INDUSTEEL CREUSOT et al.

Patent Trials and Appeals Board

Jun 22, 2021

2020004640 (P.T.A.B. Jun. 22, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/622,402 02/13/2015 Bernard BONNEFOIS 719.1001CON 1521
23280 7590 06/22/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
LIANG, ANTHONY M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
06/22/2021 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD BONNEFOIS, JÉRÔME PEULTIER,
MICKAEL SERRIERE, JEAN-MICHEL HAUSER, and
ERIC CHAUVEAU
Appeal 2020-004640
Application 14/622,402
Technology Center 1700
Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 26–29. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real parties in interest as Industeel France, a corporation having
a place of business in Saint-Denis, and FranceUgitech, a corporation having
a place of business in Ugine, France. Appeal Br. 2.
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2
CLAIMED SUBJECT MATTER
The claims are directed to a duplex stainless steel. Appeal Br. 2.
Claim 1 illustrates the subject matter on appeal and is reproduced below:
1. A duplex stainless steel, the composition of which
comprises, in % by weight:
C ≤ 0.05%;
21% ≤ Cr ≤ 25%;
1% ≤ Ni ≤ 2.5%;
0.16% ≤ N ≤ 0.28%;
Mn ≤ 2.0%;
Mo+W/2 ≤ 0.50%;
Mo ≤ 0.45%;
W ≤ 0.15%;
Si ≤ 1.4%;
Al ≤ 0.05%;
0.11% ≤ Cu ≤ 0.50%;
S ≤ 0.010%;
P ≤ 0.040%;
Co ≤ 0.5%;
REM[2] ≤ 0.1%;
V ≤ 0.5%;
Ti ≤ 0.1%;
Nb ≤ 0.3%;
Mg ≤ 0.l%;

2 “REM” are rare earth metals. Spec. ¶ 30.
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the balance being iron and impurities resulting from
smelting, and the microstructure comprising austenite and 35 to
65% ferrite by volume,
said composition satisfying the following relationships:
40 ≤ IF ≤ 70
where
IF = 6 x (% Cr + 1.32 x % Mo + 1.27 x % Si) − 10 x
(% Ni + 24 x % C + 16.15 x % N + 0.5 x % Cu + 0.4 x % Mn)
− 6.17
and
30.5 ≤ ILCR ≤ 38.6
where
ILCR = % Cr + 3.3 x % Mo + 16 x % N + 2.6 x % Ni −
0.7x % Mn.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Espy US 4,331,474 May 25, 1982
Fujisawa3 US 2007/0163679 A1 July 19, 2007
REJECTIONS
Claims 1–8 and 28–29 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Fujisawa. Final Act. 2.
Claims 26–27 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Fujisawa in view of Espy. Final Act. 4.

3 The Examiner relied on U.S. Patent Publication No. US 2007/0163679 A1
to Fujisawa, published on July 19, 2007 as the English equivalent to
Fujisawa’s WO 2005/073422 A1 reference. Final Act. 2. Accordingly, we
refer to the published application when discussing Fujisawa in our decision.
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4
Claims 1–8 and 26–29 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
10, 13–16, and 18–20 of US Patent application No. 16/371,563. Final Act.
9.
OPINION4
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections . . . ” citing Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential)).
Obviousness-type double patenting
We summarily sustain the Examiner’s provisional rejection of claims
1–8 and 26–29 on the grounds of non-statutory obviousness-type double
patenting as unpatentable over claims 10, 13-16, and 18-20 of US Patent
application No. 16/371,563 without further comment, because Appellant
does not contest this rejection (see Briefs generally). 37 C.F.R.
§ 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure (MPEP)
§ 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain

4 Application 14/622,402, DUPLEX STAINLESS STEEL, filed 13 February
2015 is a continuation of application 12/305,014 filed 11 May 2009 which
was as the national stage under 35 U.S.C. § 371 of PCT/FR2007/000994
filed 15 June 2007.
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Application 14/622,402
5
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).
Obviousness
This is the third time rejected claims based on this subject matter have
come before us for adjudication.5 The subject matter on appeal relates to a
duplex stainless steel having the appropriate proportion of austenite
exhibiting good stress corrosion resistance, and to obtain metal with high
mechanical properties. Spec. ¶ 21. According to the Specification when the
steel composition has the percentages by weight of chromium, molybdenum,
nitrogen, nickel and manganese satisfying the relationship ILCR ≥ 30.5, the
steel exhibits good localized corrosion resistance, that is to say resistance to
the formation of pits or crevices. Spec. ¶ 40. The Specification also
discloses the ferrite Index formula IF describes the ferrite content at 1100°C
and to obtain a ferrite proportion between 35 and 65% by volume at 1100°C,
the ferrite Index must be between 40 and 70. Spec. ¶¶ 42–44.
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM for the reasons presented by the Examiner.6

5 After the prior appeal, Appellant amended independent claim 1’s
requirement for the ILCR to include an upper limit of ≤ 38.6. Amendment
filed April 1, 2019. Appellant in the Appeal Brief filed July 14, 2017,
expressly argued patentability for the claimed invention based on the ILCR
falling within the range of 30.5 to 38.6. Appeal Br. filed July 14, 2017, p. 4.
6 Appellant presents arguments only for independent claim 1 and dependent
claims 28 and 29. See Appeal Brief, generally. Accordingly, we limit our
discussion to these claims. Dependent claims 2–8 are not separately argued.
Id. In addition, Appellant does not present substantive arguments for the
separate rejection of dependent claims 26 and 27 under 35 U.S.C. § 103(a)
as unpatentable over Fujisawa and Espy. Id. at 16–17. Accordingly,
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The Examiner found Fujisawa discloses an austenitic ferritic (duplex)
stainless steel comprising amounts of C, Cr, Ni, N, Mn, Mo, Si, Al, Cu, S, P,
REM, V, Ti, Nb, Mg, Ca, W, Co and Fe that overlap the amounts required
by the claimed invention. Final Act. 2–4; Fujisawa, Abstr., ¶¶ 66–106. The
Examiner determined the claimed invention would have been obvious
because Fujisawa describes the same utility throughout the described ranges.
Final Act. 3. The Examiner further states that
[E]ven though Fujisawa et al. do not expressly teach the
claimed formula; it is well settled that there is no invention in
the discovery of a general formula if it covers a composition
described in the prior art. In re Cooper, 134 F.2d 630
(CCPA[1943]). In the absence of evidence to the contrary, the
selection of the proportions of elements would appear to require
no more than routine investigation by those ordinary skilled in
the art. In re Austin, et al, 149 USPQ 685, 688 [(CCPA1966)].
Final Act. 3.
Appellant argues the ILCR formula in the claimed invention specifies
the contents of the Cr, Mo, N, Ni and Mn in the steel. Appeal Br. 4.
Appellant argues Fujisawa does not show or disclose or make obvious the
duplex stainless recited in claim 1 and specifically a steel with the claimed
composition and having an 30.5 ≤ ILCR ≤ 38.6 because Fujisawa’s
compositions have an ILCR within broad range of 7.4 to 65.6. Appeal Br. 8.
Appellant contends that Fujisawa fails to identify any composition meeting
the ILCR formula and, thus, there is no prima facie case of obviousness.
Appeal Br. 6–9. Appellant further argues the claimed invention is patentable
because Fujisawa’s disclosed range is so broad as to encompass a very large
number of possible distinct compositions and therefore fails to establish the

