Ex Parte Grubb

Board of Patent Appeals and Interferences

Dec 23, 2011

10602945 (B.P.A.I. Dec. 23, 2011)

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.
10/602,945 06/24/2003 John F. Grubb RL-1627DIV 1816
7590 12/27/2011
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 Six PPG Place
Pittsburgh, PA 15222-5479
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN F. GRUBB
____________

Appeal 2010-003866
Application 10/602,945
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003866
Application 10/602,945

2

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s refusal to
allow claims 36 through 40, 42, and 43, all of the claims pending in the above-
identified application.1 We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a ferritic stainless steel alloy”
suitable for various high temperature applications, such as current collecting
interconnects in solid oxide fuel cells, furnace hardwares, equipment for the
chemical processes, etc. (Spec. 1, ll. 19-26). Details of the appealed subject
matter are recited in representative claim 362 reproduced from the Claims
Appendix to the Appeal Brief as shown below:
36. A solid oxide fuel cell comprising:
an anode;
a cathode;
an electrolyte comprising stabilized zirconia, wherein the
electrolyte is intermediate the anode and the cathode; and
an interconnect providing a current pathway from the anode, the
interconnect comprising a ferritic stainless steel comprising:
greater than 25 weight percent chromium,
0.75 up to 1.5 weight percent molybdenum,
up to 0.05 weight percent carbon, and

1 See Appeal Brief (“App. Br.”) filed July 6, 2009, 3-4; Reply Brief (“Reply Br.”)
filed November 30, 2009, 2; and Examiner’s Answer (“Ans.”) filed October 1,
2009, 2.
2 Appellant only argues the limitations of claim 36. Therefore, for purposes of this
appeal, we select claim 36 and decide the propriety of the Examiner’s § 103(a)
rejection set forth in the Answer consistent with 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-003866
Application 10/602,945

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at least one of niobium, titanium, or tantalum, wherein
the weight percentages of niobium, titanium, and tantalum satisfy the
equation
0.5 ≤ (%Nb + %Ti + 1/2(%Ta)) ≤ 1,
wherein the steel has a coefficient of thermal expansion
within about 25 percent of the coefficient of thermal expansion of
stabilized zirconia between 20ºC and 1000ºC and exhibits at least one
creep property selected from the group consisting of creep rupture
strength of at least 1000 psi at 900ºC, time to 1% creep strain of at
least 100 hours at 900ºC under load of 1000 psi, and time to 2% creep
strain of at least 200 hours at 900ºC under load of 1000 psi.
As evidence of unpatentability of the claimed subject matter, the Examiner
relies on the following prior art references at page 2 of the Answer:
Woods, Jr. US 5,424,144 June 13, 1995
Simpkins US 6,613,468 B2 Sept. 2, 2003
Taruya JP 2000-294256 Oct. 20, 20003

Appellant requests review of the Examiner’s rejection of claims 36 through
40, 42, and 43 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Simpkins and Taruya, as evidenced by Woods. (See App. Br. 12
and Reply Br. 3.)
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES,
ANALYSES, AND CONCLUSIONS
Appellant does not question the Examiner’s finding that Simpkins teaches a
solid oxide fuel cell comprising an anode, a cathode, an electrolyte comprising
stabilized zirconia located intermediate the anode and the cathode, and an
interconnect providing a current pathway from the anode. (Compare Ans. 3 with

3 Our reference to this patent is to the corresponding English translations of record
submitted by the Examiner and Appellant.
Appeal 2010-003866
Application 10/602,945

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App. Br. 13-27 and Reply Br. 4-18.) Nor does Appellant dispute the Examiner’s
finding that the interconnect taught by Simpkins can be made of ferritic stainless
steels which “may be coated with LSC [(strontium-doped lanthanum chromite)] or
strontium-doped lanthanum manganite (LSM) to achieve the same desired
properties [as an interconnect comprising lanthanum chromite doped with an
alkaline earth element].” (Compare Ans. 3 and 6 with App. Br. 20; see also
Simpkins, col. 6, ll. 60-66.)
Appellant contends that one of ordinary skill in the art would not have been
led to employ the claimed interconnect comprising a particular stainless steel as the
interconnect of the solid oxide fuel cell taught by Simpkins. (See App. Br. 13-23
and Reply Br. 4-15.) In support of this contention, Appellant argues that there is
no reason or suggestion to employ the stainless steel interconnect taught by Taruya
as the stainless steel of the interconnect taught by Simpkins and no reason or
suggestion to employ at least one of niobium, titanium or tantalum in the weight
percentage defined by the claimed formula, e.g., 0.5 to 1.0 weight percent of
niobium and/or titanium. Id. Appellant also argues that Taruya does not suggest a
stainless steel that necessarily has one of the functionally defined creep properties
listed in claim 36. (See App. Br. 22-23 and Reply Br. 7-10.)
The first critical question raised by the Examiner and Appellant is: Has the
Examiner reversibly erred in determining that one of ordinary skill in the art would
have been led to employ the claimed interconnect comprising a particular stainless
steel as the interconnect of the solid oxide fuel cell taught by Simpkins? On this
record, we answer this question in the negative.
As correctly found by the Examiner at pages 3 and 4 of the Answer, Taruya
in its English abstract describes a polymeric electrolytic fuel cell employing a
separator (corresponding to the claimed interconnect) comprising a ferrite stainless
Appeal 2010-003866
Application 10/602,945

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steel made of, inter alia, 10.5 to 35 weight percent of chromium, 0 to 6 weight
percent of molybdenum, no more than 0.018 weight percent of carbon, not more
than 0.2 weight percent of titanium, and not more than 0.3 weight percent of
niobium. Consistent with this finding, Taruya also exemplifies a stainless steel
sample No. 5 having, inter alia, 25.6 weight percent of chromium, 0.98 percent
molybdenum, 0.0013 weight percent of carbon, and 0.12 weight percent of
titanium, with a statement that niobium is an element that is included as needed
(See Table 1 of the English translations of record submitted by both the Examiner
and Appellant, with Appellant’s English translation, para. 0049.)
Given the fact that Simpkins teaches using an interconnect comprising any
known conventional stainless steels, inclusive of that taught or suggested by
Taruya, we find no reversible error in the Examiner’s determination that one of
ordinary skill in the art would have been led to employ the claimed particular
stainless steel taught or suggested by Taruya as at least part of the interconnect4 of
the solid oxide fuel cell taught by Simpkins within the meaning of 35 U.S.C.
§ 103(a). This is especially compelling in this case since Woods Jr., as correctly
found by the Examiner at pages 4 and 5 of the Answer, evidences that one of
ordinary skill in the art knew at the time of the invention that a conductive ferrous
metal separator (e.g., a conductive ferritic stainless steel interconnect) is generally
used for “known types of fuel cells, such as solid oxide fuel cells and polymer
electrolyte fuel cells.” (See also Wood, col. 1.)

4 As correctly determined by the Examiner at page 6 of the Answer, the term
“comprising” used in the context of the interconnect recited in claim 36 does not
preclude the presence of the coating material taught by Simpkins. In re Baxter,
656 F.2d 679, 686-87 (CCPA 1981) (The transitional term “comprising” in a claim
is interpreted as not precluding the presence of additional ingredients and/or steps,
which are not recited in that claim.)
Appeal 2010-003866
Application 10/602,945

6

In reaching this determination, we have fully considered Appellant’s
argument at pages 16 through 21 of the Appeal Brief that the ferritic stainless steel
interconnect used in Taruya’s polymeric electrolytic fuel cell is not
interchangeable with the same component of the solid oxide fuel cell taught by
Simpkins. In support of this position, Appellant refers to paragraphs 0005 and
0006 of Taruya and column 1 of Woods Jr. (App. Br. 16-21.). However, as
correctly found by the Examiner at pages 5 and 6 of the Answer:
[T]he disclosure at [0005] [of Taruya] is related to interchanging the
electrolyte, fuel electrode and/or oxide electrode materials of different
fuel cell types. This section of Taruya does not discuss interconnect
materials. Furthermore, [0006] [of Taruya] discusses not utilizing
phosphoric acid fuel cell or molten carbonate fuel cell materials for
polymer electrolyte fuel cells. Simpkins teaches a solid oxide fuel cell
having an interconnect that is electrically conductive and comprises a
ferritic stainless steel material (6:46-67). Taruya teaches a polymer
electrolyte fuel cell comprising a ferrite stainless steel interconnect
(abstract). Woods teaches a ferrous metal separator is generally used
for known types of fuel cells, such as solid oxide fuel cells and
polymer electrolyte fuel cells (column 1). Therefore, one of skill
would have known that ferrous stainless steel interconnects could
have been used for SOFCs [(i.e., solid oxide fuel cells)] (taught by
Simpkins and Woods) or polymer electrolyte fuel cells (taught by
Taruya and Woods).
More importantly, however, Simpkins teaches that ferritic stainless steels,
inclusive of the ferritic stainless steel taught or suggested by Taruya, are useful as
part of the interconnect of its solid oxide fuel cells as indicated supra.
Relying on his English translation of Taruya, Appellant, at page 15 of the
Appeal Brief and pages 5 and 6 of the Reply Brief, states that Taruya actually
teaches or suggests a ferritic stainless steel having smaller percentages of titanium
and niobium than the percentages of the same relied upon by the Examiner, that is,
less than 0.2 weight percent of titanium, rather than no more than 0.2 weight
Appeal 2010-003866
Application 10/602,945

