In Re Kenneth Harris and Jacqueline B. Wahl

United States Court of Appeals for the Federal Circuit
04-1370
(Serial No. 09/797,326)
IN RE KENNETH HARRIS and JACQUELINE B. WAHL
James A. Mitchell, Price, Heneveld, Cooper, DeWitt & Litton, LLP, of Grand
Rapids, Michigan, argued for appellants. With him on the brief was Gunther J. Evanina.
C. Edward Polk, Jr., Associate Solicitor, Office of the Solicitor, United States
Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United
States Patent and Trademark Office. With him on the brief was John M. Whealan,
Solicitor, and William G. Jenks, Associate Solicitor. Of counsel was Linda Moncys
Isacson.
Appealed from: United States Patent and Trademark Office, Trademark Trial and
Appeal Board
United States Court of Appeals for the Federal Circuit
04-1370
(Serial No. 09/797,326)
IN RE KENNETH HARRIS and JACQUELINE B. WAHL
___________________________
DECIDED: May 25, 2005
___________________________
Before CLEVENGER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER,
Circuit Judge.
RADER, Circuit Judge.
The United States Patent and Trademark Office (PTO) Board of Patent Appeals
and Inferences (Board) affirmed the PTO’s rejection of claims 1-20 of Kenneth Harris
and Jacqueline B. Wahl’s (collectively Harris) U.S. Patent Application 09/797,326 (’326
Application) as obvious under 35 U.S.C. § 103. Ex Parte Harris, Appeal No. 2003-1930,
Paper No. 16 (B.P.A.I. Sept. 26, 2003) (Paper No. 16). The Board found a prima facie
case of obviousness because the claimed ranges overlapped the ranges disclosed in
U.S. Patent No. 5,611,670 (issued Mar. 18, 1997) (Yoshinari) and found Harris’s
rebuttal evidence unpersuasive. Because substantial evidence supports the Board’s
factual findings and the Board’s conclusion of obviousness was correct, this court
affirms.
I.
On March 1, 2001, Harris filed the ’326 Application claiming a nickel-based
superalloy for turbine engine blades that experience high temperatures. The alloy
disclosed in the ’326 Application contains nickel, plus twelve additional elements
defined by a range of weight percentages. Representative claim 1 reads:
A nickel-base superalloy comprising, in percentages by weight, from about
4.3% to about 5.3% Chromium (Cr), from about 9.0% to about 10% Cobalt
(Co), from about 0.6% to about 0.8% molybdenum (Mo), from about 8.4%
to about 8.8% tungsten (W), from about 4.3% to about 4.8% tantalum
(Ta), from about 0.6% to about 0.8% titanium (Ti), from about 5.6% to
about 5.8% aluminum (Al), from about 2.8% to about 3.1% rhenium (Re),
from about 0.9% to about 1.5% hafnium (Hf), from about 0.06% to about
0.08% carbon (C), from about 0.012% to about 0.020% boron (B), from
about 0.004% to about 0.010% zirconium (Zr), the balance being nickel
and incidental impurities.
The ’326 Application discloses a single embodiment of the claimed alloy—CMSX®-486.
The ’326 Application’s specification indicates that CMSX®-486 has improved stress-
rupture properties over other alloys. The PTO made alternative rejections of
representative claim 1 as being prima facie obvious in view of Yoshinari or U.S. Patent
No. 5,069,873 (issued Dec. 3, 1991) (the ’873 patent).1
The PTO rejected all pending claims in an Office Action dated August 7, 2002.
The Board affirmed. Paper No. 16. The Board granted Harris’s request for recon-
sideration but made no changes to the original decision. Ex Parte Harris, Appeal No.
2003-1930, Paper No. 18 (B.P.A.I. Feb. 4, 2004). Harris now appeals to this court.
