Ex Parte Moulin et al

Patent Trial and Appeal Board

Feb 10, 2016

12993498 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/993,498 03/11/2011
23280 7590 02/12/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Antoine Moulin
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.
706.1002 6646
EXAMINER
YEE, DEBORAH
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTOINE MOULIN, VERONIQUE SARDOY,
CATHERINE VINCI, GARCES GLORIA RESTREPO,
TOM W ATERSCHOOT, and MOHAMED GOUNE
Appeal2014-006690
Application 12/993,498
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-8, 10-12, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Takashi (JP 2005-220430 A, published Aug. 18,
2005; as translated). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal (emphasis
added):
Appeal2014-006690
Application 12/993,498
1. A cold-rolled and annealed Dual-Phase steel sheet having a
strength between 980 and l lOOMPa, a non-recrystallized ferrite surface
area fraction, compared to the whole of the ferritic phase, is less than or
equal to 15%, and a breaking elongation greater than 9%, wherein the cold-
rolled and annealed Dual-Phase steel sheet comprises iron, the following
elements expressed by weight:
0.055% :Sc :S 0.095%
2% :S Mn :S 2.6%
0.005% :S Si :S 0.35%
s :S 0.005%
p :S 0.050%
0.1 :S Al :S 0.3%
0.05% :S Mo :S 0.25%
0.2% :S Cr :S 0.5%
it being understood that Cr+2Mo :S 0.6 %
Ni :S 0.1%
0.010 :S Nb :S 0.040%
0.010 :S Ti :S 0.050%
0.0005 :SB :S 0.0025%
and 0.002% :SN :S 0.007%
and inevitable impurities resulting from smelting.
Appellants mainly focus on limitations common to independent
claims 1 and 20 and thus argue claims 1 and 20 "together" (App. Br. 5).
ANALYSIS
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we will sustain the Examiner's rejections for
essentially those reasons expressed in the Answer, including the Response to
Argument section, and we add the following primarily for emphasis.
In reviewing the relevant facts of this case, the Examiner's
determination that Takashi describes overlapping ranges for all of the
compositional components is not in dispute (generally Ans.; App. Br.).
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Application 12/993,498
It is well established that "a prima facie case of obviousness arises
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art. [Citations omitted.] Where the 'claimed ranges are completely
encompassed by the prior art, the conclusion [that the claims are prima facie
obvious] is even more compelling than in cases of mere overlap."' In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003). It is also well established that a reference
is not limited to its examples or preferred embodiments. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the
prior art's disclosure of over 1200 possible combinations rendered all
possible formulations obvious).
Appellants' arguments that Takashi does not disclose an example
wherein "each and every element" falls within the ranges set out in claim 1
(and corresponding claim 20) are unavailing, since a reference is not limited
to its examples (see, e.g., Final Rej. 2). As stated above, Appellants do not
dispute that Takashi teaches each component claimed in amounts that
encompass or overlap the claimed range of each component's amount, and
that Takashi permits 0.03 to 0.5% Cr in its alloy. Appellants have not
specifically refuted the Examiner's finding that Takashi's Example 3 need
only be modified to add 0.1 % more chromium to the 0.1 % already present
and it will fall squarely within the claimed ranges, and still meet the required
formula A of Takashi (Ans. 2, 3).
As pointed out by the Examiner, the tensile strength and breaking
elongation of Takashi's Example 3 also is encompassed by claim 1 (Ans. 3).
The process for annealing the steel composition is also quite similar to that
described by Appellants (Ans. 4; Takashi ,-i 53). While Appellants argue that
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Application 12/993,498
their Specification process is different in some aspects than that described in
Takashi (App. Br. 11, 12), it is not readily apparent how these differences
would have resulted in a steel alloy possessing more than 15% non-
recrystallized ferrite surface area for several reasons.
First, considering Example 3 of Takashi, there is no indication that the
small difference of 0.1 wt % Cr has any impact on this property. There is
also no indication, as pointed out by the Examiner, that the annealing
heating temperature and time of Takashi, which fall squarely within the
parameters disclosed in Appellants' Specification, would not have resulted
in this property. Appellants argue that Takashi is silent on its heating rate;
however, Appellants have not shown any effect of heating rate on this
