ArcelorMittal

Patent Trials and Appeals Board

Apr 23, 2020

14615125 - (D) (P.T.A.B. Apr. 23, 2020)

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.
14/615,125 02/05/2015 Amar Kumar De 20704.1016 1271
23280 7590 04/23/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
WALCK, BRIAN D
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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 AMAR KUMAR DE

Appeal 2019-001025
Application 14/615,125
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MICHAEL G. MCMANUS, and
SHELDON M. MCGEE, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge MCGEE.

Opinion Dissenting-in-part filed by Administrative Patent Judge
MCMANUS.

MCGEE, Administrative Patent Judge

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–10. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
ArcelorMittal. Appeal Br. 2.
Appeal 2019-001025
Application 14/615,125

2
BACKGROUND
The subject matter on appeal is directed to steel alloy compositions,
which exhibit certain properties including a hydrogen induced cracking
(HIC) resistance and a CVN impact energy.2 The claimed alloy
compositions have a CE carbon equivalence value of between 0.269–0.393,
and a Pcm carbon equivalence value of 0.167–0.236––values that are each
calculated by a given formula.
Sole independent claim 1 is illustrative of the subject matter on appeal
and is reproduced below, with indentations added for readability:
1. A steel alloy composition comprising, in weight percent:
C: 0.10–0.135,
Mn: 0.8–1.2,
P: 0.012 max,
S: 0.002 max,
Si: 0.30–0.40,
Cu: 0.15–0.35,
Ni: 0.15–0.25,
Al: 0.02–0.05,
Nb: 0.015–0.030,
Mo: 0.06–0.09,
the remainder iron and other unavoidable impurities;
said composition has a CE between 0.269–0.393 and a
Pcm between 0.167–0.236, wherein CE and Pcm are defined as
(all elemental concentrations are in wt%):
CE= C + Mn/6 + (Cu+ Ni)/15 + (Mo + V + Cr)/5

2 The Specification does not define “CVN.” Spec., generally. EP 2,484,784
A1, of record, describes “CVN” as “Charpy V-notch.” EP 2,484,784 ¶ 9.
Appeal 2019-001025
Application 14/615,125

3
and
Pcm= C + Si/30 + (Mn+Cu+Cr)/20 + Ni/60 + Mo/15 +
V/10 +5B
said alloy having a hydrogen induced cracking (HIC)
resistance such that the alloy has a Crack Length Ratio (CLR),
of ≤ 15%, a Crack Sensitivity Ratio (CSR) of ≤ 5%, and a Crack
Thickness Ratio (CTR)[] of ≤ 2%;
said alloy further having a CVN impact energy of at least
75 ft-lb at –20°F.
Appeal Br. 16 (Claims App.).

STATEMENT OF THE CASE
On appeal, the Examiner maintains the rejection of claims 1–10 under
35 U.S.C. § 103 as being unpatentable over Nemtinov.3 Ans. 3.
For support, the Examiner provides the following table:
Element Claimed wt% Nemtinov wt% Overlaps?
C 0.10–0.135 0.02–0.12 Yes
Mn 0.8–1.2 1.1–2.2 Yes
P 0–0.012 0–0.018 Yes
S 0–0.002 0–0.012 Yes
Si 0.01–3.0 0.05–0.60 Yes
Cu 0.15–0.35 0.005–0.5 Yes
Ni 0.15–0.25 0.05–1.24 Yes

3 RU 2420603, published June 10, 2011. We rely on the English language
machine translation made of record January 30, 2017.
4 A similar version of this table was presented in the Final Office Action
dated August 17, 2017 (Final Act. 3–4), but contained a typographical error
in the nickel concentration range––a fact acknowledged by the Examiner.
Ans. 5. We deem this to be harmless error because the rejection set forth in
Appeal 2019-001025
Application 14/615,125

4
Al 0.02–0.05 0.01–0.08 Yes
Nb 0.015–0.030 0.001–0.12 Yes
Mo 0.06–0.09 0.001–0.6 Yes
Fe Balance Balance Yes
Ce 0.269–0.393 ≤ 0.43 Yes
Pcm 0.167–0.236 ≤0.25 Yes
Id.
Based on the overlapping or fully encompassed ranges for the
individual elements recited in the claimed composition with those disclosed
in Nemtinov, the Examiner determines that the claimed composition would
have been prima facie obvious. Id. at 4. The Examiner also finds that the
claimed HIC resistance and CVN impact energy properties would have been
inherent in Nemtinov’s alloy because of the compositional overlap between
Nemtinov’s alloy and that claimed. Id.
OPINION
Appellant argues the rejection of claims 1–9 as a group, and
separately argues claim 10. Therefore, consistent with our rules, we select
claim 1 as representative, and decide the propriety of the rejection of claims
1–9 based on this claim alone. 37 C.F.R. § 41.37(c)(1)(iv). We address
claim 10 separately.

the Final Office Action cited Nemtinov [0008], which clearly recites the
nickel concentration of Nemtinov’s steel alloy. Accordingly, we determine
that the notice provisions set forth in 35 U.S.C. § 132 with respect to
Nemtinov’s nickel concentration were satisfied.
Appeal 2019-001025
Application 14/615,125

5
Claims 1–9
Upon consideration of the respective positions of Appellant and the
Examiner, as well as the evidence of record in this appeal, we sustain the
Examiner’s rejection of these claims based on the findings of fact and
conclusions of law expressed in the Final Action and the Examiner’s
Answer. We add the following only for emphasis.
Appellant’s argument that Nemtinov’s equation for calculating carbon
equivalence is different than that claimed equation lacks persuasive merit.
Appeal Br. 5–7. The claimed equation is:
CE= C + Mn/6 + (Cu + Ni)/15 + (Mo + V + Cr)/5
whereas Nemtinov’s equation is
CE= C + Mn/6 + (Cr + Mo + V)/5 + (Ni + Cu)/15 + 5B
Compare Appeal Br. 16 (claim 1) with Nemtinov ¶ 23.5
Here, we agree with the Examiner (Ans. 5), that boron is an optional
ingredient, and “[w]hen B is not included in the steel of Nemtinov, the Ce
equation of instant claim 1 and Nemtinov is identical.” In other words,
when boron is not present in Nemtinov’s steels, the variable 5B is moot
because its value is zero.
We are likewise unpersuaded by Appellant’s inherency arguments.
Appeal Br. 9–10. “[I]n order to rely on inherency to establish the existence
of a claim limitation in the prior art in an obviousness analysis[,] the

5 In reciting the equation, the machine translation of Nemtinov appears to
erroneously refer to carbon equivalence as “Se.” Appellant does not dispute,
but rather appears to concede, that this equation is Nemtinov’s carbon
equivalence calculation because Appellant focuses on purported differences
between the claimed equation and that disclosed by Nemtinov.
Appeal Br. 5–7.
Appeal 2019-001025
Application 14/615,125

6
limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.” PAR Pharm,
Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). To
properly rely on the doctrine of inherency in a rejection, “the Examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Once the Examiner so provides, the burden then
shifts to the patent applicant to demonstrate otherwise. In re Best, 562 F.2d
1252, 1255 (CCPA 1977).
Applying this legal framework to the instant facts, the Examiner has
established that Nemtinov explicitly discloses a steel alloy composition
comprising the same components in overlapping or fully encompassed
amounts to those recited in claim 1, and which satisfy the recited CE and
Pcm values. Final Act. 3–4; Ans. 3; Nemtinov ¶ 8. It is well-settled that
such circumstances establish a prima facie case of obviousness. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”); see also In re Harris, 409 F.3d 1339 (Fed. Cir. 2005)
(holding a claimed alloy obvious over prior art disclosing overlapping and
fully encompassing ranges of claimed elements). By establishing the
overlap of the claimed composition vis-à-vis that of Nemtinov, the Examiner
amply supplies the requisite factual basis supporting the determination that
the claimed properties, e.g., HIC resistance, CVN impact energy, are
inherent in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
Appeal 2019-001025
Application 14/615,125

7
(explaining how “[p]roducts of identical chemical composition [cannot]
have mutually exclusive properties.”). As a result, the Examiner properly
shifted the burden to appellant to establish that Nemtinov’s composition
does not possess the same properties as those recited in the claim. In re
Best, 562 F.2d at 1255 (“Where . . . the claimed and prior art products are
identical or substantially identical . . . the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. . . . [The] fairness [of the burden-
shifting] is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.”). In this case, Appellant has
provided no such proof that Nemtinov’s composition does not possess the
claimed properties. Neither has Appellant alleged or provided any evidence
of criticality or unexpected results for the alloy recited in claim 1. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims. These cases have
consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.” (citations
omitted, emphasis in original)).
Our dissenting colleague is of the opinion that we apply the principles
set forth in In re Peterson too broadly and, for support, cites several cases
with non-analogous facts to the ones here. In In re Stepan, 868 F.3d 1342
(Fed. Cir. 2017), our reviewing court vacated and remanded a Board
decision affirming an Examiner’s rejection of a three-part composition claim
(i.e., water, a glyphosate salt in an amount of greater than 39 weight percent
Appeal 2019-001025
Application 14/615,125

8
of acid equivalent, and a specific surfactant system of 1 to 20 percent by
weight, which itself had specific ranges of a dialkoxylated alkylamine, water
miscible solubilizers, and amine oxides), wherein the composition exhibited
a certain “cloud point above at least 70° C. or no cloud point when the
[composition] is heated to its boiling point.” Stepan, 868 F.3d at 1344–45.
There, the Examiner rejected the claims as obvious over a single prior art
reference based on a finding that it broadly disclosed that “any combination
of surfactants” could be used, and that it would have been obvious to
optimize those surfactants to achieve the recited “cloud point” property. The
court criticized the Board’s affirmance of that rejection in part because it
“failed to adequately articulate its reasoning” for optimizing the surfactant
ratios to achieve the recited cloud point. Id. at 1346. The facts of the instant
case are readily distinguishable from those in Stepan in two key respects: 1)
the Examiner here expressly finds that the prior art discloses the claimed
composition in amounts that either overlap or fully encompass the claimed
ranges, and 2) the Examiner finds that the claimed properties would have
been inherent in the prior art composition. Final Act. 3–4; Ans. 3–4.
The Ex parte Whalen II case cited by the minority (Appeal No. 2007-
4423 (BPAI July 23, 2008) (precedential))) is distinguishable for similar
reasons. There, the Board reversed the Examiner’s obviousness rejection
that was premised on an optimization theory to arrive at a certain property.
Here, the rejection is not.6

6 We recognize that, in addition to the inherency finding, the Examiner sets
forth an alternative obviousness theory based on routine optimization. Final
Act. 4–5. We need not address such theory because we find no fault in the
Examiner’s inherency finding. Id. at 3–4.
Appeal 2019-001025
Application 14/615,125

9
Finally, in the Genetics Institute case cited by the minority, our
reviewing court held that the general principle regarding overlapping ranges
set forth in In re Peterson did not apply to those particular facts because the
“disclosed range [in the prior 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. And just
like the prior art in Peterson, the component ranges in the Nemtinov prior art
“are not especially broad.” Peterson, 315 F.3d at 1330 n.1. Significantly,
and contrary to the minority view, the Nemtinov disclosure relied upon by
the Examiner here (Final Act. 3–4; Ans. 3) expressly discloses the result-
effective nature7 of each of the components recited in the claim except for

7 Contrary to what the dissenting opinion suggests, the prior art need not be
shown to be result-effective for the particular parameter claimed, e.g.,
“Charpy v-notch (CVN) impact energy.” Compare dissent op. at 7 (“The
present case is one where there is no disclosure of the relationship between
the variable and the affected property in the prior art. For example,
Nemtinov does not disclose a relationship between any variable and the
Appeal 2019-001025
Application 14/615,125

10
that of “iron and other unavoidable impurities.”8 Nemtinov ¶¶ 9–14, 17, 18.
For example, Nemtinov states that “[t]he carbon in the composition of the
proposed steel determines its mechanical properties,” and that “[r]educed
carbon content less than 0.02% leads to a drop in the strength below
acceptable levels,” but “carbon content in excess of 0.12% degrades the
ductility and toughness of the steel.” Id. ¶ 9. The result-effective nature of
the content of the other claimed components––silicon (id. ¶ 10), manganese
(id. ¶ 11), nickel (id. ¶ 11), copper (id. ¶ 12), sulfur (id. ¶ 13), phosphorus
(id. ¶ 13), aluminum (id. ¶ 14), molybdenum (id. ¶ 17), and niobium (id.
¶ 18)––is expressly disclosed in Nemtinov. Indeed, it appears Nemtinov’s
entire disclosure concerns how varying the amounts of the alloy’s individual
components impacts the alloy’s overall properties such as sufficient
“strength, ductility, weldability, corrosion resistance[,] cold resistance,” and
“resistance of steel against hydrogen cracking.” See Nemtinov ¶¶ 2, 7, 17.
Thus, the Nemtinov disclosure expressly relied upon by the Examiner
(Final Act. 3–4; Ans. 3; Nemtinov ¶¶ 8–23) evinces the result-effective
nature of the claimed components, thus providing ample motivation to the
skilled artisan to arrive at the claimed steel alloy composition by tailoring

resulting CVN impact energy.”) with In re Applied Materials, Inc., 692 F.3d
1289, 1297 (Fed. Cir. 2012) (explaining that “the prior art need not provide
the exact method of optimization for the variable to be result-effective. A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.” (emphasis added)).
8 Nemtinov’s steel also contains “iron and unavoidable impurities.”
Nemtinov ¶ 8. Because the claimed amount of iron and other avoidable
impurities is “the remainder,” the amounts of these components and their
impact on the alloy’s properties, are inherently dictated by the amounts of
the other components such as carbon or copper.
Appeal 2019-001025
Application 14/615,125

11
the individual components of Nemtinov’s steel alloy composition to achieve
a given property, e.g., strength or resistance to hydrogen cracking.
Nemtinov ¶¶ 2, 7, 17. Under such circumstances, controlling precedent
from our reviewing court is clear:
[S]tructural similarity between claimed and prior art subject
matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and []
the burden (and opportunity) then falls on an applicant to rebut
that prima facie case. Such rebuttal or argument can consist of a
comparison of test data showing that the claimed compositions
possess unexpectedly improved properties or properties that the
prior art does not have, that the prior art is so deficient that there
is no motivation to make what might otherwise appear to be
obvious changes, or any other argument or presentation of
evidence that is pertinent.
In re Dillon, 919 F.2d 688, 692–693 (Fed. Cir. 1990) (en banc) (internal
citations omitted).
Returning now to Appellant’s arguments, we are also left unpersuaded
by Appellant’s assertion that because Nemtinov does not recognize the
claimed properties, it “cannot teach or suggest which conditions are
necessary to achieve” them––i.e., the result-effective nature of the
conditions necessary to achieve the claimed properties was not appreciated
by Nemtinov. Appeal Br. 10–11 (emphasis omitted). This argument is
unpersuasive because it is based on a faulty premise, i.e., that the Examiner
relied solely on an optimization theory to establish a prima facie case. Here,
the Examiner did not. See Final Act. 4–5 (after explaining the factual basis
for the inherency finding, stating an alternative obviousness theory based on
routine optimization). Moreover, we again emphasize that the prior art need
Appeal 2019-001025
Application 14/615,125

12
not appreciate the claimed properties for the Examiner to properly rely on an
optimization theory. In re Applied Materials, Inc., 692 F.3d at 1297
(explaining “the prior art need not provide the exact method of optimization
[as that claimed] for the variable to be result-effective. A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.” (emphasis added)).
Finally, we observe that Appellant makes several untimely arguments
in its Reply Brief that will not be considered for purposes of this appeal
because good cause has not been shown. 37 C.F.R. § 41.41(b)(2).
Specifically, Appellant’s argument (Reply Br. 2–3) regarding the
Examiner’s calculation of Nemtinov’s carbon content and Ce value of ≤ 0.43
being drawn from “different sentences”9 in paragraph 8 is untimely because
these findings were set forth in the Final Office Action dated August 17,
2017. Final Act. 3–4. Appellant also argues, for the first time in the Reply
Brief, that the properties recited in claim 1 are not inherent in Nemtinov
because of purported microstructural differences. Reply Br. 6. Even if we
were to consider this argument, we would deem it unpersuasive as it argues
limitations not recited in claim 1. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).

