Ex Parte Hirakawa et al

Board of Patent Appeals and Interferences

Jun 26, 2012

11135385 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUICHI HIRAKAWA, YOSHIKUNI KADOYA,
HIROHARU OOYAMA, TATSUYA FURUKAWA,
and NAOTO TOCHITANI
__________

Appeal 2011-001100
Application 11/135,385
Technology Center 1700
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-4, 11, and 12. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
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We AFFIRM.
Appellants’ invention is said to be directed to a precipitation hardened
martensitic stainless steel having high strength, high toughness, and high
resistance to delayed cracking (Spec. 1:6-8).
Claim 1 is illustrative:
1. A precipitation hardened martensitic stainless steel containing, in
percent by weight, 12.25 to 14.25% Cr, 7.5 to 8.5% Ni, 1.0 to 2.5% Mo,
0.05% or less C, 0.2% or less Si, 0.4% or less Mn, 0.03% or less P, 0.005%
or less S, 0.003 to 0.008% N, 0.90 to 1.35% Al, optionally Nb or Ta, the
balance substantially being Fe, and the total content of Cr and Mo being
14.25 to 16.75%, the total content of Nb and Ta being up to 0.01%, the
precipitation hardened martensitic stainless steel being obtained by
subjecting to aging treatment at 510 to 530°C after subjecting to solution
heat treatment at 910 to 940°C and the precipitation hardened martensitic
stainless steel has a tensile strength of at least 1500 MPa and a Charpy
absorbed energy of at least 20 J at room temperature.

Appellants appeal the following rejection:
1. Claims 1-4, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy (US 5,888,449, issued Mar. 30, 1999).

Appellants’ arguments focus on claim 1 only (App. Br. 11-13; Reply Br.
3-5).

ISSUES
1. Did the Examiner reversibly err in finding that the nitrogen content
(i.e., less than .002 wt.%) of Kennedy’s stainless steel is so close to
Appellants’ claimed range of nitrogen (i.e., .003 to .008 wt.%) that
one of ordinary skill would have reasonably expected the alloys to
have the same properties? We decide this issue in the negative.
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2. Did the Examiner reversibly err in determining that Appellants have
not demonstrated that the evidence of criticality of the aging
temperature range from 510 to 530°C relied upon was insufficient to
address the obviousness rejection based on Kennedy’s teaching of an
aging temperature of 537°C which is very close to the upper end point
of Appellants’ claimed aging temperature range? We decide this issue
in the negative.

FINDINGS OF FACT AND ANALYSES
Issue (1)
Citing to the Manual of Patent Examining Procedure (MPEP)
§ 2144.05(I)1, the Examiner finds that Kennedy’s nitrogen level of less than
0.002 wt.% is so close to the lower end of Appellants’ claimed nitrogen
range (i.e., 0.003 wt.%) that prima facie the claimed subject matter including
the nitrogen range would have been obvious (Ans. 4). The Examiner finds
that both the prior art and Appellants’ claimed nitrogen ranges are at
impurity levels and Appellants have not established criticality of the claimed
nitrogen range (Ans. 4-5).
Appellants argue that the claimed invention can achieve a high
toughness in the stainless steel without decreasing nitrogen levels to 0.002
wt.% or less (App. Br. 12). Appellants argue that Kennedy’s teaching of a

1 MPEP § 2144.05(I) ( Rev. 8, 8th ed. July 2010) includes a citation to
Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985),
which the MPEP explains supports the proposition that “a prima facie case
of obviousness exists where the claimed ranges and prior art ranges do not
overlap but are close enough that one skilled in the art would have expected
them to have the same properties.” We understand the Examiner to be
relying on this legal precedent in the obviousness conclusion.
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nitrogen content of less than 0.002 wt.% does not establish a prima facie
case of obviousness because the cost associated with using more pure
materials and processes to achieve a nitrogen content of less than 0.002
wt.% would have increased the cost of manufacture (App. Br. 12).
However, just because a particular modification would not have been
made by a businessman for economic reasons does not mean that one of
ordinary skill would not have made the modification. In re Farrenkopf, 713
F.2d 714, 718 (Fed. Cir. 1983).
Moreover, Appellants’ arguments do not address the Examiner’s
finding that because the nitrogen content of Kennedy’s stainless steel is so
close to the lower end point of Appellants’ nitrogen content range, prima
facie one of ordinary skill would have reasonably expected the stainless
steels involved to have the same properties (i.e., there is no patentable
distinction).
Appellants’ argument that Kennedy establishes criticality in the
claimed nitrogen range, does not establish that Appellants’ claimed nitrogen
range (i.e., 0.003 to 0.008 wt.%) is critical (Reply Br. 3-4). The
Specification disclosure at pages 14-15 supports the Examiner’s position that
the claimed nitrogen range of 0.003 to 0.008 wt.% is not critical. The
Specification only places an upper limit of 0.008% on the nitrogen content,
but no lower limit. Furthermore, it is undisputed that both Appellants’ and
Kennedy’s nitrogen content ranges simply include impurity levels of
nitrogen in the alloy (Ans. 4-5, App. Br. 12, Reply Br. 4-5).
Therefore, on this record we find that the Examiner has established a
prima facie case of obviousness in the claimed composition. We now
address Appellants’ evidence of criticality in the aging temperature range.
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Issue (2)
Appellants argue that the claimed aging temperature range is critical
(App. Br. 12). Appellants contend that Figures 5 and 6 show that an aging
treatment between 510°C and 530°C is critical to achieving a tensile strength
of at least 1500 MPa and a Charpy absorbed energy of at least 20 J at room
temperature (App. Br. 13). Appellants contend that most of the
compositions tested in Figures 5 and 6 do not satisfy both conditions (App.
Br. 13).
However, the Examiner is correct (Ans. 10) that Appellants have not
adequately fulfilled their burden of specifically explaining how the data
shown in Appellants’ Figures 5 and 6 establish criticality of the claimed
temperature range. Figures 5 and 6 contain over 13 examples and
Appellants have not explained how any of the examples show the criticality
of the claimed temperature range.
Appellants seek to remedy this deficiency by argument in their Reply
Brief regarding Examples 5 and 6 shown in Figures 5 and 6 (Reply Br. 5).
We need not consider these untimely and waived arguments as they could
have been made in the opening Brief, but were not. Cross Medical
Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-1321
n.3 (Fed. Cir. 2005).
However, even considering Appellants’ evidence, such evidence does
not establish criticality in the claimed range. Though Appellants point to
Examples 5 and 6, Appellants do not explain why Examples 7 and 11 do not
demonstrate that one could achieve the desired properties by aging at a
temperature of 537°C as taught by Kennedy. The nitrogen content of
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Example 7 is closer to that of Kennedy than Example 11, but both may be
considered reasonably close to Kennedy’s stainless steel composition.
Figures 5 and 6 seem to show that at least Examples 7 and 11 can achieve
the desired tensile strength and toughness.
Moreover, Appellants’ evidence is not necessarily probative of
criticality or non-obviousness because it fails to show criticality of the aging
temperature over the entire claimed compositional ranges. Specifically, the
data included in Appellants’ Table 1 (Spec. 24), only includes Cr values at
12.33, 12.34, 12.37, 12.39 and 14.03 and Ni quantities at 8.34, 8.35, 8.45,
8.42 and 8.47. However, the claims recite Cr quantities from 12.25 to
14.25% and Ni quantities from 7.5 to 8.5%. Therefore, the data provided is
not commensurate in scope with the claimed subject matter. In re Clemens,
622 F.2d 1029, 1036 (CCPA 1980).
On this record and for the above reasons, we find that Appellants have
not established criticality in the claimed aging temperature range. We
affirm the Examiner’s § 103(a) rejection.

DECISION
The Examiner’s decision is affirmed.

ORDER
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).
AFFIRMED

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