ARCELORMITTAL

Patent Trials and Appeals Board

Feb 25, 2021

2021001125 (P.T.A.B. Feb. 25, 2021)

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.
15/936,649 03/27/2018 Michael A. MASLEID 20704.1065REI 3521
23280 7590 02/25/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3991
NOTIFICATION DATE DELIVERY MODE
02/25/2021 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL A. MASLEID, ZOFIA E. NIEMCZURA, and
GEORGE B. TSVIK
____________________

Appeal 2021-001125
Application 15/936,6491
Patent 9,546,982 B2
Technology Center 3900
___________________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from a Final
Rejection of claims 1–4, 11, 12, and 14–19. Claims 5–10, 13, and 20 are
objected to. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 Filed March 27, 2018, seeking to reissue U.S. Patent 9,546,982 B2, issued
January 17, 2017, based on Application 14/102,378, filed December 10,
2013, claiming benefit to 61/735,505, filed on December 10, 2012.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies ArcelorMittal as the real party in
interest. Appeal Br. 2.
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Patent 9,546,982 B2

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We affirm.
CLAIMED SUBJECT MATTER
Reissue claims 1, 2, and 14 on appeal are illustrative of the claimed
subject matter (emphasis, formatting, and bracketed material added):
Claim 1. (Original claim) A method of testing an austenitic
steel reformer tube comprising:
[A.] providing a sample austenitic steel reformer tube to be
tested;
[B.] choosing one or more testing positions on said an
austenitic steel reformer tube;
[C.] transmitting two sinusoidal electromagnetic signals, each
having a different frequency F1 and F2, into a test
position on the austenitic steel reformer tube;
[D.] receiving a response signal from said test position; and
[E.] analyzing said received response signal’s fundamental
and intermodulation frequencies to determine the state
of the austenitic steel reformer tube at said test position.
Claim 2. (Original claim) The method of claim 1, wherein said
step of receiving a response signal from said test position includes
receiving an analog response signal on a receiver coil.
Claim 14. (Original claim) The method of claim 1, wherein said
step of transmitting two sinusoidal electromagnetic signals comprises
creating analog sinusoidal electromagnetic signals using at least one
digital-to-analog signal generator.