property. Notably all the examples, both the inventive and comparative, use
the same heating rate Ve of 2°C/s (Spec. 15, Table 3). Furthermore, most of
Appellants' examples have a non-recrystallized ferrite fraction of zero (0),
and the only two examples that do not have a zero amount, have an amount
over 15% (Spec. 15, Table 4) and are annealed at the lowest temperatures,
740°C and 745°C (Spec. 16, Table 3), well below Takashi's 820°C, and are
the only two examples that do not have the recited elongation at break, and
also do not have the required strength as recited in the claim (Spec. 16,
Table 4).
Thus, it was reasonable for the Examiner to infer that Takashi's
similar processing conditions, similar components amounts, that explicitly
resulted in the same end resultant properties of strength and elongation at
break, would have also resulted in a product meeting the claimed non-
recrystallized ferrite fraction amount which may include up to 15% (as
opposed to zero of all of Appellants' examples). Finally, Appellants'
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Application 12/993,498
Specification states that small variations of the manufacturing parameters do
not cause major changes to the micro structure or the mechanical properties
(Spec. 13:10-14).
While Appellants protest that the burden to show that Takashi does
not have the claimed non-recrystallized ferrite fraction is being unfairly
shifted to them (Reply Br. 3), in light of all these factors discussed above,
we do not agree. It is well settled that when a claimed product reasonably
appears to be substantially the same as a product disclosed by the prior art,
the burden is on the applicant to prove that the prior art product does not
necessarily or inherently possess characteristics attributed to the claimed
product, and that it is of no moment whether the rejection is based on § 102
or § 103 since the burden is on the applicant is the same. In re Spada, 911
F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
Thus, a preponderance of the evidence supports the Examiner's
reasonable position that it would have been prima facie obvious to use
amounts as recited in the claimed ranges, and that the use of these
components in Takashi's similar process, which explicitly results in a steel
having the required tensile strength and elongation at break as recited in
claim 1, would have also resulted in a non-recrystallized ferrite fraction as
required by the claim.
Since the Examiner's finding of closely overlapping ranges of all the
components of the alloy is reasonable, processing is substantially similar,
and similar mechanical properties are explicitly exemplified, the Examiner's
determination that the non-recrystallized ferrite amount recited in the claim
would also follow is reasonable and supported by a preponderance of the
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Application 12/993,498
evidence. CJ: Jn re Papesch, 315 F.2d 381, 391(CCPA1963) ("From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing"). The Examiner's
determination that the alloy arrived at by one of ordinary skill in the art
through no more than ordinary creativity would have the claimed non-
recrystallized ferrite surface area recited in the Appellants' claim 1 is
reasonable. See KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In
making an obviousness determination one "can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ").
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See, e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Appellants have made no such showing on this record.
As explained above and in the Answer, on this record, the Examiner
had a reasonable basis to believe that the composition would have the
properties recited in the claims. Appellants have not offered persuasive
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Application 12/993,498
evidence to the contrary. We, therefore, discern no error in the Examiner's
determination that Takashi renders obvious the titanium aluminide alloy of
claim 1 of Appellants' invention.
Thus, Appellants have not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to claim 1.
Appellants' depend upon the arguments presented for claim 1 for all
the other claims, and to the extent additional arguments are also presented
for claims 6 through 8, we find them unpersuasive for the reasons set out by
the Examiner (App. Br. 13-15; Ans. 4).
In light of these circumstances, the preponderance of the evidence
supports all of the Examiner's rejections. Accordingly, we sustain the
rejections of the claims on appeal.
DECISION
The decision of the Examiner is affirmed.
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 ).
AFFIRMED
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