Beguinot, Jean et al.

Patent Trials and Appeals Board

May 29, 2020

10535174 - (D) (P.T.A.B. May. 29, 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.
10/535,174 03/17/2006 Jean Beguinot Q87983 2367
23373 7590 05/29/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN BEGUINOT and
JEAN-GEORGES BRISSON
____________

Appeal 2019-004147
Application 10/535,174
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JEFFREY R. SNAY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SMITH.

Opinion Dissenting filed by Administrative Patent Judge HANLON.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5.2 An oral hearing was held on May
13, 2020.3 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 Industeel
Creusot. (Appeal Br. 2.)
2 Pending claims 6–11 have been withdrawn from consideration.
3 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.
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STATEMENT OF THE CASE
Appellant’s claimed invention relates to a weldable component of
structural steel having improved quenchability without a reduction in its
weldability. Spec. 2. Claim 1 is illustrative:
1. A weldable component of structural steel, characterized in that
its chemical composition consists of, by weight:
0.40% ≤ C ≤ 0.45%
0.75% ≤ Si ≤ 1.50%
0.3 % ≤ Mn ≤ 3%
0% ≤ Ni ≤ 5%
1.11% ≤ Cr ≤ 4%
0% ≤ Cu ≤ 1%
0.410% ≤ Mo + ≤ 1.5%
0.410% ≤ Mo + W/2≤ 1.5%
0.038% Nb ≤ 0.3%
0.0005% ≤ B <_0.010%
N ≤ 0.025.0%
Al ≤ 0.9%
Si + Al ≤ 2.0%
optionally at least one element selected from V, Ca, and Ta, at contents of
less than 0.3%, and/or from Ti and/or Zr at contents of less than or equal to
0.5%, the remainder being iron and impurities resulting from the production
operation, the contents of aluminum, boron, titanium and nitrogen, expressed
in thousandths of%, of the composition also satisfying the following
relationship:

B ≥ 1 x K + 0.5 (1)
3

with K = Min (I* ; J*)

I* = Max (0 ; I) and J* = Max (0 ; J)
I = Min(N; N–0,29(Ti-5))
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J = Min ( N ; 0,5( N- 0,52 Al √ - 0,52Al)2 + 283 )),

and whose structure is bainitic, martensitic or
martensitic-bainitic and also comprises from 3 to 20% of
residual austenite, and wherein the amounts of Si and B
improve the quenchability of the steel without deteriorating its
weldability.
Appeal Br. 12–13, Claims Appendix.
Appellant requests review of the following rejection (Appeal Br. 6)
from the Examiner’s Final Office Action:
Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Vander Voort (US 4,171,233; issued Oct. 16, 1979).4

OPINION5
The present application was the subject of prior appeals, 2015-000298
and 2010–0072366 wherein we sustained the appealed rejections. The
present decision incorporates the findings and discussion presented in our
prior decisions.
We sustain the appealed rejections for the reasons well stated by the
Examiner in the Answer. The following comments are added for emphasis.