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Patent 9,546,982 B2

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REJECTIONS
A.
The Examiner rejects claims 1–4, 11, 12, and 14–19 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Born and Hofer. Final
Act. 3–9.
Appellant does not present separate arguments for claims 3, 4, 11, 12,
and 15–19. We select claim 1 as the representative claim for the § 103
rejection of claims 1, 11, 12, and 16–19. We select claim 2 as the
representative claim for the § 103 rejection of claims 2–4. We select claim
14 as the representative claim for the § 103 rejection of claims 14 and 15.
Except for our ultimate decision, we do not address the merits of § 103
rejection of claims 3, 4, 11, 12, and 15–19 further herein.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusions. Except as noted below, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusions reached by the Examiner.
As to the rejections under 35 U.S.C. § 103, we separately address
claims 1, 2, and 14.
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A. Section 103 - Claim 1
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
Born in view of Hofer does not show or disclose “testing
an austenitic steel reformer tube” as recited in claim 1.
. . . .
However, neither Born nor Hofer discloses testing an
austenitic reformer tube . . . . There are millions of types of
metals, affected by temperature and humidity, but the Examiner
has made no argument or provided no prior art to state why one
would “test an austenitic reformer tube” as recited in claim 1 with
the Born device. . . . The Examiner is just assuming, using
hindsight and the present specification, that this limitation is
met.
Appeal Br. 4 (emphasis added).
The Examiner responds:
The examiner respectively disagrees. Born discloses that
his method is not only for testing metal junction of a metal object,
it is also for testing metal structures with electromagnetic input
signals (EMI) using Radiated Injection/Pickup technique.
Specifically, Born discloses:
Radiated Injection/Pickup. Antennas near the
metal junction under test radiate the fundamental
test signal (f.sub.O) and pick up the third harmonic
signal (3f.sub.O). Standard EMI measurements are
made for radiated injection and pickup. This
technique is particularly suited for signal injection
and pickup in metal structures.
Born at col. 4:60-65.
An ordinarily skilled artisan would know that an
“austenitic steel reformer tube” is merely a kind of a metal
structure in general, thus Bond [sic] method is also applicable.
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Especially, the technique disclosed in Born is the same as the
technique described in the Application, that is injecting the
device under test with electromagnetic signals (Born at 4:60-65),
collecting the response signals reflected from the device under
test (Id.) and analyzing the characteristics of the response signals,
i.e., fundamental frequency and its harmonics, especially, the
third harmonic (Born at 6:36-43).
Ans. 11 (emphasis added).
We are unpersuaded by Appellant’s argument. We agree with the
Examiner’s reasoning. Particularly, contrary to Appellant’s argument, we
determine Born (columns 60–65) suggests to an artisan that the testing
method of Born is applicable to a wide range of structures made of metal,
and as Appellant acknowledges, an austenitic steel reformer tube is such a
known structure where non-destructive testing is known to be used. Spec.
col. 1:16–25 and col. 1:61 – col. 2:1.
A.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The electrical connectors of Born are significantly different from
a reformer tube and one skilled in the art of testing reformer tubes
would not look to Born for a method of determining the health
and remaining service life of a reformer tube.
. . . .
. . . Born does not suggest that its method can be used on
any object subject to corrosion. Thus, Born is specific to
determining the disruption of flow in an electric signal which is
not relevant to the analysis of the structural integrity of a
reformer tube.
Appeal Br. 5–6 (emphasis added).
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We are unpersuaded by Appellant’s arguments. Essentially Appellant
is arguing that Born is non-analogous art. We disagree. Prior art is
analogous if either (A) “the art is from the same field of endeavor, regardless
of the problem addressed” or (B) regardless of field of endeavor, the
reference is “reasonably pertinent to the particular problem with which the
inventor is involved.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011) (quotation omitted). “A reference is reasonably
pertinent if . . . it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” Id. (quotation omitted). “If a reference disclosure
has the same purpose as the claimed invention, the reference relates to the
same problem, and that fact supports use of that reference in an obviousness
rejection.” Id. (quotation omitted). However, “[t]he pertinence of the
reference as a source of solution to the inventor’s problem must be
recognizable with the foresight of a person of ordinary skill, not with the
hindsight of the inventor’s successful achievement.” Sci. Plastic Prod., Inc.
v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
In Innovention, the patentee argued the references “describ[ed]
computer-based, chess-like strategy games” and were “non-analogous art
because the [asserted] patent’s inventors were concerned with making a
non-virtual, three-dimensional, laser-based board game, a project that
involves mechanical engineering and optics, not computer programming.”
637 F.3d at 1316, 1321. The Federal Circuit found “an electronic, laser-
based strategy game, even if not in the same field of endeavor, would
nonetheless have been reasonably pertinent to the problem facing an
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inventor of a new, physical, laser-based strategy game” because both “relate
to the same goal: designing a winnable yet entertaining strategy game.” Id.
at 1322.
On the record before us, we are not persuaded by Appellants’
arguments. Appellant’s argument attempts to inappropriately diminish the
pertinence of Born. Appellant’s argument highlights the different fields of
the references (austenitic steel reformer tubes versus Born’s metal junction
example) without focusing on the problem to be solved, i.e., non-destructive
measuring/testing the degree of deterioration of an austenitic steel structure.
“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992). We agree with the Examiner that Born is reasonably
pertinent because it suggests non-destructive measuring/testing the degree of
deterioration of a metal structure, and contrary to Appellant’s argument, an
artisan would not read Born as limited to only measuring/testing a metal
junction.
A.3.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
In addition, Born requires an electrical connection in order
to observe the change in current flow needed to determine if
corrosion is present. See C. 4:8-12. For a very large object like a
