Ex Parte Mannan

Patent Trial and Appeal Board

Sep 30, 2016

13492951 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/492,951 06/11/2012
110407 7590 10/04/2016
Burris Law, PLLC
300 River Place Drive, Suite 1775
Detroit, MI 48207
FIRST NAMED INVENTOR
Sarwan K. Mannan
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.
4107-114504 6879
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
docketing@burrisiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARWAN K. MANNAN
Appeal2015-005425
Application 13/492,951
Technology Center 1700
Before MARK NAGUMO, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals the Examiner's rejection of claims 15-32.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Huntington Alloys Corporation as the Real Party in
Interest. App. Br. 3.
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Application 13/492,951
The Claimed Invention
Appellant's disclosure relates to a process for manufacturing high
strength, corrosion-resistant metal alloy tubing that is said to be particularly
useful in corrosive oil and gas well environments. Spec. i-f 1; Abstract. The
steps of the claimed process include: "extruding the alloy to form a tubing;
cold working the extruded tubing; annealing the cold worked tubing; and
applying at least one age hardening step to the annealed tubing." Spec. i-f 19.
Claim 15 is representative of the claims on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 23):
15. A process for manufacturing a high strength corrosion-
resistant tubing comprising the steps of:
extruding an alloy to form a tubing, the alloy comprising in
percent by weight: about 35-55% Ni, about 12 to about 25% Cr,
about 0.5 to about 5% Mo, up to about 3% Cu, about 2.1 to
about 4.5% Nb, about 0.5 to about 3% Ti, about 0.05 to about
1.0% Al, about 0.005 to about 0.04% C, balance Fe plus
incidental impurities and deoxidizers and wherein the
composition of the alloy satisfies the equation:
G...Jb - 7.75 C) =about 0.5 to about 9
(Al+ Ti)
cold working the extruded tubing;
annealing the cold worked tubing; and
applying at least one age hardening step to the annealed
tubing.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Smith, Jr. et al., US 4,358,511 Nov. 9, 1982
(hereinafter "Smith, Jr.")
Ogawa US 2003/0196734 Al Oct. 23, 2003
Fang et al. CN101538684 (A) Sept. 23, 2009
(hereinafter "Fang")
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The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 15-23 and 30-32 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ogawa in view of Smith, Jr.
Ans. 2.
2. Claims 24--29 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ogawa in view of Smith, Jr. and Fang. Ans. 4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer to the Appeal Brief dated
February 26, 2015, and the Non-Final Office Action dated June 13, 2014,
which we adopt as our own. Nevertheless, we highlight and address specific
findirnrn and arn:uments for emnhasis as follows . .__, .__, '"
Rejection 1
In response to this rejection, Appellant presents arguments for the
separate patentability of only claims 15, 16, and 32. We, therefore, limit our
discussion to claims 15, 16, and 32, and the remaining claims stand or fall
with these claims. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 15
The Examiner finds that the combination of Ogawa and Smith, Jr.
suggests all of the limitations of claim 15 and would have rendered claim 15
obvious. Ans. 2, 3. The Examiner finds that Ogawa discloses certain of
claim 15 's limitations, but that it does not "expressly teach the claimed
composition, nor teach the claimed age hardening steps or additional
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annealing step before cold working." Id. at 2 (citing Ogawa, Abstract, i-fi-17,
35-37, Examples 1-2). The Examiner, however, relies on Smith, Jr. for
disclosing these missing limitations. Id. In particular, the Examiner finds
that Smith, Jr. teaches "a Cr-high Ni-high C alloy steel for tubing with a
composition" which reads on the claimed composition, and that "the alloy
steel can be subjected to annealing before cold working and age hardening to
provide high strength, high corrosion resistance and ductility for tubing." Id.
at 2, 3 (citing Smith, Jr., col. 3, 11. 21-34, claim 1, Abstract, col. 3, 1. 5---col.
4, 1. 45).
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of invention
to incorporate the alloy steel composition and annealing before cold working
and age hardening steps of Smith, Jr. into the process of Ogawa in order to
obtain a tubing with high strength, high corrosion resistance and ductility as
taught by Smith, Jr. Ans. 3 (citing Smith, Jr., Abstract, col. 3, 1. 5---col. 4, 1.
45).
Appellant argues that the Examiner's rejection of claim 15 should be
reversed because Ogawa and Smith, Jr., alone or in combination, do not
teach or suggest "(i) the specifically claimed composition, (ii) a cold
working step before an annealing step, and (iii) an age hardening step after
the annealing step" as required by the claim. App. Br. 10. Appellant further
argues that the Examiner's obviousness conclusion is not "based on a fair
understanding of the entire teachings of Ogawa and Smith" and that the
"Examiner has not considered the prior art references as a whole." Id. at 11,
13, 14.
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We do not find Appellant's arguments persuasive. Based on the
record before us, the Examiner's finding that the combination of Ogawa and
Smith, Jr. suggests all of claim 15' s limitations, including the alloy
composition, cold working, annealing, and age hardening steps as recited in
the claim, is supported by a preponderance of the evidence and based on
sound technical reasoning. Ogawa, Abstract, i-fi-17, 35-37, Examples 1-2;
Smith, Jr., col. 3, 11. 21-34, claim 1, Abstract, col. 3, 1. 5---col. 4, 1. 45.
As the Examiner found (Ans. 2, 3), Smith, Jr. discloses an alloy steel
composition which includes each of the claimed elements and overlaps with
the claimed composition in the amounts of Ni, Cr, Mo, Cu, Nb, Ti, Al, C,
and Fe. Smith, Jr., col. 3, 11. 21-34, claim 1. Regarding the cold working
and age hardening steps, as the Examiner further found (Ans. 6), Ogawa
teaches employing a cold working step after extrusion (Ogawa, Abstract, i-fi-1
3 5-3 7, 40, Example 1 ), and Smith, Jr. teaches that the alloy steel can be
subjected to annealing before cold working and age hardening to provide
high strength, high corrosion resistance and ductility for tubing (Smith, Jr.,
Abstract, col. 3, 11. 5-17, 35--45, col. 4, 11. 1-7, 17-23). We discern no
reversible error in the Examiner's analysis and factual findings in this
regard.
We also concur with the Examiner's conclusion and reasoning for
why one of ordinary skill in the art would have been motivated to combine
Ogawa's and Smith, Jr. 's teachings to arrive at Appellant's claimed
invention. See Ans. 6, 7 (explaining that it would been obvious to
"incorporate the all[ o ]y steel composition and age hardening steps of Smith,
Jr .... into the process of Ogawa, in order to obtain a tubing with high
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strength, high corrosion resistance and ductility as taught by Smith, Jr."); see
also Smith, Jr., Abstract, col. 3, 11. 5-17, col. 3, 1. 36-col. 4, 1. 7.
Appellant does not direct us to sufficient evidence or provide an
adequate technical explanation as to why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some
reversible error. Appellant's disagreement with the Examiner's reason for
combining the references, without more, is insufficient to establish
reversible error in this regard. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
420 (2007) (explaining that any need or problem known in the art can
provide a reason for combining the elements in the manner claimed).
Appellant's conclusory arguments that Examiner's findings are not
"based on a fair understanding of the entire teachings of Ogawa and Smith"
and that the "Examiner has not considered the prior art references as a
whole" (App. Br. 11, 13), without more, are insufficient to adequately rebut
or otherwise establish reversible error in the Examiner's conclusion and
factual findings in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).
Appellant argues that because Ogawa and Smith, Jr. solve different
problems, "the purpose of the invention of Ogawa ... does not apply to the
invention of Smith" and the "Examiner's proposed combination of Smith
and Ogawa changes the principle of operation of the invention of Ogawa."
App. Br. 13.
We are not persuaded by Appellant's argument. For one thing, the
Supreme Court has stated that it is error to "look only to the problem the
patentee [or applicant] was trying to solve." KSR, 550 U.S. at 420.
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Appellant's argument is unpersuasive because it too narrowly characterizes
the scope ofOgawa's and Smith, Jr.'s disclosures, including the applicable
fields of endeavor and pertinence of the problems addressed to the problem
in which the invention is involved. See In re Bigio, 381F.3d1320, 1325
(Fed. Cir. 2004).
As the Examiner points out (Ans. 7, 8), Ogawa and Smith, Jr. each
relates to and discloses high Cr-high Ni-high C alloy steels with Cr content
not less 15 wt.% and Ni content not less than 20 wt.% and for use in
seamless steel tubing. See Ogawa, Abstract (disclosing a "method for
manufacturing a seamless steel tube, wherein a tubing material for the
seamless steel tube is produced"); Smith, Jr., Abstract (disclosing alloy steel
composition with properties "particularly useful ... in oil well tubing"), col.
3, 11. 15-17, 21-34, claim 1; see also Specification i-f 9 ("The present
invention solves the problems encountered in the prior art by providing a
tubing ... for use in oil and gas completion and drilling applications.")
As noted by the Examiner (Ans. 8), Appellant also does not identify
or direct us to sufficient evidence to show or suggest that incorporating
Smith, Jr.' s alloy steel composition and age hardening steps in the manner as
found by the Examiner would have upset the process of Ogawa. Appellant's
conclusory argument that the "Examiner's proposed combination of Smith
and Ogawa changes the principle of operation of the invention of Ogawa"
(App. Br. 13), without more, is unpersuasive and insufficient rebut the
Examiner's findings in this regard. De Blauwe, 736 F.2d at 705.
Unexpected Results
Appellant argues that claim 15 is non-obvious because it yields
unexpected results. App. Br. 18. In particular, Appellant argues that:
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Id.
the evidence of non-obviousness disclosed in the originally filed
application, along with the Declaration of Sarwan Mannan dated
October 3, 2013 establish that the invention of claims 15 and 24
have improved results that would not have been expected based
on the disclosures of Ogawa and Smith.
We are not persuaded by this argument. In attempting to overcome a
prima facie case of obviousness by showing unexpected results, the burden
rests with Appellant to establish: (1) that there actually is a difference
between the results obtained through the claimed invention and those of the
prior art and (2) that the difference actually obtained would not have been
expected by one skilled in the art at the time of the invention. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re
Klosak, 455 F .2d 1077, 1080 (CCP A 1972) ("the burden of showing
unexpected results rests on he who asserts them").
Appellant has failed to satisfy the requisite burden. Appellant does
not identify sufficient evidence to show that there actually is a difference
between the results obtained through the claimed invention and those of the
closest prior art. The experimental results and the examples from the
Specification that Appellant references at pages 18-21 of the Appeal Brief
and relies upon for showing unexpected results are neither representative of
the teachings of the closest prior art nor commensurate with the scope of the
claims. As noted by the Examiner (Ans. 10), the scope of claim 10 is
broader than and "not limited to any specific alloys in the specification
and/ or [Mannan] Declaration."
Moreover, Appellant does not identify sufficient evidence that the
difference actually obtained would not have been expected by one skilled in
the art at the time of the invention. As the Examiner correctly points out
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(Ans. 9), Appellant does not adequately explain or provide data sufficient to
show: (1) how the alloy steel tubing of the comparative examples "CE 1,
CE2, CE3, CE4, and CE5" (App. Br. 18) represent the closest prior art alloy
steel tubing of Smith, Jr. or (2) how Smith, Jr.' s prior art tubing would have
performed or been expected to perform by one skilled in the art if subject to
the same testing used for the alleged "inventive" and "comparative"
examples described in the Appeal Brief and Declaration of Sarwan Mannan.
