Ex Parte Rebak et al

Patent Trial and Appeal Board

Jun 28, 2018

13716334 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/716,334 12/17/2012
6147 7590 07/02/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Raul Basilio Rebak
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
265744-1 1616
EXAMINER
KIECHLE, CAITLIN ANNE
ART UNIT PAPER NUMBER
NOTIFICATION DATE DELIVERY MODE
07/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAUL BASILIO REBAK, ANDREW DAVID DEAL,
VO RAMON SUP A TARA W ANICH DHEERADHADA,
JUDSON SLOAN MARTE, and
RAGHA VENDRA RAO ADHARAPURAPU
Appeal2017-007845
Application 13/716,334
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
April 14, 2016 decision finally rejecting claims 1-24. 1 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real parties in interest as General Electric Company
and Chevron U.S.A., Inc. (Br. 3).
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Application 13/716,334
CLAIMED SUBJECT MATTER
Appellants' invention is directed to steel compositions, which are said
to resist corrosion in environments containing high hydrogen sulfide levels
(Spec. ,r 2). Independent claims 1, 9, and 17, and dependent claim 8, are
representative and are reproduced below from the Claims Appendix of the
Appeal Brief (key claim limitations shown in italics):
1. A steel composition comprising the elements Fe, C, Si,
Cu, and Mn wherein the composition comprises from 96.80 to
98.80 percent by weight iron,from 0.196 to 0.30 percent by
weight carbon, from 0.20 to 1.40 percent by weight silicon,
from 0.536 to about 1.50 percent by weight copper, and from
0.20 to 1.00 percent by weight manganese, wherein the
composition is substantially free of chromium, and wherein the
composition contains less than 0.1 percent by weight nickel,
molybdenum, or tungsten.
8. An article according to claim 7 and having a corrosion
rate of less than 15 mpy when exposed to hydrogen sulfide
according [to] Corrosion Test Method No. 1 of this disclosure.
9. A steel composition comprising the elements Fe, C, Si,
Cu, and Mn wherein the composition comprises from 96.80 to
98.80 percent by weight iron,from 0.196 to 0.30 percent by
weight carbon, from 0.20 to 0.40 percent by weight silicon,
from 0.536 to 1.50 percent by weight copper, and from 0.2 to
1. 00 percent by weight manganese, wherein the composition is
substantially free of chromium and aluminum, and wherein the
composition contains less than 0.1 percent by weight nickel,
molybdenum, or tungsten.
17. A steel composition comprising the elements Fe, C, Si,
Cu, Mn, and Al wherein the composition comprises from 96.80
to 97.86 percent by weight iron,from 0.196 to 0.30 percent by
weight carbon,from 0.80 to 1.15 percent by weight silicon,
from 0.536 to 0.65 percent by weight copper,from 0.20 to 0.50
percent by weight manganese, and from 0.30 to 0.60 percent by
weight aluminum, wherein the composition is substantially free
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Application 13/716,334
of chromium, and wherein the composition contains less than
0.1 percent by weight nickel, molybdenum, or tungsten.
REJECTIONS
I. Claims 8, 16, and 19--24 are rejected under 35 U.S.C. § 112(b)
as indefinite.
II. Claims 1-3, 7-11, and 15-24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Usami. 2
III. Claims 1, 2, 4, 5, and 7-16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kimura. 3
IV. Claims 1-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Terada. 4
DISCUSSION
Rejection I under 35 U.S.C. § 112(b)
The Examiner determines that claims 8, 16, and 19-24 are indefinite
because the recitation of "'according [to] Corrosion Test Method No. 1 of
this disclosure' ... is not clear [ as to] what is included or excluded from the
disclosure" (Final Act. 3). In response, Appellants argue that the meaning of
the claim limitation is made clear because the Specification provides
"detailed guidance on, and ample definition of, Corrosion Test Method No.
1 such that those of ordinary skill in the art could readily understand the
2 Usami et al., US 7,875,130 B2, issued January 25, 2011.
3 Kimura et al., JP 2009-174658A, published August 6, 2009. We follow the
Examiner and Appellants in relying upon and citing a translation that is of
record.
4 Terada et al., JP 57-131346A, published August 14, 1982. We follow the
Examiner and Appellants in relying upon and citing a translation of the
abstract that is of record.
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Application 13/716,334
metes and bounds of each of claims 8, 16[,] and 19-24" (Br. 8 (citing Spec.
,r,r 28-30)).
We agree with Appellants that the information in the Specification
provides a sufficiently detailed explanation of the Corrosion Test Method
No. 1 and how it is performed. A person of skill in the art would be able to
determine if a specific item fell inside or outside the scope of the claim.
Therefore, the language complies with the requirements of§ 112(b ).
Accordingly, we reverse Rejection I under§ 112(b ).
Rejections II, III, and IV under 35 U.S.C. § 103(a)
With regard to the obviousness rejections, Appellants do not offer
separate arguments in support of any of the dependent claims. Arguments
are directed to limitations recited in independent claims 1, 9, and 17 (Br. 8-
16). Accordingly, our discussion will focus on claims 1, 9, and 17.
Dependent claims 2-8, 10-16, and 18-24 fall with each of their respective
independent claims. 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection II
The Examiner finds that U sami teaches or suggests each of the
features of claims 1, 9, and 17 because, inter alia, "Usami ... disclose[s] a
steel composition that overlaps with the instant claimed composition" (Final
Act. 4; see also id. at 5, 6; Tables 1-3).
The Examiner determines that "[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to select the
claimed steel composition from the steel composition disclosed by U sami
