OUTOKUMPU OYJ

Patent Trials and Appeals BoardSep 22, 2021

2021005019 (P.T.A.B. Sep. 22, 2021)

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. 14/342,865 03/05/2014 James Oliver 44627-6 PCT US 5332 31554 7590 09/22/2021 CARTER, DELUCA & FARRELL LLP 576 BROAD HOLLOW ROAD MELVILLE, NY 11747 EXAMINER KOSHY, JOPHY STEPHEN ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 09/22/2021 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): docket@carterdeluca.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES OLIVER, OUTOKUMPU OYJ, JAN Y. JONSSON, and ALEXANDER THULIN ____________ Appeal 2021-005019 Application 14/342,865 Technology Center 1700 ____________ Before JEFFREY T. SMITH, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final Office Action, dated October 1, 2020, rejecting claims 1, 5, 8, 10, 11, and 14–16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Outokumpu Oyj. Appeal Br. 1. Appeal 2021-005019 Application 14/342,865 2 The invention relates to a duplex ferritic austenitic stainless steel. Spec. 1. Claim 1 illustrates the claimed subject matter and is reproduced below (formatting added): 1. A duplex ferritic austenitic stainless steel, characterized in that the duplex stainless steel contains less than 0.04 weight% carbon, less than 0.7 weight% silicon, less than 2.0 weight% manganese, 18.5-22.5 weight% chromium, 0.8-0.9 weight% nickel, greater than 1.0-1.4 weight% molybdenum, less than 1 weight% copper, 0.10-0.24 weight% nitrogen, less than 0.010 weight% sulfur, less than 0.040 weight% P, so that the sum (S+P) is less than 0.04 weight%, and the total oxygen content is below 100 ppm, the rest being iron and inevitable impurities, the stainless steel having a measured Md30 temperature value of 10- 70°C, and the stainless steel having: 35 volume% - 44 volume% ferrite, the rest being austenite, when heat treated at a temperature of 950 °C - 1150 °C, Appeal 2021-005019 Application 14/342,865 3 a pitting resistance equivalent value (PRE) of 27-29.5, and a critical pitting temperature CPT of 20-33°C, wherein PRE= [Cr]+ 3.3 [Mo] + 30[N] -[Mn]. Appeal Br. 8 (Claims App.). Appellant (see generally Appeal Br.) requests review of the rejection of claims 1, 5, 8, 10, 11, and 14–16 under 35 U.S.C. § 103 as unpatentable over Irander (WO 2008/088282 A1, published July 24, 2008) alone or further in view Omura (US 2005/0211344 A1, published Sept. 29, 2005). OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . ” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). Appellant has presented arguments addressing only independent claim 1. Appellant does not present substantive arguments addressing dependent claims 5, 8, 10, 11, and 14–16. We select claim 1 as representative of the rejected subject matter. Upon consideration of the evidence in this appeal record in light of the respective positions advanced by the Examiner and Appellant, we determine that Appellant has not identified reversible error in the Examiner’s Appeal 2021-005019 Application 14/342,865 4 determination that the subject matter recited in claims 1, 5, 8, 10, 11, and 14–16 would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103. We are in complete agreement with the Examiner’s reasoned analysis and application of the prior art, as well as the Examiner’s cogent and thorough disposition of the arguments raised by Appellant. Accordingly, we will adopt the Examiner’s reasoning as our own in sustaining the rejections of record, and we add the following for emphasis only. The complete statement of the rejection on appeal appears in the Final Office Action. (Final Act. 3–9). Independent claim 1 recites a duplex ferritic austenitic stainless steel characterized in that the duplex stainless steel contains, inter alia, less than 0.040 weight% P, so that the sum (S+P) is less than 0.04 weight%, and the total oxygen content is below 100 ppm. The Examiner finds Irander teaches a duplex stainless steel alloy wherein the steel compositional elements of the claimed invention are present in ranges that overlap or lie inside the ranges of Irander’s alloy composition’s various elements. (Final Act. 3–4). The Examiner determines, prima facie, the obviousness of the claimed invention because the claimed ranges overlap or lie inside ranges disclosed by Irander. (Final Act. 4). The Examiner finds Omura teaches the elements P, S and O are recognized as impurities in duplex stainless steel. (Final Act. 6–7). The Examiner further finds Omura teaches the detrimental effects of the duplex stainless steel containing more than 0.05% P; more than 0.001 % S; and more than 0.01 % O. (Final Act. 6–7; Omura ¶¶ 39–42, 53–54). Based on Omura’s teaching —to avoid the deleterious effects of impurities on duplex Appeal 2021-005019 Application 14/342,865 5 steel— the Examiner further determines it would have been obvious to a person having ordinary skill to form Irander’s duplex