Ex Parte Rakowski

Patent Trial and Appeal Board

Dec 15, 2016

10360961 (P.T.A.B. Dec. 15, 2016)

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;
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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).
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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).
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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).
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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.
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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.
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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
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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
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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).
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