Ex Parte RakowskiDownload PDFPatent Trial and Appeal BoardDec 15, 201610360961 (P.T.A.B. Dec. 15, 2016) 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. 10/360,961 02/06/2003 James M. Rakowski RL-2029/020672 2991 25074 7590 12/19/2016 ALLEGHENY TECHNOLOGIES 1000 SIX PPG PLACE PITTSBURGH, PA 15222 EXAMINER IP, SIKYIN ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 12/19/2016 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): maria.dunn@atimetals.com ATIDocketing@ atimetals.com uspatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES M. RAKOWSKI1 Appeal 2015-007442 Application 10/360,961 Technology Center 1700 Before BRADLEY R. GARRIS, MARKNAGUMO, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 16—25, 27, 28, 30, 33, and 35—43. We have jurisdiction under 35 U.S.C. § 6. Appellant claims a particular type of austenitic stainless steel (independent claim 35), an article including such an austenitic stainless steel 1 ATI Properties, Inc. is identified as the real party in interest. App. Br. 1. Appeal 2015-007442 Application 10/360,961 (independent claim 16), and a method of making such an article (remaining independent claim 33). A copy of representative claims 16 and 35, taken from the Claims Appendix of the Appeal Brief, appears below. 16. An article of manufacture including an austenitic stainless steel comprising, by weight: 19% to 23% chromium; 30% to 35% nickel; 1% to 6% molybdenum; 0 to 0.03% titanium; 0.32% to 0.6% aluminum; up to 0.04% carbon; 0 to 0.75% copper; 1% to 1.5% manganese; 0 to less than 0.8% silicon; 0.25% to 0.6% niobium; and iron, wherein the steel includes niobium and carbon in a weight ratio of at least 10 parts niobium to 1 part carbon to thereby inhibit sensitization of the stainless steel, and wherein the article of manufacture is selected from the group consisting of an automobile exhaust system component, an automobile exhaust system flexible connector, a heating element sheath, and a gasket. 35. An austenitic stainless steel consisting of, by weight: 30% to 35% nickel; 19% to 23% chromium; 1% to 1.5% manganese; 2% to 4% molybdenum; 0.25% to 0.6% niobium; 0.32% to 0.6% aluminum 0% to less than 0.8% silicon; 0% to 0.1 % carbon; 0% to 0.03% titanium; 0% to 0.05% phosphorus; 2 Appeal 2015-007442 Application 10/360,961 0% to 0.02% sulfur; 0% to 0.1 % nitrogen; and balance iron and incidental impurities. Appeal Br. 36 and 40 (Claims Appendix). Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable: claim 35 over JP 838 (JP 03229838, published Oct. 11, 1991), GB 825 (GB 2175825 (A), published Dec. 10, 1986), or Kanero (US 4,382,829, issued May 10, 1983) (Final Action 2—3); claims 16—25, 27, 28, 30, 33, and 36-40 over the above alternatively applied references in combination with the secondary references of Crum (US 5,827,377, issued Oct. 27, 1998) combined with Sukekawa (US 4,443,406, issued April 17, 1984), Levy (US 3,573,109, issued Mar. 30, 1971), Abe (US 4,162,930, issued July 31, 1979), Alter (US 6,132,525, issued Oct. 17, 2000), Maziasz (US 2003/0056860 Al, published Mar. 27, 2003), or Minami (US 4,715,909, issued Dec. 29, 1987 ) (id. at 4—7); claims 16-25, 27, 28, 30, 33, and 35^10 over JP 661 (JP 61099661, published May 17, 1986) in combination with the above secondary references (id.); claims 16—22, 24, 25, 27, 28, and 30 over Sawaragi (US 5,021,215, issued June 4, 1991) in combination with the above secondary references (id.); and claims 41—43 over JP 661, JP 838, or GB 825, in view of Crum and further in view of Alter, JP 952 (JP 06179952 A, published June 28, 1994), JP 464 (JP 62120464 A, published June 1, 1987 ), or JP 437 (JP 63000437 A, published Jan. 5, 1988) (id. at 7—8). 3 Appeal 2015-007442 Application 10/360,961 Appellant presents arguments specifically directed to independent claims 16, 33, and 35 but does not present any additional arguments specifically directed to the dependent claims on appeal (App. Br. 10—33). Therefore, the dependent claims will stand or fall with their parent independent claims of which claims 16 and 35 are representative. We will sustain the Examiner’s rejections for the reasons expressed in the Final Action, the Answer, and below. The Rejections based on JP 838, GB 825, or Kanero In rejecting claim 35, the Examiner finds that each of JP 838, GB 825, and Kanero discloses an austenitic stainless steel having the claimed ingredients in amount ranges that overlap or encompass the claimed ranges (Final Action 2—3; see also Ans. 9). Citing In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) as supporting legal authority, the Examiner concludes that it would have been obvious “to select any portion of range, including the claimed range, from the broader range . . . disclosed in a prior art reference [i.e., JP 838, GB 825, or Kanero] because the prior art reference finds that the prior art composition in the entire disclosed range has a suitable utility” (Final Action 3). Appellant contests this rejection of claim 35 by arguing that “the Maziasz Declaration [filed May 1, 2008] clearly supports the claim of unexpected results and shows the steel of claim 35 to have been unobvious” (App. Br. 14). 