Ex Parte Baumert et alDownload PDFPatent Trial and Appeal BoardOct 31, 201312419001 (P.T.A.B. Oct. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SERGE BAUMERT and PHILIPPE MUGG ____________ Appeal 2011-011244 Application 12/419,001 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS and CARL M. DeFRANCO, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011244 Application 12/419,001 2 STATEMENT OF THE CASE Serge Baumert and Philippe Mugg (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1-8, 10-17 and 19 as unpatentable over Kais (US 6,177,205 B1; iss. Jan. 23, 2001), Bhadeshia (US 5,879,474; iss. Mar. 9, 1999) and Yokoyama1 (JP 2001098342 A; pub. Apr. 10, 2001); and (2) claims 9 and 18 as unpatentable over Kais, Bhadeshia, Yokoyama and Appellants’ Admitted Prior Art (AAPA) (see Ans. 5, citing Spec. p. 4, ll. 2- 7). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellants’ claimed invention “relates in particular to the connection between a switch such as a crossing frog and a section of rail consisting for example of a running line rail made from carbon steel.” Spec. 12; fig. 1. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed invention and is reproduced below: 1. A process for the manufacture of a stretch of rail, comprising: directly welding a railway switch element to at least one length of rail by flash welding and forging to produce said stretch of rail, 1 Appellants refer to the Yokoyama reference as “JP ‘342.” See App. Br. 3. The Examiner refers to the Yokoyama reference as the “Japanese reference.” See Ans. 3-4. To maintain consistency, we shall refer to the Yokoyama reference as “JP ‘342.” 2 Appellants’ Specification does not provide line or paragraph numbering. Accordingly, reference will only be made to the page number. Appeal 2011-011244 Application 12/419,001 3 said railway switch element being made from high-alloy steel, in which manganese has a content equal to at least 5% by weight, and said at least one length of rail being made from a medium-alloy steel having a carbon content less than 0.55% by weight and which is a bainitic steel. ANALYSIS Obviousness over Kais, Bhadeshia and Yokoyama - Claims 1-8, 10-17 and 19 Appellants do not present separate arguments for independent claims 1 and 11. App. Br. 4-9. Appellants do not present additional arguments for dependent claims 2-8, 10, 12-17 and 19 separate from those directed against the rejection of independent claims 1 and 11. Id. Accordingly, Appellants have argued claims 1-8, 10-17 and 19 as a group for purposes of the rejection of those claims under § 103(a). Claim 1 is representative of the group and is selected for review, with claims 2-8, 10-17 and 19 standing or falling with claim 1. See 37 C.F.R. 41.37(c)(1)(vii)(2011). Independent claim 1 recites a process for the manufacture of a stretch of rail including “directly welding a railway switch element to at least one length of rail by flash welding and forging.” App. Br., Clms. App’x. Appellants contend that: Besides welding frog point 12 with rail 14 together directly by electron-beam welding, Kais teaches an alternative way which uses an intermediate layer made of nickel based alloy, by flash butt welding, to weld the high alloy steel and the carbon steel, where the carbon steel has a mixed structure with at least bainite (preferably 30% to 40%) and pearlite (preferably at least 50%). . . . Appeal 2011-011244 Application 12/419,001 4 . . . JP ‘342 teaches that the joinability is improved in flash butt welding. Therefore, even if one skilled in the art combines Kais with JP '342, the combination would then still be replacing the pearlite contents with the bianitic steel via the intermediate layer during the flash butt welding process. . . . Bhadeshia pertains to a method of producing an essentially carbide-free bainitic steel. . . . As is well known in the art, the problem of weldability is never a problem “in general”, but always reduces to specific problems: weldability of a particular steel on another particular steel. It is never possible to use a general teaching about welding of a carbon steel on the same carbon steel to deduce information on the welding of the same carbon steel on a high alloyed manganese steel. Especially, Kais prefers to use the structure which has at least 50% pearlite content. . . . . . . as neither Bhadeshia nor JP ‘342 give information about welding of a carbon steel on an high alloyed carbon steel, the man which is skilled in the art has no reason to search a solution which is different from the solution of Kais, i.e., to use an insert made of nickel based alloy. App. Br. 7-9 (emphasis