Rongjie Song et al.

Patent Trials and Appeals Board

Aug 5, 2019

14361270 - (D) (P.T.A.B. Aug. 5, 2019)

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.
14/361,270 05/28/2014 Rongjie Song 706.1025 1045
23280 7590 08/05/2019
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
WANG, NICHOLAS A
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
08/05/2019 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 RONGJIE SONG and NARAYAN S. POTTORE
____________

Appeal 2018-004265
Application 14/361,270
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–10 and 13–17 of Application
14/361,270 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 2,
2017). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

1 ArcelorMittal is identified as the real party in interest. Appeal Br. 2.
ArcelorMittal Investigación y Desarrollo, S.L. is identified as the Applicant.
Appeal 2018-004265
Application 14/361,270
2
BACKGROUND
The ’270 Application describes martensitic steel compositions and
methods for making such compositions. Spec. ¶ 2. The martensitic steel
alloys described in the Specification have tensile strengths ranging from
1700–2200 MPa. Id.
Claim 1 is representative of the ’270 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A martensitic steel alloy comprising:
0.22 ≤ C ≤ 0.36 wt. %;
a carbon equivalent Ceq of less than 0.44 wherein:
Ceq = C + Mn/6 + (Cr + Mo + V)/5 + (Ni + Cu)/15,
and
C, Mn, Cr, Mo, V, Ni, and Cu being in wt. % of
the elements in the alloy; and
an ultimate tensile strength of at least 1700 MPa.
Appeal Br. 10.
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1–6, 9, and 10, and 13–17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Oh.3 Final Act. 2.
2. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oh. Answer 7.

2 The Examiner has withdrawn the rejections of claims 1, 7, and 8 as
unpatentable over Gao and Li. Answer 8.
3 KR 20090124263, published December 3, 2009. We refer to the machine
translation of record.
Appeal 2018-004265
Application 14/361,270
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DISCUSSION
Rejection 1. Appellant argues for reversal of this rejection based
upon the limitations recited in claim 1. Appeal Br. 3–6. We, therefore,
choose claim 1 as representative of the claims subject to this ground of
rejection. 37 C.F.R. § 41.37(c)(1)(iv). Dependent claims 2–6, 9, 10, and
13–17 will stand or fall with claim 1. Id.
The Examiner found that Oh describes martensitic steel alloys having
carbon content within a range that overlaps that specified in claim 1. Final
Act. 2–4. The Examiner calculated that Oh’s alloys have a minimum Ceq of
approximately 0.306. Id. at 3. The Examiner also found that Oh discloses
the tensile strength of its alloys as being 1800 MPa or more.4 Id. at 2–3.
Based upon the overlap of the ranges described in the prior art and those
recited in claim 1, the Examiner determined that claim 1 was prima facie
obvious. Id.
Appellant argues that the Examiner has not established a prima facie
case of obviousness because Oh does not expressly describe or suggest the
formula for calculation of Ceq recited in claim 1. Appeal Br. 4–5. In
particular, Appellant points out that each of Oh’s exemplary alloys has a Ceq
value in excess of 0.44, which is the upper limit recited in claim 1. Id. at 4.

4 Although Appellant complains that the Examiner did not explain his
calculations, Appellant does not argue that the Examiner’s calculation itself
was erroneous. Appeal Br. 4. At most, Appellant argues that the
Examiner’s use of Oh’s lower limit of 0.2 wt.% carbon contained in the
alloy renders the calculation irrelevant. Id. When the Examiner
recalculated the Ceq using the lower limit of the amount of carbon recited in
claim 1, Appellant does not contest the accuracy of the Examiner’s
calculation. See Answer 5; Reply Br. 4.
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Application 14/361,270
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We are not persuaded by Appellant’s argument. The Examiner
correctly found that Oh describes or suggests martensitic steel alloys
comprising 0.2–0.5 wt. % carbon, having a Ceq of 0.306 or greater, and
having a tensile strength of 1800 MPa or greater. Each of these ranges
overlaps the corresponding range recited in claim 1. Thus, the Examiner has
established a prima facie case of obviousness. In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005) (a prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same);
In re Boesch, 617 F.2d 272, 275 (CCPA 1980).
Of course, a prima facie case of obviousness may be overcome by
evidence of unexpected results. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). If the applicant presents evidence or argument regarding
unexpected results, “patentability is determined on the totality of the record,
by a preponderance of [the] evidence with due consideration to
persuasiveness of argument.” Id.
In this case, Appellant states that the criticality and advantages of the
CEQ limitation “are described at, for example, ¶¶ [0045] and [0077]-[0078]
of the present specification.” Appeal Br. 3. We have reviewed the cited
paragraphs of the ’270 Application’s Specification. Paragraph 45 describes
the effect of changing the amount of manganese present in the steel alloy on
the volume fraction and size of perlite colony in the alloy. Spec. ¶ 45.
Paragraph 45 does not mention Ceq. Id. Paragraph 77 states the naked
conclusion that having a Ceq value of less than 0.44 insures good weldability
of the alloy and defines the formula for calculating Ceq. Id. ¶ 77. Paragraph
78 contains a table showing the composition of various alloys investigated in
Example 3 of the Specification. Id. ¶ 78.
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Although Appellant’s Specification sets forth a great deal of
experimental data, Appellant’s briefing does not point us to any particular
set of data that actually shows the criticality of the Ceq limitation. To the
extent that Appellant is inviting us to look through the data and attempt to
identify the alleged evidence of criticality, we decline that invitation. We
are not truffle-hunting pigs looking for reasons to reverse the rejection that
Appellant has not identified in the record before us. See U.S. v. Dunkel, 927
F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles
buried in briefs.”).
After considering the Examiner’s prima facie case of obviousness and
those portions of the Specification specifically cited by Appellant, we
conclude that the Examiner did not err in determining that the subject matter
of claim 1 would have been obvious to a person of ordinary skill in the art.
Accordingly, we affirm the rejection of claims 1–6, 9, 10, and 13–17 as
unpatentable over Oh.
Rejection 2. In the Answer, the Examiner newly rejected claims 7
and 8 as unpatentable over Oh. Answer 7.
Appellant argues that this rejection should be reversed for the reasons
advanced for reversal of the rejection of claim 1. Reply Br. 5–6. For the
reasons set forth above, we have affirmed the rejection of claim 1. We,
therefore, do not reverse the rejection of claims 7 and 8 on this basis.
With respect to the specific limitations recited in claims 7 and 8, the
Examiner found that Oh’s alloys are “sufficiently similar to that of the
instant claim[s] such that similar properties of elongation would be expected.
See MPEP [§] 2112.01. Oh et al. discloses a similar composition, as stated
previously as well as a similar structured steel.” Answer 7.
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Appellant argues that Oh does not teach or suggest a martensitic steel
alloy comprising carbon, manganese, chromium, molybdenum, boron,
nickel, and copper in the amounts to provide a Ceq of less than 0.44. Reply
Br. 6.
We, however, have considered this argument when Appellant raised it
in connection with claim 1. As discussed above, the Examiner has
established a prima facie case of obviousness of claim 1. The Examiner,
therefore, is entitled to assume that Oh’s alloys necessarily or inherently
possess the elongation properties recited in claims 7 and 8. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant
has not pointed to any evidence demonstrating that Oh’s alloys that fall
within the scope of claim 1 do not, in fact, possess the claimed elongation
properties.
In view of the foregoing, we affirm the rejection of claims 7 and 8 as
unpatentable over Oh.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1–
10 and 13–17 of the ’270 Application.
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