As the Examiner also correctly points out (Ans. 9, 10), the examples
described in the Specification "have different compositions ... in terms of
Ni, Fe, [and] Nb" as compared to the alloy steel compositions disclosed in
the prior art.
Claim 16
Claim 16 depends from claim 15 and adds the limitation "wherein the
cold working step is pilgering." App. Br. 23 (Claims App'x). The Examiner
finds that the combination of Ogawa and Smith, Jr. suggests all of claim 16' s
limitations and would have rendered claim 16 obvious. Ans. 3, 4 (citing
Ogawa, Abstract).
Appellant argues that the Examiner's rejection of claim 16 should be
reversed because neither Ogawa nor Smith, Jr. teaches or suggests that "the
pre-annealing cold working step is specified to be pilgering." App. Br. 14.
In particular, Appellant argues that although Ogawa teaches pilgering "after
the annealing step," it does not teach pilgering "before annealing" as
required by the claim, and that Smith, Jr. "fails to remedy the deficiency in
Ogawa." Id. at 14, 15.
We do not find this argument persuasive. Contrary to what Appellant
argues, the combination of Ogawa and Smith, Jr. does disclose claim 16' s
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"pilgering" limitation as claimed. As the Examiner found (Ans. 8), Ogawa
explicitly teaches "pilgering" as one cold working method that can be
employed in any cold working step. Ogawa, Abstract. Moreover, as
previously discussed above, we concur with the Examiner's conclusion and
reasoning for why one of ordinary skill in the art would have been motivated
to combine Ogawa's and Smith, Jr. 's teachings to arrive at Appellant's
claimed invention. We discern no reversible error in the Examiner's
analysis and findings in this regard.
Claim 32
Claim 32 depends from claim 15 and adds the limitation "wherein the
cold working step is roll forming." App. Br. 25 (Claims App'x). The
Examiner finds that the combination of Ogawa and Smith, Jr. suggests all of
claim 32's limitations and would have rendered claim 32 obvious. Ans. 3, 4
(citing Ogawa, Abstract).
Appellant argues that the Examiner's rejection of claim 32 should be
reversed because neither Ogawa nor Smith, Jr. teaches or suggests that "the
cold working step, which occurs before annealing, is roll forming." App. Br.
17. In particular, Appellant argues that although "Ogawa teaches cold
rolling, ... the cold rolling step occurs after the annealing step of Ogawa"-
and not before the annealing step as claimed. Id. Appellant further argues
that Smith, Jr. "fails to remedy the deficiency of Ogawa." Id.
We are not persuaded by Appellant's argument. Contrary to what
Appellant argues, the combination of Ogawa and Smith, Jr. does disclose
claim 32' s "roll forming" limitation as claimed. As found by the Examiner
(Ans. 9), Ogawa explicitly discloses roll forming as one cold working
method that can be employed in any cold working step. See Ogawa,
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Abstract (disclosing that the alloy steel is "further cold rolled after applying
an appropriate heat treatment, so that a round or an inner grooved steel tube
is obtained").
Moreover, we concur with the Examiner's conclusion (Ans. 9), that
"it would have been obvious to one skilled in the art [at the time of the
invention] to perform roll forming as the first cold working [step] as
claimed," which is supported by a preponderance of the evidence and based
on sound technical reasoning. Appellant's conclusory arguments that
Ogawa does not teach this limitation and that Smith, Jr. "fails to remedy the
deficiency of Ogawa (App. Br. 17), without more, is insufficient to rebut or
establish reversible error in the Examiner's findings and conclusion in this
regard.
Accordingly, we affirm the Examiner's rejection of claims 15-23 and
30-32 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Ogawa and Smith, Jr.
Rejection 2
In response to the Examiner's Rejection 2 stated above, Appellant
presents arguments for the separate patentability of only remaining
independent claim 24. We, therefore, limit our discussion to claim 24, and
the remaining claims stand or fall with claim 24. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 24
Claim 24 recites largely the same limitations as claim 15 and includes
the additional limitation: "wherein the extruding step is performed at a
temperature of about 2050°F or less." App. Br. 24 (Claims App'x).
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The Examiner finds that the combination of Ogawa, Smith, Jr., and
Fang suggests all of claim 24's limitations and would have rendered claim
24 obvious. Ans. 4, 5. The Examiner finds that the combination of Ogawa
and Smith, Jr. suggests all of the limitations of claim 24, but that it does not
"expressly teach the claimed extruding temperature." Id. at 4. The
Examiner, however, relies on Fang for teaching this missing limitation. Id.
at 5. In particular, the Examiner finds that Fang teaches that "an extruding
temperature of 850-1100 °C (1562-2012 °F) is suitable for extruding high
Cr steels to ensure good cold processing properties." Id. at 5 (citing Fang,
Abstract).
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of invention
to have adapted the extruding temperature taught by Fang to arrive at the
claimed invention because the modified process of Ogawa and Smith, Jr.
appreciates any conventional extruding temperature and Fang teaches that an
extruding temperature of 850-1100 °C (1562-2012 °F) is suitable for
extruding high Cr steels to ensure good cold processing properties. Ans. 5
(citing Fang, Abstract).
Appellant argues that the Examiner's rejection of claim 24 should be
reversed because the cited prior art references do not teach or suggest "that
an extruding step is performed at a temperature of about 2050°F or less."
App. Br. 15. In particular, Appellant argues that: (1) the Examiner's finding
that "Ogawa and Smith appreciate any conventional extruding temperature .
. . has no factual support in the record"; (2) "Fang does not teach or suggest
any reason to apply the extrusion temperature of 850-1100°C to the
compositions and methods of Ogawa and Smith"; and (3) "Fang does not
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teach or suggest that applying the extrusion temperature to Ogawa and Smith
would result in good cold processing properties, as alleged by the
Examiner." Id. at 16.
We do not find these arguments persuasive because Appellant
primarily attacks the references individually rather than the collective
teachings of the prior art as a whole. One cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) ("[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
Moreover, considering the record before us and the combined
teachings of the prior art as a whole, the Examiner's finding (Ans. 4, 5) that
the combination of Ogawa, Smith, Jr., and Fang suggests all of claim 24' s
limitations, including that the "extruding step is performed at a temperature
of about 2050°F or less" is supported by a preponderance of the evidence
and based on sound technical reasoning. Ogawa, Abstract, i-fi-17, 35-37,
Examples 1-2; Smith, Jr., col. 3, 11. 21-34, claim 1, Abstract, col. 3, 1. 5---col.
4, 1. 45; Fang, Abstract.
We agree with the Examiner's finding (Ans. 5) Fang teaches that an
extruding temperature of 850-1100 °C (1562-2012 °F) is suitable for
extruding high Cr steels to ensure good cold processing properties and stated
reasoning for why one of ordinary skill in the art would have been motivated
to combine Fang's teachings with modified Ogawa's process to arrive at
Appellant's claimed invention. See Fang, Abstract; see also Ogawa,
Abstract (disclosing it is "preferable that the hot extrusion process is
employed"). Appellant does not direct us to sufficient evidence or provide
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an adequate technical explanation as to why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some
reversible error.
Unexpected Results
Appellant argues that claim 24 yields unexpected results for the same
reasons and based on the same alleged evidence of unexpected results
presented above for claim 15. App. Br. 18. As such, for the same reasons
previously discussed above regarding Appellant's unexpected results
argument for claim 15, we are also not persuaded by Appellant's unexpected
results argument for claim 24.
Accordingly, we affirm the Examiner's rejection of claims 24--29
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of
Ogawa, Smith, Jr., and Fang.
DECISION/ORDER
The Examiner's rejections of claims 15-32 are affirmed.
It is ordered that the Examiner's decision 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
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