. 9, 11; Reply Br. 7) are not persuasive of reversible error because a prior art reference need not address the same problem that the claimed invention addresses in determining obviousness under § 103. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) Appeal 2020-002442 Application 15/549,878 10 (explaining that any need or problem known in the art can provide a reason to arrive at the claimed invention); cf. also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (explaining that a prior art reference qualifies as analogous art if it is from the same field of endeavor as the claimed invention regardless of the problem addressed). Appellant construes the scope of Kitashima’s disclosure too narrowly, especially as it pertains to the applicable field of endeavor. Like the claimed invention, which relates to nickel-based metal alloy materials having certain melting properties and heating characteristics for use in austenitic stainless steel applications (see Spec., Title, 1:14–15, 1:24–26), Kitashima also relates to nickel-based alloys having certain melting properties and heating characteristics for use austenitic stainless steel applications (see Kitashima, Title, 1:10–12, 2:56–66). Thus, although Kitashima may address a different problem than the claimed invention addresses, it would nonetheless seem to be from the same field endeavor as the claimed invention. Bigio, 381 F.3d at 1325. Accordingly, we affirm the Examiner’s rejection of claims 1, 5, and 7–9 under 35 U.S.C. § 103 as obvious over Kitashima. Rejection 2: Claims 8 and 9 Obvious over Kitashima and Persson The Examiner rejects claims 8 and 9 under § 103 as obvious over Kitashima and Persson. Final Act. 4–5. In response, Appellant does not present any additional substantive arguments. Rather, Appellant relies on principally the same arguments it previously discusses and presents above in response to the Examiner’s rejection of claim 1. See Appeal Br. 13 (“Given at least the distinctions identified above with respect to independent claim 1, dependent claims 8–9 are believed allowable over the cited art and a separate discussion of them will not be belabored for the sake of brevity.”). Appeal 2020-002442 Application 15/549,878 11 Thus, based on the factual findings, analysis, and conclusions the Examiner provides in this appeal record, and for principally the same reasons we discuss above for affirming the Examiner’s rejection of claim 1 as obvious over Kitashima (Rejection 1), we affirm the Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103 as obvious over Kitashima and Persson (Rejection 2). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 7–9 103 Kitashima 1, 5, 7–9 8, 9 103 Kitashima, Persson 8, 9 Overall Outcome 1, 5, 7–9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation