Kennametal Inc.

Patent Trials and Appeals Board

Jan 7, 2022

2021001117 (P.T.A.B. Jan. 7, 2022)

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. 15/400,409 01/06/2017 Martin Gerardo PEREZ P16-06129-US-NP 8495 27877 7590 01/07/2022 KENNAMETAL INC. Intellectual Property Department P.O. BOX 231 1600 TECHNOLOGY WAY LATROBE, PA 15650 EXAMINER GAMINO, CARLOS J ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 01/07/2022 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): k-corp.patents@kennametal.com larry.meenan@kennametal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte MARTIN GERARDO PEREZ, DANIEL J. DE WET, JOEL DAWSON, and ROBERT MONDS _______________ Appeal 2021-001117 Application 15/400,409 Technology Center 1700 _______________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-9, 11, 12, 15-17, 19, 20, and 22-25 of Application 15/400,409. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 In our Decision, we refer to the Specification filed Jan. 6, 2017 (“Spec.”) of Application 15/400,409 (“the ’409 Application”); the Non-Final Office Action dated Dec. 19, 2019 (“Non-Final Act.”); the Appeal Brief filed June 19, 2020 (“Appeal Br.”); the Examiner’s Answer dated Oct. 1, 2020 (“Ans.”); and the Reply Brief filed Dec. 1, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Kennametal, Inc. as the real party in interest. Appeal Br. 3. Appeal 2021-001117 Application 15/400,409 2 BACKGROUND The subject matter of the ’409 Application relates to a method of repairing a nickel-based superalloy part. Claim 1. According to the Specification, components of gas turbines, including blades and vanes, are subjected to harsh operating conditions leading to component damage by one or more mechanisms. Spec. 1. Gas turbine components can suffer damage from thermal fatigue cracks and, if left unaddressed, such damage will necessarily compromise gas turbine efficiency and potentially lead to further turbine damage. Id. Claim 1 is representative of the ’409 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A method of repairing a nickel-based superalloy part comprising: providing an assembly by application of at least one composite preform to a damaged area of the nickel-based superalloy part, the composite preform including fibrous polymeric matrix, and a nickel-based superalloy powder component, a nickel-based braze alloy powder component and a melting point depressant component each disposed in the fibrous polymeric matrix, the melting point depressant component comprising boron in an amount of 0.3 to 1.5 weight percent of the composite preform; and heating the assembly to form a filler alloy metallurgically bonded to the damaged area, the filler alloy formed from the nickel-based superalloy powder component and the nickel- based braze alloy powder component, wherein the filler alloy is a load bearing component of the nickel-based superalloy part and exhibits tensile strength greater than 50 percent of tensile strength of the nickel-based superalloy of the part, wherein the nickel-based superalloy powder is of composition of 0.05-0.2 wt.% carbon, 7-9 wt.% chromium, 8- 11 wt.% cobalt, 0.1-1 wt.% molybdenum, 9-11 wt.% tungsten, 3-4 wt.% tantalum, 5-6 wt.% aluminum, 0.5-1.5 wt.% Appeal 2021-001117 Application 15/400,409 3 titanium, less than 0.02 wt.% boron, less than 0.02 wt.% zirconium, less than 2 wt.% hafnium and the balance nickel, and wherein the nickel-based braze alloy powder is of composition 0.01-0.03 wt.% carbon, 14-17 wt.% chromium, 9- 12 wt.% cobalt, less than 0.02 wt.% molybdenum, 0.05-0.2 wt.% iron, 2-5 wt.% tantalum, 2-5 wt.% aluminum, less than 0.02 wt.% titanium, 1.5-2.5 wt.% boron, 0.05-0.2 wt.% zirconium, less than 0.02 wt.% manganese and the balance nickel. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Solanki et al. (“Solanki”) US 5,352,526 Oct. 4, 1994 Miglietti US 6,520,401 B1 Feb. 18, 2003 Kinstler US 7,017,793 B2 Mar. 28, 2006 Johnson et al. (“Johnson”) US 7,789,288 B1 Sept. 7, 2010 Kool et al. (“Kool”) US 2009/0139607 A1 June 4, 2009 Johnson et al. (“Johnson”) US 7,789,288 B1 Sept. 7, 2010 G.S. Hoppin, III, and W.P. Danesi, Manufacturing Processes for Long-Life Gas Turbines, Journal of Metals, July 1986 (“Hoppin”) Oerlikon metco Material Product Data Sheet Amdry D-15 Diffusion Braze Alloy, DSMB-0028.3, 2014 (“Oerlikon”) Appeal 2021-001117 Application 15/400,409 4 REJECTIONS The Examiner maintains the following rejections3: 1. Claims 1-9, 12, 15-17, 19, and 22-25 under 35 U.S.C. § 103 as unpatentable over Kinstler in view of Solanki, Kool, Oerlikon, Hoppin, and further in view of Johnson. Non-Final Act. 4-11. 