Ex Parte Lund et al

Patent Trial and Appeal Board

Mar 26, 2018

13321410 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/321,410
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
FILING DATE FIRST NAMED INVENTOR
11/18/2011 ThoreLund
03/28/2018
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.
2009P00070WOUS 8858
EXAMINER
WALCK, BRIAND
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
ipr@skf.com
mark.ussai@skf.com
bryan. peckj ian @skf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORE LUND and INGEMAR STRANDELL 1
Appeal2016-004193
Application 13/321,410
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5 and 7. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to bearing components
comprising steel and, in particular, to the composition of the steel used in the
bearing components. E.g., Spec. 1:4--8; Claim 1. Claim 1 is reproduced
1 According to the Appellants, the real party in interest is Aktiebolaget SKF.
Br. 3.
Appeal 2016-004193
Application 13/321,410
below from page 12 (Claims Appendix) of the Appeal Brief (some
formatting added):
1. A bearing component that comprises steel, and wherein the steel
comprises, by weight,
10-30 ppm Ca,
a maximum of 20 ppm S, and
a maximum of 15 ppm 0,
and wherein
the steel includes sulphide inclusions,
and wherein
less than 5% of the sulphide inclusions contain one or more
of an encapsulated oxide inclusion or an embedded oxide
inclusion.
ANALYSIS
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over, Yamashita (JP 6002073, dated Jan. 11, 1994). 2 The
Appellants argue claims 1, 2, and 4, which we address below. The
remaining claims will stand or fall with claim 1, from which they depend.
See 37 C.F.R. § 41.37(c)(l)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection of claims 1, 2, and 4. Accordingly, we affirm the rejection for
2 The Appellants do not dispute the prior art status of Yamashita. In this
decision, we rely on the English language machine translation of Yamashita
that is of record. See Ans. 2.
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Application 13/321,410
reasons set forth below, in the Final Action, and in the Examiner's Answer.
See generally Final Act. 2-6; Ans. 2-10.
The Examiner finds that Yamashita teaches a steel bearing component
comprising the amounts of Ca, S, and 0 required by claim 1. Ans. 2-3.
With respect to the claim limitations concerning sulphide inclusions, the
Examiner finds that "Yamashita does not explicitly disclose the recited
limitations," but the Examiner finds that the sulphide inclusion limitations
are inherent in the composition of Yamashita because the composition of
Yamashita is substantially identical to the claimed composition. Id. at 3--4.
With respect to the additional sulphide inclusion limitations of dependent
claims 2 and 4, the Examiner likewise finds that those limitations are
inherent in the composition of Yamashita. Id.
The Appellants do not dispute the Examiner's finding that Yamashita
teaches a steel bearing component comprising the amounts of Ca, S, and 0
required by claim 1. See Br. 7-10.
The Appellants argue that "Yamashita fails to teach, show, or suggest
sulphide inclusions, much less a certain amount of sulphide inclusions that
contain encapsulated or embedded oxide inclusion, as recited in Appellant's
claims." Id. at 7. In connection with that argument, the Appellants argue
that the sulphide inclusion limitations of claims 1, 2, and 4 result from "the
method of manufacturing the bearing components. Yamashita ... has no
similar description, and in fact, does not describe how its metal composition
is created." Id. at 9.
Those arguments are not persuasive. "Where, as here, 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
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applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d
1252, 1255-56 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) ("[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.").
As noted above, there is no dispute in this case that Yamashita teaches
compositions that comprise the required amounts of Ca, S, and 0. Although
the Appellants argue that the sulphide inclusion limitations result from the
method of manufacturing the bearing components, see Br. 9, as the
Examiner explains, see Ans. 5-8, the Appellants' Specification indicates that
the sulphide inclusion limitations are an inherent result of the Ca, S, and 0
content of the steel composition, see Spec. 2 :21-3 5 ("It has namely been
found that the addition of calcium to bearing component steel will result in
less than 5% of the sulphide inclusions containing encapsulated or
embedded oxide inclusions .... "). The Appellants identify no other relevant
aspect of their method. See Br. 9.
The record in this case is sufficient to shift the burden to the
Appellants to show that the steel compositions of Yamashita do not
inherently possess the recited sulphide inclusion features of claims 1, 2, and
4. The Appellants' arguments are not persuasive because there is no dispute
that Yamashita teaches compositions that include the claimed amount of Ca,
and the sulphide inclusion features appear to flow naturally from addition of
Ca to the composition. See Spec. 2:21-35. The Appellants fail to identify
any persuasive reason that a person of ordinary skill in the art would have
expected Yamashita's steel compositions to fall beyond the scope of
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claims 1, 2, or 4. Accordingly, we are not persuaded that the Appellants
have carried their burden of showing that "the prior art products do not
necessarily or inherently possess the characteristics of [the] claimed
product." See Best, 562 F.2d at 1255-56.
The Appellants also argue that "Yamashita fails to teach the
importance of the specific, narrower Calcium content range recited in
Appellant's claims," and that "unexpected and surprising results" support
the Appellants' position. See Br. 9-10.
As an initial matter, we again observe that the Appellants do not
dispute the Examiner's finding that Yamashita's Example 1 teaches a steel
composition that comprises the required amounts of Ca, S, and 0. See Ans.
2-3. The fact that Yamashita also teaches a range of Ca of 10-120 ppm,
which is broader than the claimed range of 10-30 ppm, does not establish
error in the Examiner's anticipation rejection. Additionally, alleged
unexpected results are irrelevant to the anticipation rejection. See, e.g., In re
Malagari, 499 F.2d 1297, 1302 (CCPA 1974) ("If the rejection under§ 102
is proper ... appellant cannot overcome it by showing such unexpected
results or teaching away in the art, which are relevant only to an obviousness
rejection."). Accordingly, these arguments are unpersuasive of reversible
error in the Examiner's anticipation rejection.
The arguments are likewise unpersuasive of reversible error in the
Examiner's alternative rejection for obviousness. "[E]ven a slight overlap in
range establishes a prima facie case of obviousness." See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). The Appellants do not dispute that
Yamashita discloses a range of 10-12 0 ppm Ca. Yamashita' s disclosed
range fully encompasses the claimed range, and, as noted above, there is no
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Application 13/321,410
dispute that Yamashita discloses examples that include Ca concentrations at
the lower end ofYamashita's disclosed range.
The evidence of unexpected results cited by the Appellants, see Spec.
2:21-35, is unpersuasive for several reasons. First, the Appellants present
no evidence or technical reasoning to show that the alleged beneficial results
would have been unexpected to a person of ordinary skill in the art. See In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[I]t is not enough to show
that results are obtained which differ from those obtained in the prior art:
that difference must be shown to be an unexpected difference." (emphasis in
original)). Second, the Appellants do not identify or provide a comparison
to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art."). Finally, the Appellants do not allege that the
evidence of unexpected results is commensurate in scope with the claims;
nor do they identify the concentration of calcium that was present in the
compositions that allegedly demonstrate unexpected results. See In re
Greenfield, 571 F .2d 1185, 1189 (CCP A 1978) ("[I]t is the view of this court
that objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support." (quoting In re
Tiffin, 448 F.2d 791, 792 (CCPA 1971)). For at least those reasons, we are
not persuaded that unexpected results support a conclusion of
nonobviousness in this case.
On this record, the Appellants have not shown reversible error in the
Examiner's rejections. Cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
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("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections[.]").
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-5 and 7 under both
35 U.S.C. § 102 and§ 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
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