Ex Parte Das

Patent Trial and Appeal Board

Sep 19, 2012

12191375 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/191,375 08/14/2008 Gopal Das PA-0001285U;
67097-1044
1707
54549 7590 09/19/2012
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
YEE, DEBORAH
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
09/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte GOPAL DAS
____________

Appeal 2011-004414
Application 12/191,375
Technology Center 1700
____________

Before HUBERT C. LORIN, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-4, 6-10, 13, 14, and 16-21. We have jurisdiction under
35 U.S.C. § 6.

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
Appeal 2011-004414
Application 12/191,375

2
1. A method of processing a workpiece of maraging
steel, comprising:
receiving a workpiece of maraging steel having a
composition comprising 17wt%-19wt% of nickel, 8wt%-
12wt% of cobalt, 3wt%-5wt% of molybdenum, 0.2wt%-
1.7wt% of titanium, 0.05wt%-0.15wt% of aluminum, and a
balance of iron and that has been subjected to
thermomechanical processing at an austenite solutionizing
temperature; and
directly aging the workpiece of maraging steel at an
aging temperature to form precipitates within a microstructure
of the workpiece of maraging steel, without any intervening
heat treatments between the thermomechanical processing and
the direct aging, wherein the thermomechanical processing and
the direct aging provide the workpiece of maraging steel with
an average ASTM grain size of 10 and a percent elongation of
about 9.5 %.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tuffnell US 3,453,102 July 1, 1969

THE REJECTION
1. Claims 1 to 4,6 to 10,13,14 and 16 to 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tuffnell.
ANALYSIS

As an initial matter, Appellant has not presented separate arguments
for all of the rejected claims. Rather, Appellant’s arguments are principally
directed to independent claim 1. Any claim not separately argued will stand
Appeal 2011-004414
Application 12/191,375

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or fall with its respective independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We adopt the Examiner’s position and response to Appellant’s
arguments are our own. We add the following for emphasis.
Appellant does not dispute the accuracy of the comparison made in
the table presented by the Examiner on page 4, and in the table presented by
the Examiner on page 5 of the Answer. Based upon the overlap in process
parameters and alloying constituent ranges, the Examiner concludes that
Tuffnell makes obvious Appellant’s claimed invention. We agree, absent
evidence of criticality. When claimed ranges overlap or lie inside ranges
disclosed by the prior art for every component in a claim, a prima facie case
of obviousness is established. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Indeed,
the law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims.
These cases have consistently held that the Appellant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990).

Appellant argues that:
Moreover, although a composition overlapping a claimed
composition establishes prima facie obviousness, the claimed
features of the average ASTM grain size of 10 and % EL of
about 9.5% are separate, distinct elements of the claim that the
Examiner has not found in the Tuffnell reference.
Reply Br. 2.
Appeal 2011-004414
Application 12/191,375

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The above argument made by Appellant is not convincing because, as
explained by the Examiner:
. . . Tuffnel [sic] teaches a substantially similar product in both
structure and composition (aged martensite and overlap in alloying
constituents) as well as being produced by a substantially identical
process to achieve similar ranges of high tensile strength and yield
strength and elongation for the reasons stated in the Grounds of
Rejection; and because of these similarities then an average ASTM
grain size of 10 Ni3Mo and Ni3Ti precipitates are presumed inherent
in absence of evidence (e.g. by comparative test data) to the contrary,
see MPEP 2112.01(I).
Ans. 9. We agree, and having determined that Tuffnell suggests that stated
above, we concur with the Examiner that its associated properties would
have naturally flowed from such suggestion. See In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the [limitation], [applicants’] application itself instruct that [the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.”); see also
In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of
patent law, a compound and all of its properties are inseparable; they are one
and the same thing.”).
In view of the above, we affirm the rejection.

Appeal 2011-004414
Application 12/191,375

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CONCLUSIONS OF LAW AND DECISION
The rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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