AK Steel Properties, Inc.

Patent Trials and Appeals Board

Jun 22, 2020

14010646 - (D) (P.T.A.B. Jun. 22, 2020)

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.
14/010,646 08/27/2013 Eizo Yoshitake 1606001/0374644 9735
26874 7590 06/22/2020
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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 EIZO YOSHITAKE

Appeal 2019-004641
Application 14/010,646
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–4.2 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—namely, “AK Steel Properties, Inc.” (Application Data
Sheet filed August 27, 2013), which is also identified as the real party in
interest (Appeal Brief filed January 11, 2019 (“Appeal Br.”) at 3).
2 See Appeal Br. 6–13; Reply Brief filed May 23, 2019 (“Reply Br.”) at 5–
10; Final Office Action entered August 3, 2018 (“Final Act.”) at 4–8;
Examiner’s Answer entered March 28, 2019 (“Ans.”) at 4–16.
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I. BACKGROUND
The subject matter on appeal relates to a ferritic stainless steel with
added titanium and low aluminum concentration to provide room
temperature formability, added columbium (i.e., niobium) and copper for
high temperature strength, and added silicon and manganese for improved
oxidation resistance (Specification filed August 27, 2013 (“Spec.”) ¶¶ 2–3).
Representative claim 1, the sole independent claim on appeal, is reproduced
from the Claims Appendix to the Appeal Brief, as follows:
1. A ferritic stainless steel comprising the following elements
by weight percent:
0.020% or less carbon;
0.020% or less nitrogen;
15-20% chromium;
0.30% or less titanium;
0.50% or less columbium;
1.0-2.00% copper;
1.27-1.7% silicon;
0.8-1.0% manganese;
0.050% or less phosphorus;
0.01 % or less sulfur;
less than 0.020% aluminum;
wherein the product of the concentration of titanium and the
concentration of nitrogen divided by the concentration of
aluminum is at least 0.08; and
the balance comprising iron and unavoidable impurities.
(Appeal Br. 14 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre-
AIA), as follows:
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A. Claims 1–4 as unpatentable over Kobayashi et al.3
(“Kobayashi”); and
B. Claims 1–4 as unpatentable over Oku et al.4 (“Oku”).
(Ans. 4–16; 4–8).
III. DISCUSSION
Rejection A. The Examiner finds that Kobayashi (US ’231) describes
a ferritic stainless steel composition that contains the same elements in the
same or similar amounts as recited in claim 1 (Ans. 4; Final Act. 4). The
Examiner’s findings, which include a comparison between the claimed
ferritic stainless steel and Kobayashi’s ferritic stainless steel, are reproduced
from a table in the Examiner’s Answer (Ans. 4), as follows:

