Ex Parte Lenze et al

Patent Trial and Appeal Board

Jan 13, 2017

13156260 (P.T.A.B. Jan. 13, 2017)

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.
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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
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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.
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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
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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
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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
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