Ex Parte Oku et al

Patent Trial and Appeal Board

Oct 30, 2017

13382375 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/382,375 01/05/2012 Manabu Oku 12065-0098 8542
22902 7590 10/31/2017
TT ARK ^ RRODY EXAMINER
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
10/31/2017 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 MANABU OKU, SADAYUKI NAKAMURA, and
YOSHIAKI HORI
Appeal 2017-000035
Application 13/382,375
Technology Center 1700
Before PETER F. KRATZ, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1—4 and 6—8 of Application
13/382,375. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This Decision includes citations to the following documents: Specification
filed Jan. 5, 2012 (“Spec.”); Final Office Action dated Aug. 17, 2015 (“Final
Act.”); Appeal Brief filed Mar. 25, 2016 (“Appeal Br.”); Examiner’s
Answer dated July 22, 2016 (“Ans.”); and Reply Brief filed Sept. 20, 2016
(“Reply Br.”).
2 Appellants identify the real party in interest as Nisshin Steel Co., Ltd.
App. Br. 3.
Appeal 2017-000035
Application 13/382,375
BACKGROUND
The subject matter on appeal relates to a ferritic stainless steel for use
in heat exchangers, such as exhaust gas recirculation (“EGR”) coolers,
having a chemical composition consisting of specific content ranges for
carbon, silicon, manganese, chromium, niobium, and nitrogen. App. Br. 7.
When used in an EGR cooler, the ferritic stainless steel may be formed into
members that are joined together by high temperature Ni-brazing. Id.
Claim 1 is illustrative of the claimed subject matter:
1. A ferritic stainless steel for exhaust gas recirculation cooler
members, which consists of, by mass, C: at most 0.03%, Si:
from more than 0.1 to 3%, Mn: from 0.1 to 2%, Cr: from 10 to
25%, Nb: from 0.3 to 0.8%, and N: at most 0.03%, with a
balance of Fe and inevitable impurities.
App. Br. 37, Claims App’x.
THE REJECTIONS
1. Claims 1—4 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over US ’309.3 Ans. 2.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of US ’309 and Hartmann,4 or in the alternative,
Inaba.5 Id.
3 Hirata et al., US 6,383,309 B2, issued May 7, 2002 (“US ’309”).
4 Thomas Hartmann and Dieter Nuetzel, New amorphous brazing foils for
exhaust gas application, Proceedings of the 4th International Brazing and
Soldering Conference 110—118 (2009) (“Hartmann”).
5 Inaba, US 6,257,483 Bl, issued July 10, 2001 (“Inaba”).
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Application 13/382,375
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of US ’309 and Hartmann, or in the alternative,
Inaba, and further in view of Wilson.6 Id.
DISCUSSION
Rejection 1
Appellants present the same arguments for claims 1—4 and 6. App.
Br. 16—24. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
The Examiner finds that US ’309 discloses a ferritic stainless steel
having a composition that overlaps Appellants’ claimed ferritic stainless
steel. Ans. 4—5, providing citations to US ’309. The Examiner determines
that it would have been obvious to a person of ordinary skill in the art to
select Appellants’ claimed composition from US ’309’s disclosure, in view
of the overlapping ranges in the compositions. Id. The Examiner further
determines that the preamble recitation of “for exhaust gas recirculation
cooler members” is an intended use, but does not result in a structural
difference because the claimed ferritic stainless steel has a variety of uses.
Ans. 4.
Appellants argue that the Examiner improperly applied an obvious to
try rationale in reaching a determination of obviousness over US ’309. App.
Br. 16. Specifically, Appellants argue that US ’309’s teaching does not lead
to the particular claimed alloys as there are too many choices from which to
6 Wilson, 6.0L Power Stroke Is Torque of the Town, (Engine Technology)
Automotive Industries (10) 26—31 (2002) (“Wilson”).
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Application 13/382,375
pick and insufficient guidance from US ’309 to get to the invention. App.
Br. 20. Appellants further argue that the Examiner errs in finding that the
processing steps of US ’309 are similar to the processing described in the
Specification. App. Br. 20-21.
Appellants’ arguments are not persuasive of reversible error. The
overlap between the ranges in the composition of US ’309 and the claimed
ranges establishes prima facie obviousness. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.”). Appellants have not
