Ex Parte Lenze et alDownload PDFPatent Trial and Appeal BoardJan 13, 201713156260 (P.T.A.B. Jan. 13, 2017) Copy Citation 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. 13/156,260 06/08/2011 Franz-Josef Lenze 508637 4650 53609 7590 01/18/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 01/18/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANZ-JOSEF LENZE, SASCHA SIKORA, and JANKO BANIK Appeal 2016-000312 Application 13/156,260 Technology Center 1700 Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—9 and 15—25. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is ThyssenKrupp Steel Europe AG. Appeal Br. 2. Appeal 2016-000312 Application 13/156,260 STATEMENT OF THE CASE Appellants describe the invention as relating to a method of producing a component by a hot forming and/or press curing process and then tempering it. Spec. 12. The product could be, for example, a steel body or chassis for a motor vehicle. Id. Tffl 2, 11. Claim 1, reproduced below with emphasis added to certain key recitations, is illustrative of the claimed subject matter: 1. Method for manufacturing a component with improved elongation at break properties, comprising: producing a component that is first produced by one of a hot forming and press curing process, and in which the component is tempered after the one of hot forming and press curing processes wherein a tempering temperature T and a tempering time t substantially satisfy the numerical relationship T > 900-t~0,087, wherein the tempering temperature T is expressed in °C and the tempering time t in seconds. Appeal Br.2 11 (Claims App’x) (emphasis added). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Bemdsen et al. DE 102006053819 A1 May 15, 2008 (hereinafter “Bemdsen”) Peters et al. DE 102007023306 Al Nov. 20, 20083 (hereinafter “Peters”) 2 In this decision, we refer to the Final Office Action mailed September 4, 2014 (“Final Act.”), the Appeal Brief filed May 4, 2015 (“Appeal Br.”), the Examiner’s Answer mailed July 31, 2015 (“Ans.”), and the Reply Brief filed September 29, 2015 (“Reply Br.”). 3 Because DE 102007023306 was not published in English, the Examiner references the English equivalent publication, US 2011/0259482 Al, Oct. 27, 2011. Ans. 2. We likewise reference the English equivalent publication. 2 Appeal 2016-000312 Application 13/156,260 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1—6 and 15—24 under 35 U.S.C. § 103 as unpatentable over Peters. Ans. 2. Rejection 2. Claims 7—10 and 25 under 35 U.S.C. § 103 as unpatentable over Peters in view of Bemdsen. Id. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. 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) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After having considered the evidence presented in this Appeal and Appellants’ contentions, we are not persuaded that Appellants identify reversible error, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellants do not raise any separate arguments with respect to the Examiner’s second rejection and argue all claims as a group. See Appeal Br. 5, 9. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all other claims on appeal stand or fall together with claim 1. The Examiner finds that Peters teaches a method of manufacturing a component comprising hot forming an uncoated manganese-boron steel and tempering the component at 280—700 °C for 1 to 12 minutes. Ans. 2. Claim 3 Appeal 2016-000312 Application 13/156,260 12 of Peters, for example, teaches tempering between 1 and 12 minutes. Peters also teaches tempering for 1 to 25 minutes and teaches tempering preferably between 5 and 15. Peters Abstract, 123. The Examiner concludes that, because Peters teaches temperature and tempering time that overlap that of claim 1, prima facie obviousness is established. Ans. 4. The Examiner’s conclusion is supported by a preponderance of the evidence regardless of whether Peters is assessed based upon tempering time of 1 to 12, 1 to 25, or 5 to 15 minutes. According to the formula provided by claim 1, if tempering occurs for 1 minute, the tempering temperature should be above 630 °C (temperature is greater than equal to sixty seconds to the minus 0.087 power times 900). Similarly, the temperature for 12 minutes of tempering should be above 508 °C, for 15 minutes of tempering should be above 498 °C, and for 25 minutes of tempering should be above 476 °C. Thus, no matter what tempering time among within the possibilities taught by Peters is selected, the 280-700 °C temperature range taught by Peters overlaps the temperature range encompassed by the formula of claim 1. These overlapping ranges are sufficient to establish a prima facie case of obviousness. Ans. 4; see also e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[a\primafacie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art”); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (acknowledging that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (50-100 Angstroms) overlapped the claimed range (100- 600 Angstroms)). Appellants argue that the obviousness conclusion is improper because Peters does not teach or suggest the T > 900-10,087 formula recited by claim 1. 4 Appeal 2016-000312 Application 13/156,260 Claim l’s recitations, however, ultimately serve to limit the claimed process based on tempering time and temperature. Appeal Br. 5—6; Reply Br. 5—6. The teachings of Peters encompass the same combinations of tempering time and temperature such that the process of Peters cannot be distinguished. A patentee cannot obtain new patent claims encompassing an old and known process by merely expressing the known variables of the old process in a new manner. Cf. In re Waymouth, 499 F.2d 1273, 1275—76 (CCPA 1974) (considering unexpected results and thereby suggesting that prima facie case was established where prior art reference did not specifically disclose claimed ratio but ratios could be calculated from disclosure). The case cited by Appellants for the contrary proposition (Appeal Br. 6; Reply Br. 8) is both non-precedential and distinguishable. See Ex parte Ward, Appeal 2008-005811 (BPAI May 27, 2010) (reversing Examiner where claim recited Zn/V ratio and prior art recognized vanadium as an impurity to minimize rather than variable to be controlled). Appellants also argue that it would not have been obvious to follow Peters to reach tempering time and tempering temperatures as recited by claim 1 because claim 1 relates to improving elongation at break whereas Peters is directed to well pipes that would not concern elongation at break. Appeal Br. 6; Reply Br. 6. Because Peters teaches the same combination of tempering time and temperature as recited by claim 1, however, the Peters components would necessarily have the same properties as components made by the method of claim 1. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted). Here, Appellants do not attempt to establish any difference between the properties of Peters and of 5 Appeal 2016-000312 Application 13/156,260 claim 1. Moreover, “[t]he discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition.” In re Spada, 911 F.2d at 708 (citations omitted). Appellants also argue unexpected results based upon the data presented at Figures 3a to 3d of the Specification. Appeal Br. 8—9; Reply Br. 9—10. The Examiner correctly finds, however, that Appellants’ showing is not commensurate with the scope of claim 1. Ans. 6; see also In re Peterson, 315 F.3d at 1330-31 (explaining that applicant may overcome a prima facie case of obviousness by showing unexpected results but showing of unexpected results “must be commensurate in scope with the claims which the evidence is offered to support”) (internal quotes and citation omitted). In particular, Claim 1 is not limited based upon the material worked on, but Appellants’ data only relates to tests for one particular steel. Spec. 134 (explaining that data provided by Figures 3a to 3d relate to strips of 22MnB5 steel with an aluminum-silicon coating). Moreover, Appellants’ data does not establish any benefit over the wide range of temperature/tempering times possible pursuant to the claim l’s formula. For example, claim 1 would encompass tempering steel for one second at 900° C or for one year at 200° C, and Appellants present no data as to whether results are favorable at these kinds of data points. Appellants also lack evidence that the data presented in the Specification is unexpected. Superiority alone is not sufficient to show that the result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” (emphasis in original)). We 6 Appeal 2016-000312 Application 13/156,260 thus sustain the Examiner’s rejection because the evidence, on balance, weighs most heavily in favor of a conclusion of obviousness. DECISION For the above reasons, we affirm the Examiner’s rejection of claims 1—9 and 15—25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation