Ex Parte Litstr¿m et al

Patent Trial and Appeal Board

Mar 14, 2016

12810224 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/810,224 08/31/2010
21839 7590 03/16/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Ola Litstrlm
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0078834-000040 4263
EXAMINER
MAI, NGOCLAN THI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLA LITSTROM, SVEN BENGTSSON,
ROBERT FRYKHOLM, and OLA BERGMAN
Appeal2014-002055
Application 12/810,224
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 12/810,224
under 35 U.S.C. § 103(a) as obvious. Final Act. (November 2, 2012).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
Oral argument was held in this appeal on March 3, 2016.
For the reasons set forth below, we AFFIRM.
1 Hoganas AB (Publ) is identified as the real party in interest. Appeal Br. 1.
Appeal2014-002055
Application 12/810,224
BACKGROUND
The '224 Application describes a low alloyed iron-based powder and
methods for making components from the powder. Spec. 1. Claim 1 is
representative of the '224 Application's claims and is reproduced below
from the Claims Appendix of the Appeal Brief:
1. A water atomised prealloyed iron-based steel powder
which comprises by weight-%:
0.4-2.0 Cr,
0.1-0.8 Mn,
less than 0.1 V,
less than 0.1 Mo,
less than 0.1 Ni,
less than 0.2 Cu,
less than 0.1 C,
less than 0.25 0,
less than 0.5 of unavoidable impurities, and
the balance being iron.
Appeal Br. Claims App. 1 (emphasis added).
REJECTIONS
On January 10, 2012, the Examiner entered a Non-Final Action in the
'224 Application. In that Action, the Examiner (1) rejected claims 1-20 as
obvious over Unno, Non-Final Act. 2, (2) rejected claims 10-12 and 20 as
unpatentable over the combination ofUnno and Uenosono, id. at 5, and
(3) provisionally rejected claims 1, 2, 10, and 20 on the ground of
nonstatutory obviousness type double patenting (OTDP) as unpatentable
over claim 9 of copending Application No. 12/810,230, id. at 7.
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Application 12/810,224
In the November 2, 2012, Final Action, the Examiner stated that
"[t]he previous rejections to claims 1-20 under 35 U.S.C. 103 as being
unpatentable over [Unno] is [sic, are] maintained." Final Act. 2. The
Examiner also updated the OTDP rejection to reflect the amendment of the
'230 Application's claims.2
Although the Final Action is not precisely clear regarding the
rejection over the combination ofUnno and Uenosono, Appellants addressed
both of the rejections under§ 103(a) in both their Pre-Appeal Brief Request
for Review and their Appeal Brief. Furthermore, the Examiner's Answer
states that none of the grounds for rejection had been withdrawn. Answer 2.
In view of the foregoing, we conclude that the following rejections
have been maintained:
1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Unno.3 Non-Final Act. 2; Final Act. 2.
2. Claims 10-12 and 20 are rejected under 35 U.S.C. § 103(a) as
• • "1 "1 ,"1 "1 • ,• l""TT "1 TT LI. -,.T unpatemao1e over me comomanon or unno ana uneosono. · l"\lon-
Final Act. 5.
3. Claims 1, 2, 10, and 20 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as not patently
2 Claim 11 of the '230 Application was amended to incorporate claim 9's
limitations and claim 9 was cancelled. See '230 Application File History
Amendment 2, 5 (August 7, 2012).
3 JP 58-130249, published August 3, 1983. We cite the English-language
translation ofUnno that is part of the '224 Application's prosecution record.
4 US 6,296,682 B 1, issued October 2, 2001.
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Appeal2014-002055
Application 12/810,224
distinct from amended claim 11 of copending Application
No. 12/810,230. Non-Final Act. 7; Final Act. 2.
DISCUSSION
Rejections 1 and 2. The Examiner rejected claims 1-20 as
unpatentable over Unno. Non-Final Act. 2. The Examiner also rejected
claims 10-12 and 20 as unpatentable over the combination ofUnno and
Uenosono. Non-Final Act. 5. Appellants present a single, undifferentiated
argument for reversal of these rejections. 5 See Appeal Br. 2-8. Because
Appellants only refer to the limitations of"[ e ]xemplary claim l" in their
argument, we select claim 1 as representative of all of the claims on appeal.
Claims 2-20 will stand or fall with claim 1.
Claim 1 is directed to a powder produced by water atomization.
Unno, however, describes a powder produced by an oil atomization process.
Non-Final Act. 2. Despite this difference, the Examiner concluded that
Unno rendered the subject matter of claim 1 prima facie obvious. In
particular, the Examiner found that Unno describes a powder that
"reasonably appears to be either identical with or only slightly different
than a product claimed in a product-by-process claim, a rejection based on
5 Because Appellants present an undifferentiated argument for reversal of
two grounds of rejection, we are forced to assume that Appellants' sole
argument for reversal of Rejection 2 is that Uenosono does not remedy the
alleged deficiencies in the rejection of claim 1 as unpatentable over Unno.
Had Appellants' Appeal Brief complied with our rules, their arguments for
reversal of Rejection 2 would be clearly set forth. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013) ("Each ground of rejection contested by appellant
must be argued under a separate heading, and each heading shall reasonably
identify the ground of rejection being contested (e.g., by claim number,
statutory basis, and applied reference, if any).").