9 This is not the same argument Appellant makes at pages 5–7 of its Appeal
Brief, discussed supra. There, Appellant’s argument focused on the
presence of variable “5B” in Nemtinov’s equation, whereas the claimed
equation contained no such variable. As the Examiner found, however,
Nemtinov’s equation is identical to the claimed equation when boron, an
optional component in Nemtinov’s alloy, is not present. Ans. 4–5.
Appeal 2019-001025
Application 14/615,125

13
Thus, for these reasons, and those articulated by the Examiner, we
sustain the obviousness rejection of claims 1–9.

Claim 10
Claim 10, dependent from claim 1, requires that the steel “alloy has a
homogen[e]ous polygonal ferrite-pearlite microstructure throughout.”
Appeal Br. 17.
Appellant argues that the Examiner failed to establish a prima facie
case of obviousness with respect to claim 10. Appeal Br. 13–14. We agree.
In the Final Office Action, the Examiner’s findings are insufficient to
establish that Nemtinov’s alloy has the homogeneous polygonal ferrite-
pearlite microstructure throughout as recited in claim 10. The Examiner’s
finding with respect to Nemtinov’s paragraph 10, i.e., that “Nemtinov
contains at least a ferrite phase,” says nothing of the homogeneity or
geometry of the microstructure, much less the presence of pearlite
constituents. Final Act. 5. The Examiner’s rationale in the Answer that “the
control of pearlite within the ferrite microstructure of Nemtinov could be
easily accomplished by one of ordinary skill in the art by controlling the
cooling rate” during thermal processing fares no better because it does not
explain why the skilled artisan would have been motivated to exercise such
control of pearlite within a ferrite microstructure. Ans. 9.
For this reason, we do not sustain the Examiner’s rejection of
separately argued claim 10.

Appeal 2019-001025
Application 14/615,125

14
CONCLUSION

The rejection of claims 1–9 are affirmed.
The rejection of claim 10 is reversed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10 103 Nemtinov 1–9 10

TIME PERIOD FOR 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-IN-PART

Appeal 2019-001025
Application 14/615,125

15
McMANUS, Administrative Patent Judge, dissenting-in-part.
I respectfully dissent from the affirmance of the rejection of claims
1-9.
With regard to claims 1 and 4–7, the Examiner determines that it
would have been obvious for one of skill in the art to select any portion of
the disclosed ranges of Nemtinov in view of its teaching of an alloy having
overlapping ranges of components. Final Act. 3–4.
The Examiner additionally determines that the claimed HIC, CLR,
CSR, CTR and CVN, as well as the additional limitations of claims 2, 3, and
8–10 are inherently disclosed. Id. at 4. In the alternative, the Examiner
determines that one of skill in the art would have discovered the claimed
properties by way of routine optimization. Id. at 4–5.
Thus, the Examiner relies on an overlapping range theory as to all
limitations of all claims requiring a specific range (or quantity) of a
component. The Examiner additionally relies on an inherency theory as to
all limitations of all claims requiring a particular property (e.g., CVN impact
energy). In the alternative, the Examiner relies on “routine optimization” to
achieve the claimed properties.

Inherency
Typically, an Examiner may rely on the doctrine of inherency only
with regard to a property that is necessarily found in the prior art.
“Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient . . . . Rather, a party must show that the natural result
flowing from the operation as taught would result in the performance of the
Appeal 2019-001025
Application 14/615,125

16
questioned function.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186
(Fed. Cir. 2014).
In addition to the foregoing, the Federal Circuit “has recognized a
gloss on the foregoing principles.” In re Gately, 69 F. App'x 993, 995 (Fed.
Cir. 2003). Where “the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (C.C.P.A., 1977).
Here, it is readily apparent that the alloys of Nemtinov do not
necessarily exhibit the claimed properties. The lower and upper bounds of
the ranges taught by Nemtinov differ significantly from those of the claims.
Compare Nemtinov ¶ 8 with Appeal Br. 16 (Claims App.). For example,
every specific embodiment of Nemtinov falls far outside the scope of any
claim at issue. See Nemtinov ¶ 32 (Table 2).
Further, Appellant has shown that the inventive “Low-C” embodiment
of the Specification (Spec. 9–10), which is embodied as claim 7, is outside
the teachings of Nemtinov. See Appeal Br. 7–8. One can hardly conclude
that the teachings of the reference are “substantially identical” to the claims
where such teachings have been shown to differ.
The majority relies on an overlapping range theory as support for the
finding that the claimed properties are inherent to the alloys of Nemtinov.
Decision 6 (“By establishing the overlap . . . the Examiner amply supplies
the requisite factual basis supporting the determination that the claimed
properties . . . are inherent.”). As discussed below, I regard such reliance as
misplaced.
Appeal 2019-001025
Application 14/615,125

17

Overlapping Ranges
The majority relies on In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) and In re Harris, 409 F.3d 1339 (Fed. Cir. 2005) (citing Peterson) for
the proposition that an overlapping range of components creates a prima
facie case of obviousness of a claim that includes limitations in addition to a
range of components. The majority further finds that an overlapping range
of components supplies the requisite factual basis that the claimed properties
are inherent. In this particular case, such reliance seems to be misplaced.
The In re Peterson line of cases is limited to situations where the variable in
question is shown to be result-effective. Here, the Examiner has not made
any finding that any variable is result-effective. Further, the Examiner has
not articulated adequate reasoning to show that the additional limitations of
the claims (e.g., CVN impact energy) would result from the disclosure of
Nemtinov. See In re Stepan, 868 F.3d 1342 (Fed. Cir. 2017).
The Examiner finds that the overlap of a prior art range and a claimed
range, of itself, creates a prima facie case of obviousness. This is too broad
a reading of the law regarding overlapping ranges. In this regard, In re
Peterson provides as follows:
The normal desire of scientists or artisans to improve upon what
is already generally known provides the motivation to determine
where in a disclosed set of percentage ranges is the optimum
combination of percentages. See In re Boesch, 617 F.2d 272,
276, 205 USPQ 215, 219 (CCPA 1980) (“[D]iscovery of an
optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” (citations
omitted)).
Appeal 2019-001025
Application 14/615,125

18
In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (emphasis added).
Thus, Peterson teaches that its reasoning is predicated upon the discovery of
an optimum value of a result-effective variable. This is consistent with
both preceding and subsequent caselaw.
In Genetics Institute v. Novartis Vaccines and Diagnostics, the
Federal Circuit reaffirmed that Peterson requires a showing of a motivation
beyond overlapping ranges.
According to Genetics, Peterson holds that a broad range
necessarily renders obvious a narrower range falling within that
broader range. That is incorrect. In Peterson, we stated that “[a]
prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the
prior art.” Id. at 1329 (emphasis added). The facts here do not
present the “typical[ ]” case contemplated in Peterson, however.
* * *
Moreover, in Peterson our holding was based on the recognition
that “[t]he normal desire of scientists or artisans to improve upon
what is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.” 315 F.3d at 1330. As
noted above, however, the only evidence of motivation in the
present record is that of researchers to make smaller, truncated
proteins to solve the cloning difficulties associated with the large
size of Factor VIII. That motivation would not have supplied
researchers with a reason to make the group of proteins
claimed in the ’620 patent encompassing larger truncated
proteins than those claimed in the ’112 patent. Simply put, the
typical desire of scientists to find an optimum value within a
narrow disclosed range, id., does not apply to the facts of this
case.
Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d
1291, 1306 (Fed. Cir. 2011) (emphasis added). Thus, in the present case, the
Appeal 2019-001025
Application 14/615,125

19
Examiner must identify the motivation that would have supplied a researcher
with a reason to make the alloy of the claims at issue.10
The next year, the Federal Circuit again addressed the issue of
overlapping ranges. In In re Applied Materials, 692 F.3d 1289 (Fed. Cir.
2012), the court considered a case where “[t]he Board affirmed the
examiner’s rejection ‘because one of ordinary skill in the art would have
recognized after reading the prior art that the dimensions recited in the
claims are result-effective variables, and because the prior art further
discloses values including those recited in the claims.’” Applied Materials,
692 F.3d at 1295. The Federal Circuit affirmed the board as follows:
“[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Aller, 220 F.2d
at 456. This rule is limited to cases in which the optimized
variable is a “result-effective variable.” In re Antonie, 559
F.2d 618, 620 (CCPA 1977); see Boesch, 617 F.2d at 276
(“[D]iscovery of an optimum value of a result effective variable
... is ordinarily within the skill of the art.”). In the present
case, because the prior art disclosed values overlapping the
claimed ranges, the “general conditions” of the claim are
disclosed. See Aller, 220 F.2d at 456; see also Boesch, 617
F.2d at 276. The question is whether the dimensions were
known to be result-effective variables.

Id. at 692 F.3d 1295 (emphasis added).

