Ex Parte Hallberg et al

Patent Trial and Appeal Board

Nov 30, 2018

14118540 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/118,540
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
FILING DATE FIRST NAMED INVENTOR
09/11/2014 Joakim Hallberg
12/04/2018
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.
2011P00596WOUS 5274
EXAMINER
SU,XIAOWEI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
ipr@skf.com
mark.ussai@skf.com
bryan. peckj ian @skf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOAKIM HALLBERG, THORE LUND, KARIN RYDEN, and
INGEMAR STRANDELL
Appeal 2018-001913
Application 14/118,540
Technology Center 1700
Before LINDA M. GAUDETTE, MERRELL C. CASHION, Jr., and
JANEE. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Nov. 18, 2013 ("Spec."); Final Office Action dated Jan. 12, 2017 ("Final"); Appeal
Brief filed July 11, 2017 ("Appeal Br."); Examiner's Answer dated Oct. 12, 2017
("Ans."); and Reply Brief filed Dec. 12, 2017 ("Reply Br.").
Appeal 2018-001913
Application 14/118,540
Appellants2 appeal under 35 U.S.C. § I34(a) from the Examiner's decision
finally rejecting claims 1-8, 11-13, and 15-23 under 35 U.S.C. § I03(a) as
unpatentable over Sherif (US 2011/0052442 Al, pub. Mar. 3, 2011). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a bearing steel that is said to have improved fatigue
strength as compared to prior art bearing steels. Spec. 1 :20-21. Claim 1, the sole
independent claim on appeal, is reproduced below.
1. A bearing steel comprising:
at least 0.6 percent by weight of carbon,
0.003 to 0.007 percent by weight of phosphorous,
0 to 2.5 percent by weight of silicon,
0 to 2 percent by weight of manganese,
0 to 0.02 percent by weight of sulphur,
0 to 3 percent by weight of chromium,
0 to 1 percent by weight of nickel,
0 to 1 percent by weight of molybdenum,
0 to 1 percent by weight of vanadium (V), and
0.01 to 0.050 percent by weight of aluminium,
the balance being one of iron, or iron and impurities,
wherein at least 50 percent of the bearing steel has a
bainitic structure.
Appeal Br. 9 (Claims Appendix).
The Examiner finds, and Appellants concede, that Sherif discloses a bearing
steel comprising the same components in amounts overlapping those recited in
2 Appellants identify Aktiebolaget SKF as the real party in interest. Appeal Br. 1.
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Appeal 2018-001913
Application 14/118,540
claim 1. Final 5; Appeal Br. 2. A table comparing the claim 1 and Sherif bearing
steels is reproduced below from page 5 of the Final Office Action.
Element Claim 1 Sherif Overlap
(weight %) {weight %) {weight %)
C 2 0.6 0.5 - 1.2 0.6 - 1.2
P 0.003 - 0.007 0 - 0. ·1 : 0.003 - 0.007 :
···························si·························· ···················· o· ... 2.s···················· ···················o.1s·• ... ·2··················;··················0.12·• ... ·2··················1
.................................................................................................................... ··························································+··························································,
Mn 0-2 0.25-2 ! 0.25-2 ! .............................................................................................................................................................................. + .......................................................... ,
S 0~0.02 O~O.'l ! 0~0.02 ! ~. ~
•""r· o - 3· ri .SFi - 3 ! ri .si; - ~ !
...................................................... ~ ...................................................................................................... -........................................................................................................ V- .. -.. - ...................................................... ~ .................................. V- .. -....................... .a...J .................................. ~
Ni Q ... ·1 Q .... Q.5 ) Q .... Q.5 )
Mo Q,..1 0----0.6 0----0.6
V O .... 1 0 .... 0.2 , 0 ... 0.2 ,
............................................................................................................................................................................. l ........................................................ l
AJ 0.01 ~ 0.050 0 ~ 2 ! 0.01 ~ 0.050 !
.......................................................................................................................................................................... w l .-.................................................. ___ . l
.......... Fe.+ _ lmpurities ........................... Balance .................................... Balance ................ l ................. Balance ................ l
The table above provides a comparison of the components in the claim 1 and
Sherif bearing steels, and identifies the overlap in weight percentages of the
components.
Appellants argue the Specification provides evidence that the claimed
phosphorous range of 0.003--0.007 wt% achieves unexpected results relative to the
prior art range of 0--0.1 wt%. See Appeal Br. 3--6. We have considered the
evidence in the Specification and Appellants' arguments in support of
patentability, but concur in the Examiner's determination that a preponderance of
the evidence favors a conclusion that claim 1 would have been obvious over Sherif
for the reasons discussed in the Final Office Action and the Answer. See Final 4--8;
Ans. 2-9.
Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims. This does not mean that
an applicant is required to test every embodiment within the scope of
