Ex Parte Ueta et al

Board of Patent Appeals and Interferences

Jul 13, 2007

10395236 (B.P.A.I. Jul. 13, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGEKI UETA, SHUJI HAMANO,
and TOSHIHARU NODA
____________

Appeal 2007-0873
Application 10/395,236
Technology Center 1700
____________

Decided: July 13, 2007
____________

Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7-11. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2007-0873
Application 10/395,236

I. BACKGROUND
The invention relates to a heat resistant cast steel. Claim 7 is
illustrative of the subject matter on appeal:
7. A heat resistant cast steel having good thermal fatigue resistance,
consisting essentially of, in weight percent, C: 0.2-0.42%, Ni: 8.0-45.0%,
Cr: 15.0-30.0%, W: up to 10% and Nb: 0.5-3.0%, provided that [%C]-
0.13[%Nb] is in the range of 0.05-0.95%, and the balance being Fe and
inevitable impurities, contents of carbides in the steel being, in atomic
percent, MC carbides 0.5-3.0% and M23M6 carbides 0.5-10%, the matrix
consisting essentially of an austenitic phase mainly comprised of Fe-Ni-Cr,
mean coefficient of thermal expansion in the range from room temperature
to 1050°C being up to 20.0x10-4, and tensile strength in the temperature
range up to 1050°C being 50 MPa or higher.

The Examiner relies on the following prior art references to show
unpatentability:
Yabuki (as translated)1 JP58-217663 Dec. 17, 1983
Key to steel, Verlag Stahlschlussel (10th ed., West Germany 1974)
The rejections as presented by the Examiner are as follows:
1. Claims 7, 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yabuki; and
2. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yabuki in view of the Key to Steel.

1 We cite to the full translation provided by the Examiner.
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Application 10/395,236

II. DISCUSSION
A. Issue
The dispositive issue in this appeal arises out of Appellants’
contentions with regard to the concentration of carbon required by the claims
(see claim 7).
According to the Examiner, even though Yabuki describes a range of
carbon content (0.55-1.9%) differing from the claimed range (0.2-0.42%),
the claimed range “is a judicious selection” from the range 0.2-1.0%
Appellants disclose in their Specification at page 5, line 2 and page 6, lines
16-25 (Answer 3). Further, according to the Examiner, “the range of 0.2 to
.42 wt% carbon would not define patentably over 0.55 to 1.9 wt%, since the
criticality of the more narrow claimed C range has not been established by
applicant (i.e. by comparative test data).” (Answer 3).
Appellants contend that the Examiner has improperly relied upon
Appellants’ Specification in determining obviousness and, in fact, one of
ordinary skill in the art would not have found it obvious to modify the
carbon concentration of Yabuki because Yabuki discloses that the
advantages described in the reference will not be obtained when less than
0.55% carbon is included in the steel (Br. 9-12; Reply Br. 5-7).
The Examiner responds that she is not suggesting that the carbon
content be reduced and she again repeats that the claimed range “is a
judicious selection” from the broader range disclosed in the Specification
and criticality of the claimed range has not been shown (Answer 8 at ¶ 2).
The Examiner further contends that Appellants have misunderstood the
reason for citing the Appellants’ disclosure, stating that the reason is to show
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that Appellants do not have support for and had not established criticality of
the amended range (Answer 8 at ¶ 3).
The dispositive issue arising from these contentions is: Has the
Examiner established that the carbon range of claim 7 would have been
obvious based on the knowledge of those of ordinary skill in the art at the
time of the invention?
B. Facts
All the claims are directed to a cast steel containing from 0.2-0.42%
carbon (Claim 7).
Yabuki describes a cast steel containing 0.55-1.9% carbon (Abstract).
The carbon acts to ensure outstanding wear resistance, as well as weldability
and castability (Yabuki 10, last para.). Those properties, according to
Yabuki, cannot be obtained when the steel contains less than 0.55% carbon
(id.).
No rejection on the basis of lack of written descriptive support under
35 U.S.C. § 112, ¶ 1 is before us.
C. Principles of Law
The examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In order to establish a prima facie case of obviousness, the
examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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Application 10/395,236

D. Analysis
In the case before us, the Examiner has not shown that each and every
limitation of the claim is either described or suggested by the prior art or
would have been obvious based on the knowledge of the ordinary artisan
working in the cast steel art. See In re Fine, 837 F.2d at 1074, 5 USPQ2d at
1598.
The Examiner acknowledges that Yabuki does not describe or suggest
the carbon concentration required by the claims. In fact, Yabuki specifically
teaches that the strength and castability properties that Yabuki desires, and
Appellants also focus on, will not be obtained at carbon concentrations of
less than 0.55%, a level much above the claimed upper limit of 0.42%. This
is a teaching away from Appellants’ invention. See In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (quoting In re
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 533 (CCPA 1974)(“A
prima facie case of obviousness can be rebutted if the applicant ... can show
‘that the art in any material respect taught away’ from the claimed
invention.”).
The Examiner relies upon Appellants’ own disclosure of their
invention and seeks to shift the burden to the Appellants to show criticality
of their claimed range based on the broader range disclosed in the
Specification. It is not proper to rely upon Appellants’ own disclosure of
their invention in the Specification in this context. A claimed invention is
unpatentable if the differences between it and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the pertinent art. 35 U.S.C.
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§ 103(a) (2000) (emphasis added). Before the burden can be shifted, the
Examiner must establish obviousness based on teachings and knowledge
within the prior art. This the Examiner has not done here.
To the extent that the Examiner is contending that the claimed range
lacks support in the Specification, we note that no rejection under 35 U.S.C.
§ 112, ¶ 1 for lack of written descriptive support is before us.

III. CONCLUSION
The Examiner has not established that the carbon range of the claims
would have been obvious to one of ordinary skill in the cast steel art based
on the knowledge of those of ordinary skill in the art at the time of the
invention.
Because the Key to Steel reference was applied to meet other
limitations in claim 9, this reference, as relied upon by the Examiner, does
not cure the defect within the primary rejection.

IV. DECISION
With respect to the Examiner’s decision to reject claims 7, 8, 10, and
11 as obvious under 35 U.S.C. § 103(a) over Yabuki and claim 9 as obvious
under 35 U.S.C. § 103(a) over Yabuki as evidenced by the Key to Steel
reference, we REVERSE.
REVERSED

clj

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Appeal 2007-0873
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