OUTOKUMPU OYJ

Patent Trials and Appeals Board

Jul 21, 2021

2021003356 (P.T.A.B. Jul. 21, 2021)

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.
13/642,432 10/19/2012 James Oliver 44627-5 PCT US 5204
31554 7590 07/21/2021
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
LIANG, ANTHONY M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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):
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES OLIVER, JAN Y. JONSSON, and JUHO TALONEN
Appeal 2021-003356
Application 13/642,432
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, 14, 15, 18, and 20–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed October 19, 2012
(“Spec.”); the Final Office Action dated September 25, 2020 (“Final Act.”);
the Appeal Brief filed February 18, 2021 (“Appeal Br.”); the Examiner’s
Answer dated March 10, 2021 (“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Outokumpu Oyj. Appeal
Br. 1.
Appeal 2021-003356
Application 13/642,432

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CLAIMED SUBJECT MATTER
The claims are directed to a method for selecting a ferritic-austenitic
stainless steel. Independent claim 1, reproduced below, illustrates the
claimed subject matter:
1. A method for selecting a ferritic-austenitic
stainless steel, comprising:
applying a heat treatment to one or more stainless steels
within a temperature range of 900-1200°C, followed by air
cooling or water cooling so that the one or more stainless steel
has 45-75 % austenite phase with a remaining phase being
ferrite; and
straining to 0.30 true strain within the temperature range
0-50°C, yielding 50% transformation of the austenite phase to
martensite phase in order to utilize the transformation induced
plasticity (TRIP) and hence a measured Md30 of 0-50°C; and
selecting a stainless steel with a measured Md30 of 0-50°C
and an elongation value from 39% to 47%.
Appeal Br. 9 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal (Ans. 3;
Final Act. 3–8):
I. Claims 1, 3, 18, and 20–23 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Oikawa3 and Nunes;4 and
II. Claims 14 and 15 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Oikawa.

3 Oikawa et al., US 2011/0097234 A1, published Apr. 28, 2011.
4 Nunes, US 3,871,925, issued Mar. 18, 1975.
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DISCUSSION
After review of the evidence in light of the Appellant’s and the
Examiner’s opposing positions, we determine that the Appellant has not
identified reversible error in the Examiner’s rejections. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action,
the Examiner’s Answer, and the reasons set forth below.
Rejection I — Obviousness over Oikawa and Nunes
The Examiner finds that Oikawa teaches claim 1’s method of
selecting a ferritic-austenitic stainless steel and includes a specific example
of forming a ferritic-austenitic stainless steel where the heating temperature
is 1000°C, austenite phase is 59%, and the calculated Md30 temperature is
20.4 °C, which are values within the ranges of claim 1. Final Act. 3 (citing
Oikawa, code (57), ¶¶ 1, 91, 100, Tables 2, 5 (steel 7)).
The Examiner acknowledges that, although Oikawa teaches
calculating the Md30 temperature using a formula, Oikawa does not explicitly
teach measuring the Md30 temperature by the method of clam 1, i.e., by
determining the temperature at which 0.30% true strain yields a 50%
transformation of the austenite to martensite. Final Act. 3. The Examiner
finds, however, that Nunes teaches that the Md30 may be measured via tensile
tests by determining the temperature at which a true strain of 0.30%
produces a 50% martensite transformation. Final Act. 4 (citing Nunes 3:48–
64). The Examiner determines that it would have been obvious to have
measured the Md30 values of Oikawa’s stainless steel via tensile tests as
taught by Nunes, to determine the true Md30 temperature. Final Act. 4. The
Examiner also determines that one of ordinary skill in the art would have
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expected the measured Md30 temperature of Oikawa’s stainless steel to fall
within claim 1’s range given that Oikawa, as modified by Nunes, teaches the
same materials processed in a substantially identical manner. Id. For similar
reasons, the Examiner also determines that one of ordinary skill in the art
would have expected the elongation value of Oikawa’s stainless steel, as
modified by Nunes, to fall within claim 1’s range. Id. at 5.
Appellant argues that the composition and the measured Md30 value of
Oikawa’s steels are different than the stainless steel in claim 1’s method
because Oikawa teaches that it is essential that its stainless steel includes
vanadium. Appeal Br. 4.
Appellant’s argument does not persuade us of reversible error in the
rejection. Claim 1 uses the transitional phrase “comprising” and thus does
not exclude vanadium. Additionally, Appellant has not identified sufficient
factual evidence showing that the measured Md30 of Oikawa’s steel, which
includes vanadium, falls outside claim 1’s Md30 range. “Attorney’s argument
in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
Appellant argues that because the calculated Md30 values are different
from the measured Md30 values, as demonstrated in Table 3 of Appellant’s
Specification, one of ordinary skill in the art would not have expected the
measured Md30 to be the same or close to the calculated Md30 for Oikawa’s
stainless steels. Appeal Br. 5.
Appellant’s argument does not persuade us of reversible error in the
rejection. Although the calculated and measured Md30 values of a stainless
steel may be different, because the composition of Oikawa’s stainless steel is
the same or similar to the composition of the stainless steel described in
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Appellant’s Specification, and is processed, i.e., heat treated and cooled, in
the same or similar manner, we are not persuaded of reversible error in the
Examiner’s determination that one of ordinary skill in the art would have
expected the measured Md30 value of Oikawa’s stainless steel to fall within
claim 1’s Md30 range. Compare Spec. 8–9 (Tables 1, 2), and claim 1, with
Oikawa, code (57), ¶¶ 91, 100, Tables 2, 5 (steel 7).
Appellant argues that Oikawa and Nunes do not teach a stainless steel
composition with the recited austenite phase. Appeal Br. 5. Appellant also
argues that because the compositions of Oikawa’s stainless steel, a duplex
stainless steel, and Nunes’ stainless steel, an austenite steel, are different,
one of ordinary skill in the art would not have applied Nunes’ teachings to
Oikawa, i.e., measured the Md30 values of Oikawa’s duplex stainless steel.
Id. at 5–6.
Appellant’s arguments do not persuaded us of reversible error in the
rejection. Oikawa’s Table 5 includes an example of a stainless steel with an
austenite phase of 59%, which falls within claim 1’s range. See Oikawa,
Table 5 (steel 7). Although Nunes’ austenite steel is not the same as
Oikawa’s duplex steels, Appellant admits that the method of measuring the
Md30 with tensile samples is similar for both types of steels. Reply Br. 3.
Thus, we are not persuaded that it would have been beyond the level of skill
in the art to measure the Md30 value of Oikawa’s stainless steel based on
Nunes’ teachings. And, as discussed above, because the composition of
Oikawa’s stainless steel is the same or similar to the composition of the
stainless steel described in Appellant’s Specification, and is processed, i.e.,
heat treated and cooled, in the same or similar manner, we are also not
persuaded of reversible error in the Examiner’s determination that one of
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ordinary skill in the art would have expected the measured Md30 and
elongation values of Oikawa’s stainless steel to fall within claim 1’s ranges.
Rejection II — Obviousness over Oikawa
Appellant has not presented any separate, substantive arguments with
respect to the rejections of claims 14 and 15 aside from the arguments
presented for claim 1 above. Appeal Br. 7. Accordingly, we sustain the
rejections of those claims for the same reasons as set forth above with
respect to claim 1.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 18, 20–
23
103(a) Oikawa, Nunes 1, 3, 18, 20–
23

14, 15 103(a) Oikawa 14, 15
Overall
Outcome
1, 3, 14, 15,
18, 20–23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED