Ex Parte BouzekriDownload PDFBoard of Patent Appeals and InterferencesFeb 24, 201210391529 (B.P.A.I. Feb. 24, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/391,529 03/19/2003 Mohamed Bouzekri Q74487 5353 7590 02/24/2012 SUGHRUE MION, PLLC 2100 Pennsylvania, Avenue, NW Washington, DC 20037-3213 EXAMINER ROE, JESSEE RANDALL ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 02/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MOHAMED BOUZEKRI ____________ Appeal 2010-005203 Application 10/391,529 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and DEBORAH KATZ, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005203 Application 10/391,529 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1, 3, 5, 6, 10, 12, 14, 16, 18, and 20 as obvious over Kobayashi (JP-06-093329; Sep. 14, 1992, as translated); of claim 7 as obvious over Kobayashi as needed in view of Darrah (U.S. 5,779,047, issued Jul. 14, 1998); and, of claims 8-10 as unpatentable over the combined prior art of Kobayashi, Darrah, and Schiessi (U.S. 6,185, 977 B1, issued Feb. 13, 2001 ).1 Claim 1 is illustrative of the subject matter appeal: 1. A cold-rolled aluminum killed sheet steel, comprising, by weight, between 0.053 and 0.080 % carbon, between 0.15 and 0.424% manganese, between 0.010 and 0.100% aluminum, between 0.0020 and 0.0060% nitrogen, the remainder being iron and impurities resulting from production, and wherein the steel has a content of carbon in solid solution (Css) of at least 50 ppm, wherein the sheet has a rate of elongation of between 3 and 8%. Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claim 1 is unpatentable over Kobayashi. Accordingly, we sustain each of the Examiner’s 103 rejections on appeal for substantially the reasons set forth in the Answer. Appellant’s arguments focus solely on their contention that the steel of Kobayashi lacks the claimed limitation of “at least 50 ppm” of carbon in 1 Appellant only addresses sole independent claim 1. Br. 8-12. Thus, all the claims stand or fall together, including those claims separately rejected. Appeal 2010-005203 Application 10/391,529 3 solid solution as recited in claim 12. Appellant contends that that 50 to 200 ppm range of “intra-steel carbon concentration” of Kobayashi relied upon by the Examiner does not relate to a “carbon solid solution content” (Css) as recited in claim 1 (Br. 8-11). Appellant contends that Kobayashi teaches that the Css should be in “the goal range of 4 to 11 ppm” (Br. 11). However, even assuming that Appellant is correct, Appellant has not disputed or otherwise responded to the Examiner’s alternative reasonable determination that Kobayashi (e.g., via translation p. 20, Fig. 1) teaches that Css is a result effective variable which corresponds to a maximum bake curability at 50 ppm (Ans. 4, 8, and 9; generally Br.). Based on this determination, the Examiner concludes it would have been obvious “to modify the solid-solubilized carbon content . . . to achieve the desired bake curability (and in the case of 50 ppm carbon in solid solution, the maximum bake curability) of the aluminum killed steel sheet as disclosed by Kobayashi” (Ans. 4; see also Ans. 7-9). It is well established that in “cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “in a section 103 inquiry, ‘the fact that a specific [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., 2 Appellant does not otherwise dispute that the steel of Kobayashi has overlapping amounts of each claimed component of the aluminum steel sheet (generally Br.). Appeal 2010-005203 Application 10/391,529 4 Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).) Since the claimed range of “at least 50 ppm” overlaps the range of 0 to 50 ppm as depicted in Fig. 1 of Kobayashi, the Examiner’s obviousness conclusion is supported by a preponderance of the evidence. Notably, Appellant has provided no evidence, or any persuasive line of technical reasoning, explaining why the Examiner’s alternative reasoning and obviousness conclusion is in error (see generally Br.; no Reply Br. has been filed). The decision of the Examiner is 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). AFFIRMED tc Copy with citationCopy as parenthetical citation