Beguinot, Jean et al.Download PDFPatent Trials and Appeals BoardMay 29, 20202019004147 (P.T.A.B. May. 29, 2020) Copy Citation 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 following e-mail address(es): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com 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 (Appeal Br. 2.) 2 Pending claims 6–11 have been withdrawn from consideration. 3 A written transcript of the Oral hearing will be entered into the record when the transcript is made available. Appeal 2019-004147 Application 10/535,174 2 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)) Appeal 2019-004147 Application 10/535,174 3 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. Appeal 2019-004147 Application 10/535,174 4 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 Appeal 2019-004147 Application 10/535,174 5 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 Appeal 2019-004147 Application 10/535,174 6 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 Appeal 2019-004147 Application 10/535,174 7 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 Appeal 2019-004147 Application 10/535,174 8 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 Appeal 2019-004147 Application 10/535,174 9 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. Appeal 2019-004147 Application 10/535,174 10 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. Copy with citationCopy as parenthetical citation