10936239 (B.P.A.I. Jan. 6, 2012)

Ex Parte LI et al

Board of Patent Appeals and InterferencesJan 6, 2012

10936239 (B.P.A.I. Jan. 6, 2012)

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. 10/936,239 09/08/2004 Huaxin Li 60,130-2154; 04ARM0129 9727 26096 7590 01/06/2012 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 01/06/2012 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 HUAXIN LI and SILVIO M. YAMADA ____________________ Appeal 2010-004880 Application 10/936,239 Technology Center 1700 ____________________ Before CHARLES F. WARREN, TERRY J. OWENS, and CATHERINE Q. TIMM, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-12, and 14-39. We have jurisdiction under 35 U.S.C. § 6(b). Appellants request review of the Examiner’s rejection of claims 1-12, and 14-29 under 35 U.S.C. § 103(a) as unpatentable over Maeda1 in view of 1 Maeda et al., US 5,595,610, patented Jan. 21, 1997. Appeal 2010-004880 Application 10/936,239 2 ASM Handbook2; claim 30 over Maeda, ASM Handbook, and further Donazzi3; and claims 31-39 over Maeda, ASM Handbook, and further Shepeljakovskij4 (Br. 3). Appellants do not present any arguments against the provisional nonstatutory obviousness double patenting rejections maintained by the Examiner (Compare Office Action of Nov. 30, 2007 at 2 and Office Comm. of Aug. 26, 2008 with Br. 3). We reverse with respect to the rejections under 35 U.S.C. § 103(a), but because Appellants do not dispute the propriety of the provisional obviousness double patenting rejections, we summarily affirm with respect to those rejections. The invention relates to a method of carbonitriding a low manganese content and medium carbon content steel that is more cost-effective and improves residual stress, bending fatigue, and surface characteristics for driveline components (Spec. ¶ [0001]). Claim 1 is illustrative: 1. A method for processing low manganese steel comprising the steps of: carbonitriding the low manganese steel having a composition comprising about 0.3 - 0.75 wt% of carbon, about 0.15 – 0.40 wt% of manganese, and a balance of iron at temperatures from about 1600° F to 1750°F for a time period of about three hours to six hours. (Claims App. at Br. 8.) 2 Cited by the Examiner as ASM Handbook, Vol. 4, Heat Treating, Fig. 1, p. 377/Carbonitriding Mar. 1990 (Ans. 3). 3 Donazzi et al., US 2003/0168230 A1, pub. Sep. 11, 2003. 4 Shepeljakovskij et al., RU 2158320, pub. Oct. 27, 2000, as evidenced by the English abstract of record. Appeal 2010-004880 Application 10/936,239 3 All of the claims require that the steel contain about 0.3 – 0.75 wt% carbon and about 0.15 – 0.40 wt% manganese (Claims 1 and 37). The Examiner finds, based upon Tables 1 and 2 of Maeda, that Maeda discloses low manganese steel comprising by weight 0.02-0.39% carbon and 0.20-2.50% manganese, ranges that overlap the claimed ranges (Ans. 3). However, Tables 1 and 2 do not, in fact, describe such ranges (Maeda, Tables 1 and 2 at col. 8). Tables 1 and 2 disclose discrete steel compositions, some of which are inventive examples and some of which are comparative examples (Maeda, Tables 1 and 2). As pointed out by Appellants, Maeda does not teach any steel compositions containing carbon and manganese in the claimed ranges (Br. 4; see Maeda, generally). Maeda, in fact, is directed to treating steel of lower than claimed carbon content, i.e., 0.03-0.27% (Maeda, col. 2, ll. 25-34; col. 3, ll. 38-59). As pointed out by Appellants, Maeda specifically teaches that levels of carbon above 0.27% adversely affect machinability, and cold forgeability (Br. 4; Maeda, col. 3, ll. 38-45). Further, Maeda does not teach weight percent ranges for the ingredients of the comparative steels, and the Examiner has not established that one of ordinary skill in the art would have formed a genus of weight percent ranges for ingredients of steel from both the inventive and comparative steel examples in Maeda Tables 1 and 2. The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time invention was made to apply the claimed ranges within the disclosed ranges of Maeda et al. ('610) with expected success, because Maeda et al. ('610) disclose the same utility over the entire Appeal 2010-004880 Application 10/936,239 4 disclosed ranges.” (Ans. 4.) But this conclusion is based upon the erroneous finding that Maeda discloses an overlapping range of carbon content. Given that Maeda does not, in fact, disclose such an overlapping range, we cannot say that the evidence supports the Examiner’s finding of utility over that non-existent range. Maeda only discloses utility for a lower range of carbon. Under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. In re Fine, 837 F.2d 1071, 1073-74 (Fed. Cir. 1988). Moreover, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In the present case, the required factual basis and rational underpinning for the rejection is lacking. All of the rejections under 35 U.S.C. § 103(a) contain the defect discussed above. Therefore, we do not sustain the § 103(a) rejections. While we reverse with respect to the prior art rejections, we summarily affirm with respect to the provisional obviousness double patenting rejections. Therefore, the Examiner’s decision is affirmed. TIME PERIOD FOR RESPONSE 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 Appeal 2010-004880 Application 10/936,239 5 cam