Ex Parte Scott et al

Patent Trials and Appeals Board

Jan 16, 2019

13880929 - (D) (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/880,929 04/22/2013
23280 7590 01/18/2019
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Colin Scott
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.
631.1037 6171
EXAMINER
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
01/18/2019 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN SCOTT and PHILIPPE CUGY
Appeal2018-002890
Application 13/880,929
Technology Center 1700
Before TERRY J. OWENS, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7, 15, and 17-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed April 22, 2013
("Spec."); the Final Office Action mailed February 9, 2017 ("Final Act.");
the Appeal Brief filed June 30, 2017 ("Appeal Br."); the Examiner's Answer
mailed November 24, 2017 ("Ans."); and the Reply Brief filed January 22,
2018 ("Reply Br.").
Appeal2018-002890
Application 13/880,929
The claims are directed to hot-rolled or cold-rolled steel plate
comprising specified amounts of specified elements. Claim 1, reproduced
below from the Claims Appendix of the Appeal Brief, illustrates the claimed
subject matter:
1. A hot-rolled or cold-rolled steel plate, wherein the steel
plate comprises the following elements in weight percent:
0.6% :SC :S 0.9%;
17% :S Mn :S 22%;
0.2% :S Al :S 0.9%;
0.2% :S Si :S 1.1 %;
with 0.85% :S Al+ Si :S 1.9%;
1.2% :S Cu :S 1.9%;
S :S 0.030%;
P :S 0.080%;
N :S 0.1%;
0 < Nb :S 0.25%;
0 < V :S 0.5%;
0 < Ti :S 0.5%
0 < Ni :S 2%;
trace amounts :S Cr :S 2%; and
B :S 0.010%;
the remainder being iron and impurities resulting from
production of the steel plate.
2
Appeal2018-002890
Application 13/880,929
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Guelton et al.
("US '338")2
Sohn et al. ("WO
'994")
US 6,358,338 Bl Mar. 19, 2002
WO 2007/074994 Al July 5, 2007
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § I03(a): (1) claims 1---6, 15, and 17-20 over US
'338; (2) claims 1-7, 15, and 17-20 over WO '994; and (3) claim 7 over US
'338 in view of WO '994. Final Act. 4--12; App. Br. 5-20.
OPINION
Rejection of claims 1-6, 15, and 17-20 as obvious over US '338
Appellants argue claims 1-3, 5, 6, 15, and 17-20 as a group. App. Br.
7-14. We select claim 1 as representative of the group. Claims 2, 3, 5, 6,
15, and 17-20 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue separately for patentability of claim 4 (App. Br. 14--15),
and we address it separately below.
With respect to claim 1, the Examiner finds that US '338 discloses a
composition that overlaps the claimed composition range, and concludes that
a prima facie case of obviousness exists. Final Act. 4--5.
2 Although we typically refer to prior art patents by the first inventor's
surname, here we follow the Examiner's and Appellants' use of patent
numbers for ease of reference to the record.
3
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Application 13/880,929
Appellants argue that four criteria are critical for the ability of the
claimed steel plate to resist corrosion. App. Br. 8. These criteria are:
1. 0.2% :S Al :S 0.9%;
2. 0.2% :S Si :S 1.1 %;
3. 0.85% :S Al+ Si :S 1.9%;
4. 1.2% :S Cu :S 1.9%.
Id. Appellants contend that one obtains good results in corrosion under
stress and mechanical properties only by observing these four criteria. Id. at
10.
Appellants' argument does not overcome the obviousness
presumption. "[T]he burden of showing unexpected results rests on he who
asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Unexpected results must be established by factual evidence. In re de
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Further, a party asserting
unexpected results as evidence of nonobviousness has the burden of proving
that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed.
Cir. 1997) (Overcoming a prima facie case of obviousness by showing
improved performance in a range that is within or overlaps with a range
disclosed in the prior art requires showing that the claimed range is critical,
generally by "show[ing] that the claimed range achieves unexpected results
relative to the prior art range.") (quoting in re FVoodruJJ; 919 F.2d 1575,
1578 (Fed. Cir. 1990)). To overcome the rejection, Appellants must at least
establish: (1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art; and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973).