This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
1
The Patent and Trademark Office rejected claims 1-15 and 17-20 in light
of Yoshinari, claim 16 in light of Yoshinari and U.S. Patent No. 6,074,602 (issued June
13, 2000) (Wukusick), and claims 1-10 in light of the ’873 patent. Because this court
affirms based on Yoshinari, it does not address the Board’s alternative rejection based
on the ’873 patent. Harris did not appeal the rejection of claim 16.
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II.
The ultimate determination of obviousness under 35 U.S.C. § 103 is a legal
conclusion based on underlying findings of fact. In re Kotzab, 217 F.3d 1365, 1369
(Fed. Cir. 2000). This court reviews the Board's legal conclusion of obviousness de
novo and its underlying factual determinations for substantial evidence. In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). Whether an invention has produced unexpected
results and whether a reference teaches away from a claimed invention are questions of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (unexpected results); Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1088 (Fed. Cir. 1995) (teaching
away). Under the substantial evidence standard, this court affirms the Board’s factual
determinations if they are based upon “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Gartside, 203 F.3d at 1312 (quoting
Consol. Edison Co. v. NLRB, 305 U.S. 197, 217 (1938)).
The PTO has the burden of showing a prima facie case of obviousness. Mayne,
104 F.3d at 1341. In this type of claim, a prima facie case of obviousness arises when
the ranges of a claimed composition overlap the ranges disclosed in the prior art. See
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465,
1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Where the “claimed ranges are
completely encompassed by the prior art, the conclusion [that the claims are prima facie
obvious] is even more compelling than in cases of mere overlap.” Peterson, 315 F.3d at
1330. Even without complete overlap of the claimed range and the prior art range, a
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minor difference shows a prima facie case of obviousness. Haynes Int’l v. Jessup Steel
Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993).
In this case, the Board found a prima facie case of obviousness because the
ranges of the invention of Yoshinari overlap the ranges of representative claim 1. Paper
No. 16, slip. op. at 7. As shown in the table below, not only do Yoshinari’s disclosed
ranges overlap all twelve of the ’326 Application’s claimed ranges, but eleven of
Yoshinari’s disclosed ranges completely encompass Harris’s claimed ranges. Only
Yoshinari’s chromium range (5.0 – 14.0) does not completely encompass the ’326
Application’s chromium range (4.3 – 5.3) (in percentages by weight).
Element Claimed Range Yoshinari
Chromium (Cr) about 4.3 - about 5.3 5.0 -14.0
Cobalt (Co) about 9 – about 10 Up to 10.0
Molybdenum (Mo) about 0.6 - about 0.8 Up to 6.0
Tungsten (W) about 8.4 - about 8.8 2.0 -15.0
Tantalum (Ta) about 4.3 - about 4.8 Up to 12.0
Titanium (Ti) about 0.6 - about 0.8 0.5 - 5.0
Aluminum (Al) about 5.6 - about 5.8 4.0 -7.0
Rhenium (Re) about 2.8 - about 3.1 Up to 4.0
Hafnium (Hf) about 0.9 - about 1.5 Up to 2.0
Carbon (C) about 0.06 - about 0.08 0.05 - 0.20
Boron (B) about 0.012 - about 0.020 Up to 0.035
Zirconium (Zr) about 0.004 - about 0.010 Up to 0.035
Nickel (Ni) Balance Balance, 58% or more
Yoshinari, col. 8, l. 20 – col. 9, l. 16. In addition, even the narrower ranges taught by
Yoshinari’s preferred embodiments and examples overlap eleven of the twelve claimed
ranges. Again, the chromium ranges disclosed in Yoshinari’s preferred embodiment
(5.5 – 9.0) and one of its examples (5.5 – 7.0) do not overlap the ’326 Application’s
chromium range (4.3 – 5.3).
