Ex Parte Bouzekri

Board of Patent Appeals and Interferences

Feb 24, 2012

10391529 (B.P.A.I. Feb. 24, 2012)

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