Ex Parte Daitoh

Patent Trial and Appeal Board

May 30, 2017

13980922 (P.T.A.B. May. 30, 2017)

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.
13/980,922 10/01/2013 Yoshihiro Daitoh 12049-0118 4253
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
05/30/2017 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 YOSHIHIRO DAITOH
Appeal 2016-006882
Application 13/980,922
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 3 of Application
13/980,922 under 35 U.S.C. § 103(a) as obvious. Final Act. 2—3 (July 2,
2015). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Nippon Steel & Sumitomo Metal Corporation are identified as the real
parties in interest. Appeal Br. 3.
Appeal 2016-006882
Application 13/980,922
BACKGROUND
The ’922 Application relates to a steel composition, which prevents
grain coarsening during carburizing or carbonitriding and has improved
bending fatigue strength thereafter. Spec. 11. According to the
Specification, the steel works well as a starting material for mechanical
parts. Id.
Claim 1 is representative of the ’922 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A steel for carburizing or carbonitriding use consisting
of, by mass %;
C: 0.1 to 0.3%,
Si: 0.01 to 0.09%,
Mn: 0.6 to 1.5%,
S: 0.012 to 0.05%,
Cr: 0.5 to 2.0%,
Al: 0.030 to 0.050%,
Ti: 0.0006 to 0.0025%,
N: 0.010 to 0.025%, and
O: 0.0006 to 0.0012%, and
the balance of Fe and impurities, wherein P and Nb among the
impurities are P: 0.025% or less and Nb: 0.003% or less
respectively,
and further the following formulas (1) and (2) are satisfied:
-5.0 < log (Ti x N) < -4.4 . . . (1),
-12.5 < log (Al2 x O3) < -11.7 ... (2),
wherein each element symbol in the above formulas (1) and (2)
represents the content by mass percent of the element
concerned.
Appeal Br. 28.
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Application 13/980,922
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hatano.2 Final Act. 2; Ans. 2.
DISCUSSION
Appellant argues for the reversal of the obviousness rejection to
claims 1 and 3 on the basis of limitations present in independent claim 1.
See Appeal Br. 10-27; Reply Br. 1—8. We, therefore, limit our analysis to
claim 1. Claim 3 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1. We affirm the obviousness rejection based upon the
factual findings and reasoning set forth on pages 2—6 of the Examiner’s
Answer, which we adopt. We add the following for emphasis.
The Examiner found that Hatano described a steel composition
comprised of the elements in the allegedly inventive steel. Ans. 2.
Furthermore, the amounts of these elements were described as being within
ranges that overlapped the ranges of Appellant’s steel. Id. Thus, the
Examiner concluded that claim 1 was prima facie obvious. Id. at 3.
Appellant argues, inter alia, that the rejection of claims 1 and 3 should
be reversed for four reasons. Appeal Br. 10—27; Reply Br. 1—8. According
to Appellant: (1) the Examiner erred in determining that Hatano establishes
a prima facie case of obviousness, Appeal Br. 13—16; Reply Br. 2—3, (2) the
Examiner erred in finding that the Specification is insufficient to rebut any
2 WO 2009/154235, published Dec. 23, 2009. We join the Examiner in
citing US 2011/0091348 Al, published Apr. 21, 2011, as the English-
language equivalent.
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Application 13/980,922
alleged prima facie case of obviousness, Appeal Br. 16—21, 26; Reply Br. 1—
2, 7—8; (3) Hatano cannot suggest control of Si mass % as claimed because
the applied prior art is not concerned with improving steel bending fatigue
strength via carburizing or carbonitriding, Appeal Br. 21, 23—24, 26; and
(4) the Examiner erred by not giving weight to the preamble. Appeal Br.
24—25.
First, Appellant argues that “the mere overlap between [Hatano’s]
compositional ranges . . . and that of claim 1 does not automatically means
[sic, mean] that a prima facie case of obviousness is established.” Id. at 13.
The Examiner, however, has identified a prior art reference that sets forth
the elements used in the claimed steel and in ranges that overlap the ranges
set forth the claimed ranges. Therefore, the Examiner’s findings are
sufficient to create a prima facie case of obviousness. See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art). Appellant has not persuasively explained why the
’922 Application’s claims are atypical in the sense contemplated by
Peterson.
Second, Appellant correctly points out that unexpected results must be
considered along with all other evidence for and against patentability in
reaching a final conclusion regarding obviousness. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted
by the applicant in response [to a prima facie case of obviousness],
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.”). To
show unexpected results, however, Appellant must demonstrate (1) that
there actually is a difference between the results obtained through the
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Application 13/980,922
claimed invention and those of the prior art and (2) that the difference
actually observed would not have been expected by one skilled in the art at
the time of invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
A showing of unexpected results must be based upon evidence rather than
argument or speculation. In reMayne, 104 F.3d 1339, 1343 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“It is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice.” (citing In re Lindner, 457 F.2d 506, 508 (CCPA 1972))).
In this case, Appellant identifies portions of the Specification as
evidence of unexpected results (Appeal Br. 12—13, 16—21 (citing Spec.
11 63-65, 72, 79-82, 8^85, 87-88, 34, Tables 1-5); Reply Br. 2). Our
review of the entire Specification, including the portions specifically cited
by Appellant, reveals that the Specification is devoid of any evidence that a
person of ordinary skill in the art would have thought the differences
between the claimed steel composition and the prior art were unexpected or
surprising.3 Appellant, therefore, only has attorney argument in support of
the contention that the claimed steel composition achieves unexpected
3 With respect to an alleged criticality of Si content, Appellant relies on the
Specification for disclosing that “if the content of Si exceeds 0.15%, the . . .
intergranularly oxidized layers increase remarkably and the bending fatigue
strength deteriorates.” Appeal Br. 21 (citing Spec. 134). However, this
amount lies outside of the overlapping Si range of 0.01—0.09 % as claimed
and disclosed in the applied prior art. Hatano 55—56. Therefore,
Appellant has not demonstrated that the claimed Si content provides
unexpected results. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (“[T]he 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.”).
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Application 13/980,922
results. In view of the foregoing, we find that Appellant has not
demonstrated the existence of unexpected results that must be weighed with
all of other evidence for and against patentability. Nevertheless, even if the
evidence is considered, the Examiner finds that the evidence proffered by
Appellant in the Specification (Tables 1 and 2) is not commensurate in scope
with the claims. Ans. 5. We agree in that the evidence includes examples
that only cover a narrow subset of the ranges recited for the various elements
in the steel composition. For example, the evidence in Tables 1 and 2 only
includes embodiments having from 0.20 to 0.22 mass% carbon, whereas the
claim includes steel having from 0.1 to 0.3 mass% carbon. The ranges for
the other elements shown in Tables 1 and 2 are also not commensurate in
scope with the breadth of the ranges recited in claim 1.
Third, Appellant further argues that the Examiner’s allegations are
unacceptable because there is no overlap with respect to Si. Reply Br. 2.
The Examiner, however, found that Hatano et al. discloses Si in an amount
of 0-3.0 % by mass, which overlaps the claimed range. Ans. 4; see Hatano
11 55-56.
Furthermore, Appellant’s arguments are not persuasive that Hatano
cannot suggest the claimed Si mass %. Appellant is incorrect in arguing that
Hatano’s silence, with respect to improving steel bending fatigue strength
via carburizing or carbonitriding, is relevant to our disposition. Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed.
Cir. 2005) (“One of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings.”); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419—20
(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
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Application 13/980,922
patentee controls .... The first error of the Court of Appeals in this case
was . . . holding that courts and patent examiners should look only to the
problem the patentee was trying to solve.”).
Fourth, the preamble of claim 1 states that the claim is directed to “[a]
steel for carburizing or carbonitriding use.” Appellant argues that the
Examiner erred by failing to give weight to this portion of claim 1. Appeal
Br. 24—25. We are not persuaded by this argument.
In general, the preamble limits a claim if it recites essential structure,
essential steps, or is otherwise “necessary to give life, meaning, and vitality”
to the claim, Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA
1951)), while the preamble is not limiting when the claim body defines a
complete invention and the preamble states only a purpose or intended use,
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The default presumption
is that a claim’s preamble is not limiting. Am. Med. Sys., Inc. v. Biolitec,
Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (“‘Generally,’ we have said, ‘the
preamble does not limit the claims.’” (quoting Allen Eng’g Corp. v. Bartell
Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))).
In this case, we conclude that claim 1 ’s preamble is not a positive
claim limitation, but instead is a statement of intended use. The preamble
does not provide an antecedent basis for any limitation in the claims body.
Nor does it recite any component, let alone an essential component, of the
claimed composition.
Thus, we affirm Rejection 1.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1
and 3 of the ’922 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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