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Element Claimed Range Yoshinari Yoshinari Yoshinari
Preferred Ex. 1 Ex. 2
Cr about 4.3 - about 5.3 5.5 - 9.0 5.5 - 7.0 5.0 - 14.0
Co about 9 - about 10 9 -10.5 9 - 9.5 0 - 12.0
Mo about 0.6 - about 0.8 0.3 – 1 0.3 - 0.7 0.5 - 3.0
W about 8.4 - about 8.8 8 – 11 8-9 5.0 -12.0
Ta about 4.3 - about 4.8 3–4 3-4 3.0 -7.0
Ti about 0.6 - about 0.8 0.5 – 1 0.5 - 0.9 0.5 - 3.0
Al about 5.6 - about 5.8 5–6 5.5 - 6.0 4.0 - 6.0
Re about 2.8 - about 3.1 2.5 - 3.5 2.8 - 3.1 0 - 3.5
Hf about 0.9 - about 1.5 0.5 – 1 0.7 - 1.0 0 - 2.0
C about 0.06 - about 0.08 0.03 - 0.1 0.05 - 0.1 Formula
B about 0.012 - about 0.020 0.005 - 0.25 0.005 - 0.01 Formula
Zr about 0.004 - about 0.010 0.005 - 0.25 0.005 - 0.01 Formula
Nb None 0.2-3 None None
Ni Balance >58% >58% >58%
Yoshinari, col. 8, l. 20 – col. 9, l. 16; col. 10, ll. 13-19. The Board explained that from
the description of Yoshinari
a person of ordinary skill in the art would have reasonably expected that
the chromium content affects the hot corrosion resistance of the
superalloy and cobalt content affects the hot corrosion resistance and the
high temperature strength of the superalloy. Thus, a person of ordinary
skill in the art would have recognized the suitability of adjusting the
content of the disclosed elements within the disclosed ranges.
Paper No. 16, slip. op. at 7.
Harris points to Peterson to advance his position that Yoshinari’s ranges are too
broad to teach any specific alloy to the skilled artisan. Peterson discussed that a
disclosed range might become too broad to teach a subset range. 315 F.3d at 1330
n.1. A review of Peterson informs the court that this case does not present such a
problem. In Peterson, the applicant claimed a single-crystal, nickel-base superalloy
comprising nickel and ten additional elements. Id. at 1327. Eight of the ten ranges
disclosed in the Peterson prior art (Shah) are broader than the ranges disclosed in
04-1370 5
Yoshinari. For example, Shah’s range for cobalt (0-20) is twice the range allowed by
Yoshinari (0-10). Id. at 1329. Shah also includes two elements (carbon and boron) that
have no upper limits. Id. In contrast, Yoshinari bounds each element to a specific
range, and limits the extent of those ranges by requiring at least 58% nickel. Yoshinari,
col. 8, l. 20 – col. 9, l. 16; col. 10, ll. 13-19. Thus, the prior art in Peterson was broader
than in this case.
In addition, Peterson’s claimed ranges were narrower than those claimed in this
case. Seven of the ten alloys claimed in Peterson were defined by a specific value.
315 F.3d at 1329 (e.g. claiming “about 14%” chromium and “about 9.5% cobalt”). In
contrast, all twelve elements in this case vary over ranges that extend up to a full
percentage point. ’326 Application, col. 7, claim 1. Thus, this court determines the
Board correctly concluded that representative claim 1 is prima facie obvious in view of
Yoshinari because the ranges of the invention of Yoshinari sufficiently overlap the
ranges of representative claim 1.
When the PTO shows prima facie obviousness, the burden then shifts to the
applicant to rebut. In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc). Rebuttal
may take the form of “a comparison of test data showing that the claimed compositions
possess unexpectedly improved properties . . . that the prior art does not have, that the
prior art is so deficient that there is no motivation to make what might otherwise appear
to be obvious changes, or any other argument . . . that is pertinent.” Id. at 692-93(citations omitted).
Harris argues that Yoshinari teaches away from the claimed range of the
invention. In support of this contention, Harris argues that nothing in the Yoshinari
04-1370 6
patent suggests the use of less chromium and more tantalum, namely the claimed
ranges of about 4.3% to 5.3% chromium and about 4.3% to 4.8% tantalum. To the
contrary, Yoshinari’s Example 2 teaches a superalloy having tantalum content from “3.0
to 7.0” percent, which completely encompasses the claimed range of tantalum.
