VALLOUREC TUBES FRANCE

Patent Trials and Appeals Board

Dec 27, 2021

2021004973 (P.T.A.B. Dec. 27, 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.
16/074,558 08/01/2018 Valentin ROSSI 514916US 7215
22850 7590 12/27/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CHRISTY, KATHERINE A
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
12/27/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALENTIN ROSSI,
FERNANDO ANDRES BONILLA ANGULO, and NICOLAS DULCY
Appeal 2021-004973
Application 16/074,558
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. An oral hearing was held on
December 16, 2021, a transcript of which will be made of record. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Vallourec Tubes France as the real
party in interest. Appeal Brief (“Appeal Br.”) filed April 29, 2021, 1.
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CLAIMED SUBJECT MATTER
The invention recited in the claims on appeal relates to a steel
composition intended to be in contact with combustion fumes, in particular
fumes containing carbon, wherein the walls and piping made from this
composition have improved resistance to coking (deposition of carbon).
Specification (“Spec.”) filed August 1, 2018, 1:3–4, 26–28, and 3:2–4.2
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A steel composition having a composition consisting of,
in percentage by weight:
no more than 0.15% carbon,
from 0.3 to 1% manganese,
from 1.4 to 3% silicon,
from 0.5 to 3% copper,
from 8 to 10% chrome,
from 0.5 to 3% nickel,
from 0.01 to 0.07% nitrogen,
from 0.8 to 1.1 % molybdenum, and
the remainder of the composition being iron (Fe) and
impurities, wherein said steel composition is suitable for
manufacturing components intended to be used in facilities for
processing and transformation of petroleum products.

2 This Decision also cites to the Examiner’s Answer (“Ans.”) dated June 16,
2021, and the Reply Brief (“Reply Br.”) filed August 16, 2021.
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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Lecour et al. (“Lecour”) US 2002/0129876 A1 Sept. 19, 2002
Oku et al. (“Oku”) US 2012/0085513 A1 Apr. 12, 2012
Isozaki et al. (“Isozaki”)3 JP 2006-265663 A Oct. 5, 2006
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103:
1. Claims 1–10 and 12–14 as unpatentable over Isozaki;
2. Claim 11 as unpatentable over Isozaki in view of Oku; and
3. Claims 15 and 16 as unpatentable over Isozaki in view of
Lecour.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in 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.”)). After considering
Appellant’s arguments and the evidence of record, we are not persuaded of
reversible error in the Examiner’s rejections for substantially the fact
findings, reasoning, and conclusions set forth in the Examiner’s Answer,
which we adopt as our own. We offer the following for emphasis.

3 The Examiner relies, without objection, on the English-language machine
translation of this document. Citations to Isozaki in this Decision, likewise,
refer to this machine translation.
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Rejection 1: Obviousness over Isozaki
The Examiner rejects claims 1–10 and 12–14 under 35 U.S.C. § 103
as unpatentable over Isozaki. Ans. 4–7. Appellant argues the rejected claims
as a group, focusing on the limitations of claim 1. We select claim 1 as
representative; claims 2–10 and 12–14 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv) (2020).
The Examiner finds that Isozaki discloses a steel composition
consisting of ranges for carbon, manganese, silicon, copper, chromium,
nickel, nitrogen, and molybdenum which overlap the ranges for these
elements in the steel composition recited in claim 1. Id. at 4. On this basis,
the Examiner determines that a prima facie case of obviousness exists. Id.
(citing to MPEP § 2144.05(I)). In addition, the Examiner determines that the
limitation set forth in claim 1’s “wherein” clause is an intended use of the
recited steel composition, merely expressing a suitability or characteristic of
thereof. Id. at 4, 10.
Appellant presents two arguments against the Examiner’s obviousness
conclusion based on Isozaki. The first argument is that the Examiner has
failed to establish a reasonable expectation of success, despite an apparent
overlap in the recited elements of the recited steel composition. Appeal Br.
5–6; Reply Br. 3–5. The second argument is that the recited steel
composition yields unexpected results, thereby rebutting any potential prima
facie case of obviousness. Appeal Br. 6–9; Reply Br. 6–10.
In the first argument, Appellant asserts that despite the apparent
overlap between Isozaki’s and claim 1’s steel compositions, Isozaki fails to
teach a working example having a Mo content between 0.8 and 1.1 wt%,
much less a working example having all the elements and amounts recited in
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claim 1. Appeal Br. 5. Appellant also asserts that the Mo and Ni ranges of
claim 1 are specific selections from, but not disclosed in, Isozaki’s ranges.
Id. Appellant contends that the Examiner fails to demonstrate a reasonable
suggestion to do what Appellant has done with a reasonable expectation of
success. Id. at 6 (citing In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)).
As such, Appellant urges that the Examiner fails to provide a prima facie
case of obviousness. Id.
We disagree. As Appellant concedes, Isozaki discloses a steel
composition having the same elements recited in claim 1 in ranges that
overlap the recited ranges. Our reviewing court has held that the existence of
overlapping or encompassing ranges between the prior art and the claimed
invention, a prima facie case of obviousness exists. See E.I. DuPont de
Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018) (“[A] prima
facie case of obviousness typically exists when the ranges of a claimed
composition overlap the ranges disclosed in the prior art.” (quoting In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003))); In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005). In other words, in order to meet her burden of
showing a prima facie case of obviousness in this case, it is sufficient that
the Examiner has shown that the prior art steel composition includes the
elements recited in claim 1, wherein the prior art ranges for these elements
overlap the claimed ranges.4

