Ex Parte BONNEFOIS et al

Patent Trial and Appeal BoardJan 30, 2019

14622402 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/622,402 02/13/2015 23280 7590 02/01/2019 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Bernard BONNEFOIS 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 719.lOOlCON 1521 EXAMINER JOHNSON, JONATHAN J ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 02/01/2019 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 BERNARD BONNEFOIS, JEROME PEULTIER, MICKAEL SERRIERE, JEAN-MICHEL HAUSER, and ERIC CHAUVEAU Appeal2018-001445 Application 14/622,402 1 Technology Center 1700 Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision to reject claims 1-8, 26 and 27. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 The Appellant and the real party in interest is Industeel France. (App. Br. 2). Appeal2018-001445 Application 14/622,402 The claims are directed to a duplex stainless steel. App. Br. 2. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A duplex stainless steel, the composition of which comprises, in % by weight: C::::; 0.05%; 21 % ::::; Cr ::::; 25%; 1 % ::::; Ni::::; 2.5%; 0.16% ::::;N::::; 0.28%; Mn::::;2.0%; Mo+W/2::::; 0.50%; Mo::::; 0.45%; W::::; 0.15%; Si::::; 1.4%; Al::::; 0.05%; 0.11 % ::::; Cu::::; 0.50%; S::::; 0.010%; P::::; 0.040%; Co::::; 0.5%; REM::::;0.1%; v::::;o.5%; Ti::::; 0.1%; Nb::::; 0.3%; Mg::::; 0.1%; the balance being iron and impurities resulting from smelting, and the micro structure comprising austenite and 3 5 to 65% ferrite by volume, said composition satisfying the following relationships: 2 Appeal2018-001445 Application 14/622,402 40::::; lp::::; 70, where lp = 6 x (% Cr + 1.32 x % Mo + 1.27 x % Si) - 10 x (%Ni+ 24 x % C + 16.15 x % N + 0.5 x % Cu+ 0.4 x % Mn) - 6.17 and hcR 2 30.5, where hcR =%Cr+ 3.3 x % Mo+ 16 x % N + 2.6 x % Ni - 0.7 x%Mn. Appellant (see Appeal Brief, generally) requests review of the following rejections from the Examiner's Final Office Action: I. Claims 1-8 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Fujisawa2 (WO 2005/073422 Al, Aug. 11, 2005). II. Claims 26-27 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Fujisawa and Espy (US 4,331,474, May 25, 1982). We refer to the Examiner's Final Office Action for a complete statement of the rejections. Final Act. 2--4. OPINI0N3 This is the second time rejected claims based on this subject matter have come before us for adjudication. The subject matter on appeal relates 2 The Examiner relied on U.S. Patent Publication No. US 2007/0163679 Al to Fujisawa, published on July 19, 2007 as the English equivalent to Fujisawa's WO 2005/073422 Al reference. Final Act. 2. Accordingly, we refer to the published application when discussing Fujisawa in our decision. 3 Application 14/622,402, DUPLEX STAINLESS STEEL, filed 13 February 2015 is a continuation of application 12/305,014 filed 11 May 2009 which 3 Appeal2018-001445 Application 14/622,402 to a duplex stainless steel having the appropriate proportion of austenite exhibiting good stress corrosion resistance, and to obtain metal with high mechanical properties. (Spec. ,r 21 ). According to the Specification when the steel composition has the percentages by weight of chromium, molybdenum, nitrogen, nickel and manganese satisfying the relationship hcR 2 30.5, the steel exhibits good localized corrosion resistance, that is to say resistance to the formation of pits or crevices. (Spec. ,r 40). The Specification also discloses the ferrite Index formula lp describes the ferrite content at 1100Â°C and to obtain a ferrite proportion between 35 and 65% by volume at 1100Â°C, the ferrite Index must be between 40 and 70. (Spec. ,r,r 42--44). After review of the respective positions provided by Appellant and the Examiner, we AFFIRM for the reasons presented by the Examiner. 4 The Examiner found Fujisawa discloses an austenitic ferritic (duplex) stainless steel comprising amounts of C, Cr, Ni, N, Mn, Mo, Si, Al, Cu, S, P, REM, V, Ti, Nb, Mg, Ca, W, Co and Fe that overlap the amounts required by the claimed invention. (Final Act. 2--4; Fujisawa Abstract, ,r,r 66-106). The Examiner determined the claimed invention would have been obvious was as the national stage under 35 U.S.C. Â§ 371 of PCT/FR2007/000994 filed 15 June 2007. 4 Appellant presents arguments only for independent claim 1 and dependent claims 2 and 5. See Appeal Brief, generally. Accordingly, we limit our discussion to these claims. Dependent claims 3, 4, and 6-8 are not separately argued. Id. In addition, Appellant does not present substantive arguments for the separate rejection of dependent claims 26 and 27 under 35 U.S.C. Â§ 103(a) as unpatentable over Fujisawa and Espy. Id. at 9. Accordingly, dependent claims 3, 4, 6-8, 26 and 27 stand or fall together with independent claim 1. 4 Appeal2018-001445 Application 14/622,402 because Fujisawa describes the same utility throughout the described ranges. (Final Act. 2-3). The Examiner further states: In addition, even though Fujisawa et al. do not expressly teach the claimed formula; it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In re Cooper, 134 F .2d 630 (CCPA[1943]). In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al, 149 USPQ 685, 688 [(CCPA1966)]. (Final Act. 4 ). Appellant argues the hcR formula in the claimed invention specifies the contents of the Cr, Mo, N, Ni and Mn in the steel. (App. Br. 4). Appellant argues Fujisawa does not show or disclose or make obvious the duplex stainless recited in claim 1 and specifically a steel with the claimed composition and having an hcR 2 30.5 because Fujisawa's compositions have an hcR within broad range of7.4 to 65.6. (App. Br. 5). Appellant contends that Fujisawa fails to identify any composition meeting the hcR formula and, thus, there is no prima facie case of obviousness. (App. Br. 6- 8). We are unpersuaded by these arguments. Appellant's arguments focus on the compositional content as specified by the formula hcR 2 30.5, where hcR =%Cr+ 3.3 x % Mo + 16 x % N + 2.6 x % Ni - 0.7 x % Mn in claim 1. What Appellant really seeks is a patent on a duplex steel resulting from mixtures of Cr, Mo, N, Ni and Mn having the claimed ratios and proportions, which are within the ranges generally disclosed or suggested by Fujisawa. However, Appellant identifies nothing in the record establishing that 5 Appeal2018-001445 Application 14/622,402 the claimed ratios and proportions are critical. It is incumbent upon Appellant to establish by a proper showing that they have invented a steel composition possessing characteristics or qualities of utility that are new and materially different from the compositions disclosed in Fujisawa. See In re Swenson 132 F.2d 1020 (CCPA 1948); In re Cooper supra. Appellant's arguments identify no reversible error in the Examiner's reliance on In re Cooper or the selection of values from the ranges disclosed in Fujisawa to satisfy the claimed formula. Appellant's arguments suggest that, to rely on the Examiner's proffered rationale, the prior art must disclose a working example that anticipates a claimed formula. In Cooper, however, no such working example or specific composition was identified in the prior art. Rather, the Cooper court upheld the Board's affirmance of the Examiner's obviousness rejection, and the Board's decision identified selected concentrations of tungsten, chromium, molybdenum and vanadium from a range of prior art values that satisfied the claimed formula. Cooper, 134 F.2d at 631---632. Moreover, we observe that Fujisawa describes duplex stainless steel exhibiting good stress corrosion resistance and mechanical properties. (Fujisawa ,r,r 47--48). Claims 2 and 5 Appellant's arguments focus on the compositional content as specified by the formula hcR. (App. Br. 9). These arguments are not persuasive for the reasons stated above. 6 Appeal2018-001445 Application 14/622,402 Accordingly, we affirm the Examiner's prior art rejections of claims 1-8, 26 and 27 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejections under 35 U.S.C. Â§ 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 7