Application of Bulina

• Decision Date: 23 June 1966
• Docket Number: Patent Appeal No. 7559.
• Citation: 362 F.2d 555,150 USPQ 110
• Parties: Application of John BULINA (Deceased) and Jack T. Brown.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

150 USPQ 110, 362 F.2d 555 (1966)

Application of John BULINA (Deceased) and Jack T. Brown.

Patent Appeal No. 7559.

United States Court of Customs and Patent Appeals.

June 23, 1966.

H. M. Snyder, Los Angeles, Cal., for appellants.

Clarence W. Moore, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for the Commissioner of Patents.

Before RICH, Acting Chief Judge, and MARTIN, SMITH and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

The invention here involved is claimed in appealed claims¹ 2, 6 and 7 as a process, in appealed claims 1, 3, 4 and 9 as an alloy, in claims 5 and 11 as a "member" and in claim 12 as a turbine blade. One claim stands allowed.

At the outset there appears to be a substantial question as to the ground or grounds of the rejection on appeal which creates a considerable doubt as to whether the rejection has been so stated as to comply with 35 U.S.C. § 132.

This question can be best evaluated against the technical background of the invention in issue. In general, the invention relates to a process for making improved heat-treated alloy members having high damping capacity at elevated temperatures under stress, and to members made in accordance with the process. The process is asserted to be applicable to a broad range of alloys containing nickel and at least one of the elements chromium, iron, and cobalt; the total of the named elements being at least 80% by weight of the alloy. The asserted improvement is the presence in the heat-treated alloy of a particular microstructure, i. e., lamellar colonies forming a cellular precipitate wherein the lamellar colonies constitute at least 3% of any cross section of the alloy. The cellular precipitate is a microstructure previously known and readily recognized by metallurgists. The heat-treated alloy, when employed as a machine element at elevated temperatures, is asserted to suppress vibration, commonly described as a "damping" alloy.

All of the presently appealed claims, as well as claim 8 on which the examiner's rejection was reversed by the Board of Appeals, appear to have been finally rejected "over the references of record for the reasons of record adequately set forth in Paper No. 6." In Paper No. 6 the claims were all rejected on the following grounds:

Claims 1 to 7, 11 and 12 are rejected as unpatentable over the ASM publication, page 103, in view of Cochardt and the ASM publication, pages 454 to 490 and 439 to 447. The ASM publication on page 103 shows how aging and overaging increases the damping capacities of an age hardenable alloy. The Cochardt patent discloses a composition of an alloy which is age hardenable and meets the applicants\' composition. The ASM publication on pages 454 to 490 and 439 to 447 teaches that aged and overaged alloys of nickel and cobalt form precipitates in a cellular structure. The latter references to the ASM publication also give applicable solution and aging temperatures which fall within the applicants\' ranges. It would not be patentable invention to solution treat and age the alloys of Cochardt by the methods disclosed in the ASM publication to obtain better damping capacities because the ASM publication on page 103 shows that aging can increase the logarithmic decrement.

* * * * * *

Claims 1, 8 and 9 are rejected as unpatentable over Pilling in view of pages 103 and 279 to 287 of ASM publication and for the above stated reasons. The Pilling patent discloses alloys within the ranges of the applicants\' alloys. The ASM publication on pages 279 to 287 teaches the applicable heat treating methods for alloys within the range of Pilling\'s alloy. It would not be patentable invention to combine the teachings of Pilling and the ASM publication to achieve a ferrous alloy with high damping capacity because the effects of age hardening on the damping capacity are shown on page 103 of the ASM publication which shows no new and unobvious results would be realized by such a combination.