3 US 2006/0163231 A1, published July 27, 2006. The Examiner refers to
this document as “US’231” (Ans. 4; Final Act. 4).
4 CA 2 762 899 A1, published December 23, 2010. The Examiner refers to
this document as “CA’899” (Ans. 6; Final Act. 5).
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The table reproduced above compares the elemental compositions of the
claimed ferritic stainless steel and Kobayashi’s ferritic stainless steel (id.).
With respect to aluminum (Al), the table above shows that
Kobayashi’s disclosed aluminum content (i.e., 0.02–2.0 mass%) differs from
that recited in claim 1 (i.e., < 0.020 wt.%) (id.). The Examiner finds,
however, that Kobayashi’s “lower limit of 0.02 mass% of the prior art is
close to the upper limit of the claimed range” (id. at 5). Based on this
finding, the Examiner concludes that “[a] prima facie case of obviousness
exists [because] the claimed . . . amounts do not overlap with the prior art
[amounts] but are merely close” (id.).
The Appellant contends, inter alia, that Kobayashi teaches away from
the aluminum concentration recited in claim 1 (Appeal Br. 11). Specifically,
the Appellant argues that Kobayashi teaches “[w]hen the content of Al is
below 0.02 mass % and that of Ti is lower than 0.2 mass %, the
[deoxidizing] effect [of Al and Ti] cannot be obtained” (id. at 11–12
(quoting Kobayashi ¶ 29)).
We agree with the Appellant that Kobayashi teaches away from
modifying the aluminum content in Kobayashi’s stainless steel to a level
below 0.02 mass%. Unlike the situation in, e.g., In re Brandt, 886 F.3d
1171, 1177 (Fed. Cir. 2018), where no evidence of criticality of the claimed
numerical range was offered to rebut a prima facie case of obviousness
based on closeness between the prior art range and the claimed range, the
Appellant identifies evidence in the form of an explicit teaching in
Kobayashi that would have discouraged a person having ordinary skill in the
art from reducing the aluminum amount in Kobayashi to below 0.02 mass%
(Kobayashi ¶ 29, Table 1).
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The Examiner posits that Kobayashi does not teach away from
reducing the Al content per se to below 0.02 mass% but rather both Al
content below 0.02 mass% and Ti content lower than 0.2 mass% (Ans. 14).
That position is not sound for the reasons given by the Appellant (Reply Br.
9), which we adopt as our own.
The Examiner also states that an Al content of, for example, 0.01999
wt.% is “extremely close” to 0.02 mass%, and, therefore, a prima facie case
of obviousness exists (Ans. 15). Again, however, Kobayashi explicitly
teaches away from any Al content below 0.02 mass% (Kobayashi ¶ 29).
Other than speculation based on a hypothetical Al content of. 0.01999 wt.%,
the Examiner fails to direct us to sufficient evidence that would support a
conclusion that Kobayashi would have suggested that values that are not
“below 0.02 mass %” would in fact include values within the claimed range
of “less than 0.020% aluminum,” as recited in claim 1.
Therefore, we do not sustain the Examiner’s rejection over Kobayashi
as maintained against independent claim 1 and claims 2–4 dependent
thereon. See Brandt, 886 F.3d at 1177 (distinguishing and explaining In re
Patel, 566 Fed. Appx. 1005 (Fed. Cir. 2014), where an obviousness rejection
based on numerical closeness was not sustained because the prior art did not
suggest that a broader range based on a flexible application of the disclosed
range would be suitable).
Rejection B. We reach a different result with respect to the
Examiner’s rejection based on Oku (CA ’899). Because the Appellant does
not argue any dependent claim separately from independent claim 1 (Appeal
Br. 13), we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds that Oku describes a ferritic stainless steel
composition that contains the same elements in amounts that overlap or fall
within the ranges recited in claim 1 (Ans. 6–7; Final Act. 5–6). The
Examiner’s findings, which include a comparison between the claimed
ferritic stainless steel and Oku’s ferritic stainless steel, are reproduced from
a table in the Examiner’s Answer (Ans. 6), as follows:

The table reproduced above compares the elemental compositions of the
claimed ferritic stainless steel and Oku’s ferritic stainless steel (id.). Based
on these findings, the Examiner concludes that “[a]s the claimed ranges
overlap or lie inside ranges disclosed by the prior art, a prima facie case of
obviousness is established as it would have been obvious . . . to a person
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having ordinary skill in the art to . . . select the [amounts for the elements as
recited in the] claimed composition over the prior art disclosure” (id. at 7).
The Appellant contends that Oku does not teach or suggest the
limitation “the product of the concentration of titanium and the
concentration of nitrogen divided by the concentration of aluminum is at
least 0.08” in claim 1 (Appeal Br. 6). According to the Appellant, this
limitation “establishes a critical relationship for achieving different
properties” (id. at 7 (citing Spec. ¶ 7)). The Appellant argues further that the
Examiner failed to consider secondary considerations for nonobviousness
(id. at 8–13). Specifically, the Appellant contends that the limitation “0.8-
1.0% manganese,” as recited in claim 1, provides unexpected results in
terms of high temperature oxidation resistance and that “manganese
compositions falling below the minimum value of manganese recited in
independent claim 1, exhibited ‘severe’ or ‘very severe’ spalling” (id. at 8–9
(citing Example 3 (Spec. ¶ 34))).5 Additionally, the Appellant argues that
Oku does not teach or suggest a concentration of “less than 0.020%
aluminum,” as recited in claim 1, because “Oku . . . teaches away by
encouraging the intentional addition of aluminum, rather than minimizing its
content” (id. at 11).
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Except for the finding that Oku discloses a lower limit of 0.01 mass%
for the Al content, we adopt the Examiner’s findings regarding Oku’s
disclosure and the differences between it and the claimed subject matter as

5 It appears that the Appellant intends to refer to Example 2 and Table 2
(Spec. ¶ 33)—not Example 3.
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our own (Oku Abstract, ¶¶ 13, 24–35).6 When, as here, the prior art amount
ranges encompass, fall within, and overlap those recited in the claim, a
prima facie case of obviousness typically exists. In re Peterson, 315 F.3d
1325, 1329–30 (Fed. Cir. 2003); Titanium Metals Corp. of America v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). Therefore, the burden of
production was properly shifted to the Appellant to rebut the prima facie
case of obviousness. Peterson, 315 F.3d at 1330 (“[T]he existence of
overlapping or encompassing ranges shifts the burden to the applicant to
show that his invention would not have been obvious.”).
Regarding the limitation “the product of the concentration of titanium
and the concentration of nitrogen divided by the concentration of aluminum
is at least 0.08,” as recited in claim 1, the Appellant argues that “[a]lthough
[a certain] combination [within the prior art disclosure] meets the above-
referenced limitation, the Office ignores other possible combinations that
may not meet the above-referenced limitation” (Appeal Br. 7). But the mere
fact “[t]hat the [reference] discloses a multitude of effective combinations
does not render any particular formulation less obvious.” Merck & Co., Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
In this case, other than a conclusory statement in the Specification
(Spec. ¶ 7), the Appellant does not direct us to objective evidence
establishing any unexpected criticality for the specified Ti, N, and Al
relationship. In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“[M]ere
conclusory statements in the specification and affidavits are entitled to little
weight when the Patent Office questions the efficacy of those statements.”).

6 Oku discloses an Al content that “should be suppressed to a range of 6%
or less” (Oku ¶ 33).
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Regarding the manganese content of “0.8-1.0%” recited in claim 1,
we are in complete agreement with the Examiner’s well-stated position
(Ans. 12) that “the reference samples [i.e., comparative examples] having
Mn of 0.28 and 0.35 [as shown in Example 2 and Table 2 (Spec. ¶ 33)]. . .
are too far away from the claimed lower limit . . . 0.8,” and, therefore, the
proffered showing is insufficient. Specifically, Samples V3918, V3920,
V3922, V3921, and 444, which included 0.28 or 0.35 wt.% manganese—i.e.,
amounts outside the range recited in claim 1, are reported as exhibiting
severe or very severe spalling (scale off) (Spec. ¶ 33 (Table 2)). But, as the
Examiner correctly observes, 0.28 and 0.35 wt.% are not close to (i.e., just
outside) the lower end of the range recited in claim 1 (i.e., 0.8 wt.%). In re
Inland Steel Co., 265 F.3d 1354, 1365–66 (Fed. Cir. 2001) (“Inland offered
only a few data points from one experiment comparing antimony within and
below its claimed ranges.”).
As a corollary, Appellant does not direct us to comprehensive test
results demonstrating the criticality of all Mn contents encompassed by the
specified range (including 0.8 wt.%), because the lowest Mn content
described as “Invention” in Table 2 is 0.98 wt.%—a Mn level far removed
from the lower limit of 0.8 wt.%. Inland, 265 F.3d at 1366 (“Inland did not
offer comprehensive test results for the magnetic properties of steel
produced under the ’574 claims at antimony levels greater than 0.02%.”).
Lastly, we discern no persuasive merit in the Appellant’s argument
that Oku does not teach or suggest a concentration of “less than 0.020%
aluminum,” as recited in claim 1 (Appeal Br. 11). According to the
Appellant, “Oku . . . teaches away by encouraging the intentional addition of
aluminum, rather than minimizing its content” (id.). Contrary to the
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Appellant’s belief, Oku explicitly teaches that “Al should be suppressed to a
range of 6% or less” (Oku ¶ 33 (emphasis added)). See also Oku’s Table 1,
which includes examples with Al contents as low as 0.06 mass%, which
differs from the upper limit of the range recited in claim 1 by only 0.04
mass%.
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection based on Oku.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4 103(a) Kobayashi 1–4
1–4 103(a) Oku 1–4
Overall
Outcome
1–4

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