Ex Parte Schuisky et al

Board of Patent Appeals and Interferences

Sep 1, 2009

11131307 (B.P.A.I. Sep. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MIKAEL SCHUISKY, ANDREAS ROSBERG, and KENNETH GORANSSON ____________________ Appeal 2009-011912 Application 11/131,307 U.S. Patent Publication 2005-0265885 Technology Center 1700 ____________________ Decided: September 2, 2009 ____________________ Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and RICHARD E. SCHAFER and MICHAEL P. TIERNEY, Administrative Patent Judges. McKELVEY, Senior Administrative Patent Judge. DECISION ON APPEAL A. Statement of the case 1 Sandvik Intellectual Property AB ("Sandvik"), the real party in 2 interest, seeks review under 35 U.S.C. § 134(a) of a final rejection 3 (mailed 26 February 2008). 4 The application was filed on 18 May 2005. 5 Sandvik claims a priority date under 35 U.S.C. § 119 of an application 6 filed in Sweden on 19 May 2004. Specification, ¶ 0001. 7 Claim 1-22 are in the application. 8 Appeal 2009-011912 Application 11/131,307 2 The Examiner relies on the following prior art: 1 Patterson U.S. Patent 3,615,255 26 Oct. 1971 Uehara U.S. Pat. Publication 2003/0063994 3 Apr. 2003 2 Sandvik relies on: 3 Davis, J.R. ASM Specialty Handbook: Heat- Resistant Material, pages 541-42 and Figs. 8 and 9 (1st ed.) 1997 4 The reader should know that "et al" is not used in this opinion. 5 Patterson and Uehara are prior art under 35 U.S.C. § 102(b). 6 We have jurisdiction under 35 U.S.C. § 134(a). 7 B. Findings of fact 8 The following findings of fact are supported by a preponderance of 9 the evidence. 10 To the extent that a finding of fact is a conclusion of law, it may be 11 treated as such. 12 References to the specification are to the "typed" specification as 13 filed. The paragraph numbers of the "typed" specification as filed and the 14 specification published as U.S. Patent Publication 2005-0265885 are 15 different. 16 Additional findings as necessary may appear in the Discussion portion 17 of the opinion. 18 Appeal 2009-011912 Application 11/131,307 3 The invention 1 Sandvik's disclosure relates generally to a stainless steel product. At 2 high temperatures, the stainless steel product is said to form an oxide scale 3 with good surface conductivity and an excellent adhesion to the underlying 4 steel. Specification, ¶ 0002. 5 In particular, the disclosure relates to a ferritic chromium steel 6 suitable for the use as interconnects or bipolar plates in solid oxide fuel cells 7 or other high temperature applications such as catalytic converters in cars 8 and trucks. Specification, ¶ 0002. 9 According to Sandvik, ferritic chromium steels are used for 10 applications with high requirements, such as for example interconnect 11 materials in Solid Oxide Fuel Cells (SOFC) or, if alloyed with Al, as a 12 material for catalytic converters. Specification, ¶ 0004. 13 Further, according to Sandvik, the oxide scale formed on the steel 14 interconnect material desirably does not spall off or crack due to thermal 15 cycling. The formed oxide scale should also have good electrical 16 conductivity and not grow too thick during the life time of the fuel cell. 17 Thicker oxide scales are said to result in increased electrical resistance. The 18 formed oxide should also be chemically resistant to the gases used as fuels in 19 an SOFC. Specification, ¶ 0005. 20 One disadvantage with the use of commercial ferritic chromium steel 21 is said to be that they are usually alloyed with aluminum and/or silicon, 22 resulting in formation of Al2O3 and/or SiO2 at the working temperature of 23 the SOFC. Both oxides are good electrical insulating oxides, which will 24 Appeal 2009-011912 Application 11/131,307 4 increase the electrical resistance of the cell and lower the fuel cell efficiency. 1 Specification, ¶ 0006. 2 Ferritic steels have been developed with low Al and Si contents, to 3 ensure good conductivity of the formed oxide scales. These ferric steels are 4 usually also alloyed with manganese (Mn). The addition of Mn in the steel 5 will induce the formation of chromium oxide based spinelle structures in the 6 formed oxide scale. According to Sandvik, Mn in general has a poor effect 7 on the corrosion resistance of the steel. The Mn content in the steel 8 therefore must be monitored carefully at low levels. Too high a 9 concentration of Mn in the steel is said to lead to the growth of thick oxide 10 scales due to severe high temperature corrosion. Specification, ¶ 0007. 11 Page 3, ¶ 0008 of the specification states: 12 In addition to Mn, several of these new developed steels are 13 alloyed with [G]roup III elements, i.e., Sc, La and Y and/or 14 other rare earth elements (REM). The addition of La, Y or 15 REM is made to increase the lifetime of the material at high 16 temperatures. Strong oxide formers such as La, Y and REM are 17 said to decrease the oxygen ion mobility in the formed Cr2O3 18 scale, which will lead to a decrease in the growth rate of the 19 oxide scale. The amount of added REM to the steel has to be 20 carefully monitored, since too high a concentration of REM 21 will lead to production process difficulties, as well as undesired 22 corrosion properties of the steel. 23 One of Sandvik's objects is to provide a steel alloy with 24 Appeal 2009-011912 Application 11/131,307 5 "excellent high temperature corrosion resistance." Another object is to 1 provide an oxide scale on steel alloy that has a good adherence and a low 2 surface resistivity. A further object is to provide steel alloys having 3 properties which are good enough so that the alloys do not need alloying 4 with any REM or Group III metals. Specification, ¶ 0013. 5 The specification and drawings include data based on what appears to 6 have been pre-application experimental work. We assume the data is not 7 based on prophetic examples. 8 Example 1 describes (albeit incompletely) an alloy according to 9 Sandvik's invention. Specification ¶ 0033 (italics added). 10 Example 1: A 0.2 mm thick steel alloy strip with a nominal 11 composition (by weight) of 12 max 0.2% C, 13 max 0.1% N, 14 max 0.1% O, 15 max 0.4% Si, 16 max 0.5% Al, 17 max 0.5% Mn, 18 20 to 25% Cr, 19 max 2.0% Ni, 20 0.001 to 0.1% Zr + Hf, 21 max 0.5% Ti, 22 max 2.5% Mo + W, 23 max 0.5% V, 24 max 1.25% Nb + Ta and 25 Appeal 2009-011912 Application 11/131,307 6 balance of Fe (with naturally occurring impurities) 1 was produced by an ordinary steel making process, followed by 2 hot-rolling down to a thickness of less than 4 mm. Thereafter, 3 it was cold-rolled in several steps with a number of 4 recrystallization steps down to a final thickness of 0.2 mm. 5 Strips of four other steel alloys were produced in the same way 6 for comparison with the steel alloy of Example 1. The 7 compositions of these additional steel alloys (with the balance 8 being iron and any impurities) and their Sandvik identity 9 numbers are given in Table 2. 10 The precise amount of ingredients in the composition of the first alloy 11 described in Example 1, which we take to be an example of an alloy 12 according to the invention, is not set out. Only nominal percentages are 13 described. None of the impurities in the iron (Fe) are identified. 14 Table 2 is reproduced below (converted from the horizontal form in 15 the specification to a vertical form) describes the composition of various 16 Sandvik alloys. 17 Appeal 2009-011912 Application 11/131,307 7 Table 2 1 Element Sandvik 433 Sandvik 434 Sandvik 436 Sandvik 437 C 0.008 0.009 0.007 0.009 Si 0.16 0.14 0.15 0.14 Mn 0.55 5.06 0.52 0.50 P 0.005 0.004 0.005 0.004 S < 0.001 < 0.001 < 0.003 < 0.001 Cr 22.37 22.23 22.27 22.39 Ni 0.11 0.11 1.04 2.96 Mo < 0.01 < 0.01 < 0.01 < 0.01 Mb < 0.01 < 0.01 < 0.01 < 0.01 V 0.013 0.012 0.013 0.014 Al 0.040 0.014 0.039 0.020 Ce 0.11 0.081 0.12 0.05 N 0.029 0.028 0.029 0.032 Fe and any impurities balance balance balance balance 2 Ce (cerium) is an REM. 3 None of the impurities in the iron (Fe) are identified. 4 Example 3 additionally describes three additional alloys. 5 Specification, ¶ 0039. 6 Appeal 2009-011912 Application 11/131,307 8 The three alloys are said to have the following ingredients. 1 Element Sandvik 0C44 Alloy A Alloy B C max 0.018 max 0.03 0.02 N max 0.025 Si max 0.35 max 0.05 0.40 Mn max 0.35 max 0.08 0.50 Cr 21.1 to 21.8 21.0 to 24.0 21.97 Ni max 0.3 0.26 P max 0.002 max 0.05 S max 0.007 Mo max 0.15 Ti max 0.010 max 0.25 Nb max 0.01 Ce max 0.03 Mg max 0.015 Fe and any impurities Balance Balance Balance Al 0.21 Zr 0.22 La max 0.2 0.04 Cu max 0.5 2 La is a Group III metal and Ce is an REM. 3 The precise amounts of elements of Sandvik 0C44 and Alloy A are 4 not set out. Rather, only nominal compositions are given; precise 5 Appeal 2009-011912 Application 11/131,307 9 compositions appear to be set out for Alloy B. None of the impurities in the 1 iron (Fe) are identified. 2 All of the alloys are said to have been tested for high temperature 3 corrosion resistance at 850 ºC in air and 1% water for 500 hours. 4 Specification, ¶ 0039. 5 Corrosion is measured by weight gain. In the context of the invention, 6 low weight gain is equal to a good high temperature corrosion resistance. 7 ¶ 0039, page 17:3-4. 8 Weight gain data is described in Table 4. Specification, ¶ 0044. 9 Table 4 10 Alloy Weight gain mg · cm-2 Steel of the invention 0.22 Sandvik 433 0.72 Sandvik 434 3.0 Sandvik 436 0.80 Sandvik 437 0.92 Alloy A 0.90 Sandvik 0C44 0.3 Alloy B 2.4 11 Examiner's rejections 12 The Examiner rejected claims 1-10 and 12-21 as being unpatentable 13 under 35 U.S.C. § 103 over Uehara. Examiner's Answer, page 3. 14 The Examiner rejected claims 11 and 22 as being unpatentable under 15 35 U.S.C. § 103 over Uehara and Patterson. Examiner's Answer, page 6 16 Appeal 2009-011912 Application 11/131,307 10 Claims on appeal 1 Claims 1-22 are on appeal. 2 Claims 1 and 12, which we reproduce from the Claim Appendix of the 3 Appeal Brief, read: 4 1. Claim 1 5 A high temperature corrosion resistant stainless steel, 6 consisting essentially of (by weight): 7 C ≤ 0.2%, but more than zero; 8 N ≤ 0.1%, but more than zero; 9 O ≤ 0.1% but more than zero; 10 Si ≤ 0.4% but more than zero; 11 Al < 0.5% but more than zero; 12 Mn ≤ 0.5%, but more than zero; 13 Cr 20 to 25%; 14 Ni ≤ 2.0% but more than zero; 15 Zr + Hf 0.001 to 0.1%; 16 Ti ≤ 0.5% but more than zero; 17 Mo + W ≤ 2.5% but more than zero; 18 Nb + Ta ≤ 1.25% but more than zero; 19 V ≤ 0.5% but more than zero; and 20 balance of Fe and naturally occurring impurities and not 21 more than 0.010% of S impurity, 22 wherein the alloy excludes REM additions and excludes 23 additions from Group III of the periodic table. 24 Appeal 2009-011912 Application 11/131,307 11 2. Claim 12 1 (% differences between claim 1 and claim 12 in bold; 2 deletions in strikethrough) 3 A high temperature corrosion resistant stainless steel, 4 consisting essentially of (by weight): 5 C ≤ 0.1%, but more than zero; 6 N ≤ 0.1%, but more than zero; 7 O ≤ 0.1% but more than zero; 8 Si ≤ 0.4% but more than zero; 9 Al < 0.4% but more than zero; 10 Mn ≤ 0.4%, but more than zero; 11 Cr 20 to 25%; 12 Ni ≤ 1.0% but more than zero; 13 Zr [+ Hf[ ≤ 0.001 to 0.1%; 14 Ti ≤ 0.4% but more than zero; 15 Mo [+ W] ≤ 2.5% but more than zero; 16 Nb [+ Ta] ≤ 1.25% but more than zero; 17 V ≤ 0.1% but more than zero; and 18 balance of Fe and naturally occurring impurities and not 19 more than 0.010% of S impurity, 20 wherein the alloy excludes REM additions and excludes 21 additions from Group III of the periodic table. 22 Appeal 2009-011912 Application 11/131,307 12 Apart from claims 1 and 12, Sandvik does not single out other claims 1 for separate consideration. Accordingly, we will decide the appeal on the 2 basis of claims 1 and 12. 3 As will become apparent, claims 1 and 12 stand or fall together. 4 Uehara 5 Uehara describes alloys. 6 The Examiner has provided a Table 1 comparing the overlapping 7 nature of the compositions described by Uehara's "fifth aspect" (reproduced 8 below) and the weight % of ingredients in claim 1. Examiner's Answer, 9 page 3. 10 11 A similar Table 2 is provided for claim 12. Examiner's Answer, 12 page 5. 13 The Uehara "fifth aspect" is discussed as follows (italics and some 14 indentation added): 15 Appeal 2009-011912 Application 11/131,307 13 In the fifth aspect of the invention, there is provided a 1 steel for separators of solid-oxide type fuel cells, which steel 2 consists essentially, by mass, of 3 not more than 0.08% C; 4 not more than 0.6% Si exclusive of zero; 5 not more than 0.5% Mn exclusive of zero; 6 not more than 0.5% Ni; 7 18 to 25% Cr; 8 not less than 0.001 to less than 0.5% Al; 9 0.005 to 0.1% La, 10 0.01 to 0.6% Zr; and 11 the balance being Fe and incidental impurities including 12 not more than 0.1% Ti, 13 not more than 0.008% S, 14 not more than 0.008% O (oxygen), 15 not more than 0.020% N, and 16 not more than 0.0020 B, 17 the contents of the elements satisfying the formula (2) defined 18 by 19 (O (oxygen) + 2S) / (0.035Zr + 0.16 La) ≤ 2.0, 20 (Uehara, ¶ 0040) 21 the steel having a hardness not more than 280 HV and fine 22 grains of an average ferrite grain size number not less than 23 ASTM No.2. 24 (Uehara, ¶ 0041) 25 Appeal 2009-011912 Application 11/131,307 14 In a steel for separators of solid-oxide type fuel cells . . . 1 preferably, the B content is restricted to less than 0.0010%, the 2 average ferrite grain size number is not less than ASTM No. 3, 3 which provides fine grains, and the 2-mm V-notch Charpy 4 impact value at 20 ºC is not less than 10 J/cm2. 5 (Uehara, ¶ 0042). 6 Preferably, there is provided a steel for separators of 7 solid-oxide type fuel cells, which steel further contains Mo 8 alone or two kinds of Mo and W by an amount not more than 9 5.0% in terms of (Mo + ½W). 10 (Uehara, ¶ 0043). 11 More preferably, a steel for separators of solid-oxide type 12 fuel cells according to the invention further contains at least one 13 kind of 0.01 to 1.0 in total selected from the group consisting of 14 V, Nb, Ta, and Hf. 15 (Uehara, ¶ 0044). 16 Uehara also has the following to say (italics added): 17 The inventors have conducted various examinations to 18 solve this problem and have found that, by adding to an 19 Fe-Cr-base material one or more elements selected from the 20 group consisting of Y, REM (Rare earth metal) and Zr, by 21 suppressing the Al content to a low level, and further by adding 22 Si and Mn by small amounts, it becomes possible to obtain a 23 good oxidation resistance and, in particular, a good resistance to 24 exfoliation although the steel has the Cr-base oxides as the 25 Appeal 2009-011912 Application 11/131,307 15 main component of the films, so that the state of oxide films 1 becomes stable even after long time of heating. 2 Uehara, ¶ 0025. La is not mentioned. 3 Uehara also reveals: 4 Y [a Group III metal], REM and Zr have the effect of 5 substantially improving the oxidation resistance and the 6 electrical conductivity of the oxide film by the addition of a 7 small amount. In particular, the improvement of the oxidation 8 resistance becomes great especially when the addition of these 9 elements is combined with the addition of small amounts of Si 10 and Mn. It is thought that this is due mainly to the 11 improvement of the adhesion of the oxide film. 12 Uehara, ¶ 0057. 13 The Y, REM and Zr may be added individually or in combination. 14 Uehara, ¶ 0058. La is not mentioned. 15 C. Discussion 16 Examiner's rejection 17 The Examiner found that the 0.005% lower amount of La described 18 by Uehara is at an impurity level. Final Rejection, page 5. 19 Sandvik has not challenged the Examiner's finding. 20 Accordingly, we accept the finding as being correct. In re Eskild, 21 55 CCPA 808, 810, 387 F.2d 987, 988 (CCPA 1968) (Examiner's statement 22 relating to common practices in the art was accepted as factual in view of 23 appellant's failure to challenge the statement). 24 Appeal 2009-011912 Application 11/131,307 16 Moreover, we note that Sandvik, with respect to sulfur (S), indicates 1 that an impurity level can be just under 0.010%-an impurity level higher 2 than Uehara's 0.005% La level. See, e.g., claims 1 and 12. 3 Sandvik says that the La is added by Uehara and therefore Uehara 4 does not describe the claim 1 and claim 12 limitation "wherein the alloy 5 excludes REM additions and excludes additions from Group III of the 6 periodic table." 7 Unclear on this record is what natural impurities-apart from S-can 8 be present in Fe. In particular, it is not clear whether La (or other Group III 9 elements or REMs) may be impurities in Fe. 10 When La is present in Uehara at an impurity level of 0.005%, it does 11 not matter whether it was added because one skilled in the art would not 12 expect the properties of the claimed steel to be materially affected by the 13 presence of low amounts of added La. By definition, "consisting 14 essentially" permits impurities not affecting the basic characteristics of a 15 product to be present. 16 Sandvik's specification does not describe the precise composition of 17 the steel alloy (representing the invention) in Example 1. In particular, 18 Sandvik in no way identifies any Fe impurity or the amount of the Fe 19 impurity. Likewise, Sandvik does not identify the Fe impurities or amount 20 of Fe impurities in the Sandvik 433, 434, 436, 437, 0C44, Alloy A or 21 Alloy B. 22 In the specification, Sandvik has not told the PTO whether La and 23 other Group III elements were impurities present in the Fe used to make the 24 alloys of the invention or the other Sandvik alloys. 25 Appeal 2009-011912 Application 11/131,307 17 Fundamentally, the "wherein the alloy excludes REM additions and 1 excludes additions from Group III of the periodic table" limitation is a 2 "product by process" limitation. Under examination is the product, not a 3 process for making the product. Accordingly, the patentability analysis 4 involves a comparison of the product described by Uehara vis-à-vis the 5 claimed product and not a comparison of the method by which each is made. 6 In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The Examiner made the 7 proper comparison. 8 The Examiner determined that the claimed "product" was not 9 patentably distinct from the 0.005% La impurity level of the "product" 10 described by Uehara. Nowhere has Sandvik established that the presence of 11 lower-impurity-amounts of La in the Uehara product would result in 12 products which have materially different properties from those claimed in 13 claims 1 and 12. Both the Sandvik product and the Uehara product would be 14 expected to be corrosion resistant. 15 Sandvik's arguments 16 (1) 17 Sandvik maintains that all claim limitations must be considered. 18 Appeal Brief, page 5 (2d and 3d ¶) and page 6 (1st ¶). As a general 19 proposition, Sandvik is correct. However, "REM additions" and "additions 20 from Group III" are process limitations signifying that in making the alloys a 21 process is used which does not involve addition of REM or Group III 22 elements. As indicated above, those process limitations do not serve to 23 patentably distinguish the products of claims 1 and 12 from the relevant 24 Uehara "fifth aspect" product. 25 Appeal 2009-011912 Application 11/131,307 18 What claims 1 and 12 do not contain is a limitation like or similar to 1 "[a] high temperature La-free corrosion resistant stainless steel, consisting 2 essentially of . . . ." or "[a] high temperature Group III element and 3 REM-free corrosion resistant stainless steel, consisting essentially of . . ." 4 Such a limitation, or a similarly worded limitation, would advise those 5 skilled in the art that any stainless steel having (1) La or (2) another Group 6 III element or (3) an REM, whether present as an Fe impurity or added as an 7 ingredient during a process for making the steel, would not be within the 8 scope of the claim. Whether Sandvik can make the limitation and, if so, 9 whether other prior art would meet the limitation is not a matter before us. 10 (2) 11 Sandvik maintains that even the small REM additions by Uehara 12 materially affect the basic and novel characteristics of the stainless steels of 13 claims 1 and 12. Appeal Brief, ¶ bridging pages 6-7. 14 The Examiner determined that Sandvik's argument is not supported by 15 underlying evidence. Examiner's Answer, page 8. 16 Sandvik states: 17 the Examiner has incorrectly asserted that any factual evidence 18 to demonstrate the material affect [sic-effect ?] of the basic and 19 novel characteristics of the claimed invention must be in a 20 declaration. Although arguments of counsel cannot take the 21 place of evidence in the record, declarations are not the only 22 form of factual evidence. 23 Appeal Brief, page 6. No Reply Brief has been filed. 24 Appeal 2009-011912 Application 11/131,307 19 First, the Examiner is not a "party". Examiners do not assert; rather, 1 they make findings and reach conclusions based on the record. 2 Second, Sandvik cites Davis supposedly to show that the Uehara 3 properties are materially different from those of the stainless steels of 4 claims 1 and 12. According to Sandvik, Davis states that mall amounts of Y, 5 La and REM "dramatically improve" scale adhesion-particularly in nickel 6 alloys. Appeal Brief, page 7. Thus, according to Sandvik, the 0.005% La 7 . . . added in Uehara, materially affects the basic and novel characteristics of 8 the claimed invention. Id. The Examiner picked right up on the "nickel 9 alloys" part of Davis and declined to give Davis any weight given that nickel 10 alloys are not involved in this case. Examiner's Answer, page 9. We have 11 no reason to question the weight the Examiner gave to Davis. Additionally, 12 the discussion in the Appeal Brief pointing out what Davis is supposed to 13 mean is hardly a model of clarity guiding us through precise statements in 14 Davis which support Sandvik's position. 15 Sandvik next asserts that the Examiner has not articulated a reason for 16 eliminating the REM addition in the "fifth aspect" of Uehara. Appeal Brief, 17 page 7. 18 The Examiner did not base the rejection on any rationale that it would 19 have been obvious to eliminate any REM from the "fifth aspect" 20 embodiment of Uehara. Examiner's Answer, page 9. 21 Fundamentally, what Sandvik has done is to create a side show based 22 on a matter that is not an issue on appeal. 23 That having been said, in the event of further prosecution (via an RCE 24 or continuation), the issue may be worth looking into. We are told in ¶ 0008 25 Appeal 2009-011912 Application 11/131,307 20 of the specification that La is used to decrease oxygen ion mobility in the 1 Cr2O3 scale which is turn is said to decrease the growth rate of the oxide 2 scale. The REM amount needs to be carefully monitored, since too high a 3 concentration of REM will lead to undesired corrosion properties. One 4 reading of what we are told in the specification would suggest to one skilled 5 in the art that La can be eliminated without corrosion resistance being 6 eliminated. The claims on appeal do not recite any particular degree of 7 corrosion resistance. Under the circumstances, a plausible case may be 8 made for eliminating La from the "fifth aspect" embodiment without 9 destroying any corrosion resistant characteristic recited in claims 1 and 12. 10 Sandvik's response seems to be that elimination of the La improves 11 the corrosion resistance vis-à-vis Uehara. We have difficulty understanding 12 what "evidence" supports Sandvik's position. Perhaps, Sandvik relies on 13 weight gain data set out in Table 4-part of which is reproduced above. 14 According to Table 4 an alloy having an undefined composition was tested 15 resulting in a weight gain of 0.22 mg·cm-2. Precise percentages of 16 ingredients and the nature of the impurities are not set out in the 17 specification. The data in Table 4 is not entitled to any weight because the 18 precise composition is not revealed in the specification. Furthermore, the 19 data is not based on any comparison commensurate in scope with the breath 20 of the scope of the claims. No Uehara composition is compared, let alone 21 Uehara composition having different amounts of La-which Uehara says 22 can vary from 0.005% to 0.1%. Those skilled in the art seem to know that 23 varying the La amount has a corrosion resistance effect and must be 24 carefully monitored. 25 Appeal 2009-011912 Application 11/131,307 21 (3) 1 Sandvik says that omission of La and retention by Sandvik of the 2 La-function is an indicia of non-obviousness. Appeal Brief, page 9. 3 Lacking from Sandvik's argument is an evidentiary-based discussion which 4 would support the argument. It is not clear what function is retained by the 5 claimed invention which would not be retained by Uehara-both products 6 would be expected to be corrosion resistant. 7 (4) 8 Sandvik's next attack is a hindsight argument. Appeal Brief, 9 pages 9-10. 10 Providing Tables 1 [reproduced above] and 2 [not reproduced above], 11 the Examiner has explained why the claimed ranges overlap with those 12 described in the "fifth aspect" of Uehara. 13 But, Sandvik argues: Why would one skilled in the art pick and chose 14 the element ranges called for by the claims? 15 In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003), and In re 16 Boesch, 617 F.2d 272, 276 (CCPA 1980), both involving alloys, provide an 17 answer. Moreover, one has to ask why is not one skilled in the art entitled to 18 use the broad ranges of alloys described in the fifth aspect of the Uehara 19 invention? Those alloys are in the pubic domain. To the extent Sandvik 20 believes it has discovered a new function or a new degree of corrosion 21 resistance, Sandvik is free in an RCE or continuation to establish its range 22 within the Uehara range provides the new function or degree of corrosion. 23 No data in the specification provides the evidence needed by Sandvik. First, 24 the specification does not describe testing of a specific alloy within the scope 25 Appeal 2009-011912 Application 11/131,307 22 of claims 1 and 12. Second, there is no explanation why any result is 1 unexpected. Cf. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (inventor 2 must show that the results the inventor says the inventor gets with the 3 invention are actually obtained with the invention; it is not enough to show 4 results are obtained which differ from those obtained in the prior art-any 5 difference must be shown to be an unexpected difference). 6 (5) 7 Sandvik makes the following argument (Appeal Brief, page 10): 8 The rejected dependent claims distinguish over and/or are 9 improperly rejected over the disclosure in Uehara for at least 10 the same reasons as discussed above. Additionally, the claimed 11 properties in the dependent claims are not inherent as posited 12 by the Examiner, at least because Appellants have shown that 13 the compositions of Uehara are substantially different from the 14 claimed invention. 15 The argument is not persuasive for a variety of reasons. 16 First, no dependent claim is placed under a subheading identify the 17 claim by claim number. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 18 Second, and more important, the argument is in effect a pleading and 19 does not point to the evidence which supposedly would support the 20 argument. A brief must make all arguments accessible to the judges, rather 21 than ask them to play archaeologist with the record. DeSilva v. DiLeonardi, 22 181 F.3d 865, 866-67 (7th Cir 1999). A skeletal argument, really nothing 23 more than an assertion, does not preserve a claim for consideration on 24 Appeal 2009-011912 Application 11/131,307 23 appeal. Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1250 1 n.2 (Fed. Cir. 2008). 2 Third, there is no credible evidence to support Sandvik’s assertion that 3 the Uehara compositions are substantially different from the claimed 4 compositions. 5 (6) 6 We have considered Sandvik's remaining arguments and find none 7 that warrant reversal of the Examiner’s rejection(s). Cf. Hartman v. 8 Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 9 D. Decision 10 Sandvik has not sustained its burden on appeal of showing that the 11 Examiner erred in rejecting the claims on appeal as being unpatentable over 12 the prior art. 13 On the record before us, Sandvik is not entitled to a patent containing 14 claims 1-22. 15 Upon consideration of the appeal, and for the reasons given herein, 16 it is 17 ORDERED that the decision of the Examiner rejecting 18 claims 1-22 over the prior art is affirmed. 19 FURTHER ORDERED that no time period for taking any 20 subsequent action in connection with this appeal may be extended under 21 37 C.F.R. § 1.136(a)(1)(iv) (2008). 22 AFFIRMED Appeal 2009-011912 Application 11/131,307 24 ack cc (via First Class mail) DRINKER BIDDLE & REATH (DC) 1500 K STREET, N.W. SUITE 1100 WASHINGTON DC 20005-1209