Ex Parte Myers

Patent Trials and Appeals BoardJun 7, 2019

14317936 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/317,936 06/27/2014 Frederick Alan Myers 26874 7590 06/11/2019 FROST BROWN TODD LLC 3300 Great American Tower 301 East Fourth Street Cincinnati, OH 45202 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. 1606001/037 4644 3650 EXAMINER LA VILLA, MICHAEL EUGENE ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 06/11/2019 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): patents@fbtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FREDERICK ALAN MYERS Appeal2018-007108 Application 14/317,936 Technology Center 1700 Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to finally reject claims 1---6 and 8-12. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b). 1 AK Steel Properties, Inc. is the Applicant/ Appellant and identified as the real party in interest. App. Br. 3. Appeal2018-007108 Application 14/317,936 Appellant's invention is generally directed to a process for making an unabraded textured carbon steel having a polished stainless steel-like finish. App. Br. 3. According to the Specification, the invention obtains the stainless steel-like finish by passing a zinc- aluminum coated carbon steel through a temper mill where the forces imparted by the mill rolls compress the zinc coating during the texturing operation without abrading it and with minimal loss of the amount of zinc coating during processing. Spec. ,r 19. The Specification discloses that the roll force imparted by the temper mill may be in the range of 500,000-1, 100,000 pounds force or in the range of 600,000 to 900,000 pounds force to ensure adequate texture transfer from the work rolls without damaging the coating. Id. The Specification also discloses using a temper mill having the same textured work rolls employed to apply a commercial "rolled on" finish to stainless steel. Id. Claim 1 is illustrative of the subject matter claimed and is reproduced below: 1. A process for making an unabraded textured carbon steel having a polished stainless steel-like finish, wherein the unabraded textured carbon steel comprises carbon steel and an unabraded galvanized coating, the process consisting essentially of the steps of: (a) applying the unabraded galvanized coating to the carbon steel; and (b) compressing the unabraded galvanized coating with a temper mill applying a roll force of 500,000 to 1,100,000 pounds to the unabraded galvanized coating to create the polished stainless steel-like finish on the unabraded galvanized 2 Appeal2018-007108 Application 14/317,936 coating, wherein the polished stainless steel-like finish has a substantially continuous uniform texture with unidirectional grains or lines on the unabraded galvanized coating. Appellant requests review of the Examiner's decision to finally reject claims 1---6 and 8-12 under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. App. Br. 6; Final Act. 2. OPINION Rejection under 35 U.S.C. Â§ 112 (pre-AIA),first paragraph2 After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner's rejection of claims 1---6, and 8- 12 under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement for the reasons presented by the Examiner. We add the following for emphasis. It is well settled that "the specification must teach those of skill in the art 'how to make and how to use the invention as broadly as it is claimed."' In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (citing In re Vaeck, 947 F.2d 488,496 (Fed. Cir. 1991)). Enablement is a question of law involving underlying factual inquiries. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); see also In re Wands, 858 F.2d 731, 737 2 Appellant presents arguments only for independent claim 1. App. Br. 6. Accordingly, we limit discussion to this claim as representative of the subject matter before us for review on appeal. Claims 2---6 and 8-12 stand or fall with independent claim 1. 3 Appeal2018-007108 Application 14/317,936 (Fed. Cir. 1988). "The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation." AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Whether undue experimentation is needed is not a single factual determination, but rather is a conclusion reached by weighing many factual considerations. Wands, 858 F.2d at 737. Wands summarizes the factors to be considered in determining whether undue experimentation is required as follows: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claim(s). Id. However, it is not necessary to review all the Wands factors to find a disclosure enabling. Rather, the Wands factors "are illustrative, not mandatory" and what is relevant to an enablement determination depends upon the facts of the particular case. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). The Examiner finds that the disclosure, as originally filed, does not enable one skilled in the art to form a polished stainless steel-like finish on a carbon will steel as required by the claimed invention. Final Act. 2-5. As explained by the Examiner, the Specification does not provide sufficient guidance for one skilled in the art to obtain what Appellant considers to be a polished stainless steel-like finish. Id. at 3--4. The Examiner points to Hahn (US 2008/0107915 Al, published May 8, 2008) in support of the rejection as teaching a process of making an intermediate carbon steel sheet product having an unabraded galvanized coating. Hahn ,r 25, 26. The Examiner 4 Appeal2018-007108 Application 14/317,936 determines that Hahn's process and the claimed process are essentially the same in terms of operating parameters (roll force) and materials ( carbon steel and galvanized coating). Final Act. 3--4. In view of this, the Examiner contends that it is not clear why Hahn's process does not produce a carbon steel sheet with a stainless steel-like finish without performing the final abrading step while the claimed process does. Id. at 4. Therefore, the Examiner concludes that the Specification, as originally filed, does not enable one of ordinary skill in the art to make or use the claimed invention because it would require undue experimentation. Id. at 4--5. Appellant argues that the Examiner must determine whether there is undue experimentation as provided by the Wands factors before reaching the determination that the claimed subject matter is not enabled by the Specification, as originally filed. App. Br. 6. Appellant specifically contends that the Examiner focused on only 3 of the 8 Wands factors: the state of the prior art, the amount of direction provided by the inventor and the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Id. at 7. The Examiner asserts that the Wand Factors were considered in the lack of enablement determination. Ans. 7-8. For completeness, we address the Wands factors as follows. (4) the nature of the invention (5) the state of the prior art (6) the relative skill of those in the art (7) the predictability or unpredictability of the art As the Examiner finds, Hahn is representative of the state of the prior art that defines the nature of the invention. Final Act. 2-5. Moreover, both 5 Appeal2018-007108 Application 14/317,936 Appellant and Hahn address the problem of uniformity of appearance and the corrosion resistance of the coating material. Spec. ,I2; Hahn i-f26. Thus, Han also establishes the level of skill in the art for the reasons presented by Appellant. App. Br. 8. Because Hahn is representative of the state of the prior art, we also determine that it establishes the predictability of a process for making an unabraded textured carbon steel having a polished stainless steel-like finish. Appellant argues that the Examiner erred in considering state of the art factor because the Examiner relied only on the reference to Hahn and did not consider other numerous additional references that refer to imparting texture to galvanized carbon steel using rollers. App. Br. 9-10. Appellant's arguments are unavailing because Appellant does not adequately explain why Hahn is insufficient to meet the factual considerations for Wand factors ( 4}-(7), as discussed above. (1) the quantity of experimentation necessary (2) the amount of direction or guidance presented (3) the presence or absence of working examples Appellant argues that the Examiner's conclusion that factor ( 1) weighs against enablement lacks adequate factual support. App. Br. 12. We disagree. Like Appellant, Hahn's process produces an intermediate carbon steel product having an unabraded galvanized coating. Hahn ,r 26. Hahn achieves this product by employing a mill having an embossing roll that imprints a textured pattern into the metal alloy coating of a carbon steel sheet using a roll force within a range between about 10,500 6 Appeal2018-007108 Application 14/317,936 and about 22,000 newtons/cm. 3 Id. ,r 25. Hahn discloses that the force generated by work rolls causes plastic deformation in the metal alloy coating and presses or causes the coating to flow into the textured pattern of the embossing roll. Id. ,r 26. Hahn additionally discloses that the embossing operation produces an intermediate steel sheet product with insignificant coating weight change and, thus, no adverse effect on corrosion protection. Id. Hahn further teaches that the effective amount of roll force is one required to emboss the metal alloy coating will vary depending on the coating alloy, coating thickness, and the grade of the steel sheet. Id. Based on this, the Examiner determines that Hahn compresses essentially the same coating materials as claimed at comparable forces. Final Act. 4. Thus, the Examiner concludes that Hahn teaches process conditions which are the same as required by the claimed invention and that Appellant has not explained or described the additional conditions required to practice the claimed invention. Id. at 4--5. The Examiner asserts that, given the above, it is unclear why Hahn does not produce stainless steel-like finish without performing the final abrading step as claimed. Id. at 4. Consequently, the 3 The Examiner determined that Hahn's roll force range overlaps the claimed roll force range when Hahn's roll force is applied to a sheet having a conventional width of 80 in (about 200 cm). See Final Act. (August 31, 2015) 5 (citing to Tullis (US 7,125,613 Bl, issued October 24, 2006) for what constitutes a conventional steel sheet width). Appellant did not adequately dispute the Examiner's specific finding with respect to Tullis or the Examiner's determination based on this finding in the subsequent responses. See Remarks (November 30, 2015 and April 8, 2016). Moreover, Appellant's claim includes no width for the steel sheet subjected to the recited pounds force. 7 Appeal2018-007108 Application 14/317,936 Examiner determines that undue experimentation would be required to practice the claimed invention. Ans. 7-8. Appellant argues Hahn is not the same as the claimed invention. See generally App. Br. Appellant contends that the Examiner's finding that Hahn's disclosed forces are the same as those in the present claims has already been argued and resolved in favor of Appellant in addressing previous prior art rejections based on Hahn. App. Br. 13-14. However, contrary to Appellant's contention, the prosecution record shows that the Examiner has consistently maintained that Hahn teaches the use of roll forces comparable to the claimed forces. See generally Final Act. (August 31, 2015), Non-Final Act. (January 8, 2016), Final Act. (April 29, 2016), Non-Final Act. (November 30, 2016). Further, in a prior art rejection last maintained in the Non-Final Action dated January 8, 2016, and last explained in the Final Action of August 31, 2015, the Examiner relies on Tullis' s teaching that a conventional steel sheet has a width of 80 in ( about 200 cm) in making the determination that Hahn's disclosed roll forces range suggest the claimed roll force range. See Final Act. (August 31, 2015) 5. Appellant did not adequately dispute this determination by the Examiner in the subsequent responses. See generally Remarks (November 30, 2015 and April 8, 2016). In addition, the Specification does not provide adequate direction other than the application of force (Spec. ,r 19) on how to make the claimed product (factor (2)). Finally, Appellant does not dispute the Examiner's assertion that the Specification lacks details in working examples (factor (3)) with respect to the key feature of what is claimed. 8 Appeal2018-007108 Application 14/317,936 App. Br. 7; Final Act. 5. Thus, Appellant has not explained or described the additional conditions required to practice the claimed invention (8) the breadth of the claim(s). Appellant argues that this factor weighs in favor of enablement because claim 1 clearly and precisely informs persons skilled in the art of making textured carbon steel what the boundaries of the protected subject matter are. App. Br. 8. We disagree. As we discussed above, the Examiner made a reasonable determination that Hahn's process and the claimed process operate at the same roll force parameters. Moreover, Appellant's claim includes no width for the steel sheet subjected to the recited pounds force. Thus, the breadth of the claimed does not inform persons skilled in the art adequately of making textured carbon steel what the boundaries of the protected subject matter are. After consideration of all the Wands factors, we conclude that the fact that Hahn's process for making the unabraded intermediate coated steel sheet and that the claimed process are substantially the same, as discussed in factors (1 }-(3), and (7), weigh heavily in supporting the Examiner's conclusion that one skilled in the art would have to undergo extensive experimentation to make or use the invention and, thus, the claimed invention is not enabled by the Specification, as originally filed. Accordingly, we affirm the Examiner's rejection of claims 1---6 and 8- 12 under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. 9 Appeal2018-007108 Application 14/317,936 New Ground of Rejection under 35 U.S.C. Â§ 103(a) Pursuant to 37 C.F.R. Â§ 4I.50(b), we enter a new ground of rejection only for claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Hahn and citing Tullis as an evidentiary reference. As discussed above, Hahn discloses a process of making a carbon steel sheet having an unabraded galvanized coating as an intermediate product. Hahn ,r 25, 26. Hahn achieves this product by employing a mill having an embossing roll that imprints a textured pattern into the metal alloy coating of a carbon steel using a roll force within a range between about 10,500 and about 22,000 newtons/cm. Id. ,r 25. Hahn discloses that the force generated by work rolls causes plastic deformation in the metal alloy coating and presses or causes the coating to flow into the textured pattern of the embossing roll. Id. ,r 26. Hahn additionally discloses that the embossing operation produces an intermediate steel sheet product with insignificant coating weight change and, thus, no adverse effect on corrosion protection. Id. Hahn further teaches that the effective amount of roll force is one required to emboss the metal alloy coating will vary depending on the coating alloy, coating thickness, and the grade of the steel sheet. Id. Further, based on Tullis's teaching that a conventional steel sheet has a width of 72 to 80 in (about 180-200 cm), Hahn discloses a range of roll forces (using the smaller width of 180 cm, from 414,000-882,000 pound force) that at least overlaps the claimed roll force range of 500,000- 1,100,000 pound force. Tullis col. 3, 1. 59, col. 6, 11. 20-47. Claim 1 does not limit the process to be applied to a steel sheet of a particular width. Nor does claim also 1 exclude making intermediate products. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558 (Fed. Cir. 1995) ("Exxon 10 Appeal2018-007108 Application 14/317,936 is entitled to a broader scope that is not time-limited, one that reads on any product at any time that contains the claimed proportions of ingredients."). Thus, it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention from the combined teachings of Hahn and Tullis and reasonably expect that the unabraded intermediate coated steel product resulting from the process of the combined teachings to have the same stainless steel-like finish as the unabraded coated steel product resulting from the claimed process. Moreover, claim 1, reciting a process consisting essentially of the steps, does not exclude additional steps to, for example, produce a finished product from the claimed unabraded coated steel product. PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (holding that "consisting essentially of' is an open-ended phrase). As explained above, Hahn teaches the process conditions that are the same as required by the claimed invention. Consequently, Hahn's resulting intermediate product would have a stainless steel finish that is the same as the product resulting from claimed process. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254--56 (CCPA 1977). The present record does not contain objective evidence that distinguishes the Hahn's process from the claimed invention. We enter the new ground only for independent claim 1 and leave to the Examiner the evaluation of the patentability of dependent claims 2-6 and 8-12. DECISION The Examiner's rejection of claims 1---6 and 8-12 under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement is affirmed for the reasons the Examiner presents and we 11 Appeal2018-007108 Application 14/317,936 provide. We enter a new ground of rejection under 35 U.S.C. Â§ 103(a) of claim 1 over Hahn and Tullis. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be 12 Appeal2018-007108 Application 14/317,936 found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED; NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. Â§ 4I.50(b) 13