Ex Parte BieniosekDownload PDFPatent Trial and Appeal BoardOct 22, 201311707447 (P.T.A.B. Oct. 22, 2013) Copy Citation 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 kmm Copy with citationCopy as parenthetical citation