Ex Parte Rose

Patent Trial and Appeal Board

Apr 22, 2015

11661164 (P.T.A.B. Apr. 22, 2015)

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.
11/661,164 02/21/2007 Lutz Rose 207,991 9611
38137 7590 04/22/2015
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
MCGUTHRY BANKS, TIMA MICHELE
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/22/2015 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 LUTZ ROSE and WALTER WEISCHEDEL
1

____________

Appeal 2013-006306
Application 11/661,164
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN and SHEILA F.MCSHANE,
Administrative Patent Judges.

PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision
2
finally rejecting claim 7, which is the only claim pending in
the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
I. STATEMENT OF THE CASE
The subject matter on appeal is directed to “a smelter for producing steel
with a high manganese and low carbon content on the basis of liquid pig iron or
liquid steel and slag-forming constituents.” Spec. 2, ll. 1‒3. Details of the

1
The real party in interest is said to be SMS Siemag Aktiengesellschaft, a German
company. Appeal Brief filed January 24, 2013 (“App. Br.”) at 2.
2
Final Action mailed July 30, 2012 (“Final Act.”) at 2‒4, Non-Final Action mailed
May 31, 2012 (“Non-Final Act.”) at 5‒7, and the Examiner’s Answer mailed
February 22, 2013 (“Ans.”) at 4‒7.
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Application 11/661,164

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appealed subject matter are recited in the sole claim on appeal, claim 7, which is
reproduced below from the Claims Appendix of the Appeal Brief:
7. A smelter for producing steel (1) with a high manganese and low
carbon content on the basis of liquid pig iron (2) or liquid steel (3) and
slag-forming constituents (4), comprising:
a FeMn-refining converter (6a) provided with at least one top
lance (8) and provided with at least a pair of nozzles (9) in a bottom
thereof for continuous blowing into the FeMn-refining converter of
oxygen and oxygen-inert gas mixture;
a reducing furnace (16) located upstream of the FeMn-refining
converter (6a) for feeding liquid ferromanganese directly into the
FeMn-refining converter (6a);
at least one of, arranged upstream of the FeMn-refining
converter, blast furnace (17) for feeding liquid pig iron directly into
the FeMn-refining converter (6a), a steel-smelting converter (6) for
feeding liquid carbon steel directly into the FeMn-refining converter
(6a), and an electrical arc furnace (18) for feeding liquid steel directly
into the FeMn-refining converter (6a); and
a ladle furnace (12) located downstream of the FeMn-refining
converter (6a).
App. Br. 11 (emphasis added).
Appellants seek review of the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Standler
3
and
Nakajima.
4
See App. Br. 4 and Reply Brief filed April 11, 2013 (“Reply Br.”) at
2‒5.
II. DISCUSSION

Upon consideration of the evidence on this record in light of the arguments
advanced by the Examiner and Appellants, we find that Appellants have not
identified reversible error in the Examiner’s determination that the applied prior art
would have rendered the subject matter recited in claim 7 obvious to one of

3
US 4,822,411 issued to Standler et al., on April 18, 1989 (“Standler”).
4
US 4,522,650 issued to Nakajima et al., on June 11, 1985 (“Nakajima”).
Appeal 2013-006306
Application 11/661,164

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ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). Accordingly,
we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 7 for the reasons
set forth in the Non-Final Action, the Final Action, and the Answer. We add the
following primarily for emphasis.
Appellants do not dispute the Examiner’s finding that Standler teaches a
smelter for producing steel, comprising reducing furnace 11 and blast furnace 4
located directly upstream of converter 6. Compare Non-Final Act. 5‒6, Final Act.
2‒4, and Ans. 4‒5 with App. Br. 4‒9; see also Standler, col. 2, ll. 36‒68 together
with its Figure. Nor do Appellants dispute the Examiner’s finding that Nakajima
teaches using oxygen blow converter 10 having lance 20 and nozzles 11 for
producing a steel, such as Mn steel, Cr steel, or Ni steel, and then refining the
resulting steel from the converter in a refining ladle furnace which is located
directly downstream of converter 10. Compare Non-Final Act. 6 and Ans. 5‒6
with App. Br. 4‒9; see also Nakajima, col. 1, ll. 9‒13 and col. 4, ll. 21‒55 together
with its Figure 1.
Rather, Appellants first contend that “Standler, while disclosing a reducing
furnace (11), has no suggestion whatsoever for using a reducing furnace for
feeding liquid manganese in a converter.” App. Br. 5. In this regard, Appellants
also argue that Nakajima teaches away from feeding liquid manganese in a
converter. Id.
As explained by the Examiner at pages 6 and 7 of the Answer, the functional
or intended use limitation “feeding liquid ferromanganese” in apparatus claim 7
that does not structurally limit the claimed apparatus or patentably differentiate the
claimed apparatus from an otherwise identical prior art apparatus cannot support
patentability. See, e.g., In re Schreiber, 128 F.3d 1473, 1477–79 (Fed. Cir. 1997)
(“Schreiber’s contention that his structure will be used to dispense popcorn does
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Application 11/661,164