his or her claims. If an applicant demonstrates that an embodiment
has an unexpected result and provides an adequate basis to support the
conclusion that other embodiments falling within the claim will
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Appeal 2018-001913
Application 14/118,540
behave in the same manner, this will generally establish that the
evidence is commensurate with scope of the claims.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (internal citations omitted).
The Specification describes testing of a single bearing steel composition
containing phosphorous in an amount that falls within the scope of claim 1
(Sample B, 0.005 wt% P) and a single bearing steel composition containing
phosphorous in an amount falling outside the scope of claim 1 (Sample A, 0.014
wt% P). See Spec. 8:15-9:26. According to the Specification, the results of rotating
beam fatigue tests and stair case tests demonstrated the median life of the Sample
B steel was five times higher than that of the Sample A steel. Spec. 9: 10-16.
Appellants argue "a person of ordinary skill in the art would understand a single
sample (0.005 wt% P) that falls squarely within the narrow claimed range (0.003-
0.007 wt% P) is sufficient to demonstrate the remarkably improved result of the
relatively narrow range of phosphorus." Appeal Br. 6.
We have considered Appellants' arguments, but agree with the Examiner
that the testing described in the Specification is not persuasive evidence of
unexpected results because it is not commensurate in scope with claim 1.
As indicated by the Examiner, the only comparative example, i.e., the
Sample A steel, has a phosphorus content that is twice the upper limit recited in
claim 1. Ans. 5. The record is devoid of persuasive evidence showing that the
alleged unexpected improvement in fatigue strength would not have been achieved
where phosphorus content was just outside the upper limit of 0.007 wt%. See 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."). Moreover, the Specification
suggests the lower limit of 0.003 wt% is not critical in achieving improved fatigue
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Appeal 2018-001913
Application 14/118,540
strength. See Spec. 2:25-26 ("Phosphorous levels below 0.003 percent by weight
may be difficult and costly to produce .... ").
As also explained by the Examiner, phosphorous is not the only component
that affects fatigue strength of a bearing steel composition. See Ans. 5, 8. The
Specification discloses that "[ t ]he combination of relatively high levels of carbon,
low levels of phosphorous, relatively high levels of Mo, and/or relatively high
levels of sulphur, according to relevant embodiments of the invention, results in
bearing steel with high fatigue strength of the bearings." Spec. 4:23-27. The
amount of molybdenum in the Sample B steel is higher than that of the Sample A
steel and the amount of sulphur in Sample B steel is more than twice that of the
Sample A steel. See Spec. 9, Table 1. Appellants have not shown persuasively that
one of ordinary skill in the art would have attributed the improvement in fatigue
strength to the lower phosphorus content rather than the higher sulphur and/or
molybdenum contents in the Sample B steel as compared to the Sample A steel.
Moreover, there is no evidence that the alleged unexpected results would have
been achieved if the amounts of other components affecting fatigue strength-such
as carbon, molybdenum, and sulphur-were present at the upper or lower ends of
the claimed ranges. In this regard, we note that claim 1, as broadly drafted, requires
only carbon, iron, 3 phosphorous, and aluminum, and does not recite an upper limit
for the amount of carbon present in the composition. Claim 1 supra p. 2; see also
Spec. 6: 15-16 ("The optional other alloying element( s) may be selected from the
group comprising Si, Mn, S, Cr, Ni, Mo, V, and Al, or combinations thereof.").
3 Steel: "1. A generally hard, strong, durable, malleable alloy of iron and carbon ..
. . " Steel Definition, The American Heritage Dictionary,
https://www.ahdictionary.com/word/search.htm1?g=stee1 (last visited Nov. 27,
2018).
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Appeal 2018-001913
Application 14/118,540
In sum, we agree with the Examiner that Appellants have not provided an
adequate basis to support a conclusion that other embodiments falling within the
scope of claim 1 would have been expected to behave in the same manner as the
Sample B steel. Therefore, because Appellants' testing is not commensurate in
scope with claim 1, it is not persuasive evidence of unexpected results in the
claimed bearing steel.
Appellants present separate arguments in support of patentability of
( 1) dependent claims 2 and 21, which recite narrower ranges for the phosphorous
content of the bearing steel, and (2) dependent claims 5, 8, 15, and 20, which recite
narrower ranges for the sulphur content of the bearing steel. Appeal Br. 7-8.
Appellants' arguments are based on the same testing of the Sample A and Sample
B steels, and are unpersuasive for the reasons discussed above and in the Answer.
See Ans. 9-11.
Accordingly, because Appellants have not identified reversible error in the
Examiner's conclusion of obviousness, we sustain the rejection of claims 1-8, 11-
13, and 15-23 under 35 U.S.C. § 103(a) as unpatentable over Sherif.
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 )(iv).
AFFIRMED
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