dependent claims 2–8, 26, and 27 stand or fall together with independent
claim 1.
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claimed invention is obvious. Appeal Br. 10–11 (citing Genetics Inst., LLC
v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed. Cir.
2011)).
We are unpersuaded by these arguments.
As in the prior appeals, Appellant’s arguments focus on the
compositional content as specified by the formula ILCR, where
ILCR = % Cr + 3.3 × % Mo + 16 × % N + 2.6 × % Ni − 0.7 × % Mn.
What Appellant really seeks is a patent on a duplex steel resulting
from mixtures of Cr, Mo, N, Ni, and Mn having the claimed ratios and
proportions, which are within the ranges generally disclosed or
suggested by Fujisawa. However, Appellant identifies nothing in the
record establishing that the claimed ratios and proportions are critical.
It is incumbent upon Appellant to establish by a proper showing that
they have invented a steel composition possessing characteristics or
qualities of utility that are new and materially different from the
compositions disclosed in Fujisawa. See In re Swenson, 132 F.2d
1020 (CCPA 1948); In re Cooper, supra.
Appellant’s arguments identify no reversible error in the Examiner’s
reliance on In re Cooper or the selection of values from the ranges disclosed
in Fujisawa to satisfy the claimed formula. Appellant’s arguments suggest
that, to rely on the Examiner’s proffered rationale, the prior art must disclose
a working example that anticipates a claimed formula. In Cooper, however,
no such working example or specific composition was identified in the prior
art. Rather, the Cooper court upheld the Board’s affirmance of the
Examiner’s obviousness rejection, and the Board’s decision identified
selected concentrations of tungsten, chromium, molybdenum and vanadium
from a range of prior art values that satisfied the claimed formula. Cooper,
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134 F.2d at 631–32. Moreover, we observe that Fujisawa describes duplex
stainless steel exhibiting good stress corrosion resistance and mechanical
properties. Fujisawa ¶¶ 47–48.
Finally, in the Genetics Institute case cited by Appellant, our
reviewing court held that the general principle regarding overlapping ranges
set forth in In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), did not apply to
those particular facts because the “disclosed range [in the prior [*4] art was]
so broad as to encompass a very large number of possible distinct
compositions.” Genetics Institute, LLC v. Novartis Vaccines & Diagnostics,
Inc., 655 F.3d 1291, 1306–07 (Fed. Cir. 2011). There, the prior art
contained “68,000 truncated variants of a protein made up of 2,332 amino
acids, and the allegedly interfering inventions differ[ed] in terms of the size
of the permitted amino acid deletions, the location of those deletions, and the
degree of allowable amino acid substitutions.” Id. The facts in this appeal
are, in our view, quite different from those at issue in Genetics Institute and
more closely resemble the facts in Peterson. Just like the claims on appeal,
the claims in Peterson dealt with a chemical alloy, reciting individual
component ranges that either overlapped or were fully encompassed by the
prior art ranges for those same components. Compare Peterson, 315 F.3d at
1329, with Ans 3–4. And just like the prior art in Peterson, the component
ranges in the Fujisawa prior art “are not especially broad.” Peterson, 315
F.3d at 1330 n.1. Significantly, Fujisawa expressly discloses the result-
effective nature of each of the components recited in the claim except for
that of “iron and other unavoidable impurities.” Fujisawa ¶ 74 et seq.
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Claim 28
Appellant’s arguments focus on the compositional content as specified
by the formula ILCR. Appeal Br. 15. These arguments are not persuasive for
the reasons stated above.
Claim 29
Appellant argues regarding claim 29 that Fujisawa is not expected to
have a corrosion resistance at least equal to ASI 304L grade steel, because
comparative examples 14383 and 14660 both fall within the composition of
Fujisawa, yet do not have a corrosion resistance at least equal to ASI 304L
grade steel. Appeal Br. 15–16.
Appellant’s argument is not persuasive of reversible error because
merely identifying the compositional content of comparative examples
14383 and 14660 and asserting that the stainless steel of Fujisawa does not
have a corrosion resistance at least equal to ASI 304L grade steel as required
by claim 29 is not a persuasive argument. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–8 and 26–29 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
The Examiner’s decision to reject claims 1–8 and 26–29 is
AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 28, 29 103(a) Fujisawa 1–8, 28, 29
26, 27 103(a) Fujisawa, Espy 26, 27
1–8, 28, 29 Nonstatutory
double
patenting
1–8, 28, 29
Overall
Outcome
1–8, 26–29
RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED