Ex Parte Ahn

Board of Patent Appeals and Interferences

Jan 9, 2009

10521285 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SOON-TAE AHN
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Appeal 2008-5788
Application 10/521,285
Technology Center 1700
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Decided: January 9, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a quenched and tempered steel wire.
Claims 1 and 3 are illustrative of the subject matter on appeal:
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Application 10/521,285

1. A quenched and tempered steel wire with superior cold forging
characteristics, comprising 0.1 - 0.5 wt% of C, 1.0 wt% or less of Si, 0.20 -
2.5 wt% of Mn, 0.03 wt% or less of P, and 0.03 wt% or less of S, with the
balance being Fe and inevitable impurities, which has tensile strength in a
range of 700-1300 Mpa and a structure of a martensite base and carbides
precipitated therefrom, with a percent spheroidization of carbides not less
than 30%.

3. A quenched and tempered steel wire with superior cold forging
characteristics, comprising the steel wire of claim 1 drawn.

The Examiner relies on the following prior art reference to show
unpatentability:
Kanisawa US 6,547,890 B2 Apr. 15, 2003

The Examiner has rejected claims 1-4 under 35 U.S.C. § 103(a) as
being unpatentable over Kanisawa.
Appellant has argued claims 1 and 2 as one group and separately
argued claims 3 and 4 as another group (App. Br. 6-9). Thus, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 and claim 3 as
representative for each of these claim groupings.
ISSUES ON APPEAL
Appellant contends that although Kanisawa describes that a martensite
base is present before a spheroidizing annealing step, Kanisawa does not
teach that a martensite base is present in the tempered steel with the
spheroidized carbides as required in claim 1 (App. Br. 4-7; Reply Br. 2).
However, the Examiner contends that Kanisawa renders the claimed product
obvious, noting that the claim does not require any minimum amount of
remaining martensite base, and that therefore it is Appellant’s burden to
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prove that the product of Kanisawa’s process would not necessarily have the
claimed martensite base (Ans. 4-7).
The first issue on appeal arising from these contentions of the
Appellant and the Examiner is: has the Examiner established a prima facie
case of obviousness such that it is reasonable to shift the burden to Appellant
to prove that the product produced in Kanisawa does not have the recited
martensite base?
We answer this question in the affirmative.
With respect to claims 3 and 4, the Appellant contends that Kanisawa
does not teach that the steel wire is drawn as required by claim 3 because
Kanisawa describes that “preliminary drawing” is not required (App. Br. 8-
9). The Examiner contends that claim 3 is a product-by-process limitation,
but nonetheless Kanisawa explicitly describes a “finish drawing” step (Ans.
8).
The second issue on appeal arising from the contentions of the
Appellant and the Examiner is: has the Examiner established that claim 3,
which “compris[es] the steel wire of claim 1 drawn”, is rendered obvious by
the product taught in Kanisawa?
We answer this question in the affirmative.
PRINCIPLES OF LAW
Appellant has chosen to describe the invention, in part, in terms of
certain physical characteristics of the resulting product produced by the
process described in their specification. Merely choosing to describe the
invention in terms of variables not present in the prior art does not render the
claimed subject matter patentable. In re Skoner, 517 F.2d 947, 950 (CCPA
1975).
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As stated in In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977):
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.
Whether the rejection is based on ‘inherency’ under 35 U.S.C. §
102, on ‘prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products.

(Id.; internal citation omitted)

