Ex Parte Beguinot et al

Board of Patent Appeals and Interferences

Jan 31, 2012

10535174 (B.P.A.I. Jan. 31, 2012)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/535,174 03/17/2006 23373 7590 02/02/2012 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N .W. SUIIB 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Jean Beguinot UNITED STA TES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. Q87983 2367 EXAMINER YANG,JIE ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 02/02/2012 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): USPTO@sughrue.com sughrue@sughrue.com PPROCESSING@SUGHRUE.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte JEAN BEGUINOT and JEAN-GEORGES BRISSON Appeal2010-007236 Application 10/535,174 Technology Center 1700 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal2010-007236 Application 10/535,174 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6. Appellants' claimed invention relates to a weldable component of structural steel having improved quenchability without a reduction in its weldability. Spec. 2. Claim 1 is illustrative: 1. Weldable component of structural steel, characterized in that its chemical composition comprises, by weight: 0.40% :S c :S 0.50% 0.50% :S Si :S 1.50% 0% :S Mn :S 3% 0% :S Ni :S 5% 0% :S Cr :S 4% 0% :S Cu :S 1% 0% :S Mo+ W/2 :S 1.5% 0.0005% :SB :S 0.010% N :S 0.025% Al< 0.9% Si+ Al :S 2.0% optionally at least one element selected from V, Nb, Ta, S and Ca, at contents of less than 0.3%, and/or from Ti and Zr at contents of less than or equal to 0.5%, the remainder being iron and impurities resulting from the production operation, the contents of aluminum, boron, titanium and nitrogen, expressed in thousandths of%, of the composition also satisfying the following relationship: B 2: 1/3 x K + 0. 5, (1) with K = Min (I* ; J*) I* = Max (0 ; I) and J* = Max (0 ; J) I= Min(N; N-0,29(Ti-5)) 2 Appeal2010-007236 Application 10/535,174 J =Min ( N; 0,5( N- 0,52 Al+v(N - 0,52Al)2 + 283 )), and whose structure is bainitic, martensitic or martensitic-bainitic and also comprises from 3 to 20% of residual austenite. Appellants request review of the following rejections (App. Br. 7) from the Examiner's final office action: 1. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Vander Voort (US 4, 171,233 issued Oct. 16, 1979). 2. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bhadeshia (WO 96/22396 published July 25, 1996). OPINION1 We sustain the appealed rejections for the reasons well stated by the Examiner in the Answer. The following comments are added for emphasis. The Examiner found that Vander V oort and Bhadeshia teach a weldable component of structural steel comprising elements in amounts that overlap the claimed invention.2 (Ans. 4, 6). Appellants argue that Vander V oort does not describe a relationship between silicon and boron and that V ander V oort teaches away from using silicon and boron together in the amounts required by the claimed invention. 1 Appellants did not argue the dependent claims separately in the Brief. Accordingly, the dependent claims stand or fall together with sole independent claim 1. 2 The Examiner acknowledged that the amount of nitrogen reported in the tables was in error. The Examiner indicated that the nitrogen component was present in trace amounts. (Office Action dated May 3, 2010). 3 Appeal2010-007236 Application 10/535,174 (App. Br. 11 ). Regarding Bhadeshia, Appellants argue that the amount of carbon and boron exemplified in the examples is outside the scope of the claimed invention. (Id. at 12). Appellants also argue that Bhadeshia does not describe a relationship between silicon and boron. We do not find Appellants' arguments persuasive of error in the Examiner's obviousness determination. Appellants' arguments, addressing both references, focus on the references' preferred embodiments and the examples. We agree with the Examiner that Vander V oort and Bhadeshia describe overlapping ranges for each of the respective elements recited in the claims. (e.g., Vander Voort, col. 2, 11. 19-20; and Bhadeshia, 8). Thus, the Examiner has established a prima facie case of obviousness. [A] prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. [Citations omitted.] Where the "claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap." In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). In an apparent attempt to rebut the prima facie case of obvious, Appellants argue that the amount of silicon and boron specified in claim 1 is representative of a synergistic effect resulting in the quenching effect of boron to be increased by from 30 to 50%. (Id. at 10). However, Appellants in the principal Brief have not directed us to evidence to support this argument. We note that Appellants for the first time in the Reply Brief advance arguments regarding the showing of synergistic effect of silicon and boron by the Examples in the Specification. (Reply Br. 5). These arguments were 4 Appeal2010-007236 Application 10/535,174 not presented in the principal Brief. Appellants have not presented an explanation establishing a showing of good cause explaining why these new arguments were not presented in the Appeal Brief. Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474-77 (BPAI 2010) (informative). For the foregoing reasons and those set forth in the Answer, based on the totality of the record, we determine that the preponderance of evidence weighs in favor of obviousness, giving due weight to Appellants' arguments. Accordingly, the Examiner's rejections are affirmed. ORDER The rejections of claims 1-5 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED bar 5