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Appeal2018-002890
Application 13/880,929
Appellants rely on quotations from the Specification and a declaration
from co-inventor Colin Scott ("Scott Deel.") to support their argument that
the four criteria are critical. See App. Br. 8-14. Neither source supports that
the results are "unexpected." See, generally, Spec. and Scott Deel. The
Specification describes the four criteria as producing "good" results in
corrosion under stress and mechanical properties. Spec. 12. Mr. Scott
declares: "it is only by observing all the conditions posed on the Si, Al and
Cu contents that one obtains both the good results in terms of corrosion
under stress, []while keeping mechanical properties fit for the automotive
industry." Scott Deel. ,r 8. These assertions are inadequate to show the
results are unexpected. See 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."). Appellants' arguments to the
contrary cannot take the place of evidence. In re Geisler, 116 F.3d at 1471;
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); and In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974).
Moreover, any alleged unexpected results must also be
"commensurate in scope with the degree of protection sought by the
claim[s]" on appeal. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005; see
also In re Graselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (It is well settled
"that objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support."). Claim 1,
however, recites limitations that are broader than the evidence in the
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Appeal2018-002890
Application 13/880,929
Specification. 3 For example, claim 1 requires: (1) a weight percent of Cu of
1.2% :S Cu :S 1.9%, but the Specification contains no data on amounts of Cu
above 1.7 weight percent; and (2) a combined weight percent of Al and Si of
0.85% :S Al+ Si :S 1.9%, but no data is provided for combined weight
percent above 1.6 weight percent. See Spec. 11 (Table 1 ). In addition,
Appellants provide no test data on compositions containing weight percent
of Si outside of the claimed range (0.2% :S Si :S 1.1 % ). See Spec. 11 (Table.
1 ). Appellants fail to show the criticality of the claimed range of Si.
For the above reasons, we sustain the rejection of claim 1 over US
'338. We sustain the rejection of claims 2, 3, 5, 6, 15, and 17-20 for the
same reasons under 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection of claim 4 as obvious over US '338
Appellants argue separately for patentability of claim 4 over US '338.
App. Br. 14--15. Claim 4 depends from claim 1 and further requires
"wherein in weight percent 17% :S Mn :S 18%." Id. at 22-23 (Claims
Appx.).
Appellants contend that the Examiner did not explain why the Scott
Declaration and the data in Table 2 of the Specification are insufficient to
rebut a prima facie case of obviousness of claim 4. Id. at 15.
All samples in the Specification that satisfy the four "critical" criteria
discussed above comprise 1 7 weight percent or 18 weight percent Mn,
which is a narrower range of Mn than in claim 1 ( claiming 1 7% :S Mn :S
22% ). Spec. 11 (Table 1 ). The narrower range of Mn does not have any
3 The Scott Declaration does not cite to any data other than that in the
Specification. See, generally, Scott Deel.
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Appeal2018-002890
Application 13/880,929
implications on the lack of unexpected results as discussed in relation to
claim 1, therefore, does not confer patentability of claim 4.
We sustain the rejection of claim 4 over US '338.
Rejection of claims 1-7, 15, and 17-20 as obvious over WO '994
Appellants argue claims 1-3, 5-7, 15, and 17-20 as a group. App. Br.
15-19. We select claim 1 as representative of the group. Claims 2, 3, 5-7,
15, and 17-20 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue separately for patentability of claim 4 over WO '994, and
we address claim 4 separately below. App. Br. 19-20.
Appellants first argue that a skilled artisan would not have considered
WO '994 because the reference discloses corrosion resistance of a
galvanized steel substrate, which is a steel substrate having a zinc coating.
App. Br. 15. With this argument, Appellants essentially contend that WO
'994 is non-analogous art.
"The analogous art inquiry is a factual one, requiring inquiry into the
similarities of the problems and the closeness of the subject matter as viewed
by a person of ordinary skill." Scientific Plastic Products, Inc. v. Biotage
AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). The scope of analogous art is to
be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010). For the Examiner to rely upon a reference as a basis for an
obviousness rejection of Appellants' claims, the reference must either: (1)
be in the field of the inventor's endeavor; or (2) be reasonably pertinent to
the particular problem with which the inventor was concerned. In re Kahn,
441 F.3d 977, 986-87 (Fed. Cir. 2006). WO '994 concerns high-manganese
hot-dip coated steel sheet exhibiting high ductility and high strength for use
in inner and outer panels of automobiles. WO '994 Abstract. The
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Appeal2018-002890
Application 13/880,929
Specification gives the purpose of the claimed invention as providing
automobile manufacturers with Fe-Mn steels in the form of hot-rolled or
cold-rolled plates having high mechanical properties, such as tensile
strength, and a large capacity in plastic deformation, but also having high
resistance to corrosion under stress. See Spec. 3. WO '994, therefore, is at
least reasonably pertinent to the Appellants' problem, and is analogous art.
In addition, we disagree that the skilled artisan would tum away from
the disclosure of WO '994 because the reference teaches a zinc coating. See
App. Br. 15. Claim 7, which depends from claim 1, recites a Zn or Zn alloy
coating obtained by electro-galvanization. App. Br. 23 (Claims Appx.).
This, and the use of the open transitional term "comprising" in claim 1
suggests that the skilled artisan would consider prior art compositions with a
zinc coating.
The Examiner finds that WO '994 discloses a composition that
overlaps the ranges of elements claimed in claim 1. Final Act. 8-9. The
Examiner concludes that a prima facie case of obviousness exists, citing In
re Wertheim, 541 F.2d 257 (CCPA 1976) and In re Woodruff, 919 F.2d 1575
(Fed. Cir. 1990). Id. at 8-9.
Where there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness. In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The presumption will be
rebutted if it can be shown: ( 1) that there are new and unexpected results
relative to the prior art, Woodruff, 919 F.2d at 1578; or (2) that the prior art
taught away from the claimed invention, Geisler, 116 F.3d at 1471.
Appellants do not persuasively make either showing.
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Appeal2018-002890
Application 13/880,929
As in the rejection of claim 1 over US '338, Appellants argue that the
relationship of Al, Si, and Cu is critical, and WO '994 does not teach or
suggestion the claimed relationship. App. Br. 16-17. For the reasons
discussed above in relation to the rejection of claim 1 over US '338,
Appellants do not show that the relationship of Al, Si, and Cu provides
unexpected results, therefore they do not rebut the prima facie case of
obviousness on this basis.
Appellants also contend that WO '994 provides no basis for selecting
the claimed ranges of Si, Al, Al + Si, or Mn, or the combination of ranges of
Al, Si, Al + Si, Cu, and Mn. App. Br. 17. However, WO '994 discloses the
claimed ranges of each of Al, Si, Al+ Si, Cu, and Mn. See, e.g., WO '994
Abstract, i-fi-fl6-20, Table 1. "[F]or purposes of [section] 103, a reference is
prior art for all that it discloses." Symbol Techs., Inc. v. Opticon, Inc., 935
F.2d 1569, 1578 (Fed. Cir. 1991); see also Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (in a rejection based on
obviousness, prior art is considered for all that it teaches and suggests).
Appellants' argument does not overcome the presumption of obviousness.
Appellants argue that one of ordinary skill in the art at the time of the
invention would not have selected the claimed range of Al because none of
the eleven examples in WO '994 include an amount of Al within the claimed
range. App. Br. 17. This argument is not persuasive of reversible error in
the rejection. "[A] reference is not limited to the disclosure of specific
working examples." In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Disclosed examples do not constitute a teaching away from a broader
disclosure, as in the present case. See In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). "[I]n a section 103 inquiry, the fact that a specific
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Appeal2018-002890
Application 13/880,929
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered." Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Appellants contend that "WO '994 provides no support or basis for
selecting Mn content of' 17 :S Mn :S 18' as recited in instant claim 1." App.
Br. 17. In fact, claim 1 recites "17% :S Mn :S 22%." Appellants
acknowledge that WO '994 discloses Mn content in the inventive examples
of 5.11 to 35.0%. Id. Appellants argue, however, that WO '994 teaches
away from the claimed amount of Mn because the reference states: "[ w ]hen
the content of Mn exceeds 10%, [] the mechanical toughness of the coating
layer decreases" and that "it is preferable to limit the content of Mn to be 0.1
to 10%." Id. ( citing WO '994 ,r 118).
As noted above, an applicant may rebut a prima facie case of
obviousness by showing that the prior art teaches away from the claimed
invention any material aspect. In re Geisler, 116 F.3d at 1469 (citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974)). Whether a reference teaches
away from a claimed invention is a question of fact. Para-Ordnance Mfg.,
Inc. v. SGS Importers Int'!, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
Teaching away requires that a reference "criticize, discredit, or otherwise
discourage the solution claimed" by Appellant. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). An obvious composition does not become patentable
simply because it has been described as sornewhat inferior to some other
product for the sarne use. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The indication in WO '994 that MN content is preferably 0.1 to 10%
does not criticize, discredit, or otherwise discourage use of Mn content in the
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Application 13/880,929
claimed range. Therefore, WO '994 cannot be said to teach away from the
claimed invention.
For the above reasons, we sustain the rejection of claim 1 over WO
'994. We sustain the rejection of claims 2, 3, 5-7, 15, and 17-20 pursuant to
37 C.F.R. § 4I.37(c)(l)(iv).
Rejection of claim 4 as obvious over WO '994
Appellants argue separately for patentability of claim 4 over WO
'994. App. Br. 19-20. Claim 4 depends from claim 1 and further requires
"wherein in weight percent 17% :S Mn :S 18%." Id. at 22 (Claims Appx.).
Appellants contend that the Examiner did not explain why the Scott
Declaration and the data in Table 2 of the Specification are insufficient to
rebut a prima facie case of obviousness of claim 4. Id. at 20.
All samples in the Specification that satisfy the four "critical" criteria
discussed above comprise 1 7 weight percent or 18 weight percent Mn,
which is a narrower range of Mn than in claim 1 ( claiming 1 7% :S Mn :S
22% ). Spec. 11 (Table 1 ). The narrower range of Mn does not have any
implications on the lack of unexpected results as discussed in relation to
claim 1, therefore, does not confer patentability of claim 4.
We sustain the rejection of claim 4 over WO '994.
Rejection of claim 7 as obvious over US '338 in view of WO '994
Claim 7 depends from claim 1 and further requires that the steel plate
comprises a Zn or Zn alloy coating obtained by electro-galvanization. App.
Br. 23 (Claims Appx.).
The Examiner finds that US '338 discloses the claimed ranges of
elements, as discussed for claim 1, but does not teach the steel having a Zn
or Zn alloy coating. Final Act. 11. The Examiner finds that WO '994
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Application 13/880,929
teaches Zn/Zn alloy coating of steel sheets. Id. at 12. The Examiner finds
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to have applied a Zn or Zn alloy coating, at taught by WO
'994, to the steel disclosed in US '338 in order to obtain the advantage of the
Zn/Zn alloy coating exhibiting high corrosion resistance. Id.
Appellants argue that US '338,4 fails to teach the invention and
WO '994 does not remedy the deficiencies of US '338. App. Br. 20.
For the reasons discussed above with respect to claim 1, US '338
discloses the composition except for the Zn/Zn alloy coating. WO '994
discloses coating steel sheets with Zn/Zn alloy. WO '994 ,r,r 109-114. One
of ordinary skill in the art at the time of the invention would have been
motivated to combine the composition of US '338 with the Zn/Zn alloy of
\VO '994 according to known methods to yield the predictable result of
improved corrosion resistance. KSR Int'! Co. v. Teleflex, Inc., 550 US 398,
401 (2007).
\Ve sustain the rejection of claim 7 as obvious over US '338 in view
of\VO '994.
DECISION
The rejections of claims 1-7, 15, and 17-20 are 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)(l)(iv).
AFFIRMED
4 Appellants mistakenly refer to US '883, rather than US '338.
12