Ex Parte Bernhard et al

Patent Trial and Appeal Board

Nov 26, 2014

12442189 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/442,189 05/04/2009 Christian Bernhard P/5070-25 (V 11424) 8545
119119 7590 11/28/2014
Ostrolenk Faber LLP
1180 Avenue of the Americas
New York, NY 10036
EXAMINER
LIN, KUANG Y
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
11/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN BERNHARD, GERALD ECKERSTORFER,
GERALD HOHENBICHLER, and BERND LINZER1
____________

Appeal 2013-003129
Application 12/442,189
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–5. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm.

BACKGROUND

Appellants’ claimed invention relates to a process for the continuous
production of a steel strip using at least two casting rolls. Spec. 1.

1According to the Appeal Brief, the Real Party in Interest is Siemens VAI
Metals Technologies GmbH. Br. 1.
Appeal 2013-003129
Application 12/442,189

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Claim 1 is the only independent claim at issue on appeal and is
reproduced below from the Claims Appendix:
1. A process for producing a strip-cast, low-carbon,
partly Mn/Si killed steel strip, comprising
introducing a steel melt between at least two
casting rolls that are cooled and that move together
with a steel strip, such that the steel strip at least
partly solidifies on the casting rolls to form the steel
strip, and
selecting the steel melt with a sulfur content of
between 20 and 300 ppm and an Mn/Si ratio ≥ 3.5
and, during normal operation, applying a roll
separating force at the casting rolls of between 2 and
50 kN/m.
The Examiner maintains, and Appellants appeal, the rejection of
claims 1–5 as unpatentable under 35 U.S.C. § 103(a) over Blejde2 in view of
Edwards3 or Hohenbichler.4
Appellants do not argue dependent claims 2–4 apart from independent
claim 1. Br. 5.5 Therefore, claims 2–4 stand or fall with our analysis of
claim 1.

OPINION
We sustain the above rejections based on the findings of fact and
rebuttals to arguments expressed by the Examiner in the Final Action and in

2 Blejde et al., WO 03/024644 A1, published Mar. 27, 2003.
3 Edwards, US 2008/0035302 A1, published Feb. 14, 2008.
4 Hohenbichler, US 2005/0211412 A1, published Sep. 29, 2005.
5 The pages in the Appeal Brief are not numbered. For ease of reference,
however, we have assigned page numbers sequentially, starting with the first
page as page 1.
Appeal 2013-003129
Application 12/442,189

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the Answer with regard to argued claim 1. The following comments are
added for emphasis.
The Examiner finds that Blejde discloses a twin roll casting process,
wherein the steel melt comprises, inter alia, 0.1% to 2.0% by weight of
manganese and 0.01 to 10% by weight of silicon. Ans. 3. Based on these
values, the Examiner finds that the ratio of Mn/Si may be equal to or greater
than 3.5, as required by claim 1. Id. The Examiner thus determines that
Blejde “substantially shows the invention as claimed except that it does not
show the separating force at the casting rolls.” Id.
The Examiner further finds Edwards teaches that the use of roll
separating forces in the range of 2 to 4.5 kN/m helps control the quality of
the resulting steel strip, and Hohenbichler teaches that the use of separating
forces in the range of 5 to 150 kN/M helps reduce cracking on the strip. Id.
In view of these advantages, the Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to combine the teachings in
the prior art by using a separating force in the range of 2 to 150 kN/m when
producing the steel according to Blejde. Id.
Appellants contend that Blejde fails to disclose a Mn/Si ratio greater
than or equal to 3.5, as required by claim 1. Br. 3. Appellants acknowledge
that Blejde discloses a range of Mn/Si ratios, but argue that the range
includes values well below 3.5 and excludes values above 3.5, which results
in a “narrow band of overlap” between Blejde and the claimed subject
matter, without any disclosure of actually using values within the claimed
range. Id. According to Appellants, having a Mn/Si ratio greater than or
equal to 3.5 is critical to the claimed invention (id. (citing Spec. 6)), and
therefore Blejde fails to disclose the claimed subject matter with sufficient
Appeal 2013-003129
Application 12/442,189

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specificity to support the Examiner’s rejection (id. (citing MPEP
§ 2131.03)).
Appellants also contend that the cited prior art references fail to
disclose a roll separating force between 2 and 50 kN/m, as required by claim
1. Id. at 4. According to Appellants, the range disclosed by Edwards (2–4.5
kN/m) is very limited, and the range disclosed by Hohenbichler (5–150
kN/m) extends beyond the claimed upper limit of 50 kN/m. Id. Appellants
further contend that the claimed range of the roll separating force is critical
to the claimed invention, and the prior art does not disclose the benefits
provided by the claimed range of roll separating forces, or suggest why a
person of ordinary skill in the art would modify Blejde to include a roll
separating force within the claimed range. Id. at 4–5 (citing Spec. 7).
We are not persuaded by Appellants’ arguments.
A prima facie case of obviousness6 exists where the claimed range
overlaps ranges disclosed by the prior art. In re Wertheim, 541 F.2d, 257,
267 (CCPA 1976). It is uncontested that Blejde discloses a range of Mn/Si
ratios that overlaps Appellants’ claimed range of greater than or equal to 3.5.
It is also uncontested that both Edwards and Hohenbichler disclose ranges of
roll separating forces that overlap Appellants’ claimed range of 2 to 50
kN/m. Thus, the Examiner established a prima facie case of obviousness.
Appellants can rebut a prima facie case of obviousness by showing
that the claimed range is critical, “generally by showing that the claimed
range achieves unexpected results relative to the prior art range.” In re

6 As the Examiner points out, Appellants citation to MPEP § 2131.03,
directed to the issue of anticipation, is not pertinent to the Examiner’s
obviousness analysis. See Ans. 5.
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Application 12/442,189

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Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellants, however, have
failed to provide sufficient evidence to overcome the Examiner’s prima facie
case of obviousness. Although Appellants direct us to portions of the
Specification suggesting that the claimed ranges are “critical” to the claimed
invention, Appellants have not offered any persuasive factual evidence that
the claimed ranges achieve unexpected results compared to the prior art
ranges. Nor are we persuaded by Appellants’ argument that the prior art
fails to disclose any advantages achieved by using the roll separation forces
disclosed in Edwards and Hohenbichler, such that a person of ordinary skill
in the art would have been motivated to modify Blejde. As the Examiner
points out, Edwards and Hohenbichler expressly describe advantages of
using the particular ranges of roll separating forces described therein. Ans.
5.

CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1–5
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

kmm