directed us to any evidence to rebut the prima facie case, such as unexpected
results, and thus have failed to provide any reason why a person of ordinary
skill would not have been led to choose Appellants’ claimed ranges from US
’309’s composition. Appellants’ argument that “there is evidence in the
form of a comparison of alloys according to the invention and those outside
the invention in the specification” (App. Br. 31—32) is conclusory and
entitled to little weight. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972)
(attorney argument and conclusory statements, absent evidence, are entitled
to little, if any, weight).
With regard to the Examiner’s findings concerning the processing
steps of US ’309, we need not reach Appellants’ argument because prima
facie obviousness of the claimed composition is based solely on the overlap
with the ranges in the composition of US ’309. Further, we discern no error
in the Examiner’s determination that the intended use “for exhaust gas
recirculation cooler members” does not result in a structural difference (Ans.
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Application 13/382,375
4), and therefore no findings as to substantial similarity US ’309’s
processing steps are required.
Rejections 2 and 3
Claims 7 and 8 are directed to an EGR cooler in which the members
are formed of the steel of any of claims 1—4, and at least one of those
members is joined by Ni-brazing. App. Br. 38, Claims App’x. The
Examiner finds that Hartmann teaches EGR coolers can be made with
ferritic stainless steel that is brazed with Ni brazing filler and Ni filler
materials, and determines that it would have been obvious to a person of
ordinary skill in the art to use the ferritic stainless steel alloy of US ’309 in
an EGR cooler with Ni-brazing, in order to achieve high strength and good
corrosion and oxidation resistance at high temperatures, as well as reduced
costs, as taught by Hartmann. Ans. 5.
Appellants argue that nothing in Hartmann suggests that the type of
alloy taught in US ’309 would be suitable in a Ni-brazing application, and
that the Examiner has not explained why a person of ordinary skill in the art
would look to US ’309 as an alloy suitable for use in an EGR cooler that is
Ni-brazed. App. Br. 25—26. Appellants do not dispute that Hartmann
teaches the advantageous properties of stainless steels for EGR coolers, but
rather question “whether [Hartmann] provides a teaching to tell the artisan to
look to the teachings of US ’309 as a candidate steel for EGR use.” App. Br.
26. Appellants rely on their Specification as teaching that prior art ferritic
stainless steels in fact did not perform well in Ni-brazing applications. App.
Br. 27-28.
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Application 13/382,375
Appellants’ arguments are not persuasive of reversible error. The
Examiner’s rationale for combining Hartmann’s teaching of using ferritic
stainless steel for EGR coolers with US ’309’s alloy is well-supported by the
evidence (see Hartmann 110-12) and provides sufficient rational
underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Further, Appellants’ argument
that US ’309 describes ferritic steels that are not suitable for Ni-brazed EGR
coolers essentially rests on their contention that US ’309 does not teach the
claimed composition; Appellants’ argument is therefore unpersuasive for the
reasons articulated above with respect to Rejection 1, wherein we concur
with the Examiner’s determination that the claimed ferritic stainless steel
composition would have been obvious to one of ordinary skill in the art in
view of the teachings of US ’309. See Belden Inc. v. Berk-TekLLC, 805
F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect.” (Internal
quotation marks and alterations omitted)). To the extent Appellants argue
that ferritic stainless steels suitable for Ni-brazed EGR coolers must have
certain properties that are not taught by US ’309, Appellants have not
substantiated that argument with sufficient evidence; moreover, those
properties are not recited in the rejected claims. Accordingly, we sustain the
rejections of claims 7 and 8.
SUMMARY
We affirm the rejections of claims 1—4 and 6—8.
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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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