Ex Parte Igarashi et al

Patent Trial and Appeal Board

Dec 13, 2013

11643823 (P.T.A.B. Dec. 13, 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.
11/643,823 12/22/2006 Masaaki Igarashi 12049-0042 3168
22902 7590 12/13/2013
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
12/13/2013 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 MASAAKI IGARASHI,
KAZUHIRO SHIMODA, TOMIO YAMAKAWA,
and HISASHI AMAYA
____________

Appeal 2012-009792
Application 11/643,823
Technology Center 1700
____________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 21-23 and 37. We
have jurisdiction under 35 U.S.C. § 6(b). Claim 37 is illustrative:

Appeal 2012-009792
Application 11/643,823

2

Appeal 2012-009792
Application 11/643,823

3
The Examiner relies upon the following references as evidence of
obviousness:
Moroishi et al. (Moroishi) GB 2 105 368 A Mar. 23, 1983
Plyatskovskii et al.(Plyatskovskii), "Efficiency of Tapered-Roll Piercing and
a Piercing-Press – Elongator Combination on Units with Pilger Mills", All-
Union Scientific-Research Institute of Pipes (VNITI), Taganroig
Metallurgical Plant (Translated from Metallurg.), No. 1, pp. 3-32 (Jan. 1985).

Appellants' claimed invention is directed to a method of making an Fe-
Ni alloy pipe stock by using a Mannesmann piercing and rolling mill on a
billet comprising the recited elements. The composition of the alloy must
conform to three recited equations (1), (2), and (3), and piercing and rolling is
conducted in accordance with recited equation (4). According to Appellants,
piercing and rolling of the type of alloys claimed, comprising high contents
of both Cr and Ni, and also containing Mo and W in large quantities
exceeding 1.5 %, has not been done before (Prin. Br. 6, second para., and
Spec, [0017]-[0018]). We are told that "as shown in Table 6 of the
specification, Fe-Ni alloy pipe stocks being excellent in surface property with
no cracks and only small flaws can be manufactured by adopting the present
invention" (Prin. Br. 7, last sentence).
Appealed claims 21-23 and 27 stand rejected under 35 U.S.C. § 103 (a)
as being unpatentable over the combined teachings of GB '368 and
Plyatskovskii.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with Appellants that the
Examiner's rejection is not sustainable.
Appeal 2012-009792
Application 11/643,823

4
While we appreciate the Examiner's thorough analyses of the prior art,
we concur with Appellants that the evidence of nonobviousness of record
outweighs the evidence of obviousness. GB '368 does not exemplify any
alloy compositions that fall within the scope of the appealed claims although
the reference discloses ranges for the claimed elements that overlap the
recited ranges. While the Examiner provides a table at page 7 of the Answer
which demonstrates that particular examples of GB '368 fulfill recited
Equations (1), (2), and (3), Appellants correctly point out that these examples
do not meet other compositional requirements of the claimed invention.
Furthermore, while it may have been obvious for one of ordinary skill
in the art to pick and choose within the ranges of elements disclosed by GB
'368 to formulate an alloy that falls within the scope of the appealed claims,
the reference provides no teaching or suggestion of making pipe stock by
piercing and rolling a billet of the alloy by use of a Mannesmann piercing and
rolling mill. GB '368 discloses an extrusion process for forming pipe stock.
The Examiner cites Plyatskovskii for the obviousness of using
Mannesmann piercing and rolling on the alloy of GB '368. However, as
emphasized by Appellants, Plyatskovskii does not teach or suggest a piercing
and rolling process that meets the requirements of recited equation (4). To
the extent it is the Examiner's position that formulating an alloy by selecting
elements within the ranges disclosed by GB '368 and subjecting such alloys
to a Mannesmann piercing and rolling mill will inherently produce a value
that conforms to claimed equation in (4), Table 5 of the present invention
demonstrates that claimed equation (4) is not always satisfied and is
Appeal 2012-009792
Application 11/643,823

5
composition and pipe expansion ratio dependent (see Prin. Br. 5, second
para.).
In summation, GB '368 provides no direction for formulating an alloy
comprising elements in amounts within the claimed ranges and satisfying
equations (1), (2), and (3), and provides no teaching or suggestion of
processing the alloy using a Mannesmann piercing and rolling mill, and
Plyatskovskii provides no teaching or suggestion of conducting the piercing
and rolling mill operation such that it conforms to claimed equation (4).
Consequently, there is insufficient prior art evidence of record to establish the
obviousness of the claimed subject matter.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is reversed.

REVERSED

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