HOGANAS AB (PUBL)

Patent Trials and Appeals Board

Nov 27, 2020

2020002442 (P.T.A.B. Nov. 27, 2020)

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. “).
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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.
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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
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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
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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
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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
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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.”).
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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.
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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)
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(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.”).
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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