MTU Aero Engines AG

Patent Trials and Appeals BoardJul 23, 2020

15142068 - (D) (P.T.A.B. Jul. 23, 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. 15/142,068 04/29/2016 Thomas GOEHLER 6570-P50286 7356 13897 7590 07/23/2020 Abel Schillinger, LLP 5929 Balcones Drive Suite 300 Austin, TX 78731 EXAMINER HEVEY, JOHN A ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 07/23/2020 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS GOEHLER, RALF RETTIG, ROBERT F. SINGER, STEFFEN NEUMEIER, and NILS RITTER Appeal 2019-004628 Application 15/142,068 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21–40. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MTU Aero Engines AG. Appeal Br. 3. Appeal 2019-004628 Application 15/142,068 2 Appellant’s invention is directed to a nickel-based alloy which is substantially free of rhenium but has the creep resistance of a nickel-based superalloy of the second generation and a density which is lower than comparable alloys (Spec. 1:9–11; Claim 21). Claim 21 is representative of the subject matter on appeal: 21. A nickel base alloy exhibiting high creep resistance and being substantially free of rhenium, wherein the alloy comprises the following elements in % by weight relative to the total weight of the alloy: aluminum from 3.0 to 7.7 cobalt from 0 to 16.8 chromium from 3 to 11.8 molybdenum from 3.3 to 11.3 tantalum from 0 to 3.9 titanium from 0 to 6.0 tungsten from 0 to 11.3 carbon from 0 to 0.05 phosphorus from 0 to 0.015 copper from 0 to 0.05 zirconium from 0 to 0.015 silicon from 0 to 6.0 sulfur from 0 to 0.001 iron from 0 to 0.15 manganese from 0 to 0.05 boron from 0 to 6.0 hafnium from 0 to 4.0 yttrium from 0 to 0.002 niobium from 0 to 8.0 germanium from 0 to 8.0, remainder nickel and unavoidable impurities, the concentration of Ni being at least 67 at.%. Appeal Br. 14–15 (Claims Appendix). Appellant appeals the following rejections: 1. Claims 21–37, and 39 are rejected under 35 U.S.C. § 103 as Appeal 2019-004628 Application 15/142,068 3 unpatentable over Shaw (GB 2153845 A, published August 29, 1985). 2. Claims 38 and 40 are rejected under 35 U.S.C. § 103 as unpatentable over Shaw in view of Volek (US 7,887,748 B2, issued February 15, 2011). Regarding rejection (1), Appellant’s arguments focus on claims 21, 26, and 27 only (Appeal Br. 7–12). Any claims not argued separately will stand or fall with our analysis of claim 21. Rejection (2) is not separately argued. Rather, Appellant relies on arguments made regarding rejection (1). FINDINGS OF FACT & ANALYSIS The Examiner’s findings and conclusions regarding the § 103 rejection of claim 21 over Shaw are located on pages 3 to 5 of the Final Action. The Examiner finds that Shaw teaches a nickel-based alloy with high creep resistance with ranges that overlap the elemental ranges recited in claim 21 (Final Act. 3–4). The Examiner finds Shaw’s broader range disclosure includes embodiments where the amounts of Al, Cr, Co, Mo, Hf, W, and Ni are such that the Shaw’s “hardener factor” requirement is met, and so is Appellant’s claim requirement to use at least 67% Ni (Final Act. 4). The Examiner finds that the overlapping ranges of the elements establishes a prima facie case of obviousness (Final Act. 5). Appellant argues that Shaw does not teach or suggest alloys that satisfy Shaw’s hardener factor and have a Ni content of at least 67% (Appeal Br. 7). Appellant contends that Shaw’s alloys B and C include a Ni content Appeal 2019-004628 Application 15/142,068 4 of about 61%, which is outside the claimed Ni range (Appeal Br. 7). Appellant argues that example 1 in the Specification is representative of the claimed invention and has a Ni content of 68.7% (Appeal Br. 7). Appellant contends that comparative example 2 in the Specification has a Ni content of 63.6% (Appeal Br. 7). Appellant contends that example 1 and comparative example 2 fall within Shaw’s broad concentration disclosures and have similar hardener factors as defined by Shaw (Appeal Br. 8). Appellant argues that Shaw does not appreciate that alloys may differ substantially in their properties such as density (Appeal Br. 8). We understand Appellant to argue that embodiments having a Ni content of at least 67% have a lower density than those with Ni contents less than 67%, despite also satisfying Shaw’s hardener factor requirement (Appeal Br. 8). Appellant argues that the Examiner has not explained why one ordinary skill in the art would have selected particular elemental concentrations as required by claim 21 (Appeal Br. 8). Appellant argues that the Examiner fails to point to any explicitly disclosed composition in Shaw that has a Ni concentration of at least 67 at.% (Appeal Br. 9). Appellant contends that the obviousness analysis asks whether Shaw teaches or suggests the claimed composition, not whether the claimed invention is encompassed by Shaw’s disclosure (Appeal Br. 9). Appellant argues that the Examiner provides no reason, such as an advantageous property that might result, for selecting particular amounts of the various elements to arrive at the claimed invention (Appeal Br. 9). Appellant argues that since Shaw discloses that the combined concentration of Ni and Co must be higher than 55 wt.%, the Ni concentration in Shaw’s alloys may be as low as 30 wt.% (Appeal Br. 10). Appeal 2019-004628 Application 15/142,068 5 Appellant argues that Shaw’s concentration ranges in Table 1 are very broad and include millions or billions of alloy combinations (Appeal Br. 10– 11). Appellant contends that the degree of overlap between Shaw’s disclosure and the claimed composition is very small (Appeal Br. 11). We have fully considered Appellant’s argument and the Examiner’s position. We find that the preponderance of the evidence favors the Examiner’s obviousness conclusion. There is no dispute that this appeal involves alloy compositions with overlapping elemental ranges (Final Act. 4; Appeal Br. 11). Because the ranges overlap, the Examiner has established a prima facie case of obviousness. See, In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” We are unpersuaded by Appellant’s argument that there is no motivation to select the various elements in amounts as recited in the claim because the Examiner has established that Shaw broadly teaches an alloy composition that includes the claimed elements in amounts that overlap with the ranges recited in claim 21 (Final Act. 3-5). Appellant’s argument that there is no motive to select the various elements in amounts recited in claim 21 is undercut by Shaw’s disclosure of an alloy composition using elements in amounts that overlap with those recited in claim 21 (i.e., Table 1 “Broad” embodiment). Appellant’s arguments regarding Shaw’s examples and the possibility that Ni might be present in as low an amount of 30% when Co is present in an amount of 25% are not persuasive. Shaw teaches that Co may not be included in the composition (i.e., zero percent) (Table 1). That teaching coupled with Shaw’s teaching that the Ni and Co content should be greater Appeal 2019-004628 Application 15/142,068 6 than 55% does not limit Shaw to a Ni content below 67%. Moreover, Shaw is not limited to the embodiments exemplified or preferred. Rather, Shaw is relevant for all that it teaches including non-preferred embodiments, such as disclosed in the “broad” composition ranges in Shaw’s Table 1. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Appellant’s argument, citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994), that there are millions and perhaps billions of alloy combinations in Shaw’s disclosure is not persuasive because even though Shaw discloses a multitude of possible combinations such a disclosure does not render any particular formulation less obvious. See, Merck v. Biocraft, 874 F.2d 804, 807 (Fed. Cir. 1989). The Examiner properly finds that Appellant’s argument regarding Baird is undermined by Appellant’s claim 21 which is similarly as broad as Shaw’s composition claims (Ans. 6). Claim 21 and Shaw’s Table 1 composition claims each include a list of elements with broad ranges. The facts in Baird are further distinguishable from the present case in that Baird involves selection of a species from a generic formula whereas the present case involves prior art disclosures of an alloy with the same elements as recited in claim 21 in amounts that overlap with the claimed invention. We are unpersuaded by Appellant’s argument regarding the lower density achieved according to the invention with at least 67% Ni relative to the density achieved for alloys with less than 67% Ni. We note that claim 21 does not recite density as a property in the claim. Nevertheless, the Examiner finds that Shaw teaches alloys that include Ni content of greater than 67% in addition to the other elements falling within the claimed ranges (Final Act. 3–4). Because the alloys found by the Examiner have a Appeal 2019-004628 Application 15/142,068 7 composition within the claimed ranges, it is reasonable to expect the alloy to have similar properties, such as density, flowing naturally from the composition. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). We find that Appellant does not argue or proffer evidence of unexpected results (Appeal Br. generally). We affirm the Examiner’s § 103 rejection of claim 21–25, 28–37 and 39 over Shaw. We further affirm the Examiner’s § 103 rejection of claims 38 and 40 over Shaw and Volek. Claims 26 and 27 Appellant argues that the total percentage of overlap of the ranges in claims 26 and 27 with Shaw’s composition is even smaller than the overlap with claim 21 (Appeal Br. 11–12). Appellant contends that the smaller overlap supports Appellant’s argument that Shaw fails to render obvious the subject matter of claims 26 and 27 (Appeal Br. 12). Even though claims 26 and 27 may be narrower than the composition recited in claim 21, the Examiner correctly finds that these claims overlap with the composition recited in claims 26 and 27 (Final Act. 3). As noted above in our discussion of claim 21, the overlapping ranges between the claims and Shaw create a prima facie case of obviousness. Peterson, 315 F.3d at 1329. Appellant does not proffer any evidence of unexpected results (Appeal Br. generally). We affirm the Examiner’s § 103 rejection of claims 26 and 27. Appeal 2019-004628 Application 15/142,068 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Prior Art Affirmed Reversed 21–37, 39 103 Shaw 21–37, 39 38, 40 103 Shaw, Volek 38, 40 Overall Outcome 21–40 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