7

percent of titanium, and less than 0.3 weight percent of niobium, rather than no
more than 0.3 weight percent of niobium. In other words, Taruya does not suggest
a ferritic stainless steel having the claimed total percentage of titanium and
niobium. (App. Br. 15 and Reply Br. 5-6.) However, regardless of which English
translation prevails in this case, the fact remains that the total percentage of
titanium and niobium suggested by Taruya either touches or is very close to the
claimed total percentage (0. 5 weight to 1.0 weight percent) of the same. As our
reviewing court stated in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness. . . . We have also held that a prima
facie case of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one skilled in
the art would have expected them to have the same properties.
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 . . . (Fed. Cir.
1985).

Having determined that Taruya would have suggested the claimed ferritic
stainless steel interconnect as indicated supra, we concur with the Examiner that its
associated properties, such as at least one of the functionally defined creep
properties listed in claim 36, would have naturally flowed from such suggestion.
See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of
record explicitly discusses the [limitation], [applicants’] application itself instruct
that [the limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that
appellant has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for patentability when
the differences would otherwise be obvious.”); see also In re Papesch, 315 F.2d
Appeal 2010-003866
Application 10/602,945

8

381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of
its properties are inseparable; they are one and the same thing.”)
Appellant contends that the claimed subject matter imparts unexpected
results relative to the closest prior art. (See App. Br. 23-27.) In support of this
contention, Appellant relies on the data discussed at pages 21 through 29 of the
Specification. Id. On the other hand, the Examiner has found that Appellant has
not demonstrated that the showing in the Specification is directed to a comparison
between the claimed subject matter and the closest prior art and is reasonably
commensurate in scope with the degree of protection sought by claim 36. (See
Ans. 7.)
Appellant can rebut a prima facie case of obviousness by showing
“unexpected results,” i.e., showing that the claimed invention possesses a superior
property or advantage that a person of ordinary skill in the art would have found
surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.1997)
(quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However, the burden rests
with Appellants to establish, inter alia, (1) that the comparisons are to the
disclosure of the closest prior art, and (2) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972).
Thus, the second critical question raised by the Examiner and Appellant is:
Has Appellant demonstrated that the showing in the Specification is directed to a
comparison between the claimed subject matter and the closest prior art and is
reasonably commensurate in scope with the degree of protection sought by claim
36 on appeal? On this record, we answer this question in the negative as well.
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Appeal 2010-003866
Application 10/602,945

10

by Taruya). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[R]esults must be shown to be unexpected compared with the closest prior art.”)
Nor does the showing in the Specification include the differently prepared ferritic
stainless steel compositions containing different proportions of different metals,
including titanium, in addition to chromium, molybdenum, and carbon, embraced
by claim 36 on appeal as indicated by the Examiner. See, e.g., 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, 571 F.2d
1185, 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)). The need for the claims to be commensurate in scope
with the showing is particularly compelling in this case since it is not clear from
the showing whether the alleged improvements are due to the claimed novel
feature or unclaimed features such as different proportions of carbon, manganese,
phosphorus, sulfur, silica, chromium, nickel, molybdenum, aluminum, cerium,
lanthanum, zirconium, and nitrogen in the ferritic stainless steels compared.
Accordingly, based on the totality of record, including due consideration of
the arguments and evidence relied upon by Appellant in the Appeal Brief and
Reply Brief, we determine that the preponderance of evidence weighs most heavily
in favor of obviousness of the subject matter recited in claims 36 through 40, 42,
and 43 within the meaning of 35 U.S.C. § 103.

Appeal 2010-003866
Application 10/602,945

11

ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 36 through 40,
42, and 43 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures
of Simpkins and Taruya, as evidenced by Woods is AFFIRMED; and

FURTHER ORDERED that 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

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