4 We refer to the position of the Examiner in the Non-Final Office action
dated September 7, 2017, Final Office action dated May 11, 2018, the
Examiner’s Answer dated March 7, 2019, and the position of Appellant in
the Appeal Brief filed September 27, 2018. The statement of the rejection
appears in the Non-final Office Action mailed September 14, 2017.
5 Appellant does not argue the dependent claims separately in the Brief.
Accordingly, the dependent claims stand or fall together with sole
independent claim 1.
6 Decisions mailed September 29, 2016 and February 2, 2012 respectively.
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The Examiner finds that Vander Voort teaches a weldable component
of structural steel comprising elements in amounts that overlap the claimed
invention. (Non-Final Office Action 5–7).
[A] prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior
art. [Citations omitted.] 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.”
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Appellant has not disputed the Examiner’s findings in the Non-Final
Office Action that establishes the components in the claimed weldable alloy
composition substantially overlap the composition of Vander Voort. (Non-
Final Office Action 6.)
Appellant argues Vander Voort does not contemplate compositions
that do not satisfy the disclosed surface roughness equation and the claimed
steel composition does not satisfy the required surface roughness equation
disclosed in Vander Voort. (Appeal Br. 6–7.) Appellant argues the table
appearing in the Brief demonstrates that there is no overlap between the
claimed composition and the composition of Vander Voort because “the
‘surface roughness’ of the claimed steel, regardless of the specific
composition within claim 1, is always higher than 3.64 [µ-inch].” (Appeal
Br. 7. (emphasis omitted).)
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s obviousness determination. Initially we note, independent
claim 1 does not include specific limitations on the surface roughness.
Appellant has not established through argument or objective evidence that
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when Vander Voort’s welding composition includes the surface roughness
of less than 2.65 µ-inch, the composition does not fall within the scope of
claim 1.
Appellant argues the table in the Brief establishes the claimed
invention has a surface roughness that is always higher than 3.64 µ-inch.
This argument is premised on nickel (Ni) always being present in the
amount of 1.28, however, the claimed invention allows for Ni to be present
in amount ranging from 0–5. (Appeal Br. 6–7.) Appellant has not
adequately explained why the single exemplary embodiment establishes the
entire scope of the claimed invention, that encompasses many compositions,
has a surface roughness that is always higher than 3.64 µ-inch.
Contrary to Appellant’s argument, Vander Voort is not limited to steel
compositions that adhere to the surface roughness equation. “[I]n a section
103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred
is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck & Co. Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)). Vander Voort discloses satisfying the surface
roughness equation (Boron factor) is necessary to achieve optimal properties
for steel to be polished to a high luster. (Vander Voort col. 4, ll. 16–29.)
Vander Voort discloses the desired properties will vary within the range
specified by the invention. (Vander Voort col. 5, ll. 22–29.) The surface
roughness equation is merely a tool for determining polishability of a given
steel composition. Vander-Voort discloses the surface roughness property is
a quantitative measure which is an indicator of the properties of the steel
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composition that is also influenced by other factors. (Vander Voort
paragraph bridging columns 4–5.)
For the foregoing reasons and those presented in the present record
including our prior decisions, based on the totality of the record, we
determine that the preponderance of evidence weighs in favor of
obviousness, giving due weight to Appellant’s arguments and evidence.
Accordingly, the Examiner’s rejection is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5 103(a) Vander Voort   1–5

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)(1)(iv).

AFFIRMED

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HANLON, Administrative Patent Judge, dissenting.
I respectfully dissent. There appears to be no dispute on appeal that
Vander Voort discloses a weldable component of structural steel comprising
elements in amounts that overlap the claimed ranges. A prima facie case of
obviousness typically exists where the prior art and the claimed ranges
overlap, as well as in those cases where the claimed range and the prior art
range, though not overlapping, are sufficiently close that one of ordinary
skill in the art would have expected them to have the same properties. See,
e.g., 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); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed.
Cir. 1985). “[T]he existence of overlapping or encompassing ranges shifts
the burden to the applicant to show that his invention would not have been
obvious.” Peterson, 315 F.3d at 1330.
In this case, Vander Voort not only defines the disclosed weldable
component in terms of elemental ranges but also restricts elemental amounts
based on a Surface Roughness equation “where the calculated Surface
Roughness is no greater than 2.65 µ-inch.” Vander Voort, col. 4, ll. 57–64.
Relying on the equation disclosed in Vander Voort, the Appellant
demonstrates that the “surface roughness” at the overlapping ranges
disclosed in Vander Voort and recited in claim 1, is higher than the desired
surface roughness disclosed in Vander Voort. See Br. 7 (contending that the
minimum “surface roughness” of the claimed steel at the overlapping ranges
disclosed in Vander Voort is 3.64); see also Tr. 12, ll. 11–17 (indicating that
the Appellant’s position is that there is no combination of elements that
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would fall within the ranges recited in claim 1 and also satisfy the equation
in Vander Voort).
The majority concludes that “independent claim 1 does not include
specific limitations on the surface roughness.” Decision 4. I agree. Vander
Voort, however, discloses that the desired properties are achieved “where
the calculated Surface Roughness is no greater than 2.65 µ-inch.” Vander
Voort, col. 2, ll. 28–36. The evidence of record establishes that selections
within the overlapping ranges do not achieve the desired surface roughness
disclosed in Vander Voort. Therefore, the composition recited in claim 1
and the composition disclosed in Vander Voort do not have the same
properties. See Br. 8 (contending that “the fact that the claimed composition
does not exhibit the required surface roughness of Vander Voort
demonstrates that the claimed composition does not have the same
properties”).
The majority also finds that “Vander Voort is not limited to steel
compositions that adhere to the [disclosed] surface roughness equation.”
Decision 5. I respectfully disagree. Vander Voort discloses that “[t]hrough
research and development . . . the present invention resulted in the
development of a new die steel” having “[h]igh surface hardness,”
“[f]reedom from harmful inclusions and a homogeneous microstructure,”
“[d]imensional stability in heat treatment,” and “[s]ufficient toughness at the
high hardness level.” Vander Voort, col. 2, ll. 4–18.
This unique combination of properties for steels of the
present invention is accomplished through a careful balancing
of the chemistry. Specifically, within the broad chemistry
limits, by weight, of carbon 0.3 to 0.8%, and the maximum
quantities of manganese 3.0%, phosphorus 0.025%, sulfur
0.25%, silicon 2.0%, nickel 4.0%, cobalt 4.0%, chromium
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3.0%, vanadium 1.0%, molybdenum 1.5%, tungsten 1.5%,
niobium 0.1%, titanium 0.5%, aluminum 0.10%, optionally
boron between 0.0005 and 0.012%, balance iron, the desired
properties can be achieved through adherence to the following
equation:
Surface Roughness (µ-inch)=Boron factor[7] [7.07-
12.5(% C)+0.72(% Mn)+0.45(% Si)-2.9(%
Ni)+1.13 (% Ni)2+0.87(% Cr)+2.1(% V)+1.12(%
Mo)+0.84(%W)+14(%Nb)], where the calculated
Surface Roughness is no greater than 2.65 µ-inch.
Vander Voort, col. 2, ll. 19–36 (emphasis added).
The majority finds that the properties of Vander Voort’s steel
composition are also influenced by other factors. Decision 5–6 (citing
Vander Voort, paragraph bridging cols. 4–5). Vander Voort, however, does
not disclose that the Surface Roughness equation is an alternative tool for
measuring desired properties. Rather, the disclosure of Vander Voort, as a
whole, makes it clear that the desired properties of the invention are realized
through adherence to the relationship established by the Surface Roughness
equation. See Vander Voort, col. 4, ll. 54–56; see also Br. 11 (arguing that
“Vander Voort does not contemplate compositions that do not satisfy the
surface roughness equation”).
In sum, the Appellant has, in my opinion, satisfied its burden by
showing that the teachings of Vander Voort teach away from the claimed
invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, . . . would be led in a direction divergent from the path that was

7 Vander Voort discloses that “[t]he Boron factor is 1.0 when boron is not
present in the above given range, and 1.74 when boron is present.” Vander
Voort, col. 2, ll. 36-38.
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taken by the applicant.”); Peterson, 315 F.3d at 1331 (“an applicant may
rebut a prima facie case of obviousness by showing that the prior art teaches
away from the claimed invention in any material respect” (emphasis
added)); cf. Geisler, 116 F.3d at 1471 (“The statement in Zehender that ‘[i]n
general, the thickness of the protective layer should not be less than about
[100 Angstroms]’ falls far short of the kind of teaching that would
discourage one of skill in the art from fabricating a protective layer of 100
Angstroms or less.”). For that reason, I would reverse the obviousness
rejection of claims 1–5 based on Vander Voort.