4 We note that the Examiner states that in cases involving overlapping
ranges, a reasonable expectation of success and a suggestion to do what
Appellant has done are not required. Ans. 9 (citing MPEP 2144.05(I)).
However, this MPEP section does not support this statement, nor do we
believe it to be correct. To the contrary, logically, a prima facie case of
obviousness involving overlapping ranges is based on the concept that the
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We recognize that a reference’s disclosed range may be so broad as to
encompass a very large number of possible distinct compositions relative to
a very narrow claimed composition, such that the situation is analogous to
the obviousness of a species when the prior art broadly discloses a genus.
MPEP § 2144.05(I) (citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994) and In
re Jones, 958 F.2d 347 (Fed. Cir. 1992)). However, here Appellant has not
shown that Isozaki’s steel compositions are so broadly disclosed relative to
the scope of the claimed steel compositions as to represent, respectively, a
broad genus and narrow species. Consequently, we are satisfied that the
Examiner has established a prima facie case of obviousness.
In the second argument, Appellant argues that the recited steel
composition yields unexpected results and directs our attention to Tables 3
and 4, as well as the supporting text on pages 15–22, of the Specification.
Appeal Br. 7. Appellant contends that this experimental data “clearly
illustrates [] substantial benefits flowing from the claimed invention.” Id.
Appellant specifically directs attention to Examples 5 and 7–10, having the
claimed Ni concentration, as providing “unexpectedly superior results
compared to those outside the claimed invention (see steel 1*–4*, 6*, and
11*).” Id. Appellant asserts that the Examiner minimized the importance of
this evidence by focusing on “only these selected examples,” and urges that
the focus should be on the entirety of Tables 3 and 4, as well as
Specification pages 15–22, as showing the claimed invention provides
improved coking performance. Id. at 7–8. At the oral hearing, Appellant

overlap is sufficient to establish suggest producing a composition that is
disclosed in the prior art (in the region of overlap) with a reasonable
expectation of success.
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argued that the Examiner failed to fully consider the claim limitation that the
steel composition is suitable for manufacturing components intended to be
used in facilities for processing and transformation of petroleum products,
contending for the first time that such a limitation requires a combination of
improved anti-coking properties and mechanical properties, as demonstrated
by the inventive Examples of Specification Tables 3 and 4.
Appellant additionally distinguishes between a claim which broadly
recites a combination comprising several elements and a claim that recites
that combination and having defined properties. Appeal Br. 9 (citing Ex
parte Watanabe, Appeal 2012-007823, Decision on Appeal, dated August
14, 2013, pp. 5–6 (PTAB 2013)). Appellant contends that, in the former
claim, Appellant has the burden of showing unexpected results
commensurate in scope with the breadth of this claim. Id. And in the latter
claim, because the claim is limited to only those combinations having the
claimed properties, Appellant urges that the showing that the properties
would not have been expected will be commensurate in scope with the
claim. Id. Appellant contends that claim 1 falls into the latter claim category
because claim 1 requires that the steel composition must be suitable for
manufacturing components for use in facilities for processing and
transformation of petroleum products. Id. Appellant directs attention to the
Specification, pages 1 and 2, in support of the demands of such a use. Id. at
9–10. In contrast, Appellant contends that Isozaki is directed to a steel
composition for transmission belts which is not suitable for manufacturing
components to be used in facilities for processing and transformation of
petroleum products. Id. at 11.
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Appellant’s arguments are not persuasive of reversible error. “[T]he
existence of overlapping or encompassing ranges shifts the burden to
[Appellant] to show that [the claimed] invention would not have been
obvious.” In re Peterson, 315 F.3d at 1330. Where the prior art discloses a
range, and the claimed invention falls within that range, the burden shifts to
Appellant to establish that (1) the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); (2) there
were new and unexpected results relative to the prior art, In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990); or (3) there are other pertinent
secondary considerations, Galderma Laboratories v. L.P. Tolmar, Inc., 737
F.3d 731 (Fed. Cir. 2013).
Thus, the burden of establishing that unexpected results support a
conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996). Also, “when unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied-
upon results must be commensurate in scope with the claims. See In re
Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one
(or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of [the CCPA] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
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1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is
well settled that unexpected results must be established by factual evidence.
‘Mere argument or conclusory statements in the specification does not
suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
Here, claim 1 fails to specifically recite any property of the steel
composition, nor does Appellant identify what the required or inherent
properties of a steel composition suitable for use in the petroleum
environment must be.5 Notably, the Specification fails to identify specific
values of anti-coking properties and mechanical properties that are
inherently required by the claim limitation in question. In other words,
Appellant fails to disclose what values of anti-coking and mechanical
properties are necessary and sufficient to be suitable for manufacturing
components intended to be used in facilities for processing and
transformation of petroleum products. Appellant refers to Specification
pages 1 and 2 as stating that such steel compositions “must have mechanical
characteristics suitable for the demanding conditions such as high

5 To the extent that the Board’s non-precedential decision in Watanabe,
which Appellant cites, has persuasive merit in the appeal before us, we find
claim 1 to be more akin to the first situation in which the claim fails to recite
a narrowing property not shared by all the steel compositions within its
scope. As such, Appellant has the burden of showing unexpected results
commensurate in scope with the breadth of this claim. Peterson, 315 F.3d at
1329–31.
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temperatures and high stresses,” but fails to recite what those mechanical
characteristics must be. Huang, 100 F.3d at 139.
In addition, the Specification expresses that the Inventors were
surprised twice, yet both times refers to the influence of Ni and Cu on the
improvement to reducing coking. Spec. 25:11–12 and 17–19. However,
stating surprise that two elements present in the prior art steel compositions
have a surprising beneficial effect alone is insufficient to establish that the
results shown in the Specification for a steel composition having eight
recited elemental limitations (and no recited processing conditions) would
have been unexpected to an ordinary artisan. Baxter Travenol Labs., 952
F.2d at 392. Otherwise, Appellant fails to demonstrate the results shown in
the Specification for steel compositions within the scope of claim 1 would
have been unexpected to one of ordinary skill in this art. Klosak, 455 F.2d at
1080.
Indeed, aside from referring us to Specification Tables 3 and 4, and
pages 15–22, and broadly stating that Examples 5 and 7–10 show
unexpectedly superior coking performance compared to Examples 1*–4*,
6*, and 11*, Appellant makes no further attempt to explain the reference
data. Such broad-sweeping statements are hardly an explication of the results
sufficient to carry Appellant’s burden. Huang, 100 F.3d at 139. Appellant
fails to identify, much less, establish what level of coking performance
would be considered unexpected to one of ordinary skill in the art. In this
regard, Appellant merely refers to improved coking performance, which
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Appellant admits is obtainable using a steel composition, Example 11*,
outside the scope of claim 1.6 See Spec. Table 3, and 18:7–10.
Moreover, even looking beyond Appellant’s statements, we note that
Examples 1* and 2* each have very low levels of Si, Cu, and Ni near the
lower ends of Isozaki’s disclosed ranges for these elements, while Examples
3* and 4* each have very low levels of Cu and Ni, but somewhat higher
levels of Si. Spec. Table 1. Claim 1 broadly encompasses a steel
composition having a 1.4 wt% Si, 0.5 wt% Cu, and 0.5 wt% Ni, yet none of
the inventive examples has a composition with such combined low levels of
each of these elements. Id. In addition, only two comparative Examples (6*
and 11*) provide combined amounts of Si, Cu, and Ni that exceeds the
combined minimum amounts of these elements. Id. Of these two
comparative examples, Appellant only shows data for Example 11*, which,
as explained above, has improved coking performance, and indeed the best
performance of any of the examples tested. Id. at Table 3. Quite apart from
these elements, the Examples do not include amounts over the entire claimed
ranges for Mn, Cr, N, and Mo, or a persuasive technical explanation, such
that an ordinary artisan would accept that the results shown are
commensurate for the entire range of claim 1’s steel compositions. Still
further, absent any explanation from Appellant, we note that the heat
treatments vary between the various examples making comparison
considerably more difficult, especially because the treatments the samples
tested in Table 3 underwent are not identified. Id. at Table 2.

6 We note that comparative example 11* has a content of Si exceeding the
amount disclosed in Isozaki.
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As to the mechanical test results of Table 4, Appellant fails to provide
with any specificity any explanation of the results disclosed therein.
Appellant fails to argue or explain with any specificity any mechanical
property of the steel compositions except for the anti-coking property, as
shown in Table 3. Claim 1 fails to recite any mechanical property limitation.
Also, Appellant fails to direct our attention to any evidence that the Table 4
results would have been unexpected to one of ordinary skill in the art.
Notably, Appellant does disclose that the minimum average impact energy
defined by the standard NF En 10216-2 for this type of steel is 40 J in the
longitudinal direction at 20°C and 27 J in the transverse direction at 20°C.
Spec. 21:1–3. But Appellant’s data appears to be limited solely to the
average impact energy in the transverse direction at -30°C, 0°C, and 20°C.
Even then, one inventive Example (8) fails to provide a minimum average
impact energy of 27 J at 20°C under any heat treatment, indicating that any
unexpected result for impact energy is not inherent to all the steel
compositions within the scope of claim 1.
Given the above discussion, we conclude, as did the Examiner, that
Appellant fails to demonstrate that the claimed steel compositions yield
results that would have been unexpected to an ordinary artisan
commensurate with the scope of the claims.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1–10 and 12–14 as unpatentable over Isozaki.
Rejections 2 and 3: Obviousness over Isozaki and Oku or Lecour
Under 35 U.S.C. § 103, the Examiner rejects claim 11 as unpatentable
over Isozaki in view of Oku, and claims 15 and 16 as unpatentable over
Isozaki in view of Lecour. Ans. 7–9. Appellant argues that neither Oku nor
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Lecour remedy the deficiencies in Isozaki nor provide a reasonable
expectation of the unexpected results provided by the claimed invention.
Appeal Br. 11–12. Appellant further contends that neither Oku nor Lecour
provide any basis to modify Isozaki to arrive at a steel composition that is
suitable for manufacturing components to be used in facilities for processing
and transformation of petroleum products. Id.
However, as explained in the Examiner’s Answer and above, there is
no deficiency in Isozaki requiring remedy from either Oku or Lecour. In
addition, for the reasons explained above, we are satisfied that a steel
composition suitable for manufacturing components for use in facilities for
processing and transformation of petroleum products as recited in claim 1
would have been prima facie obvious over Isozaki’s teaching alone.
Accordingly, we sustain the Examiner’s obviousness rejections of
claims 11, 15, and 16 as unpatentable over Isozaki in view of Oku or Lecour.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–
16 under 35 U.S.C. § 103 as unpatentable over Isozaki, alone or further in
view of Oku or Lecour, is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 12–14 103 Isozaki 1–10, 12–14
11 103 Isozaki, Oku 11
15, 16 103 Isozaki, Lecour 15, 16
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Overall
Outcome
1–16

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