4 Appeal 2015-007442 Application 10/360,961 Appellant’s argument lacks persuasive merit because Appellant does not identify any aspect of this Declaration that is relevant to claim 35 or the above discussed references (see id. at 14—15). Indeed, the Declaration appears to focus solely on a niobium-to-carbon ratio of at least 10:1 (see, e.g., Maziasz Decl. 10—12) which is a limitation recited in claims 16 and 33 but not claim 35.2 Appellant also contends that “the Examiner did not provide the requisite rational underpinning to support the assertion that one of ordinary skill in the art would have selected the elemental ranges in the claims [sic, claim 35] under review from the vast composition ranges of [the] three cited references” (id. at 16). Contrary to Appellant’s contention and as reflected in the above quoted obviousness conclusion, the Examiner’s rationale for selecting the claimed range from the broader range of each applied reference is “because the prior art reference finds that the prior art composition in the entire disclosed range has a suitable utility” (Final Action 3). Further, the Examiner’s rationale is well supported by established legal precedent. See, e.g., In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (holding that a prima facie case of obviousness arises when the ranges of the claimed composition overlap or encompass the ranges disclosed in the prior art) (citing, inter alia, In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003)). 2 We emphasize that Appellant does not discuss this Declaration or assert unexpected results in addressing the rejections of claims 16 and 33 (see App. Br. 22-33). 5 Appeal 2015-007442 Application 10/360,961 Appellant further argues that the claim 35 rejection should be reversed under the theory expressed by In re Baird, 16 F.3d 380 (Fed. Cir. 1994), because the ranges disclosed in JP 838, GB 825, or Kanero encompass a “vast number of alloys” (App. Br. 18). Appellant’s reliance on Baird is misplaced. In that case, our reviewing court reversed the § 103 rejection because the prior art “appears to teach away from the selection of bisphenol A by focusing on more complex diphenols.” Baird, 16 F.3d at 382. The court instructed: “A disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds.” Id. at 383. See Ex parte Fu, 89 USPQ2d 1115, 2008 WL 867826 *8 (BPAI 2008) (precedential). Here, Appellant does not argue that any of the applied references teaches away from the ranges of claim 35. In addition, Appellant contends that “the degree of overlap here between the broad elemental ranges described in JP ’838, GB ’825, or Kanero and the relatively narrow ranges recited in the present claims [sic, claim 35] for nickel, for example, is so insubstantial that the Examiner cannot reasonably assert that [J]P’838, GB ’825, or Kanero disclose[s] or render[s] obvious the alloy recited in the present claims [sic, claim 35]” (App. Br. 21). Appellant fails to cite any legal authority for the proposition that an insubstantial overlap, by itself, supports a conclusion of nonobviousness. Moreover, such a proposition is contradicted by previously cited authority. 6 Appeal 2015-007442 Application 10/360,961 See, e.g., Harris, 409 F.3d at 1341. Under these circumstances, Appellant’s contention is unpersuasive. For the reasons stated above and given by the Examiner, we sustain the § 103 rejection of claim 35 over JP 838, GB 825, or Kanero. Appellant does not present any additional separate argument against the corresponding § 103 rejections of claims 16—25, 27, 28, 30, 33, and 36— 40 over JP 838, GB 825, or Kanero in view of the secondary references listed above (App. Br. 32—33) or claims 41—43 over JP 838 or GB 825 in view of Crum and further in view of Alter, JP 952, JP 464, or JP 437 (id. at 33). Accordingly, we also sustain these rejections. The Rejections based on JP 661 or Sawaragi1 The Examiner and Appellant agree that JP 661 discloses up to 0.3% A1 rather than the minimum of 0.32% by weight as required by independent claims 16, 33, and 35 and that Sawaragi discloses at least 0.05% C rather than the maximum of 0.04% by weight as required by claim 16 (Final Action 6—7; Ans. 22). The Examiner concludes that, because the prior art and claimed ranges are so close, it would have been obvious to modify the A1 concentration of JP 661 from 0.3% to 0.32% and to modify the C 3 The Examiner’s findings and conclusions involving the secondary references in these rejections (Final Action 5—8) have not been challenged by Appellant (see App. Br. 22—33). Therefore, we will not address these aspects of the rejections. 7 Appeal 2015-007442 Application 10/360,961 concentration of Sawaragi from 0.05% to 0.04% based on a reasonable expectation that the so-modified stainless steel would have the same properties, wherein Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985) and other legal precedent are cited as support for this obviousness conclusion (Final Action 7). Appellant argues “the Titanium Metals case stands for the legal principle that a specific alloy composition closely bracketed by specific prior art alloy compositions (as opposed to overlapping ranges) is prima facie obvious[, whereas]. . . JP’661 and Sawaragi do not disclose specific alloy compositions that bracket the alloy composition recited in the subject claims” (App. Br. 25). Appellant’s argument is not convincing. We find no requirement in Titanium Metals for the proposition that obviousness requires claim concentrations to be closely bracketed by the prior art concentrations. Rather, the court merely held that “[t]he [claimed and prior art] proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.” Titanium Metals, 778 F.2d at 783. Furthermore, our reviewing court has reiterated this holding principle multiple times. See, e.g., Harris, 409 F.3d at 1341 (“Even without complete overlap of the claimed range and the prior art range, a minor difference shows a prima facie case of obviousness.”) (citing Haynes Int’l v. Jessop Steel Co., 8 F.3d 1573, 1577 n. 3 (Fed. Cir. 1993)). Appellant additionally contends “Sawaragi explicitly teaches away from a carbon content below 0.05% by stating that ‘it is necessary to 8 Appeal 2015-007442 Application 10/360,961 incorporate 0.05% or more of carbon.’ Sawaragi at col. 3, lines 48—52, (emphasis added)” (App. Br. 26). Sawaragi’s complete teaching is that “[cjarbon (C) is effective for increasing tensile strength as well as creep rupture strength to a level required for heat-resistant steels” (col. 3,11. 48—50) and that “[i]n the present invention, it is necessary to incorporate 0.05% or more of carbon” (id. at 11. 50—51). This teaching reflects that modifying the concentration of carbon from 0.05% to 0.04% as claimed would result in tensile strength and creep rupture strength somewhat inferior to those desired by Sawaragi for heat- resistance steels. However, the possibility of a somewhat inferior product does not, by itself, teach away from the modification. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (holding that a known system does not become patentable simply because it has been described as somewhat inferior to some other product for the same use). Stated differently, while the loss of a certain amount of strength may result from the Examiner’s proposed modification of Sawaragi, the loss of a benefit taught by the prior art does not teach away from the claim subject matter when an artisan would have been otherwise motivated to pursue the modification. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016). Here, an artisan would have been motivated to modify Sawaragi’s carbon concentration from 0.05% to 0.04% in order to obtain a useful stainless steel having lower albeit acceptable strength properties.4 4 In this regard, we emphasize the Examiner’s point that Appellant discloses a carbon concentration ranging from 0 to 0.1% by weight (see, e.g., claim 35) with no indication that the resulting steel would have unacceptable 9 Appeal 2015-007442 Application 10/360,961 For these reasons and those expressed by the Examiner, we sustain the rejections of claims 16—25, 27, 28, 30, 33, and 35—40 over JP 661 in view of the secondary references and claims 16—22, 24, 25, 27, 28 and 30 over Sawaragi in view of the secondary references. Correspondingly, we sustain the rejection of claims 41—43 over JP 661 in view of Crum and further in view of Alter, JP 952, JP 464, or JP 437 because Appellant does not present any additional arguments specifically directed against this rejection (see App. Br. 33). Conclusion The decision of the Examiner 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). AFFIRMED properties (Ans. 20). Appellant does not dispute or otherwise address the Examiner’s point (see Reply Br. 11—14). 10 Copy with citationCopy as parenthetical citation