Ex Parte BONNEFOIS et al

Patent Trials and Appeals Board

Jan 30, 2019

14622402 - (D) (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. § 134 from the Examiner's
decision to reject claims 1-8, 26 and 27. We have jurisdiction under 35
U.S.C. § 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:
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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. § I03(a) as unpatentable
over Fujisawa2 (WO 2005/073422 Al, Aug. 11, 2005).
II. Claims 26-27 rejected under 35 U.S.C. § 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
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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 1100°C and to obtain a ferrite proportion between 35 and 65% by
volume at 1100°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. § 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. § 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
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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.
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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. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejections under 35 U.S.C. § 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. § 1.136(a)(l).
AFFIRMED
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