Ex Parte Bieniosek

Patent Trial and Appeal Board

Oct 22, 2013

11707447 (P.T.A.B. Oct. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/707,447 02/16/2007 Thomas H. Bieniosek RBEE 200019US01 8603
27885 7590 10/23/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
TAKEUCHI, YOSHITOSHI
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
10/23/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS H. BIENIOSEK
____________

Appeal 2012-007379
Application 11/707,447
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007379
Application 11/707,447

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 30, 31, 36-49, 52-56, 58, and 59.2 We have jurisdiction
under 35 U.S.C. § 6(b).3
We AFFIRM.
Independent claim 30 is representative of the invention and is reproduced
below from the Claims Appendix to the Appeal Brief:
30. A desulfurization agent for removing oxygen, sulfur,
and mixtures thereof from molten iron, said desulfurization agent
having a solid form at a temperature of about 70ºF, said
desulfurization agent including ferrous metal, deoxidizing metal and
liquid material, said desulfurization agent formed into a puck or
briquette having an average density of about 6.9-7.8 g/cm⅓, a total
weight percent of said ferrous metal having a weight ratio to a total
weight percent of said deoxidizing metal of about 6-20:1, said ferrous
metal constituting at least 80 weight percent of said puck or briquette,
said deoxidizing metal constituting at least about 1 weight percent of
said puck or briquette, said deoxidizing metal including a metal from
metal scrap material, said deoxidizing metal including two or more
metals selected from the group consisting of aluminum, magnesium,
titanium, and zirconium, said deoxidizing metal including reclaimed
magnesium, said reclaimed magnesium constituting at least 5 weight
percent of said deoxidizing metal, said liquid material including a gas-
producing compound that includes hydrocarbon, said liquid material
constituting about 0.001-5 weight percent of said puck or briquette.

The Examiner maintains the following grounds of rejection:

1 Final Office Action mailed May 11, 2011.
2 Appeal Brief filed Oct. 11, 2011 (“App. Br.”).
3 Appellant states that an appeal has been filed in related application SN
12/720,931. (App. Br. 24.) Since the filing of the Appeal Brief in the present
appeal, the appeal in the related application has been withdrawn in favor of a
Request for Continued Examination, filed Oct. 11, 2011.
Appeal 2012-007379
Application 11/707,447

3
1. claims 30, 31, and 36-49 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement (Ans. 4 4-
5);
2. claims 30, 31, 36-49, 55, 56, and 59 are rejected under 35 U.S.C.
§112, second paragraph, as indefinite (id. at 5); and
3. claims 30, 31, 36-49, 52-56, 58, and 59 are rejected under 35 U.S.C.
§103(a) as unpatentable over McLaughlin (US 4,173,466, issued Nov. 6, 1979) in
view of Kanamori (JP 2001-032007, published Feb. 6, 2001 (machine translation))
and Zebrowski (US 6,989,040 B2, Jan. 24, 2006) (Ans. 5-12).
Rejection under 35 U.S.C. §112, first paragraph,
written description requirement
Appellant has persuasively argued the Examiner reversibly erred in finding
the claim 30 limitation “said deoxidizing metal constituting at least about 1 weight
percent of said puck or briquette” lacks written descriptive support (see Ans. 5).
Appellant directs us to page 5, lines 6-8 of the Specification (filed Feb. 16, 2007)
wherein, contrary to the Examiner’s contention (see Ans. 13), explicit support for
the phrase “at least about 1 weight percent” (claim 30 (emphasis added)) appears.
(See App. Br. 7-8.) Accordingly, we do not sustain the rejection of claims 30, 31,
and 36-49 under 35 U.S.C. §112, first paragraph, as failing to comply with the
written description requirement.
Rejection under 35 U.S.C. §112, second paragraph
Appellant has persuasively argued the Examiner reversibly erred in
determining claim 30 is indefinite due to the term “about” in the phrase “said
deoxidizing metal constituting at least about 1 weight percent of said puck or
briquette” (Ans. 5). A claim satisfies the definiteness requirement of 35 U.S.C. §

4 Answer mailed Feb. 8, 2012.
Appeal 2012-007379
Application 11/707,447

4
112, second paragraph, when one skilled in the art understands the claim
parameters as read in light of the specification. BJ Servs. Co. v. Halliburton
Energy Servs., Inc., 338 F.3d 1368, 1372 (Fed. Cir. 2003). The Examiner has not
clearly explained why one of ordinary skill in the art would not have been
reasonably apprised of the scope of the claim as a result of the claim term “about.”
Cf. Accentra, Inc. v. Staples, Inc., 500 Fed.Appx. 922, 930 (Fed. Cir. 2013) (non-
precedential) (explaining the term “about” is not indefinite if it can be understood
in the context of the technology).
Appellant has also persuasively argued (see App. Br. 8) the Examiner
reversibly erred in determining dependent claims 55, 56, and 59 encompass a
lower limit of 0% for the liquid material and calcium compound and, therefore, are
indefinite because they are broader in scope than independent claim 52 wherein the
lower limits recited for the same components exceed 0% (see Ans. 5). As argued
by Appellant (see Reply Br. 3), 35 U.S.C. § 112, fourth paragraph, provides that “a
claim in dependent form shall contain a reference to a claim previously set forth
and then specify a further limitation of the subject matter claimed.” Because
dependent claims 55, 56, and 59 narrow the scope of claim 52 from which they
depend, they necessarily incorporate the lower limits of the ranges for liquid
material and calcium compound recited in claim 52.
Accordingly, we do not sustain the rejection of claims 30, 31, 36-49, 55, 56,
and 59 under 35 U.S.C. §112, second paragraph, as indefinite.
Rejection under 35 U.S.C. §103(a)
We have fully considered Appellant’s arguments in support of patentability
of independent claims 30 and 52 (see App. Br. 11-13; Reply Br. 4-5), but are not
convinced of error in the Examiner’s obviousness determination. Accordingly, we
sustain the rejection of claims 30 and 52 under 35 U.S.C. §103(a) as unpatentable
Appeal 2012-007379
Application 11/707,447

5
over McLaughlin in view of Kanamori and Zebrowski based on the findings of
fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Answer.
On pages 13-15 of the Appeal Brief, Appellant argues that various
dependent claims are separately patentable. However, Appellant’s arguments in
support of patentability of these claims amount to nothing more than statements as
to what each claim recites. Such statements are not considered arguments for
separate patentability. 37 C.F.R. § 41.37(c)(1)(vii); see also, In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011)
[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art. Because Lovin did not
provide such arguments, the Board did not err in refusing to separately
address claims 2–15, 17–24, and 31–34.

The Examiner has clearly made findings in support of the rejection of each of the
dependent claims. (See Final 4-12; Ans. 6-12.) Because Appellant has not shown
error in the Examiner’s fact finding and reasoning, we likewise sustain the
rejections of dependent claims 36-49, 53-56, 58, and 59 under 35 U.S.C. §103(a)
for the reasons expressed in the Answer.
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).

AFFIRMED

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