10 The majority notes that Genetics Institute additionally provides that the
prior art reference there at issue encompassed a large number of variants.
See Genetics Institute, 655 F.3d at 1306. I do not rely on this portion of
Genetics Institute. Rather, I rely on the quoted portion for its teaching
regarding the necessity of finding motivation to modify the reference as
proposed.
Appeal 2019-001025
Application 14/615,125

20
The Applied Materials court relied, in part, on its predecessor court’s
opinion in Application of Antonie, 559 F.2d 618, 620 (CCPA 1977). There,
the Court of Customs and Patent Appeals held as follows:
The PTO and the minority appear to argue that it would always
be obvious for one of ordinary skill in the art to try varying every
parameter of a system in order to optimize the effectiveness of
the system even if there is no evidence in the record that the prior
art recognized that particular parameter affected the result. As
we have said many times, obvious to try is not the standard of 35
U.S.C. § 103.

Application of Antonie, 559 F.2d at 620. The Board has issued a
precedential decision applying Antonie. In a decision titled In re Whalen,
Appeal No. 2007-004423 (BPAI July 23, 2008) (precedential), the Board
held as follows:
The Examiner has not made out a prima facie case that
the claimed compositions would have been obvious based on
the teachings of Evans, Greff ‘767, or Taki. While “the
discovery of an optimum value of a variable in a known process
is normally obvious,” In re Antonie, 559 F.2d 618, 620 (CCPA
1977), this is not always the case. One exception to the rule is
where the parameter optimized was not recognized in the
prior art as one that would affect the results. Id.
In re Whalen 14 (emphasis added). Thus, Whalen provides that, during
prosecution, the Examiner bears the burden of showing that the parameter to
be optimized is recognized as result-effective.
This principle was again reiterated in In re Haase, 542 F. App'x 962
(Fed. Cir. 2013). There, the court held that “[w]here a variable is known to
affect a particular desirable result, i.e., is what has been called a “result-
effective” variable, the “overlap itself provides sufficient motivation to
optimize the ranges.” In re Haase, 542 F. App'x at 967 (emphasis added).
Appeal 2019-001025
Application 14/615,125

21
Here, the Examiner does not make any finding that Nemtinov teaches
any result-effective variable. See Final Act. 3–6; Answer 7. This is
reversible error. In apparent recognition of such defect, the majority makes
its own findings that Nemtinov teaches the result-effective nature of the
components. Even were one to credit such findings, the rejection remains
inadequate. Absent a showing as to how the teachings of Nemtinov would
have led one to the claimed properties (such as CVN impact energy), I
would determine the Examiner to be in error.
The majority regards this as too narrow a reading of the law of result-
effective variables. In support, the majority relies on Applied Materials
which provides that
While the absence of any disclosure regarding the
relationship between the variable and the affected property may
preclude a finding that the variable is result-effective, the prior
art need not provide the exact method of optimization for the
variable to be result-effective. A recognition in the prior art that
a property is affected by the variable is sufficient to find the
variable result-effective.

In re Applied Materials, 692 F.3d at 1297. The present case is one where
there is no disclosure of the relationship between the variable and the
affected property in the prior art. For example, Nemtinov does not disclose
a relationship between any variable and the resulting CVN impact energy.
Nor has the Examiner articulated any other basis to modify the teachings of
Nemtinov to arrive at an alloy shown to have the claimed properties. See In
re Whalen (precedential) at 14 (reversing rejection where “the Examiner has
not pointed to any teaching in the cited references, or provided any
explanation based on scientific reasoning, that would support the conclusion
Appeal 2019-001025
Application 14/615,125

22
that those skilled in the art would have considered it obvious to ‘optimize’
the prior art compositions by increasing their viscosity to the level recited in
the claims.”)
In In re Stepan Company, the Federal Circuit considered a case
similar to that before us. In re Stepan Company, 868 F.3d 1342 (Fed. Cir.
2017). There, the claim at issue had three limitations requiring certain
surfactants in various ranges of quantity. Id. at 1344–45. The claim
additionally included a limitation requiring that the combination of
surfactants not produce a “cloud point” too readily. Id. The prior art taught
an overlapping range. Id. The court held that it “may be that not all
compositions that contain the claimed combination and range of surfactants
fall within the claims.” Id. at 1348. The court further held that “[t]o the
extent the Board shifted the burden to Stepan to show the criticality of the
cloud point element, the Board erred.” Id. In the claims at issue, the CVN
impact energy limitation is analogous to the cloud point limitation of Stepan.
Similar to Stepan, here it is error to shift the burden of proof in the
absence of an adequate showing of substantial identity as to all claim
limitations.
In view of the foregoing, I would reverse the rejection of claims 1–9.