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not have patentable weight if the structure is already known” and “the Board
[correctly] found that the Harz dispenser [for dispensing lubricating oil] would be
capable of dispensing popcorn in the manner set forth in claim 1 of Schreiber’s
application.”); see also In re Rishoi, 197 F.2d 342, 344–45 (CCPA 1952); In re
Otto, 312 F.2d 937, 940 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663–64 (CCPA
1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973). Nevertheless, Appellants
do not identify any structural difference between Standler’s reducing furnace and
the reducing furnace embraced by claim 7. App. Br. 5‒9 and Reply Br. 3‒5. Nor
do Appellants argue, much less demonstrate, that Standler’s reducing furnace is
incapable of providing the function recited in claim 7. App. Br. 5‒9 and Reply Br.
3‒5. Moreover, the teachings of Nakajima relied upon by Appellants do not
indicate that one of ordinary skill in the art would have been taught away from
employing Standler’s reducing furnace for providing pretreated iron ore to
Standler’s oxygen blowing converter for producing various steels, including those
disclosed in Nakajima. App. Br. 5. Thus, on this record, Appellants have not
identified any reversible error in the Examiner’s finding that Standler teaches the
reducing furnace recited in claim 7 and that Nakajima does not teach away from
using Standler’s reducing furnace directly upstream of an oxygen blowing
converter.
Appellants also contend that “the Examiner failed to provide a proper
rationale for combining Standler and Nakajima.” App. Br. 7. According to
Appellants, “the Examiner failed to provide any evidence or sufficiently persuasive
arguments” and that “the reading of the present invention, as defined by claim 7,
on the combination of Standler and Nakajima is a clear case of hindsight
reconstruction.” App. Br. 8. In support of this contention, Appellants assert that
“Standler is limited to a particular type of steel, namely, carbon steel (col. 1. lines
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Application 11/661,164

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7‒20, 41‒42).” App. Br. 7. Appellants do not assert that the Examiner has made
any other fact finding errors regarding Standler and Nakajima. App. Br. 7‒9.
As correctly found by the Examiner, “Standler is not limited to [producing]
any [specific] type of steel[,]” thus including Cr steel, Mn steel and Ni steel
produced by Nakajima’s converter. Final Act. 4 and Ans. 7‒8; see, e.g., Standler,
col. 1, ll. 7‒20 and col.5, ll. 5‒25. Standler, for example, describes a steel
composition having, inter alia, iron (Fe), manganese (Mn), and phosphorus, with a
statement indicating the use of other steel compositions having different contents,
in its smelter apparatus. See, e.g., Standler, col.5, ll. 5‒25. Standler, like
Nakajima, also teaches employing a molten pig iron or steel in an oxygen blowing
converter which employs blowing oxygen from the top and bottom of the converter
as acknowledged by Appellants at page 7 of the Appeal Brief and as found by the
Examiner at pages 7 and 8 of the Answer. Compare also Standler, col. 1, ll. 7‒14
with Nakajima, col. 2, ll. 48‒65. According to Nakajima, oxygen can be injected
or blown from the top of converter 10 using lance 20 and the bottom of converter
10 using nozzles 11. Nakajima, col. 4, ll. 40‒55 and Fig. 1. Thus, Appellants
again have not identified reversible error in the Examiner’s determination that one
of ordinary skill in the art would have been led to employ the lance and nozzles
taught by Nakajima for blowing oxygen into Standler’s oxygen blowing converter
and employ the refining ladle furnace taught by Nakajima directly downstream of
Standler’s oxygen blowing converter for the purpose of further refining the
resulting product from Standler’s oxygen blowing converter.
III. ORDER
Upon consideration of the record, and for the reasons given above and in the
Non-Final Action, Final Action, and Answer, it is
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Application 11/661,164

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ORDERED that the decision of the Examiner to reject claim 7 under
35 U.S.C. § 103(a) is AFFIRMED; and,
FURTHER ORDERED that 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)(iv).

AFFIRMED
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