A prior art reference that discloses a range encompassing a somewhat
narrower claimed range, or overlapping a claimed range, is sufficient to
establish a prima face case of obviousness. See, e.g., In re Peterson, 315
F.3d 1325, 1330 (Fed. Circ. 2003); In re Harris, 409 F.3d 1339 (Fed. Cir.
2005).
The discovery of an optimum value of a variable in a known process
or product is usually a matter of obviousness for one of ordinary skill in the
art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007).
This is the kind of situation that requires an Appellant to show secondary
considerations such as unexpected results or criticality to overcome the
prima facie case. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see
also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
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unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
Appellant’s attorney’s arguments do not take the place of evidence in
the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
FINDINGS OF FACTS
Findings of fact (FF) throughout this decision are supported by a
preponderance of the evidence. Additional findings of fact as necessary
appear in the Analysis portion of the opinion.
1. We agree with the Examiner’s findings that Kanisawa describes
a quenched and tempered steel wire for cold forging that comprises all the
components as listed in claim 1 in amounts that are the same or overlap all
claimed range amounts except Kanisawa does not specifically teach a
“martensite base” along with the spheroidized carbides (see e.g., Ans. 5-6;
Kanisawa col. 2, ll. 20-55, Table 3).
2. The Examiner also found, and Appellant does not dispute, that
the tensile strength of Kanisawa’s steel wire is described as 793-2206 MPa
which substantially overlaps the claimed range of 700-1300 MPa (Ans. 4;
Kanisawa, e.g., col. 2, ll. 20-30).
3. Kanisawa describes that a martensite structure is formed prior
to the “spheroidizing annealing” step (col. 4, ll. 23-27). Kanisawa describes
that a martensite structure is “most suitable” to homogenously distribute
carbon in the steel (col. 2, ll. 1-16; Ans. 8).
4. Kanisawa does not explicitly describe that a martensite base
remains after the spheroidizing annealing step. However, Kanisawa
discloses that the spheroidized annealing wire has a “spheroidizing ratio”
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that ranges up to 95% (Table 3). This is not 100% spheroidization thus it
reasonably appears that at least some amount of martensite remains after the
spheroidizing annealing of the wire.
5. Kanisawa describes that its steel wire may be drawn after the
spheroidizing annealing (see, e.g., Fig. 1b).
ANALYSIS
The Examiner found that Kanisawa describes a product substantially
as claimed (see, e.g., Ans. 4-5; FF 1-5 above). Appellant contends that
Kanisawa does not teach the product as recited in claim 1 because Kanisawa
does not teach “overlapping” ranges and further does not explicitly teach
that a “martensite base” is present (App. Br. 6-7; Reply Br. 2). These
arguments are not persuasive since (a) Kanisawa does indeed describe
overlapping ranges for each claimed component (FF 1-2); and (b) Kanisawa
teaches that the steel wire may have a martensite base prior to spheroidizing
annealing and it would have been a reasonable expectation that some
martensite base remains with the spheroidized carbides (FF 4).
Appellant contends that the present invention provides, “with no
conventional spheroidizing annealing”, a tempered steel product with
“superior cold forging characteristics” (App. Br. 6; see also Reply Br. 2).
This argument is not well taken since a product claim does not preclude
“conventional spheroidizing annealing”. Further, the only objective criteria
in claim 1 to define “superior cold forging characteristics” is tensile strength.
The tensile strength of the steel wire of Kanisawa substantially overlaps the
claimed range (FF 2).
Thus, we are in complete agreement with the Examiner that Kanisawa
renders the claimed product obvious under 35 U.S.C. § 103. The product of
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Kanisawa, when the starting material is a martensite base with components
used in the amounts that are the same or overlapping as the claimed
amounts, appears to be substantially identical to, and not patentably distinct
from, the claimed product.
Furthermore, the claim is open to as little as a trace amount of
martensite base being present. One of ordinary skill in the art would have
appreciated that it would have been reasonable to expect some remaining
“martensite base” as claimed along with the spheroidized carbide particles of
Kanisawa.
Thus, the burden was properly shifted to Appellant to prove that the
product as claimed is patentably different than the prior art product. The
PTO has no reasonable ability to manufacture and determine whether there
is, in fact, a patentable difference between the prior art product and the
claimed product. Under the circumstances, it is reasonable to shift the
burden to Appellant to show that the claimed product created by Kanisawa’s
process is, in fact, patentably different from the prior art product. In re Best,
562 F.2d at 1255-56.
Appellant’s Specification discloses that the percent spheroidization of
carbides is determined from a quenched and tempered steel wire that is
subjected to mechanical cutting, chemical polishing and electrolytic
polishing at a cross section thereof, to prepare a thin film having a thickness
of 0.1 mm or less (Spec. 7, ll. 6-9). Thereafter, a 1/4 point of a circular
diameter of the thin film is photographed 50,000-100,000 magnifications by
means of a transmission electron microscope (Spec. 7, ll. 9-11).
Subsequently, on a photograph, a circle having 50-70 mm across is marked,
in which respective carbides are measured for long directional length (L) and
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short directional length (S). The short length is divided by the long length to
provide the percent of spheroidization (Spec. 7, ll. 12-16). Appellant has not
directed us to evidence that an equivalent test has been performed on the
product of Kanisawa.
Appellant has not directed us to evidence sufficient to refute the
Examiner’s finding the process of Kanisawa would have created the claimed
product within the overlapping ranges taught by Kanisawa. Instead,
Appellant provides unsupported attorney argument as to a skilled artisan’s
conclusions regarding the teachings of Kanisawa (App. Br. 6-7; Reply Br.
2). An attorney’s argument is no substitute for objective evidence against
the Examiner’s finding. Pearson, 494 F.2d at 1405.
Thus, we agree with the Examiner’s determination that Kanisawa is
evidence of a prima facie case of obviousness for claims 1 and 2.
Claims 3 and 4
We fully agree with the Examiner’s factual findings and conclusion of
obviousness based on Kanisawa regarding claim 3 (see, e.g., Ans. 8).
Appellant’s contention that the steel wire of Kanisawa is not “drawn” is not
on point, since Appellant does not indicate that there is any distinction in the
product claimed. In any event, Kanisawa teaches the steel wire could have
been drawn (FF 5).
Thus, we agree with the Examiner’s determination that Kanisawa
Scales is evidence of a prima facie case of obviousness for claims 3 and 4.
CONCLUSION
Appellant has not shown that the Examiner reversibly erred in
rejecting the claims over Kanisawa. Accordingly, it is reasonable to shift the
burden to Appellant to prove that the product produced in Kanisawa does
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not have the recited “martensite base” property as required in claim 1. The
Examiner has also established that claim 3 is rendered obvious by the
product taught in Kanisawa.

ORDER
The Examiner’s rejection of claims 1-4 under 35 U.S.C. § 103(a) as
being unpatentable over Kanisawa is affirmed.
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

PL Initial:
sld

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