2. Claims 11 and 20 under 35 U.S.C. § 103 as unpatentable over Kinstler in view of Solanki, Kool, Oerlikon, Hoppin, Johnson, and further in view of Miglietti. Non-Final Act. 11-12. DISCUSSION We review the appealed obviousness rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error in the Examiner’s rejections. We note that Appellant argues for rejoinder of the restricted out claim 21 in the ’409 Application. See Appeal Br. 5. However, Appellant’s rejoinder request is not within our jurisdiction to review, which is limited to 3 We note that Appellant properly appeals from the Examiner’s Non-Final rejection of Dec. 19, 2019, because at least one of the claims on appeal has been twice rejected. See 35 U.S.C. § 134(a) (“An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.”) Appeal 2021-001117 Application 15/400,409 5 the review of adverse decisions by examiners related to matters involving the rejection of claims. See 35 U.S.C. § 134. Decisions an examiner makes that are of a discretionary, procedural, or non-substantive nature, such as the restriction requirement of claim 21 (Non-Final Act. 3), are reviewable by petition to the Director, not by appeal. In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002). Ground 1: Rejection of claims 1-9, 12, 15-17, 19, and 22-25 as obvious Appellant argues claims 1-4, 9, 12, 15-17, 19, and 25 as a group; claims 5-8, 23, and 24 as a group; and separately argues claim 22. Appeal Br. 5-8. We select independent claim 1 as representative of the first claims group. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2-4, 9, 12, 15-17, 19, and 25 stand or fall with claim 1. We separately discuss claim 1; claims 5-8, 23, and 24; and claim 22. Claim 1 The Examiner finds Kinstler teaches a method of repairing Ni-based components using a brazing paste comprising two powders, wherein the brazing alloy powder possesses a lower melting point than the other powder. Ans. 5. The Examiner finds that Oerlikon similarly teaches using a braze paste comprising two powders to repair cracks in a Ni-based alloy, such as MM247 (i.e., “a nickel-based superalloy powder component” (claim 1)) and brazing alloy Amdry D-15 (i.e., “a nickel-based braze alloy powder component” (claim 1)). Id. The Examiner determines that it would have been obvious to one of ordinary skill in the art to select any known braze with boron as a melting point depressant, including Oerlikon’s Amdry D-15, because this braze is intended for repairing cracks and fits Kinstler’s requirements. Non-Final Act. 7. Appeal 2021-001117 Application 15/400,409 6 The Examiner finds that Hoppin teaches the use of MarM247, i.e., the MM247 disclosed in Oerlikon, “in the production of advanced turbine blades and rotating parts.” Non-Final Act. 6. The Examiner finds Kinstler teaches that the crack repair method “works best when the second nickel base alloy material is the same as the component being repaired.” Id. The Examiner finds that Johnson teaches MarM247’s composition in ranges that overlap the instantly claimed ranges for the nickel-based superalloy powder. Id. at 6-7. The Examiner determines that it would have been obvious to one of ordinary skill in the art to select MarM247 as the nickel-based superalloy powder when repairing a turbine component made of MarM247 using Kinstler’s general method. Id. at 6. The Examiner finds that the cited references teach or suggest the load bearing and tensile strength limitations recited in claim 1 because “the prior art method is identical to that of the claimed method” and would have “also achieve[d] any claimed result.” Non-Final Act. 9. Appellant proffers three arguments for reversal of the rejection of claim 1. First, Appellant argues that “each of the Kinstler, Solanki, Kool, Oerlikon, Hoppin, and