The references referred to above by the examiner were:

Pilling et al. 2,048,163 July 21, 1936 Pilling

Cochardt et al. 2,829,048 Apr. 1, 1958 Cochardt

ASM, "Educational Lectures on Precipitation from Solid Solution," 103, 279-287, 439-447, 454-490 (1959). ASM

The history of the prosecution of this application up to and including the examiner's "paper No. 6" is difficult to follow because of what appears to be constantly changing grounds of rejection. It may well be an over-simplification to say that taken in its entirety the examiner's position seems to us to have been, "It would not be patentable invention" to do what is claimed in view of a combination of references. As to claims 1, 8 and 9, we find in addition, however, the examiner stating "no new and unobvious result would be realized."

It seems to us, therefore, that the issue joined before the examiner necessarily arises under 35 U.S.C. § 103. The board eliminated the ASM reference,² reversed the examiner as to his rejection of claim 8, sustained the rejection of claims 1 to 7 and 11 and 12 on Cochardt alone, and sustained the rejection of claims 1 and 9 on Pilling alone. While certain portions of the board's opinion suggest a rejection based on 35 U.S.C. § 102, we think when treated as a whole the rejection was sustained as a rejection for obviousness under section 103. We shall resolve the issue on this basis.

The Supreme Court has suggested that certain guide lines be employed in dealing with such a rejection. In Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), the court observed:

* * * the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. * * *

The relevance of this observation is demonstrated in the present appeal. The factual issue to be resolved as to the patentability of claims 1 to 7 and 11 and 12 in view of Cochardt first requires an understanding of the Cochardt teachings. The examiner stated his position as to what Cochardt disclosed and appellants filed Cochardt's own affidavit which contradicted this position. The board in considering this affidavit said:

* * * As indicated in the Cochardt affidavit, a sufficiently long period of aging is responsible for the appearance of the cellular precipitate. In contradiction to the affidavit we do not see how Cochardt et al. could avoid having lengthy aging periods and cellular precipates when his alloys were used for their intended purpose, as turbine blades with steam having a temperature of 1200°F. Again we observe that Cochardt et al. recognize this possibility of aging during actual use.

So far as we have been able to ascertain, this is the first instance in the present record in which the rejection on Cochardt was predicated upon the factual assumption that turbine blades could be aged to form cellular precipitates by operation of the blades in a steam turbine supplied with steam having a temperature of 1200°F.

Appellants filed a petition for reconsideration in which this factual assumption of the board was challenged and also filed an affidavit of Joseph D. Conrad, Sr. hereafter Conrad, in which he stated inter alia:

* * * it may not be assumed that satisfactory aging of the turbine blades can be secured after the blades are installed in the turbine and while the turbine is operated in service. The steam temperatures on the turbine blades vary radically between no load or very low load conditions and at substantial load conditions. When a turbine is operated under a load the steam temperatures drop radically at each row of blades since energy is transferred from the steam to the turbine.

That, it is erroneous to assume that the steam impinging on the turbine blades is at the rated maximum steam temperature of the turbine; whereas, in fact, the steam at a nominal inlet temperature of say 1200°F, drops in temperature in passing through the nozzle so that even under full load, the temperature of the steam at the first row of blades is no more than 1130°F;

That, even under full load, at the second stage of blading the temperature of the steam impinging thereon is less than 1100°F and at the third stage of blading the steam temperature is about 1050°F, and becomes progressively lower for each subsequent row of blades, and, the 1200°F aging of the alloy cannot occur in the turbine blades during normal operation of the turbine * * *.

He then concluded that:

* * * aging turbine blades in normal operation under load, of the alloys of the patent to Cochardt et al, will not result in the production of a cellular precipitate, and that if an attempt were made to rely upon this aging procedure for blades without the cellular precipitate in the metal, it might well result in severely damaging the turbine.

The board, citing the decision in In re Martin, 154 F.2d 126, 33 CCPA 842, as authority for its position, refused to consider the Conrad affidavit stating:

* * * it is not the practice of this Board to consider affidavits filed with a request for reconsideration of our decision. At the most, they will be treated only as arguments.

It is noted that the Martin decision was rendered in 1946, prior to the enactment of section 103. It seems clear to us that whatever may have been the merit in 1946 of the solicitor's position as to the affidavit...