Ex Parte Hoffmann

Patent Trial and Appeal BoardJun 30, 2014

12323540 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER L. HOFFMANN ____________ Appeal 2012-006437 Application 12/323,540 Technology Center 3600 ____________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS and BRANDON J. WARNER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christopher L. Hoffmann (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-18 under 35 U.S.C. § 102(b) as anticipated by Steltzlen (US 2008/0310578 A1; pub. Dec. 18, 2008). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter “pertains generally to pressurized water reactor systems and more particularly to a pressurizer heater employed in such systems.” Spec. para. 1; Figs. 3-4. Claims 1, 7 and 13 are independent. Appeal 2012-006437 Application 12/323,540 2 Claim 1 is illustrative of the claimed subject matter and recites: 1. A pressurizer for a pressurized water reactor system including a heater sheath produced by a process including the steps of: reducing cold working stresses in the sheath; and generating compressive stresses in the sheath’s outer surface after the residual cold working stresses are substantially reduced in the sheath. ANALYSIS Appellant states that “[c]laims 7 and 13 stand or fall with [c]laim 1.” App. Br. 2. Appellant does not present arguments for independent claims 7 and 13 separate from those presented for independent claim 1. Id. at 4-8. Appellant does not present arguments for dependent claims 2-6, 8-12 and 14-18 separate from those presented for independent claims 1, 7 and 13. Id.; see also id. at 2. Accordingly, Appellant has argued claims 1-18 as a group for purposes of the rejection of those claims under § 103(a). Claim 1 is representative of the group and is selected for review, with claims 2-18 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Independent claim 1 calls for “a heater sheath produced by a process” including the steps of: “reducing cold working stresses in the sheath; and generating compressive stresses in the sheath’s outer surface after the residual cold working stresses are substantially reduced in the sheath.” App. Br. 9, Clms. App’x (emphasis added). The Examiner found that [t]he limitation “heater sheath” followed by a method step (i.e., produced by a process including the steps of reducing cold working stresses in the sheath; and generating compressive stresses in the sheath’s outer surface after the residual cold working stresses are substantially Appeal 2012-006437 Application 12/323,540 3 reduced in the sheath), is only of patentable weight in as much as the method steps distinguish the final structure, and to the extent not impacting final structure are taken to be product-by-process limitations and non-limiting. A product by process claim is directed to the product per se, no matter how they are actually made. See In re Fessman, 180 USPQ 324, 326 (CCPA 1974); In re Marosi et al, 218 USPQ 289, 292 (Fed. Cir. 1983), and In re Thorpe, USPQ 964, 966 (Fed. Cir. 1985), all of which make clear that it is the patentability of the final structure of the product “gleaned” from the process steps that must be determined in a “product-by-process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not. Furthermore, cold and working stresses in the sheath are reduced once they stop being applied (in the manufacturing process) and electrolysis causes some degree of compressive stress and usually heat as well. Thus, Steltzlen et al. teaches all of the limitations of claim 1. Ans. 5-6. Appellant contends that the product of the subject invention is not the same as or substantially the same as that of Steltzlen and the method steps of claim 1 should be given patentable weight. App. Br. 4-8; Reply Br. 1-2. Specifically, Appellant contends that the method limitations of reducing cold working stresses in the sheath and generating compressive stresses in the outer surface after the residual cold working stresses are substantially reduced, should not be ignored and the change in granular structure Appeal 2012-006437 Application 12/323,540 4 of the sheath that thus results is a distinguishing factor that is neither described, taught or shown in [Steltzlen]. Id. at 8. Appellant’s arguments are not persuasive. The patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). If the product in a product-by-process claim is the same as, or obvious from, a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Id. (citing In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)). Once an Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. Marosi, 710 F.2d at 802. At the outset, the Examiner correctly points out that Appellant’s claim limitations directed to production of the heated sheath are in the nature of product-by-process claim limitations. See Ans. 7-8. As the decisions of our reviewing court outlined above make clear, in determining the patentability of a product-by-process claim, it is not the process steps that are looked to, but rather the product itself, which is analyzed. If the product in a product- by-process claim is the same as, or obvious from, a product of the prior art, then the claim is unpatentable even though the prior product was made by a different process. Inasmuch as the Examiner has found that the product of Steltzlen, directed to a heater sheath 40, is substantially the same as Appellant’s claimed product, which is also directed to a heater sheath, the Appeal 2012-006437 Application 12/323,540 5 burden has shifted to Appellant to show that the two products are not substantially the same. Appellant has not sustained this burden. Appellant has only provided arguments, but attorney argument is no substitute for facts. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant contends that he “has identified that residual stresses remain that need to be actively reduced to avoid or retard stress corrosion cracking.” App. Br. 6. This argument is not persuasive because, as correctly pointed out by the Examiner, “the features upon which Appellant relies are not recited in the rejected claim(s).” Ans. 14. In other words, claim 1 does not require that the residual stresses “be actively reduced to avoid or retard stress corrosion cracking.” It is well established that limitations not appearing in the claims cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Although Appellant’s Specification describes a process “such that crack initiation is less likely to occur” (Spec. para. 20), claim 1 is not limited to any particular process for avoiding corrosion cracking. Appellant also contends that independent claim 1 “[calls] for steps that physically change[] the granular structure of the surface of the sheath, which is a structural attribute, and thus a structural limitation that is neither described, taught or shown in Steltzlen et al.” App. Br. 5. This argument is not persuasive because claim 1 merely recites the “outer surface” of the sheath. See id. at 9, Clms. App’x. Claim 1 does not recite that the outer surface of the sheath is a granular structure, let alone that the outer surface of the sheath is a granular structure that is physically changed. Appellant’s Specification fails to describe the outer surface of the sheath, much less that Appeal 2012-006437 Application 12/323,540 6 the outer surface of the sheath is granular or any other type of structure.1 See Spec., generally. As such, we agree with the Examiner that “the instant disclosure does not describe, state, or present evidence that any structural change, granular or otherwise, occurs in the heater sheath during the recited steps or that the recited steps were performed to such an extent as to cause a change to the [purported] granular structure of the heater sheath.” Ans. 11. Appellant contends that the Examiner states for the first time that the cited cases “distinguish from the instant case in that a visible, structural characteristic was realized as a result of the above ‘non-process’ process words ...” (emphasis added).[2] The Examiner provides no authority for the requirement that there be a “visible, structural characteristic” that distinguish the claim at issue from the prior art. In fact, in the instant application, there is a visible difference in the granular structure that the metal working treatments called for in the claims provide, as identified by the references that Appellant has produced in the Evidence Appendix to the brief. There is no mention within the Steltzlen et al. 1 The Specification describes that “[t]his invention replac[es] the pressurizer heater sheaths with sheaths that have received a material conditioning treatment to reduce residual stresses that were originally introduced after cold working (swaging) during manufacture, followed by a surface conditioning treatment that adds outer surface compression stresses to the region of the sheath adjacent its outer surface. See Spec. para. 6 (underlining emphasis added). 2 To the extent that Appellant is arguing that the Examiner made a new ground of rejection, we note that Appellant’s contention relates to a petitionable matter and not to an appealable matter. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973); In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also Manual of Patent Examining Procedure (MPEP) §§ 1002.02(c) item 3(a), 1201 (8th ed., Rev. 9, Aug. 2012). Appeal 2012-006437 Application 12/323,540 7 reference, that the Examiner relies upon, that provides a teaching that “compression forces arise from the electrostatic attraction between surface charges which appear when voltage is applied” or that “the electrolytic process, taught in Steltzlen et al. changes the structure of the surface of the sheath.” Reply Br. 1-2; See also App. Br. 4. Appellant’s arguments are not persuasive because (1) as discussed above, claim 1 does not require “changes [in] the structure of the surface of the sheath”; and (2) “[t]he patentability of a product does not depend on its method of production.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006). Further, to the extent that Appellant is referring to laser or shot peening for the “visible difference in the granular structure” of the sheath (see Spec. para. 20), as noted above, claim 1 does not recite that the outer surface of the sheath is a granular structure, let alone that the outer surface of the sheath is a granular structure that is physically changed. Moreover, claim 1 does not recite laser or shot peening. Appellant contends that [b]y arguing that the instant disclosure does not describe, state or present evidence that any structural change occurs in the heater sheath during the claimed processes or that the claimed processes were performed to such an extent as to cause a structural change, the Examiner is really arguing nonenablement under 35 U.S.C. § 112, and not anticipation under 35 U.S.C. § 102(b). App. Br. 5. Appellant’s argument is not persuasive. The Examiner made it clear on the record that “none of the instant claims are currently rejected under 35 Appeal 2012-006437 Application 12/323,540 8 U.S.C. §112.” Ans. 13. Appellant contends that [i]n the case of the prior art, Steltzlen et al. relies upon an electrolytically deposited cladding with no teaching of how that cladding bond to the surface of the pressurizer base metal will change the intergranular structure or what residual stresses may be set up in the surface. Even though the cladding might provide corrosion protection, it will not necessarily provide protection against intergranular cracking which is known to result from some types of residual stresses in the metal. Appellant has found that by altering the residual stresses in a specific way, intergranular cracking can at least be delayed, if not avoided. . . . [T]he distinctions in structural makeup should be evident from the differences between the deposition process of the reference and the process limitations of Appellant’s claims. Reply Br. 2. Appellant’s arguments are not persuasive because, once again, Appellant’s arguments are based on the process that makes the product, rather than on the product itself, as discussed in detail above. Further, as also discussed above, claim 1 does not require “change[s in] the intergranular structure” or “protection against intergranular cracking.” We agree with the Examiner that “Appellant does not cite or provide any objective evidence that shows specific attribute(s) of his claimed product that are different or superior to the same characteristic[s] of the product in [Steltzlen], which difference is clearly the result of his claimed process.” Ans. 16. As such, Appellant has failed to demonstrate error in the Examiner’s rejection of claim 1. Appeal 2012-006437 Application 12/323,540 9 Accordingly, for the forgoing reasons, the Examiner’s rejection of independent claim 1 and of claims 2-18, which fall with claim 1, as anticipated by Steltzlen is sustained. DECISION We AFFIRM the decision of the Examiner to reject claims 1-18 as anticipated by Steltzlen. 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)(iv). AFFIRMED hh