Johnson fails to disclose or contemplate the limitation that the filler alloy is a load bearing part of the nickel-based superalloy part.” Appeal Br. 5. In response, the Examiner contends that “one of ordinary skill in the art would have understood that the crack formed because the area of the crack experienced some kind of stress/load.” Ans. 4. The Examiner also contends that “any brazing material applied to fix the crack will also experience the same stress/load.” Id. Appeal 2021-001117 Application 15/400,409 7 In the Reply Brief, Appellant counters that “cracks can develop in non-load bearing components via a variety of mechanisms, including wear, corrosion and abrasion.” Reply Br. 2. However, our predecessor reviewing court’s long-established law holds “[w]here, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, 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.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977) (emphasis added). Appellant has not provided any evidence establishing that Kinstler’s modified filler alloy would have been incapable of: (i) repairing cracks in a load bearing component of a Ni-based superalloy part or (ii) exhibiting a tensile strength greater than 50 percent of the tensile strength of the superalloy part. Thus, Appellant’s first argument is unpersuasive of reversible error. Second, Appellant argues that “the Examiner picks and chooses disclosure from six (6) prior art references and applies this disclosure in manner inconsistent with the references from which they were selected.” Appeal Br. 6. Appellant’s arguments are not persuasive of reversible error at least because reliance on a large number of references does not necessarily weigh against obviousness of a claim. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)). What the references would have meant to one of ordinary skill in the art, not their number, is the criterion for determining whether the references would have rendered a claim obvious. See id.; see also In re Miller, 159 F.2d 756, 758-59 (CCPA 1947) (rejecting the argument that the Appeal 2021-001117 Application 15/400,409 8 need for eight references for a rejection supported patentability); In re Troiel, 274 F.2d 944, 947 (CCPA 1960) (rejecting appellant’s argument that combining a large number of references to show obviousness was “farfetched and illogical”)). The combination of six references for a rejection of a claim of the length of claim 1 is not conclusive of nonobviousness. As an example of the Examiner’s purported picking, choosing, and applying the prior art’s teachings in a manner “inconsistent with the references” (Appeal Br. 6), Appellant argues that “[t]he Examiner has failed to provide any technical rationale why the skilled artisan would ignore the teachings of Johnson and replace Amdry DF-6A with Amdry D15.” Id. Appellant argues that Kinstler’s alloy is “compositionally consistent with Johnson[’s]” DF-6A and that one of ordinary skill in the art would not have “replace[d] Amdry DF-6A” in Johnson’s combination of MarM247 and Amdry DF-6A “with a braze alloy compositionally inconsistent with the teachings of Johnson and Kinstler,” such as Oerlikon’s Amdry D-15. Id. However, Appellant’s arguments regarding Johnson’s combination of MarM247 and Amdry DF-6A do not address the Examiner’s rejection as stated. Non-Final Act. 6-9; Ans. 4-6. The Examiner relies on Johnson for teaching: (i) the obviousness of the claimed nickel-based superalloy powder composition (Non-Final Act. 6-7) and (ii) a method of routinely arriving at the optimum ratio of powders that would have resulted in the claimed amount of boron in the composite. Id. at 8-9. It is well established that the obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d Appeal 2021-001117 Application 15/400,409 9 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”). Thus, Appellant’s second argument is unpersuasive of reversible error. Third, Appellant contrasts “the complex step-heating profile in FIG. 3 of Johnson” with the heating profile described in the Specification’s Examples 3 and 5. Appeal Br. 7. Appellant argues that the exemplified alloy embodiments “were heated to a temperature of 1220-1250°C for a time period of 1 hour to achieve the desired properties. None of the applied references discloses or teaches this heating profile.” Id. Appellant thus argues that it “cannot be expected from the references” that “the claimed filler alloy” would have been capable of performing in a load bearing component and exhibiting the requisite tensile strength. Id. at 8. However, we agree with the Examiner that Appellant’s arguments regarding the heating profile disclosed in the Specification are not commensurate in scope with the claim. Ans. 8. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Moreover, the Examiner finds that the proffered Examples fail to rebut the prima facie case of obviousness because, inter alia, “there is no proof that” the exemplified heating profile “is critical or produces unexpected results.” Ans. 8. Thus, Appellant’s third argument is unpersuasive of reversible error. Appeal 2021-001117 Application 15/400,409 10 We sustain the rejection of claim 1 over Kinstler in view of Solanki, Kool, Oerlikon, Hoppin, and further in view of Johnson. For the same reasons, we sustain the rejection of claims 2-4, 9, 12, 15-17, 19, and 25. Claims 5-8, 23, and 24 Appellant argues that the subject matter of dependent claims 5-8, 23, and 24 “cannot be expected” because of “the divergent processing conditions taught by Kinstler and Johnson.” Appeal Br. 8. This argument of Appellant is not persuasive of reversible error. More substantive arguments are required in an appeal brief to overcome a rejection. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). We understand Appellant’s argument to be directed to the Examiner’s reliance on Johnson as evincing a method that would have resulted in the claimed amount of boron in the composite. Non-Final Act. 8-9. Even assuming this presumption is correct, Appellant fails to adequately explain how Johnson’s processing conditions diverge from Kinstler’s or how this alleged divergence would have adversely affected producing a filler alloy having the features recited in each of claims 5-8, 23, and 24. We sustain the rejection of claims 5-8, 23, and 24. Claim 22 Claim 22 is reproduced below from the Claims Appendix of the Appeal Brief: 22. The method of claim 1, wherein the nickel-based braze alloy powder has a melting point at least 100°C less than the nickel-based superalloy powder. The Examiner finds that Kinstler’s modified method would have resulted in a nickel-based braze alloy powder having a melting point at least Appeal 2021-001117 Application 15/400,409 11 100°C less than the nickel-based superalloy powder because “the prior art method is identical to that of the claimed method.” Non-Final Act. 9. Appellant argues “the Examiner has failed to present any technical rationale or reasoning why the nickel-based braze alloy would be selected to have [sic] melting point at least 100°C less than the nickel-based superalloy powder.” Appeal Br. 8. However, the findings discussed supra support the substantial identity of the claimed and prior art processes. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441 F.2d 660, 664 (CCPA 1971)). Appellant offers no such showing. For the reasons above, we sustain the rejection of claim 22 as obvious over the combination of Kinstler, Solanki, Kool, Oerlikon, Hoppin, and Johnson. Ground 2: Rejection of claims 11 and 20 as obvious Appellant argues that Miglietti fails to remedy the deficiencies of Kinstler, Solanki, Kool, Oerlikon, Hoppin, and Johnson. Having found no deficiencies in Kinstler, Solanki, Kool, Oerlikon, Hoppin, and Johnson, Appellant’s argument is not persuasive for the reasons set forth supra. We sustain the rejection of claims 11 and 20 as obvious over the combination of Kinstler, Solanki, Kool, Oerlikon, Hoppin, Johnson, and Miglietti. Appeal 2021-001117 Application 15/400,409 12 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9, 12, 15- 17, 19, 22- 25 103 Kinstler, Solanki, Kool, Oerlikon, Hoppin, Johnson 1-9, 12, 15- 17, 19, 22- 25 11, 20 103 Kinstler, Solanki, Kool, Oerlikon, Hoppin, Johnson, Miglietti 11, 20 Overall Outcome 1-9, 11, 12, 15-17, 19, 20, 22-25 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED