OUTOKUMPU OYJ

Patent Trials and Appeals Board

Apr 5, 2021

2020005552 (P.T.A.B. Apr. 5, 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.
14/897,560 12/10/2015 James Oliver 44627-8 PCT US 1723
31554 7590 04/05/2021
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
04/05/2021 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, ERIK SCHEDIN, and
RACHEL PETTERSSON1
____________

Appeal 2020-005552
Application 14/897,560
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 6–14. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to stainless steel compositions.
E.g., Spec. 1; Claim 9. Claim 1 is reproduced below from page 7 (Claims
Appendix) of the Appeal Brief (some formatting added):

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Outokumpu Oyj. Appeal Br. 1.
Appeal 2020-005552
Application 14/897,560

2
1. A duplex ferritic austenitic stainless steel having 40 - 60 volume
% ferrite and 40 - 60 volume % austenite, characterized in that
the steel consists essentially of in weight%
less than 0.07 % carbon (C),
0.1 - 2.0 % silicon (Si),
3 - 5 % manganese (Mn),
19 - 23 % chromium (Cr),
1.1 - 1.9 % nickel (Ni),
1.1 - 1.5 % copper (Cu),
0.18 - 0.30 % nitrogen (N),
optionally molybdenum (Mo) and/or tungsten (W) in a total
amount calculated with the formula (Mo+½ W) < 1.0 %,
0.001 - 0.005 % boron (B),
up to 0.03 % of each of cerium (Ce) and/or calcium (Ca),
balance being iron (Fe) and inevitable impurities in conditions
for the ferrite formers and the austenite formers, i.e. for a
chromium equivalent (Creq) and a nickel equivalent (Nieq):
20 < Creq < 24.5 and Nieq > 10, where
Creq = Cr+ 1.5Si +Mo+ 2Ti+ 0.5Nb;
Nieq = Ni + 0.5Mn + 30(C+N) + 0.5(Cu+Co), and wherein the
duplex ferritic austenitic stainless steel has a critical pitting
temperature (CPT) of 13.4 - 18. 9° C.
ANALYSIS
Claims 1 and 6–14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Fujisawa (JP 2006183129A, published July 13, 2006) and
McGuire (Michael F. McGuire, Stainless Steels for Design Engineers
(2008)). The Appellant argues the claims as a group. We select claim 1 as
Appeal 2020-005552
Application 14/897,560

3
representative, and the remaining claims will stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
After review of the appeal record, we determine that the Appellant has
not identified reversible error in the Examiner’s rejection. Accordingly, we
affirm the rejection for reasons set forth below, in the Final Action dated
Dec. 12, 2019, and in the Examiner’s Answer.
The Examiner’s rejection appears at pages 3–5 of the Final Action and
is repeated at pages 4–7 of the Answer. In summary, the Examiner finds
that Fujisawa teaches a stainless steel with ingredient concentrations that
overlap those of claim 1, and that the properties recited by claim 1 are
inherent in stainless steels taught or suggested by Fujisawa. Ans. 4–7.
The Appellant argues that Fujisawa’s stainless steels do not “consist[]
essentially of” the ingredients recited by claim 1 because Fujisawa allegedly
requires “the presence of P and S in its steels,” and those ingredients are not
listed by claim 1. Appeal Br. 5–6. According to the Appellant, Fujisawa’s
steels may therefore have properties that are materially different from those
of the claimed steels. Id. at 6.
The Appellant’s argument hinges on the Appellant’s assertion that
Fujisawa’s steels require the presence of P and S. See id. at 5–6. We reject
that assertion because Fujisawa teaches that P may be present in an amount
of “0.1% or less” and that S may be present in the amount of “0.03% or
less.” Fujisawa at Abstr. The “or less” recited by Fujisawa teaches or
suggests steels in which P and S are absent, i.e., 0%. Id. The Appellant
does not dispute that Fujisawa’s steels without P and S would possess the
properties recited by claim 1.
Appeal 2020-005552
Application 14/897,560

4
Even if we were to agree with the Appellant that Fujisawa’s steels
require the presence of at least some P and S as impurities, we would still
find the Appellant’s argument unpersuasive. As the Examiner explains,
Ans. 16, Fujisawa expressly teaches that P and S are undesirable impurities
whose content should be minimized, Fujisawa at 15. The Appellant’s own
Specification likewise teaches that P and S are undesirable impurities whose
content should be minimized, Spec. 9, and claim 1 expressly permits the
presence of “inevitable impurities,” which includes P and S. Given the
substantial similarities of the disclosures of Fujisawa and the Appellant’s
Specification concerning the presence of P and S, the Appellant provides no
persuasive reason to believe that the steels of claim 1 would possess
materially different properties than the steels of Fujisawa, even were we to
assume that Fujisawa’s steels necessarily include trace amounts of P and S
as impurities.
We are not persuaded of reversible error in the Examiner’s rejection.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections . . . .”).
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
1, 6–14 103 Fujisawa, McGuire 1, 6–14
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