Ex Parte Nazmy et al

Patent Trial and Appeal Board

Dec 26, 2018

13346830 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/346,830 01/10/2012 Mohamed YoussefNazmy
135838 7590 12/28/2018
Studio Torta (RINGFENCE)
c/o BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313
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.
0087748-000034 7198
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
ADIPDOCl@BIPC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMED YOUSSEF NAZMY, CLAUS PAUL GERDES,
ANDREAS KUENZLER, and SORIN KELLER
Appeal2017-007697
Application 13/346,830
Technology Center 3700
Before JAMES P. CALVE, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Mohamed YoussefNazmy et al. ("Appellants") 1 seek our review
under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1--4
and 6-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify General Electric Technology GMBH as the real party
in interest. Appeal Br. 2.
Appeal2017-007697
Application 13/346,830
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a steel-based filler material for
welding." Spec. ,r 2. Claims 1, 20, and 21 are independent. Claim 1 is
reproduced below.
1. A filler material for welding, the filler material consisting
of the following chemical composition (amounts in% by
weight):
0.05-0.15 C,
8-11 Cr,
4.0Ni,
0.5-1.9 Mo,
0.5-1.5 Mn,
0.15-0.5 Si,
0.2-0.4 V,
0-0.04 B,
1-3 Re,
0.001-0.07 Ta,
0.01-0.06 N,
0-60 ppm Pd,
maximum 0.25 P,
maximum 0.02 S, and
remainder Fe; and
wherein a total% by weight of the chemical composition of
the filler material is 100%.
Appeal Br., Claims App. 1.
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Appeal2017-007697
Application 13/346,830
THE REJECTION
Appellants seek review of the Examiner's rejection of claims 1--4 and
6-21 under 35 U.S.C. § 103 as unpatentable over Nazmy '937, 2 Nazmy
'502, 3 and Kangas. 4
ANALYSIS
The Examiner found that Nazmy '937 discloses a filler material
having the claimed concentrations, except that in Nazmy '937 "the
concentration ofNi [nickel] is less and [NJ Nitrogen is used." Final Act. 3.
The Examiner found that "Nazmy '502 teaches both the concentration of
Ni---4% in para[.] 31 and use ofNitrogen----0.04% in para[.] 35 in the
recited amounts to improve ductility and control grain size in paragraphs 31
and 35 and improve creep resistance." Id. The Examiner also found that
"Kangas teaches Ni content from 4--10%" and notes advantages of good
structural stability and weldability. Id. at 4. The Examiner determined that
it would have been obvious to modify Nazmy '937 in view of "Nazmy '502
to improve ductility, creep resistance and control grain size" and "to increase
the concentration of Ni beyond 4% for stability as taught by Kangas." Id.
Appellants note that the Examiner concedes that Nazmy '937 teaches
a lower Ni concentration of 1-2.6% than the claimed 4.0%. Appeal Br. 6.
Appellants argue that Nazmy '502 does not disclose this limitation and
"teaches away" from the claimed 4.0% Ni because it states that "[ n ]ickel
2 U.S. Patent Pub. No. 2010/0206937 Al, published August 19, 2010
("Nazmy '937").
3 U.S. Patent Pub. No. 2010/0040502 Al, published February 18, 2010
("Nazmy '502").
4 U.S. Patent Pub. No. 2008/0138232 Al, published June 12, 2008
("Kangas").
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Appeal2017-007697
Application 13/346,830
contents above 4% by weight intensify the austenite stability in such a way
that, after solution heat treatment and annealing, an increased fraction of
residual austenite or annealing austenite may be present in the hardened
martensite." Id. (quoting Nazmy '502 ,r 31). Appellants also note the
preference in Nazmy '502 for a nickel content "of 2.3 to about 3%." Id. As
to the Examiner's reliance on Kangas, Appellants contend that Kangas
teaches away from a filler "having a Cr [chromium] content of 8-11 %" in
combination with nickel content of 4% as claimed, because Kangas teaches
a desirable chromium content of at least 25%. Id. at 7-8.
In response, the Examiner found that Nazmy '502 discloses
advantageous uses for nickel, including austenite stabilization, as well as
improved ductility, high creep resistance, and toughness properties of the
overall composition containing nickel. Ans. 8 ( citing Nazmy '502 ,r,r 31, 35,
68). The Examiner also found that the "[a]bove 4% Ni teaching in Nazmy
'502 encompasses 4% Ni." Id. at 9. As to Kangas, the Examiner found that
it teaches desirable advantages using the claimed nickel percentage, which
are "independent from the teachings about Cr" and therefore "[ t ]here is no
teaching away." Id. at 10 (citing Kangas ,r 33). The Examiner also found
Appellants' reliance on comparative information from the specification
unconvincing because the position lacks declaration evidence or cited data,
and is not made with reference to the closest prior art. Id. at 7, 11.
In Reply, Appellants argue that the specification alone provides
adequate support for its "unexpected results and advantages" argument, and
that no declaration was necessary. Reply Br. 4. The remainder of
Appellants' arguments largely repeat those already made in the Appeal
Brief. See id. at 4---6.
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Appeal2017-007697
Application 13/346,830
Although we ultimately sustain the rejections, we note that the
Examiner's finding that Nazmy '502 discloses Ni content of 4% because
"[a]bove 4% ... encompasses 4%" lacks support. Ans. 9. Generally
speaking, "above X" does not encompass X. In addition, paragraph 35 of
Nazmy '502 discloses nickel content between 2.3-2.8% as preferred, which
suggests that content above 4.0% is disfavored for the reasons stated. While
teaching away from "above 4.0%" may not teach away from 4.0%, we need
not determine whether these passages teach that 4.0% may be suitable given
that we disagree with the premise of the Examiner's finding-that "above
4.0%" discloses 4.0%.
There is no dispute, however, that Kangas discloses nickel content of
at least 4.0%, which satisfies the claim limitation. Appellants argue that
Kangas teaches away, but we are not persuaded that Kangas teaches away
merely because it also discloses chromium content of at least 25%. See
Appeal Br. 8. Appellants' teaching away argument suggests that a reference
disclosing a series of elements in certain ranges teaches away from the use
of any one of those elements in combination with elements having different
content ranges. We disagree. Nothing in Kangas limits its use of nickel in
the claimed range to only those situations where a filler also includes
chromium in the range employed by Kangas. Showing a mere preference
for a certain range of chromium, in combination with a number of elements
in certain ranges, does not teach that the disclosed range of nickel will not be
effective with other ranges of chromium, particularly where Kangas teaches
that nickel and chromium are used to achieve different properties. Nickel is
used to attain a desirable content of austenite and ferrite, whereas chromium
improves corrosion resistance. Kangas ,r,r 32, 33. In other words, the fact
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Appeal2017-007697
Application 13/346,830
that a lower range of chromium may not produce the desired advantages of
the chromium Kangas discloses does not teach that using the disclosed range
of nickel will not produce the desired effects of nickel that Kangas discloses.
In addition, Appellants do not address or show error in the Examiner's
finding that Kangas teaches desirable advantages of using the claimed nickel
percentage, which are "independent from the teachings about Cr." Id. at 10
( citing Kangas ,r 33); see also Kangas ,r 33 ( describing nickel content of "at
least 4%" as at a suitable level "to attain the desirable content of austenite
and ferrite"). Under these circumstances, we are not persuaded that Kangas
teaches away from the use of nickel at 4.0% in combination with the Nazmy
references. 5
Based on the foregoing, we sustain the rejection of claim 1.
Appellants do not raise any additional arguments regarding independent
claims 20 or 21, or the dependent claims apart from those made with respect
to claim 1. Accordingly, we sustain the rejection of claims 2--4 and 6-21 for
the same reasons discussed above in the context of claim 1.
5 We do not consider Appellants' references to the specification as a formal
secondary considerations arguments, because they were not presented in that
manner in the Appeal Brief and new arguments cannot be introduced in the
Reply Brief that were available when the Appeal Brief was filed. See
Appeal Br. 5---6; Reply Br. 4 (referring to "unexpected results" for the first
time). In addition, we view those statements as general in nature, and not
supported adequately to establish unexpected results over the prior art such
as that employed in the rejection. See Ans. 7 (noting lack of data or
declaration to support statements).
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Appeal2017-007697
Application 13/346,830
DECISION
We affirm the decision of the Examiner to reject claims 1--4 and 6-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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