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Appeal2014-002055
Application 12/810,224
section 103 of the statute is eminently.fair and acceptable," Non-Final Act.
3--4 (citing In re Thorpe, 777 F.2d 695, 697-98 (Fed. Cir. 1985)).
Appellants argue that the Examiner erred in rejecting claim 1 as
unpatentable over Unno because claim 1 is directed to a powder produced by
water atomization while Unno describes a powder produced by an oil
atomization process. Appeal Br. 2-8. In particular, Appellants argue
( 1) that the Examiner failed to provide an adequate reason to shift the burden
of demonstrating differences between an oil-atomized powder and a water-
atomized powder to Appellants, id. at 4-5, and (2) that Appellants came
forward with evidence establishing an unobvious difference between oil- and
water-atomized powders, id. at 5-8. For the reasons set forth below, we are
not persuaded by either of Appellants' arguments.
First, Appellants argue that the Examiner has not provided a rationale
tending to show that the claimed product appears to be the same or similar to
that of the cited art. Id. at 4. Appellants argue that provision of such a
rationale is a necessary predicate to placing a burden on Appellants to
demonstrate an unobvious difference between the water- and oil-atomized
powders. Id. (citing In reMarosi, 710 F.2d 799, 802 (Fed. Cir. 1983)). The
Examiner, however, correctly found that the claimed product's composition
is described or suggested by the composition of the material described in
Unno. Thus, the only possible patented distinction set forth in claim 1 is the
method of atomization used to produce the powder.
The Examiner does not have access to laboratories and equipment
needed to demonstrate that the powders produced by the prior art oil
atomization and the claimed water atomization processes are substantially
identical. For this reason, it has long been the law that under such
circumstances, the Examiner can assume that the product produced by a
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Appeal2014-002055
Application 12/810,224
process that is substantially identical to the process used to produce the
claimed product inherently has the same properties as the claimed product.
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Best, 562 F.2d 1252,
1256 (CCPA 1977). Accordingly, we are not persuaded that the Examiner
erred by requiring Appellants to demonstrate a distinction between the
claimed and prior art powders.
Second, Appellants argue that they have provided sufficient evidence
to demonstrate a patentable distinction between the claimed water-atomized
powder and the prior art oil-atomized powder. Appeal Br. 5-8. In
particular, Appellants argue that "a water atomized powder, even though it
has low carbon content and low oxygen content, still yields a relatively low
green density compared to oil atomized powders." Id. at 5 (citing U mino
col. 2, 11. 9-25).
The Examiner considered Appellants' evidence and arguments and
found them to be unpersuasive. Answer 7. We agree with the Examiner.
As the Examiner points out, id., the iron alloy used to produce the steel
powder in Umino has a different composition from that claimed in the '224
Application and that described in Unno. Thus, we cannot conclude that the
Examiner erred in finding that Appellants have not proven that the water-
atomized powders of the claimed composition would produce a green body
with the same relative density as that described in Umino.
Appellants also argue that the properties of oil- and water-atomized
powders are necessarily different because of the properties of the
atomization fluid. See Appeal Br. 6-8. These arguments, however, are not
persuasive because Appellants do not support them with any actual
evidence. See Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.
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Appeal2014-002055
Application 12/810,224
Cir. 1997) ("Counsel's argument cannot take the place of evidence lacking
in the record.").
Because Appellants have not demonstrated that the Examiner erred
either by shifting the burden of demonstrating a difference between the
claimed water-atomized powder and the prior art oil-atomized powder or by
determining that Appellants have not met this burden, we affirm the
rejection of claim 1 as unpatentable over Unno.
Rejection 3. Claims 1, 2, 10, and 20 are provisionally rejected for
OTDP as not patently distinct from over amended claim 11 of the '230
Application. 6
Because Appellants have not presented any argument for reversal of
this rejection, see generally Appeal Br., we affirm the provisional OTDP
rejection of claims 1, 2, 10, and 20 of the '224 Application as not patentably
distinct from claim 11 of the '230 Application.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-20
of the '224 Application as unpatentable over Unno and the rejection of
claims 10-12 and 20 as unpatentable over the combination ofUnno and
Uenosono. We also summarily affirm the provisional OTDP rejection of
claims 1, 2, 10, and 20 as not patentably distinct from claim 11 of the '230
Application.
6 Since entry of the Final Action, the '230 Application has issued as US
Patent No. 8,398,739 B2. Claim 11 of the '230 Application has been
renumbered as claim 1 in the '739 patent. See '230 Application File History
Index of Claims (December 7, 2012).
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Appeal2014-002055
Application 12/810,224
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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