INDUSTEEL CREUSOT et al.Download PDFPatent Trials and Appeals BoardJun 22, 20212020004640 (P.T.A.B. Jun. 22, 2021) Copy Citation 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. Appeal 2020-004640 Application 14/622,402 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. Appeal 2020-004640 Application 14/622,402 3 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. Appeal 2020-004640 Application 14/622,402 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. Appeal 2020-004640 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, Appeal 2020-004640 Application 14/622,402 6 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. Appeal 2020-004640 Application 14/622,402 7 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, Appeal 2020-004640 Application 14/622,402 8 134 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. Appeal 2020-004640 Application 14/622,402 9 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. Appeal 2020-004640 Application 14/622,402 10 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 Copy with citationCopy as parenthetical citation