steel alloy the steel comprising the least amount of the impurity elements S, P and O. (Final Act. 7). [A] prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. [Citations omitted.] Where the “claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap.” In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Appellant has not disputed the Examiner’s findings in the Final Office Action that establishes the components in the claimed duplex stainless steel alloy composition substantially overlap the composition of Irander. (Final Act. 3.) Appellant argues Irander fails to render obvious claim 1 because Irander does not describe the beneficial effects of limiting the amounts of S, P, and O and does not teach the recited values of S, P, and O. (Appeal Br. 4– 5.) Appellant argues the Specification establishes presence of the recited amounts of S, P, and O is desirable, and not “inevitable impurities.” (Appeal Br. 4.) Appellant further argues: [T]he present application controls the amounts of sulfur, phosphorus, and oxygen. Sulfur can deteriorate hot workability and can form sulfide inclusions that can negatively influence pitting corrosion resistance. . . . Phosphorus can deteriorate hot workability and can form phosphide particles or films that negatively influence corrosion resistance. Oxygen can have an adverse effect on hot ductility. Appeal 2021-005019 Application 14/342,865 6 Therefore, the recited steels control the amounts of S, P and O in order to provide the best possible duplex ferritic austenitic steel. (Appeal Br. 4–5.) The claim requirement that S is present “less than 0.010 weight%”; P is present “less than 0.040 weight%”; and O level is “below 100 ppm” includes the exclusion of S, P, and O because the language would typically be construed as encompassing zero. See In re Mochel, 470 F.2d 638, 640 (CCPA 1972) (“As this Court has held, the phrase ‘up to’ of claim 2 includes zero as the lower limit.” (citations omitted)). “Absent disclaimer or lexicography, the plain meaning of the claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012) (citing Thorner v. Sony ComputerEntm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Therefore, we turn to the Specification to determine whether a narrower interpretation of the language “less than” and “below” exclude zero is warranted. The Specification expressly discloses to limit the amounts of S, P and O to minimize negative influences of pitting corrosion resistance and adverse effects on hot ductility. (Spec. 5.) The Specification exemplified embodiments do not include amounts for S, P, and O and do not discuss improvement weld penetration. These embodiments exhibit the pitting resistance equivalent value (PRE) and a critical pitting temperature CPT required by the claimed invention. (Spec. Tables 1–6.) Hence, the broadest reasonable interpretation of the Appellant’s claim language “less than 0.010 weight%”; P is present “less than 0.040 weight%”; and O level is “below 100 ppm consistent with the Appellant’s Specification includes zero. Thus contrary to Appellant’s arguments, the claimed invention does not limit the amounts of S, P, and O to improve weld penetration by changing the surface Appeal 2021-005019 Application 14/342,865 7 energy of the weld pool. Appellant has not directed us to evidence that establishes the amounts of the elements S, P, and O necessary to improve weld penetration by changing the surface energy of the weld pool. Omura is further evidence that in duplex stainless steel the elements P, S, and O are recognized as impurities. (Omura ¶¶ 39–42, 53–54.) Omura teaches the detrimental effects of the duplex stainless steel containing more than 0.05% P; more than 0.001 % S; and more than 0.01 % O. Thus, a person of ordinary skill in the art would have sought to control/limit the amount of S, P, and O to levels below those recognized to provide detrimental effects in duplex stainless steel compositions as described by Omura. Appellant fails to explain adequately why one skilled in the art, using no more than ordinary creativity, would not have been able to arrive at the claimed invention from the teachings of the cited art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Appellant has not directed us to evidence that duplex stainless steel compositions comprising the amount of S, P, and O suggested by Omura would not possess Appellant’s argued beneficial effects. Accordingly, we affirm the Examiner’s prior art rejection of claims 1, 5, 8, 10, 11, and 14–16 under 35 U.S.C. § 103 for the reasons the Examiner presents and we give above. Arguments not specifically addressed are deemed not persuasive for the reasons the Examiner presents. Appeal 2021-005019 Application 14/342,865 8 CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 8, 10, 11, 14–16 103 Irander, Omura 1, 5, 8, 10, 11, 14–16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2020). AFFIRMED