Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardJan 22, 201812439579 (P.T.A.B. Jan. 22, 2018) Copy Citation 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. 12/439,579 05/12/2009 Qiyang Liu 043153-9141-US00 5190 23409 7590 01/24/2018 MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN AVENUE Suite 3300 MILWAUKEE, WI 53202 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte QIYANG LIU, WAYNE RENSHAW, and JOE WILLIAMS1 Appeal 2017-003627 Application 12/439,579 Technology Center 1700 Before BRADLEY R. GARRIS, JULIA HEANEY, and JANE E. INGLESE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1—4, 10, 12-18, and 26-28 as unpatentable over Maki (JP2001-316791, published Nov. 16, 2001, as translated) and of claim 11 as unpatentable over Maki in view of McDevitt (US 6,689,489 B2, issued Feb. 10, 2004). We have jurisdiction under 35 U.S.C. § 6. 1 Bluescope Steel Limited is identified as the real party in interest. App. Br. 3. Appeal 2017-003627 Application 12/439,579 We AFFIRM. Appellants claim a steel strip having a coating of a metal alloy produced by passing the steel strip through a molten bath of the metal alloy wherein the molten bath contains specified concentrations of aluminum, zinc, silicon, and magnesium as the major elements and further contains strontium and/or calcium (independent claims 1 and 27) or further contains strontium and optionally calcium (independent claim 28). The alloy may be a titanium diboride-modified alloy (dependent claim 11). A copy of representative claim 1, taken from the Claims Appendix filed May 26, 2016 in response to a Notice of Defective Appeal Brief, appears below. 1. A steel strip having a coating of a metal alloy on at least one surface of the strip produced by passing the steel strip through a molten bath of the metal alloy, wherein the molten bath of the metal alloy contains aluminium, zinc, silicon, and magnesium as the major elements and also contains strontium and/or calcium and unavoidable impurities and optionally other elements that are present as deliberate alloying elements, and wherein the concentration of aluminium is 40 to 60 wt.%, the concentration of zinc is 40 to 60 wt.%, the concentration of silicon is 0.3 to 3 wt.%, the concentration of magnesium is at least 1 wt.% and less than 3 wt.% and the concentration of (i) strontium or (ii) calcium or (iii) strontium and calcium together is greater than 50ppm. Appellants’ arguments are directed specifically to independent claims 1, 27, and 28 and to dependent claim 11 (App. Br. 4-12). Because dependent claims 2—4, 10, 12-18, and 26 have not been specifically argued separately, they will stand or fall with their parent independent claim 1. 2 Appeal 2017-003627 Application 12/439,579 We sustain the Examiner’s § 103 rejections for the reasons given in the Final Office Action, the Answer, and below. The Examiner determines that the independent claims are product-by process claims whose patentability is based on the product itself rather than its method of production (Final Action 2), and Appellants do not contend otherwise (see generally App. Br.). The Examiner further determines that Maki teaches or would have suggested a steel strip coated with a metal alloy that is indistinguishable from the metal alloy-coated steel strip of the independent claims (Final Action 2—4). Appellants point out that Maki’s compositions and concentrations relate to the metal alloy coating rather than a molten bath of the metal alloy as recited in the independent claims (App. Br. 6). Appellants challenge the independent claim rejection on the premise that “it is not possible to predict with any certainty what the molten bath compositions in Maki would include, based on the information provided in Maki regarding the compositions of its plating layers” {id.). The pivotal issue raised by this rejection is whether Appellants’ claimed product patentably distinguishes over Maki’s product. In responding to Appellants’ above challenge, the Examiner states that Appellants fail to carry their burden of presenting argument with evidence establishing such a distinction (Ans. 11). We emphasize that Appellants do not contest the Examiner’s statement in the record of this appeal (i.e., no Reply Brief has been filed). There is no dispute that Maki discloses a magnesium range of 1 to 15% but prefers 3 to 9% (Maki 10) or that Maki discloses adding to the alloy other alkaline earth elements generally (i.e., in addition to magnesium) but prefers calcium {id. ^11). 3 Appeal 2017-003627 Application 12/439,579 Appellants argue that these preferences of Maki teach away from the less than 3 wt.% magnesium range of independent claims 1, 27, and 28 (see, e.g., App. Br. 10) and teach away from the strontium alkaline earth metal of independent claim 28 (id. at 11). In rebuttal, the Examiner correctly points out that these preferences do not constitute a teaching away because Maki does not criticize, discredit, or otherwise discourage using less than 3 wt.% magnesium or using strontium as an alkaline earth metal (Ans. 13,17). As above, we again emphasize that Appellants do not disagree with the Examiner’s point in the record of this appeal. Appellants also contend the Liu Declaration2 of record under 37 C.F.R. § 1.132 establishes that the less than 3 wt.% magnesium range of their independent claims is critical and yields unexpected results via experiments showing that magnesium concentrations above 3 wt.% do not further improve corrosion resistance and lead to mottling and cracking problems (App. Br. 8-10). In response, the Examiner observes that the Liu Declaration merely evinces that magnesium concentrations at or above 3 wt.% exhibit the same corrosion resistance as concentrations somewhat less than 3 wt.% (Ans. 15). That is, the Declaration does not show any difference at all in corrosion resistance between the magnesium concentrations of the independent claims and those preferred by Maki. Appellants do not explain why the absence of a difference in corrosion resistance should be considered a critical or unexpected result that evinces nonobviousness. In addition, the Declaration 2 Declaration of Qiyang Liu, dated Sept. 13, 2012. 4 Appeal 2017-003627 Application 12/439,579 experiments referred to by Appellants involve metal alloys having specific element concentrations (see, e.g., Decl. ^ 5 involving 55%Al-1.5%Si-Zn alloy) whereas the independent claims are not so limited. Appellants fail to explain why such Declaration evidence is thought to be reasonably commensurate in scope with their claims. For the above-stated reasons and those given by the Examiner, the arguments and evidence of record, on balance, weigh most heavily in favor of an ultimate conclusion of obviousness with respect to the metal alloy- coated steel strip product required by independent claims 1, 27, and 28. In rejecting claim 11 over Maki and McDevitt, the Examiner concludes that it would have been obvious to provide Maki’s metal alloy coating with titanium diboride, thereby achieving the claimed titanium diboride-modified alloy, in view of McDevitt’s teaching that adding titanium boride to an aluminum-zinc alloy yields benefits such as reduced spangle facet size (Final Action 6-7). Appellants acknowledge that McDevitt teaches an alloy containing aluminum, zinc, and silicon but argue that McDevitt contains no suggestion regarding their other claimed elements of magnesium, calcium or strontium (App. Br. 12). According to Appellants, “[i]t would not have been predictable to a person of ordinary skill in the art at the time of the invention that adding titanium boride to the metal alloy of Maki would produce the same or even similar properties” (id.). The Examiner responds by finding that “McDevitt explicitly allows for variations of aluminum-zinc alloy compositions” (Ans. 18 (citing McDevitt col. 4,11. 42^49)). Particularly in light of this undisputed finding, we agree with the Examiner that “there is no indication that the teaching of McDevitt would not have resulted in the improvement taught therein within 5 Appeal 2017-003627 Application 12/439,579 the product of Maki” {id.). For this reason, Appellants fail to show error in the rejection of claim 11 over Maki and McDevitt. DECISION The decision of the Examiner rejecting claims 1—4, 10-18, and 26-28 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation