Ex Parte Nishiyama et al

Patent Trial and Appeal Board

Jul 16, 2018

14129137 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/129,137 12/24/2013 Y oshitaka Nishiyama
22902 7590 07/16/2018
CLARK & BRODY
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.
12049-0122 6882
EXAMINER
1700 Diagonal Road, Suite 510 w ALCK, BRIAND
Alexandria, VA 22314
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
07/16/2018 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 YOSHITAKA NISHIYAMA, HIROKAZO OKADA,
TAKAHIRO OSUKI, and ETSUO DAN
Appeal2017-009504
Application 14/129,137
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 5-12. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Nippon Steel & Sumitomo Metal
Corporation. Appeal Brief of December 27, 2016 ("App. Br."), 3. In this
opinion, we also refer to the Final Action of September 21, 2016 ("Final
Act."), the Examiner's Answer of May 1 7, 2017 ("Ans."), and the Reply
Brief of June 27, 2017 ("Reply Br.").
Appeal2017-009504
Application 14/129, 13 7
CLAIMED SUBJECT MATTER
The claims are directed to a carburization resistant metal material. 2
Claim 5, reproduced below, is illustrative of the claimed subject matter:
5. A metal material, consisting of, by mass%, C: 0.03 to
0.075%, Si: 0.8 to 2.0%, Mn: 0.05 to 2.5%, P: 0.04% or less, S:
0.015% or less, Cr: higher than 16.0% and less than 20.0%, Ni:
22.0% or higher and less than 30.0%, Cu: 0.5 to 10.0%, Al:
0.15% or less, Ti: 0.15% or less, N: 0.005 to 0.20%, and 0
(oxygen): 0.02% or less, the balance being Fe and impurities.
App. Br. 27 (Claims Appendix).
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matsuo EP 1 637 785 Al March 22, 2006
REJECTIONS
Claims 5-12 are rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Matsuo. Final Act. 3--4.
OPINION
In rejecting claim 1, the Examiner finds that Matsuo describes a
material whose composition includes the same elements recited in claim 5 in
amounts that overlap the ranges recited in claim 5. Final Act. 3--4
( analyzing obviousness by presenting evidence and charting each prior art
composition with each recited composition to show overlap). For example,
Matsuo describes a stainless steel containing:
2 Application 14/129, 137 referred to as "Spec."
2
Appeal2017-009504
Application 14/129, 13 7
C: 0.2% or less, Si: 2.0% or less, Mn: 0.1 to 3.0% and Cr: 9 to
28%. This steel may further contain optionally one or more
selected from the group consisting of Ni: 0.1 to 1.5%, Mo: 0.1
to 5%, W: 0.1 to 10%, Cu: 0.1 to 5%, N; 0.005 to 0.3%, V: 0.01
to 1.0%, Nb: 0.01 to 1.5%, Ti: 0.01 to 0.5%, Ca: 0.0001 to
0.2%, Mg: 0.0001 to 0.2%, Al: 0.0001 to 0.2%, B: 0.0001 to
0.2% and rare earth elements: 0.0001 to 0.2%.
Matsuo ,r 22.
Matsuo additionally describes:
Id.
An austenitic stainless steel containing C: 0.2% or less, Si:
2.0% or less, Mn: 0.1 to 3.0%, Cr: 9 to 28% and Ni: 6 to 50%.
This steel may further contain optionally one or more selected
from the group consisting of Mo: 0.1 to 5%, W: 0.1 to 10%, Cu:
0.1 to 5%, N: 0.005 to 0.3%, V: 0.01 to 1.0%, Nb: 0.01 to 1.5%,
Ti: 0.01 to 0.5%, Ca: 0.0001 to 0.2%, Mg: 0.0001 to 0.2%, Al:
0.0001 to 0.2%, B: 0.0001 to 0.2% and rare earth elements:
0.0001 to 0.2%.
Appellants acknowledge that "there is overlap between the ranges of
alloying elements of Matsuo and claim [5]" 3 but argue that the Examiner
reversibly erred by engaging in an improper "obvious to try" approach. 4
App. Br. 14, 16 (citing In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009));
Reply Br. 5---6 ( citing the same). Appellants argue that Matsuo provides no
teaching or suggestion for a skilled artisan to modify the prior art material to
arrive at the recited compositions. App. Br. at 14--16.
3 The Appeal Brief refers to "claim 1" but we consider the arguments to be
directed to claim 5 instead. See App. Br. 16.
4 Appellants present arguments solely for independent claims 5 and 7 as a
group. App. Br. 13-26. Consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), the remaining claims stand or fall with claims 5
and 7.
3
Appeal2017-009504
Application 14/129, 13 7
"A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption
of obviousness. But the presumption will be rebutted if it can
be shown: (1) that the prior art taught away from the claimed
invention, or (2) that there are new and unexpected results
relative to the prior art.
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004).
In this case, Appellants acknowledge that the prior art
composition ranges overlap with those recited. App. Br. 16.
Appellants cite to In re Baird, 16 F.3d 380 (Fed. Cir. 1994) without
explaining why Baird - a case in which the claim at issue does not
recite any range of a particular composition - is applicable to the
claim here. App. Br. 16. We further note that while the reference in
Baird was found lacking in teaching or suggestion to select a
particular variable in the prior art generic formula, Baird, 16 F .3d at
3 82, Appellants do not dispute Matsuo' s teachings regarding the
"effect of each component" of the prior art alloy "and the reason for
limiting the content" ( e.g., Si is "effective in improving the steam
oxidation resistance" and "Mo, W and Cu are preferably included
since they enhance the high-temperature strength of the steel"). See
App. Br. 14--15 ( citing Matsuo ,r,r 25, 30). "A recognition in the prior
art that a property is affected by the variable is sufficient to find the
variable result-effective." In re Applied Materials, Inc., 692 F.3d
4
Appeal2017-009504
Application 14/129, 13 7
1289, 1297 (Fed. Cir. 2012). No reversible error has been identified
here.
In support of the unexpected results argument, Appellants
present Tables 1 and 2 of the Specification which illustrate examples
1 through 24 as embodiments of the claim compared to examples 25
through 36 as comparative. App. Br. 19--20.5 The Examiner finds,
and Appellants do not dispute, that examples 1 through 24 do not
encompass the entire range of each element of the recited
composition. Compare Ans. 5 (finding, for example, that the recited
Si content is 0.8 to 2% whereas the Si content in Table 1 ranges
between 0.63 to 1.67%), with Reply Br. 7 ("Not having examples that
approximate the upper limit of Si is not fatal to the showing of
unexpected results in connection with the claimed compositions.").
Appellants do not identify evidence in the record showing why these
examples are representative of the recited compositions. See App. Br.
19--23 ( arguing that the Examiner is setting an inaccurate standard to
show unexpected results); Reply Br. 7-9 (arguing that the recited
compositions are consistent with the goal of the invention).
5 Appellants also refer to "Table 3" which according to Appellants, is a table
in which "each one of [the] comparative alloys 25-3 6 is deficient in one or
more of the measures of pitting" and other parameters. App. Br. 21. The
Specification of the application at issue is limited to Tables 1 and 2. See
Spec. ,r,r 83, 84. To the extent that Appellants are referring to Table 3 of
Matsuo, Table 3 of Matsuo only shows "Test Piece No." from 1 through 20.
See Matsuo ,r 40. We consider Appellants' reference to "Table 3" here to be
directed to Table 2 of the Specification. In any event, Tables 1 and 2 do not
sufficiently show unexpected results over the closest prior art as mere
improvement in properties does not always suffice to show unexpected
results. In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991).
5
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Application 14/129, 13 7
"Attorneys' argument is no substitute for evidence." Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). No reversible
error, therefore, has been identified in the Examiner's finding that the
asserted unexpected results are not commensurate in scope with the
claim.
In their Reply Brief, Appellants raise new arguments with
regard to various cases cited in the Final Action. Compare Final Act.
6 (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003), Merck
& Co., Inc. v. Biocrafi Labs., 874 F.2d 804, 807 (Fed. Cir. 1989), In
re Susi, 440 F.2d 442,445 (CCPA 1971)), with Reply Br. 1--4
(presenting arguments with regard to these cases). Such arguments
raised for the first time in a Reply Brief are considered waived here
because Appellants do not explain why they could not have been
raised previously. 37 C.F.R. § 41.41(b)(2); Optivus Tech., Inc. v. Ion
Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an [ A Jppellant in its opening brief ... is waived.")
( citations omitted) (internal quotations omitted); cf Ex parte Borden,
93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated
argument that has not been addressed by the Examiner, absent a
showing of good cause.").
DECISION
The Examiner's rejection of claims 5-12 is affirmed.
6
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Application 14/129, 13 7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7