Ex Parte Kimura et al

Board of Patent Appeals and Interferences

Feb 11, 2009

10488980 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MITSUO KIMURA, TAKANORI TAMARI,
and TAKAAKI TOYOOKA
____________

Appeal 2008-4497
Application 10/488,980
Technology Center 1700
____________

Decided:1 February 11, 2009
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4497
Application 10/488,980

decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Statement of the Case
Appellants claim a corrosion-resistant stainless steel pipe for oil
country tubular goods having a particular steel composition as well as a
method for manufacturing such a corrosion-resistant stainless steel pipe.
Representative claim 1 reads as follows:
1. A corrosion-resistant stainless steel pipe for oil country tubular
goods having a steel composition comprising on a mass basis:

0.05% or less of C;

0.50% or less of Si;

0.20% to 1.80% of Mn;

0.03 or less of P;

0.005% or less of S;

14.0% to 18.0% of Cr;

5.0% to 8.0% of Ni;

1.5% to 3.5% of Mo;

0.5% to 3.5% of Cu;

0.05% or less of Al;

0.03% to 0.20% of V;

0.01% to 0.15% of N;

0.006% or less of O, and
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Application 10/488,980

the balance being Fe and incidental impurities,

wherein the composition satisfies expressions (1) and (2):

Cr + 0.65Ni + 0.6Mo + 0.55Cu + 20C ≥ 18.5 (1);

Cr + Mo + 0.3Si – 43.5C – 0.4Mn – 0.3Cu – 9N ≤ 11 (2),

where Cr, Ni, Mo, Cu, C, Si, Mn, and N represent contents thereof on
a mass% basis.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Hashizume 5,496,421 Mar. 5, 1996
Hara (as translated) JP 8-246107 Sept. 24, 1996
B. L. Bramfitt & Arlan O. Benscoter, Metallographer’s Guide: Practices
and Procedures for Irons and Steels, Chapter1, “Introduction to Steels and
Cast Irons”, 3 (ASM International 1999) (Table 1.1)

The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over Hara in view of Hashizume and Table 1.1 or
alternatively as being unpatentable Hashizume in view of Table 1.1.

Rejection Based on Hara, Hashizume, and Table 1.1
Issue
Have Appellants shown reversible error in the Examiner’s conclusion
that it would have been obvious to restrict the amount of oxygen impurity in
the stainless steel pipe composition of Hara (i.e., to 0.006% or less as
required by claim 1) in view of Table 1.1?

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Appeal 2008-4497
Application 10/488,980

Findings of Fact
The Examiner acknowledges that the Hara reference contains no
disclosure of the oxygen content in the Hara stainless steel pipe composition,
but finds that “oxygen present as an impurity in steel is detrimental because
it forms oxide inclusions that degrade toughness and strength (see Table 1.1
of ‘Introduction to Steel and Cast Iron’)” (Ans. 4).
Based on this finding, the Examiner concludes that it would have been
obvious for one with ordinary skill in this art to restrict the oxygen impurity
in Hara’s stainless steel pipe (i.e., to a level of 0.006% or less as required by
claim 1) in view of Table 1.1 (id.).
Principles of Law
To justify combining the teachings of references, the test for
obviousness is what the combined teachings of the references would have
suggested to those with ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Analysis
In arguing the merits of this rejection (App. Br. 6-15), Appellants do
not specifically address any particular claim. Accordingly, rejected claims
1-16 will stand or fall together as a group, and we select independent claim 1
to represent this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Despite quoting the Examiner’s obviousness conclusion (App. Br. 7),
Appellants express the belief that “the rejection is based on the concept of
‘inherency’” (id.). Appellants acknowledge that “[t]he rejection does not
use the word ‘inherent’ or ‘inherency’ [but], [n]onetheless, the Applicants
respectfully submit that the rejection is indeed based on inherency” (id.).
Appellants then argue that the stainless steel pipe of the applied prior art
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Appeal 2008-4497
Application 10/488,980

does not inherently possess an oxygen content of 0.006% or less as required
by the appealed claims (App. Br. 7-11). As support for this argument,
Appellants rely upon Reference Materials 1-3, which are untranslated
foreign language documents, in the Evidence Appendix of their Appeal Brief
(App. Br. 9-10).
However, Appellants’ inherency discussion is not relevant to, and
reveals no errors in, the obviousness conclusion of the Examiner.
Appellants also discuss the presence of austenite versus martensite in
stainless steel and refer to Reference Materials 4-5 of their Evidence
Appendix in the course of this discussion (App. Br. 11-15).
However, Appellants have not explained why this discussion is
relevant to any of the claims on appeal (id.). Certainly, such a discussion
reveals no errors in the Examiner’s obviousness conclusion concerning
representative independent claim 1 since this claim contains no recitation of
austenite versus martensite.
We recognize Appellants’ broadly stated contention that “Table 1.1,
Hashizume and JP’ 107 [i.e., Hara] fail to disclose the amount of O that is
present and fail to lead to the claimed amount” (App. Br. 9). This contention
reveals no reasonably specific error in the Examiner’s conclusion of
obviousness. On the other hand, the Examiner’s conclusion that it would
have been obvious to lower the oxygen content of Hara’s stainless steel pipe
to a level within the claim 1 range is supported by the combined teachings of
the references including the express teaching in Table 1.1 that oxygen is
“[u]ndesirable in steel” and is “[u]sually minimized in steel by deoxidation
with aluminum and/or silicon and vacuum degassing” (right hand col.).

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Appeal 2008-4497
Application 10/488,980

Conclusions of Law
Appellants have not shown error in the Examiner’s conclusion that it
would have been obvious to restrict the amount of oxygen impurity in the
stainless steel pipe composition of Hara (i.e., to 0.006% or less as required
by claim 1) in view of Table 1.1.
Therefore, we sustain the Examiner’s § 103 rejection of all appealed
claims as being unpatentable over Hara in view of Hashizume and Table 1.1.

Rejection based on Hashizume and Table 1.1
Issue
Have Appellants shown error in the Examiner’s conclusion that it
would have been obvious for one with ordinary skill in this art to restrict the
oxygen content in Hashizume’s stainless steel pipe (i.e., to 0.006% or less as
required by claim 1) in view of Table 1.1?
Findings of Fact
The Examiner acknowledges that the Hashizume patent contains no
teaching of the oxygen content in patentee’s stainless steel pipe but finds
that “oxygen present as an impurity in steel is detrimental because it forms
oxide inclusions that degrade toughness and strength, as taught by
‘Introduction to Steel and Cast Iron’ (see Table 1.1)” (Ans. 6.)
Based on this finding, the Examiner concludes that it would have been
obvious for one with ordinary skill in this art to restrict the level of oxygen
impurity in Hashizume’s stainless steel pipe to 0.006% or less as required by
claim 1 (id.).

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Appeal 2008-4497
Application 10/488,980

Principles of Law
One cannot show non-obviousness by attacking references
individually where the rejection is based on a combination of references. In
re Keller, 642 F.2d at 426.
Analysis
The only reasonably specific argument presented by Appellants is that
“Table 1.1 is nonenabling and inapplicable to Claims 1-16” (App. Br. para.
bridging 15-16). Appellants present no reasonably specific argument
concerning the Examiner’s proposed combination of Hashizume and Table
1.1.
When an obviousness conclusion is based on a combination of
references as here, no error (i.e., non-obviousness) is shown solely by
attacking one of the applied references.
Conclusions of Law
Appellants have not shown error in the Examiner’s conclusion that it
would have been obvious for one with ordinary skill in this art to restrict the
oxygen content in Hashizume’s stainless steel pipe (i.e., to 0.006% or less as
required by claim 1) in view of Table 1.1.
As a consequence, we also sustain the Examiner’s § 103 rejection of
all appealed claims as being unpatentable over Hashizume in view of Table
1.1.

Summary
We have sustained each of the rejections advanced by the Examiner in
this appeal.

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Appeal 2008-4497
Application 10/488,980

Order
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)(1)(iv).

AFFIRMED

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