... because U sami ... teaches the same utility in the whole disclosed range"
(Final Act. 8).
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Application 13/716,334
Appellants make the following principal arguments urging reversal of
Rejection II: (1) Usami's claim 1 and Abstract disclose composition ranges
that are "exceedingly broad, spanning two or more orders of magnitude with
respect to" carbon, copper, and aluminum "and more than one order of
magnitude with respect to each of silicon and manganese" (Br. 8); (2) the
ranges of the compositions that U sami "actually prepared and tested ...
[are] substantially narrower" than those disclosed in U sami' s claim 1 and
Abstract (id.); (3) the ranges of copper and carbon in Usami's exemplified
compositions do not overlap the claimed ranges of these elements recited in
claims 1 and 9, "and thus a prima facie case of obviousness cannot properly
be invoked"5 (id. at 9; see also id. at 10); and (4) the composition ranges
disclosed in the Specification's Example 1 falls "squarely within the
relatively narrow composition range[s] defined" by instant claims 1 and 9
and "exhibit[] a surprising level of corrosion resistance, which is equivalent
to or better than a highly alloyed steel, API P91" (id. at 9; see also id. at
10). 6
Appellants further argue in connection with arguments (1) and (2) that
"[ s ]teel compositions and their attendant performance characteristics fall
squarely within the unpredictable arts" (id. at 8). Therefore, according to
Appellants, "what is not expressly taught by a reference in this arena must
be regarded as uncertain" (id.).
5 Appellants further argue that the ranges of silicon and manganese in
Usami's exemplified compositions do not overlap instant claim 17's subject
matter (Br. 10).
6 Appellants proffer a substantially similar argument regarding the
composition disclosed in the Specification's Example 2, which falls within
the composition ranges defined in claim 17 (Br. 10).
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Appellants' arguments are not persuasive.
Regarding arguments (1) and (2), the Examiner's findings rely upon
the ranges expressly disclosed by Usami (see generally Final Act. 4---6
(citing Usami 10:14--23; 12:33-67; 14:19-18:11)). Usami's teachings
regarding ranges are not limited to the exemplified compositions. See In re
Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that "[i]t is well
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art[J").
Thus, Appellants have not identified reversible error with the
Examiner's findings that Usami discloses a steel composition comprising
elements in weight percentage ranges that overlap the ranges recited in
claims 1, 9, and 17.
With regard to argument (3), "[a] primafacie case of obviousness
typically exists when the ranges of ... [the] claimed composition overlap the
ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003); see also In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)
( concluding that a claimed invention was rendered prima facie obvious by a
prior art reference whose disclosed range (0.020--0.035% carbon)
overlapped the claimed range (0.030--0.070% carbon)).
In this instance, the claimed weight percentage ranges of elements
recited in claims 1, 9, and 17 overlap U sami' s explicitly disclosed ranges
(see Final Act. 4--6; Tables 1-3; see generally Br. 8-16). Thus, for the
reasons set forth above and in the Answer, Appellants' arguments have not
identified reversible error in the Examiner's conclusion of obviousness in
Rejection II (Ans. 4).
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To the extent that argument ( 4) is alleging that the claimed
compositions provide unexpected results, this argument is similarly
unconvincing. As the Examiner finds, Appellants' relied upon Examples 1
and 2 provide "only two data points and do not demonstrate unexpected
results that are commensurate in scope with the claimed invention" (id. at 5).
Therefore, Appellants' proffered evidence of unexpected results is
insufficient to rebut the prima facie case of obviousness set forth by the
Examiner.
Accordingly, we affirm Rejection II of claims 1, 9, and 17 under 35
U.S.C. § 103(a) for the reasons set forth above and in the Answer (id. at 4--
5).
Rejections III and IV
Appellants' arguments urging reversal of Rejections III and IV rely
upon substantially similar assertions urging reversal of Rejection II
(compare Br. 11-16 with id. at 8-10). Namely, Appellants argue that:
(1) because steel composition performance is an unpredictable art, the
applied prior art's teachings regarding "ranges of compositions is definitive
for obviousness purposes only for a range of compositions actually prepared
and tested" (id. at 11, 14; see also id. at 12, 15); (2) the Examiner has not
established a prima facie case of obviousness because the applied prior art's
disclosed ranges of exemplified compositions do not overlap each claimed
element recited in claims 1, 9, and 17, respectively (id. at 12, 13, 15, 16);
and (3) the steel compositions disclosed in the Specification's Examples 1
and 2 "exhibit[] a surprising level of corrosion resistance" (id. at 12, 13, 15,
16).
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Application 13/716,334
Appellants' arguments are not persuasive for the reasons set forth
above discussing Rejection II and in the Answer (Ans. 4--5). Accordingly,
we affirm Rejection III of claims 1 and 9, and Rejection IV of claims 1, 9,
and 17, under 35 U.S.C. § 103(a).
CONCLUSION
We REVERSE the rejection of claims 8, 16, and 19--24 under
35 U.S.C. § 112(b) as indefinite.
We AFFIRM the rejection of claims 1-3, 7-11, and 15-24 under
35 U.S.C. § 103(a) over Usami.
We AFFIRM the rejection of claims 1, 2, 4, 5, and 7-16 under
35 U.S.C. § 103(a) over Kimura.
We AFFIRM the rejection of claims 1-24 under 35 U.S.C. § 103(a)
over Terada.
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
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