reformer tube it would be physically impossible to gain electrical
access to the inner wall of the tube without destroying the tube
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(cutting out samples for testing or drilling holes in the tube, both
of which will destroy the tube).
Further, assuming arguendo, one could apply the electrical
current to the inner and outer walls of the tube and perform the
test of Born, it would only measure surface corrosion of the tube,
which tells nothing about the interior structure of the steel alloy
of the tube and gives no estimate of its remaining service life.
The present inventive method tests for early internal (structural)
changes of the austenitic steel alloy (which are not due to
corrosion) and therefore would not be detectable by the method
of Born.
Given these differences one of ordinary skill in the art
would not conclude that Born could be used on reformer tubes.
In fact, because of the clearly electric current flow nature of the
Born test, a skilled artisan would be dissuaded from looking to
Born to solve the nondestructive testing needs of a reformer tube.
Appeal Br. 6–7.
The Examiner responds:
The examiner respectively disagrees. Born discloses that
there are a number of ways to inject signals into a device under
test. Depending on the device under test, one method may be
better than others. For example, if the device under test is
electrical cable/connector Conducted Injection/Pickup method
may be better, if the device is metal structure, Radiated
Injection/Pickup method may be better and if the device under
test is a location in a circuit, Current Probe Injection/Pickup
method may be better. [quoting Born at col. 4:49 – col 5:12].
Ans. 14–15.
We are unpersuaded by Appellant’s argument. We adopt the
Examiner’s reasoning as our own.
A.4.
Furthermore, at pages 7–9 of the Appeal Brief, Appellant raises five
additional arguments in contending that the Examiner erred in rejecting
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claim 1 under 35 U.S.C. § 103. The Examiner responds to each argument at
pages 15–18 of the Answer. Again, we are unpersuaded by Appellant’s
arguments and we adopt the Examiner’s reasoning as our own.
B. Section 103 - Claim 2
In the rejection of claim 2, the Examiner relies on Born which states at
column 4, lines 60–62, that “[a]ntennas” can be used to “radiate the
fundamental test signal (fo) and pick up the third harmonic signal (3fo).” The
Examiner then points out that Born “does not disclose details in
implementation.” The Examiner then relies on Hofer to show that one
implementation is to use a receiving coil as the antenna. Final Act. 6.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 2 under 35 U.S.C. § 103.
Hofer uses radio waves of very high frequency. The coil
method of Hofer would not work for Born, because the signals
from the coil (transmitted at either of Born’s or Hofer’s
frequencies) would bounce off or be reflected by the metal
samples of Born. Thus, it would NOT have been obvious to an
ordinary skilled artisan to use the coil of Hofer in the method of
Born, because it would not work.
Appeal Br. 10.
The Examiner responds:
An ordinarily skilled artisan is not an automation. Using coils to
convert electrical signals into electromagnetic signals are well-
known and seen in many applications. For example, transformers
which convert electrical signals into electromagnetic signals are
seen in every step of life. Depending on each specific application,
an ordinarily skilled artisan would know to how to use a proper
transformer. Hofer as a secondary reference is only used to show
that such technique, i.e., converting electric signals into
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electromagnetic signals, is well-known and being used in the
corrosion testing field.
Ans. 18–19.
The Appellant further argues:
There is no apparent reason to use coils to convert the
electric signals of Born into electromagnetic signals as asserted
by the Examiner. The need for a coil increases costs and the
conversion of signals is an extra step that requires additional
time.
Reply Br. 6.
We are unpersuaded by Appellant’s argument. We adopt the
Examiner’s reasoning as our own. First, beyond unsupported assertions,
e.g., “Hofer uses radio waves of very high frequency” and “the signals from
the coil . . . would bounce off or be reflected by the metal samples of Born,”
Appellant fails to explain the basis for the conclusion that using the coil of
Hofer in the method of Born, “would not work.” Second, Appellant also
fails to explain, if the combination of Born/Hofer does not work, why the
claimed invention would not also fail for the same reason. Third, contrary to
Appellant’s assertion that “[t]here is no apparent reason to use coils,” we
determine the Examiner’s rejection at page 6 of the Final Action provides
sufficient reasons for using coils.
Fourth, as to Appellant’s “increased costs” and “additional time”
argument, these are at best factors showing a less desirable solution. That is,
Appellant is presenting a teaching away argument. As the United States
Court of Appeals for the Federal Circuit has counseled:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
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direction divergent from the path that was taken by the applicant.
. . . [I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted).
C. Section 103 - Claim 14
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 14 under 35 U.S.C. § 103.
The Office Action [at page 8] appears to be taking Official
Notice, since it is relying on facts not in the record and did not
supply Applicant with supporting references or documentary
evidence. “It would not be appropriate for the Examiner to take
official notice of facts without citing a prior art reference where
the facts asserted to be well known are not capable of instant and
unquestionable demonstration as being well-known.”
Appeal Br. 11.
The Examiner responds:
It appears that the Applicant has not read the last
paragraph in the “Response to Arguments” section in the Final
Office Action on page 15.
In this paragraph, the examiner indicated that he cited a
reference (textbook by Kenneth Short, entitled “Microprocessors
and Programmed Logic,[”] Second Edition, which was published
40 years ago for third year students in Electrical Engineering
major) as evidence to show that it would be obvious to convert
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digital signals into analog signals using D/A converters. A copy
of this reference was also included with the Final Office action.
Ans. 19.
We are unpersuaded by Appellant’s argument. Again, we adopt the
Examiner’s reasoning as our own.

CONCLUSIONS
The Examiner has not erred in rejecting claims 1–4, 11, 12, and 14–19
as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 1–4, 11, 12, and 14–19 as being
unpatentable under 35 U.S.C. § 103(a) is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 11, 12,
14–19
103 Born, Hofer 1–4, 11, 12,
14–19

Overall
Outcome

1–4, 11, 12,
14–19

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