in original); see also Reply Br. 3-6. Appellants’ arguments are not persuasive. Appellants’ arguments do not address the Examiner’s proposed combination of Kais, JP ‘342 and Bhadeshia. Ans. 3-5. As pointed out by the Examiner, indirect welding through using a metal insert is actually another alternative embodiment of Kais that forms no part of the [E]xaminer’s combination applied in the [] grounds of rejection. In the [] ground of rejection, the direct welding embodiment instead of indirect welding Appeal 2011-011244 Application 12/419,001 5 embodiment of Kais is applied as the starting basis of the rejection because the instant claimed invention requires a direct welding. Ans. 7 (emphasis added). In this case, the Examiner found that Kais discloses a stretch of rail comprising switch element 12 made of high alloy steel including manganese content of 10-20%, connected directly to the lengths of carbon steel rails 14,16 that has pearlite content by welding without deposition of metal (see for example claim 1 of Kais patent), i.e. by electron-beam welding. Ans. 3. The Examiner found that Bhadeshia (1) “describes a bainitic steel rail without carbide or carbide-free, and the bainitic steel rail has the material composition as recited in instant claims” (Ans. 4 citing Bhadeshia, col. 3, ll. 4-15); and (2) discloses that “bainitic steel rail is preferred over pearlitic steel rail for its enhanced wear resistance, rolling contact fatigue, toughness, weldability, and the advantages of elimination of heat treatment operations during both production and after welding heat treatment” (id. citing Bhadeshia, col. 1, ll. 15-21, col. 2, ll. 17-21, col. 2, l. 66 - col. 3, l. 3). The Examiner also found that JP ‘342 “suggests the use of bainitic rail over the conventional pearlitic rail because bainitic steel has excellent wear resistance and damage resistance.” Ans. 4 (citing English abstract of JP ‘342). The Examiner concluded that [i]n view of Bhadeshia and [JP ‘342], it would have been obvious to one skilled in the art to substitute a bainitic steel rail, such as the steel rail of Bhadeshia, for the pearlitic steel rail of Kais because both Bhadeshia and [JP ‘342] indicate the preferences of bainitic steel rails over pearlitic steel rails for the above described advantages. Appeal 2011-011244 Application 12/419,001 6 Id. The Examiner further took Official Notice that “flash butt welding and flash welding and forging [as claimed in the subject invention] are considered to be equivalent because they are recognized in the art to be similar.” Ans. 4-5. The Examiner further concluded that [i]n view of the [JP ‘342], it would have been obvious to one skilled in the art to use either flash butt welding or flash welding and forging instead of electron-beam welding for welding the bainitic steel rails in the structure of Kais, as modified, because flash butt welding or the equivalence thereof (i.e. the flash welding and forging) provides an enhanced joinability for bainitic steel as suggested in the English abstract of the [JP ‘342]. Ans. 5. The Examiner also reasoned that electronic beam welding (described in Kais) and flash welding (described in the [JP ‘342]) are known forms of welding, and the concept of trying one known type of welding (e.g. flash welding) from among a couple of known types of welding (e.g. electronic beam welding and flash welding) would fall in another KSR rationale that supports obviousness, i.e. “obvious to try” - choosing a finite reasonable number of identified, predictable solutions, with a reasonable expectation of success. For example, it would have been obvious to one skilled in the art to try a test weld by using each of the two known types of welding, and then to finally choose the type of welding that produces a stronger weld joint. Ans. 7-8. Moreover, we note that Appellants’ Specification states that “[t]he weld 16 is obtained for example by flash welding and forging according to a conventional welding cycle which is known per se. As a variant, the weld Appeal 2011-011244 Application 12/419,001 7 can be obtained by induction, by friction, by electron beams, by laser or by any other high-energy beam.” Spec. 5; fig. 1. Appellants have not apprised us of error regarding the Examiner’s stated reasoning or conclusions of obviousness. Appellants contend that it must be emphasized that Kais discloses a direct welding method (electron-beam welding) and an indirect welding method using an intermediate layer without indicating a preference for one of the two methods (cf. column 2, lines 1-7). Therefore, Kais does not teach or infer a person skilled in the art to choose the direct welding method especially as Kais discusses in detail throughout the whole document the composition of an intermediate layer material used for indirect welding and therefore seems to favor the indirect welding method. Kais thus in effect teaches away from the present invention. Reply Br. 4. Appellants’ arguments are not persuasive. Appellants do not point to any passage in Kais that “criticize[s], discredit[s] or otherwise discourage[s]” the use of direct welding techniques. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed). To the contrary, Kais discloses [i]t is proposed in accordance with the invention that the rail parts consisting of differing materials, one of which is carbon steel and the other austenitic manganese steel, . . . be joined either directly using electron-beam welding methods or Appeal 2011-011244 Application 12/419,001 8 indirectly via an intermediate layer comprising a nickel based alloy. . . The type of join represents a simplification in comparison with the prior art, since in accordance with the invention there is the possibility of joining a rail consisting of austenitic manganese steel directly to the second rail part of carbon steel, in order to then treat the unit thus formed as a whole. The use of electron-beam welding has the advantage of directly joining the austenitic manganese steel to carbon steel. Alternatively, a join can be made using an intermediate layer in the form of a nickel-based alloy. Kais, col. 2, ll. 1-19 (emphasis added). In other words, Kais discloses two different methods of joining the austenitic manganese steel to carbon steel, i.e., directly via electron-beam welding or, alternatively, via an intermediate layer in the form of a nickel-based alloy. Thus, we find that the disclosure of Kais does not teach away from Appellants’ claimed invention. Appellants’ contend that JP ‘342 (1) “does not specify the material to test the joinability and at least is silent about welding a carbon steel on a high alloyed steel” (App. Br. 8); (2) “neither discloses nor suggests that flash butt welding or the equivalence thereof provides an enhanced joinability over electron-beam welding. Therefore, JP ‘342 does not teach or infer to a person skilled in the art to replace electron-beam welding as suggested by Kais by flash butt welding or the equivalence thereof” (Reply Br. 4-5); and (3) “does not disclose flash butt welding of bainitic steel with a high-alloy steel having a manganese content equal to at least 5% by weight” (Reply Br. 5). Appellants’ arguments are not persuasive. Appellants’ arguments are individual attacks on the references rather than a challenge to the Examiner’s Appeal 2011-011244 Application 12/419,001 9 combination of the teachings of the references. See In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references). Appellants contend that “the present invention shows unexpected results that would fully rebut any unpatentability that could be alleged. This includes the unexpected and advantageous clean line of fusion between the bainitic steel and the manganese steel, as can be seen in Figure 2 of the application.” App. Br. 9; see also Reply Br. 3. Appellants’ arguments are not persuasive for the following reasons. First, Appellants have not come forth with any objective evidence of non- obviousness (i.e., secondary considerations). Specifically, Appellants have not provided any objective evidence of unexpected results, commercial success, long-felt but unsolved needs, or failure of others. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1565 (Fed. Cir. 1997). Merely stating that “unexpected results” have been obtained is not sufficient to rebut the rejection; factual evidence must be provided. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Further, when an article is said to achieve unexpected (i.e., superior) results, those results must logically be shown as superior compared to the results achieved with other articles. Appellants acknowledge that (1) “Kais discloses a direct welding method (electron-beam welding)” (Reply Br. 4; see also App. Br. 7); (2) “JP ‘342 teaches that the joinability is improved in flash butt welding” (App. Br. 8); (3) “JP ‘342 compares bainitic steel with pearlitic steel and points out that bainitic steel has a better joinability than pearlitic steel” (Reply Br. 5); and (4) “Bhadeshia pertains to a method of Appeal 2011-011244 Application 12/419,001 10 producing an essentially carbide-free bainitic steel” (App. Br. 8). Appellants have not persuasively explained how “a simple substitution of one known element (e.g. bainitic steel, and flash welding) for another (e.g. pearlitic steel, electronic beam welding)” would yield anything other than predictable results, as proposed by the Examiner. Ans. 6. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” (citation omitted)). In other words, Appellants have not provided any objective evidence to show that Appellants’ invention achieves “unexpected results” as compared to the device of Kais, Bhadeshia and JP ‘342. Accordingly, for the foregoing reasons, the Examiner’s rejection of claim 1 and claims 2-8, 10-17 and 19, which fall with claim 1, as unpatentable over Kais, Bhadeshia and JP ‘342 is sustained. Obviousness over Kais, Bhadeshia, Yokoyama and AAPA - Claims 9 and 18 Appellants have not presented separate arguments for dependent claims 9 and 18. App. Br. 10. Therefore, Appellants have argued claims 9 and 18 as a group for purposes of the rejection of those claims under § 103(a). Claim 9 is representative of the group and is selected for review, with claim 18 standing or falling with claim 9. See 37 C.F.R. 41.37(c)(1)(vii)(2011). Claim 9 recites “wherein the switch element made from the high-alloy steel has a hardness between 170 and 230 HB.” App. Br., Clms. App’x. The Examiner found that Appeal 2011-011244 Application 12/419,001 11 Kais does not disclose the specific hardness of the switch element. In the lines 2-7, page 4 of the instant specification, there is a switch element made of a material, which is similar to that of Kais, that is well known under the name of HADFIELD and has hardness between 170 and 230 HB. Therefore, it would have been obvious to one skilled in the art to use a material having similar hardness to that of the prior art switch element described in the instant specification, for forming the switch element of Kais so as to achieve the expected structural integrity thereof. Ans. 5-6. Appellants contend [t]he Detailed Description section of the specification includes a reference to the steel known as HADFIELD and to it hardness of between 170 and 230. . . . However by being in the Detailed Description section this is clearly part of the disclosure of the invention. Utilizing this disclosure as prior art without an admission of prior art is impermissible. App. Br. 10. Appellants’ argument is not persuasive. Appellants contention that they did not make an express admission of prior art is undercut by their statement that “[t]his is a steel which is well known under the name of HADFIELD.” Spec. 4. It is this express acknowledgement by Appellants that HADFIELD steel is well known that the Examiner relied upon. Ans. 5- 6. However Appellants’ wish to categorize this statement, it is axiomatic that admitted prior art in an Applicants’ Specification may be used in determining the patentability of a claimed invention and that consideration Appeal 2011-011244 Application 12/419,001 12 of the prior art cited by the Examiner may include consideration of the admitted prior art found therein. In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975); In re Davis, 305 f.2d 501, 503 (CCPA 1962). The Examiner’s finding is supported by the further teaching in Appellants’ Specification that alloyed steel containing between 12% and 14% by weight of manganese and having a hardness between 170 and 230 HB is well known under the name of HADFIELD. Spec. 4. We also note that Kais discloses that the austenitic manganese steel (switch element) has a manganese content “preferably in the range between 10 and 20 % by weight.” See Kais, col. 2, ll. 3-5; see also Ans. 3. In this case, because Kais’ switch element has a manganese content in the range between 10 and 20 % by weight, which encompasses a manganese content in the range between 12% and 14% by weight as described in the Specification, the Examiner had a reasonable basis for belief that Kais’ switch element would have a similar hardness to that of the prior art switch element described in the instant Specification (see Ans. 3, 5-6). Thus, the claimed property (i.e., a hardness between 170 and 230 HB) would have reasonably been believed to have been an inherent characteristic of Kais’ switch element. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products”). Accordingly, for the foregoing reasons, the Examiner’s rejection of claim 9 and claim 18, which falls with claim 9, as unpatentable over Kais, Bhadeshia, JP ‘342 and AAPA is sustained. Appeal 2011-011244 Application 12/419,001 13 DECISION We AFFIRM the decision of the Examiner to reject claims 1-19. 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)(iv). AFFIRMED Klh Copy with citationCopy as parenthetical citation