Ex Parte Beguinot et al

Patent Trial and Appeal Board

Sep 27, 2016

10535174 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/535,174 03/17/2006 23373 7590 09/29/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Jean Beguinot 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Q87983 2367 EXAMINER YANG,JIE ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 09/29/2016 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 sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte JEAN BEGUINOT and JEAN-GEORGES BRISSON1 Appeal2015-000298 Application 10/535,174 Technology Center 1700 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL 1 According to the Appeal Brief, the Real Party in Interest is Industeel Creusot. (App. Br. 2). Appeal2015-000298 Application 10/535,174 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-5.2 We have jurisdiction under 35 U.S.C. § 6. Appellants' 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. Weldable component of structural steel, characterized in that its chemical composition comprises, by weight: 0.40% :S c :S 0.50% 0.50% :S Si :S 1.50% 0% :S Mn :S 3% 0% :S Ni :S 5% 0% :S Cr :S 4% 0% :S Cu :S 1% 0% :S Mo+ W/2 :S 1.5% 0.0005% :SB :S 0.010% N :S 0.025% Al< 0.9% Si+ Al :S 2.0% optionally at least one element selected from V, Nb, Ta, S and Ca, at contents of less than 0.3%, and/or from Ti and 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 2: 1/3 x K + 0. 5, (1) with K = Min (I* ; J*) 2 Pending claims 6-11 have been withdrawn from consideration. 2 Appeal2015-000298 Application 10/535,174 l * = Max ( 0 ; l) and J * = Max ( 0 ; J) I= Min(N; N-0,29(Ti-5)) J =Min ( N; 0,5( N- 0,52 Al+v(N - 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. Appellants request review of the following rejections (App. Br. 7) from the Examiner's final office action: 1. 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). 2. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bhadeshia (WO 96/22396 published July 25, 1996). OPINION3 The present application was the subject of a prior appeal, 2010- 0072364 wherein we sustain the appealed rejections. The present decision incorporates the discussion presented in our prior decision. We sustain the appealed rejections for the reasons well stated by the Examiner in the Answer. The following comments are added for emphasis. 3 Appellants did not argue the dependent claims separately in the Brief. Accordingly, the dependent claims stand or fall together with sole independent claim 1. 4 Decision mailed February 2, 2012. 3 Appeal2015-000298 Application 10/535,174 The Examiner found that V ander V oort and Bhadeshia both teach a weldable component of structural steel comprising elements in amounts that overlap the claimed invention. (Ans. 3-9). Appellants argue that Vander V oort does not describe a relationship between silicon and boron and that V ander V oort teaches away from using silicon and boron together in the amounts required by the claimed invention. (App. Br. 10). Appellants argue Bhadeshia does not teach or suggest simultaneous presence of silicon and boron and does not mention the improvement of the quenchability as a technical problem. (Id.). Appellants also argue that Bhadeshia does not describe a synergetic relationship between silicon and boron. (Id.). We do not find Appellants' arguments persuasive of error in the Examiner's obviousness determination. Appellants' arguments, addressing both references, focus on the references' preferred embodiments and the examples. We agree with the Examiner that Vander V oort and Bhadeshia describe overlapping ranges for each of the respective elements recited in the claims. (e.g., Vander Voort, col. 2, 11. 19-20; and Bhadeshia, 8). Thus, the Examiner has established a prima facie case of obviousness. [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)). Appellants argue that the amount of silicon and boron specified in claim 1 is representative of a synergistic effect resulting in improved 4 Appeal2015-000298 Application 10/535,174 quenchability of the steel without deteriorating its weldability. (App. Br. 7). In support of this position, Appellants refer to ( 1) the data in the specification, pages 8-9; and (2) the Ngomo Declaration, filed under 37 C.F.R. §1.132 submitted on October 1, 2013. (Id. at 7-8). Secondary Considerations When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of prima facie obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). Appellants have not demonstrated the data presented in the Specification and the declaration exhibits unexpected results (synergistic effect) that are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing unexpected results rests on he who asserts them"); see also In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("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."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art 5 Appeal2015-000298 Application 10/535,174 is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.). Specification Data The data presented the specification is specific to two alloy examples. Appellants have not explained how these two alloy examples are representative of all the alloy compositions encompassed by the claimed invention. Appellants have not explained which of these examples is representative of the baseline for determining the alleged improvement in quenchability of the steel without deteriorating its weldability. Appellants have not explained which of these examples is representative of the prior art, let alone the closest prior art. To the extent that quenchability of the steel without deteriorating its weldability may be an improvement over other prior art compositions, a mere improvement is not sufficient to establish that the results would have been "unexpected." See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of"unexpected results" to be probative evidence of non-obviousness, the Applicant must establish that the difference between the results obtained through the claimed invention and those of the prior art would not have been expected by one skilled in the art at the time of invention). Declaration Evidence We have considered the Ngomo Declaration, but do not find it persuasive of establishing patentability of the appealed subject matter. On this record, we find the testimonial evidence in the Declaration to be entitled 6 Appeal2015-000298 Application 10/535,174 to little, if any, weight. See, e.g., Jn re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)) ("[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations."). The extent of Declarant N gomo' s opinion testimony is based on the use of the software application "PREYER" -developed by ArcelorMittal-which was utilized to perform calculations to demonstrate that the amount of Si and the amount of B in the composition of the steel of the present invention provide a synergetic effect. (Declaration ,-i,-i 4-5). The declarant states the steel compositions utilized in the software application were representative of the compositions presented in the specification with some modifications. (Declaration ,-i 7). The declarant states the martensitic velocities of the samples were analyzed according to two hypothesis. (Declaration ,-i,-i 10- 12). The declarant states "[t]he actual critical martensitic velocity of each steel we studied is necessarily comprised between the critical martensitic velocities according to hypothesis Hl and H2 ... These results show that B and Si do have a synergetic effect on the critical martensitic velocity of the steel." (Declaration ,-i,-i 17). The declarant has not explained how these two alloy examples are representative of all the alloy compositions encompassed by the claimed invention. The declarant has not explained which of these examples is representative of the baseline for determining the alleged improvement in quenchability of the steel without deteriorating its weldability. The declarant has not explained which of these examples is representative of the prior art, let alone the closest prior art. Moreover, the 7 Appeal2015-000298 Application 10/535,174 declarant has not indicated that the steel compositions were actually formed in a laboratory and tested. The evidence relied upon by the declarant, based solely on simulator testing, is insufficient factual evidence to establish that the alleged unexpected synergistic effect would have necessarily been achieved based on the amounts of B and Si present in non-simulated steel compositions over the range of compositions claimed. For the foregoing reasons and those set forth in the Answer, based on the totality of the record, we determine that the preponderance of evidence weighs in favor of obviousness, giving due weight to Appellants' arguments. Accordingly, the Examiner's rejections are affirmed. ORDER The rejections of claims 1-5 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 8