Ex Parte Baumert et al

Patent Trial and Appeal Board

Oct 31, 2013

12419001 (P.T.A.B. Oct. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SERGE BAUMERT and PHILIPPE MUGG
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Appeal 2011-011244
Application 12/419,001
Technology Center 3600
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Before MICHAEL L. HOELTER, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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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.
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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%). . . .

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. . . 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
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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.
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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
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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
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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
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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
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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
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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
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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.
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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

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