Yoshinari, col. 10, ll. 13-19. In addition, Yoshinari teaches that 5-14 weight percent is
an “appropriate additive amount” of chromium. Id. at col. 8, ll. 33-37. Thus, Yoshinari
teaches that a portion of the claimed range (e.g., 5.0-5.3) is “appropriate.” Finally, the
’326 Application’s use of the term “about” shows that the applicants did not intend to
limit the claimed ranges to their exact end-points. See Jeneric/Pentron, Inc. v. Dillon
Co. 205 F.3d 1377, 1381 (Fed. Cir. 2000). Thus, contrary to Harris’s contention,
Yoshinari’s preferred range of 5.5 to 7.0 is not necessarily outside the scope of “about
5.3.” Therefore, this court finds substantial evidence supports the Board’s finding that
Yoshinari does not teach away.
With respect to unexpected results, the Board concluded that Harris had not
shown that any results were unexpected. Paper No. 16, slip. op. at 11-12. As evidence
of unexpected results, Harris compares CMSX®-486, an alloy centrally located within
claim 1’s range, to four commercial alloys, namely CM247LC, CMSX-3, CM186LC and
CMSX-681. All are prior art except CMSX-681. When compared to CM186LC,
CMSX®-486 shows 32% to 43% improvement in stress rupture life. Harris argues
CM186LC is the closest prior art because it differs from the claimed invention only in
that it has 6.0% chromium rather than about 4.3% to 5.3%, and 3.4% tantalum rather
than about 4.3% to 4.8%. While the results were not as favorable when compared
against CMSX-3, Harris argues CMSX®-486 can be produced at considerable cost
04-1370 7
savings as compared with single crystal castings of CMSX-3 because of fewer
rejectable grain defects.
The 32-43% increase in stress-rupture life, however, does not represent a
“difference in kind” that is required to show unexpected results. See In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996) (holding that claimed ranges must “produce a new and
unexpected result which is different in kind and not merely in degree from results of the
prior art”). In addition, Yoshinari teaches that limiting the percentages of chromium and
tantalum will improve the “hot corrosion resistance” and “high-temperature strength” of
the alloy. Yoshinari, col. 8, ll. 33-37, 44-51. As these factors are related to the stress-
rupture life of the alloy, substantial evidence supports the Board’s conclusion that the
increase in stress-rupture life is not unexpected.
The Board also correctly reasoned that the showing of unexpected results is not
commensurate in scope with the degree of protection sought by the claimed subject
matter because the elemental composition of CMSX®-486 is at or near the midpoint of
the claimed range. While Harris’s evidence may show a slight improvement over some
alloys, the record does not show that the improved performance would result if the
weight-percentages were varied within the claimed ranges. Even assuming that the
results were unexpected, Harris needed to show results covering the scope of the
claimed range. Alternatively Harris needed to narrow the claims.
Finally, substantial evidence supports the Board’s finding that Harris did not
compare an embodiment representative of the claimed range to an embodiment of the
closest prior art. Paper No. 16, slip. op. at 11-12. As stated above, Harris contends
CM186LC is the embodiment closest to the prior art. However, because both CM186LC
04-1370 8
and CMSX®-486 have at least one element that is within Yoshinari’s general range, but
outside a preferred range, CM186LC is no closer to the prior art than is CMSX®-486. In
other words, CMSX®-486, the embodiment allegedly exhibiting unexpected results, is
as equally representative of the prior art as is CM186LC. Whereas each embodiment is
equally representative of the prior art, a comparison of those two embodiments cannot
be said to establish that one embodiment has results unexpectedly superior over the
prior art.
III.
In sum, this court affirms the Board’s finding of a prima facie case of obviousness
because the ranges claimed in the ’326 Application’s overlapped the ranges disclosed
in Yoshinari. This court also sustains the Board’s finding that Harris’s rebuttal evidence
was unpersuasive.
COSTS
Each party shall bear its own costs.
AFFIRMED
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