Ex Parte Spitzer et al

Patent Trial and Appeal Board

Aug 29, 2016

13255548 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/255,548 11/10/2011
20151 7590 08/31/2016
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD A VENUE
SUITE 1501
NEW YORK, NY 10017
FIRST NAMED INVENTOR
Karl-Heinz Spitzer
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.
SPITZER-7 7755
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KARL-HEINZ SPITZER, BIANCA SPRINGUB,
JOACHIM KONRAD, HELLFRIED EICHHOLZ,
MARKUS SCHAPERKOTTER, and ZACHARIAS GEORGEOU
Appeal2015-002862
Application 13/255,548
Technology Center 1700
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal the Examiner's final rejection of claims 16-29.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Salzgitter Flachstahl GmbH as the Real Party in
Interest. App. Br. 3.
Appeal2015-002862
Application 13/255,548
The Claimed Invention
Appellants' disclosure relates to a method for producing a hot strip
from a triplex lightweight steel, wherein a melt is cast into a roughed strip
and the latter is subsequently rolled into a hot strip. Abstract. Claim 16, the
sole independent claim, is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
17):
16. A method for producing a hot strip from a triplex
lightweight steel, comprising the steps of:
casting a melt in a horizontal strip casting facility under
conditions of a calm flow and free of bending to form a roughed
strip having a thickness in a range between 6 and 20 mm; and
rolling the roughed strip into a hot strip with a degree of
deformation of at least 50 %.
The References
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Nitoh et al.,
(hereinafter "Nitoh")
Kroos et al.,
(hereinafter "Kroos")
US 6,240,617 Bl June 5, 2001
US 2007/0289717 Al Dec. 20, 2007
Kiese et al., W02007062702 Al June 7, 2007
(hereinafter "Kiese")
Spitzer et al., Direct Strip Casting (DSC) - an Option for the Production of
New Steel Grades, Steel Research International, Vol. 74, No. 11/12 (2003),
at 724-31 (hereinafter "Spitzer").
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The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 16-20, 23, 26, 27, and 29 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kroos in view of Kiese.
2. Claims 21, 22, 24, and 25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kroos in view of Kiese as
applied above to claims 16-20, 23, 26, 27, and 29, and further in view of
Nitoh.
3. Claim 28 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kroos in view of Kiese as applied above to claims
16-20, 23, 26, 27, and 29, and further in view of Spitzer.
4. Claims 16-20, 23, 26, 27, and 29 stand rejected on the ground
of non-statutory obviousness-type double patenting as being unpatentable
over claims 1 and 16-22 of Kiese.
5. Claims 21, 22, 24, and 25 stand rejected on the ground of
non-statutory obviousness-type double patenting as being unpatentable over
claims 1 and 16-22 of Kiese and Nitoh.
6. Claim 28 stands rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1 and
16-22 of Kiese and Spitzer.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer, which we adopt as our
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own. Nevertheless, we highlight and address specific findings and
arguments for emphasis as follows.
Rejection 1
Appellants argue claims 16-20, 23, 26, 27, and 29 as a group. We,
therefore, select claim 16 as representative of this group, and the remaining
claims stand or fall with claim 16. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Kroos and Kiese suggests
all of the limitations of claim 16 and would have rendered claim 16 obvious.
Ans. 2, 3 (citing Kroos, Abstract, ,-i 28; Kiese, Abstract). In particular, the
Examiner finds that Kroos teaches a method for producing a hot steel strip,
comprising casting a melt in a "horizontal strip casting unit" under
conditions of a "calm flow and without bending" to form a strip having a
thickness in a "range between 6 and 15 mm," and followed by hot rolling
into a hot strip with a degree of deformation "of>70%." Id. at 2 (citing
Kroos, Abstract, iJ 28). The Examiner finds further that although Kroos does
not expressly disclose that the steel is a triplex lightweight steel, the Kiese
reference explicitly teaches this missing limitation. Id. (citing Kiese,
Abstract).
Based on the above findings, the Examiner concludes that it would
have been obvious to a person having ordinary skill in the art at the time of
the invention "to use the steel of Kiese ... in the process of Kroos ... with
expected success" because "the use of conventional materials to perform
their known functions in a conventional process is obvious." Ans. 2.
Moreover, the Examiner finds that although the combination of Kroos and
Kiese do not expressly teach that the strip after casting is a "roughed strip,"
that property would have been reasonably expected by a person of ordinary
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skill to be present in the modified steel because the prior art combination of
Kroos and Kiese teaches the "same or substantially the same steel, and [the]
same or substantially the same casting process as instantly claimed." Id. at
3.
Appellants argue that the Examiner's rejection should be reversed
because there is no teaching, suggestion, or motivation to combine the
references and that the Examiner has failed to establish that one of ordinary
skill in the art would have had a reasonable expectation of success in making
the proposed combination. App. Br. 4, 5. In particular, Appellants contend
that: ( 1) "nothing in the cited prior art indicates how the steel of Kiese would
perform in the method of Kroos"; (2) the Examiner's finding that "the steel
of Kiese could be used in the method of Kroos with expected success is ...
unfounded and unsupported by objective evidence"; and that (3) "a person
with skill in the art would in fact not have expected the steel of Kiese to be
used successfully in the method of Kroos." Id. at 4
We are not persuaded by Appellants' arguments. Contrary to what
Appellants argue, the Examiner does provide a reasonable basis and
identifies sufficient evidence in the record to evince why one of ordinary
skill would have been motivated to combine the teachings of the references
to arrive at Appellants' claimed invention and would have had a reasonable
expectation of success in doing so. Ans. 2 (explaining that one of ordinary
skill in the art would have been motivated to use Kiese' s steel in Kroos' s hot
strip process with a reasonable expectation of success because "the use of
conventional materials to perform their known functions in a conventional
process is obvious"); see also In re Rainer, 305 F.2d 505, 511(CCPA1962)
("Merely reciting the use of a 'conventional material' in a claim to a process
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to perform its conventional function will not render patentable an otherwise
unpatentable claim."). Appellants fail to direct us to adequate evidence or
provide an adequate technical explanation to show why the Examiner's
articulated reasoning for combining the teachings of the prior art to arrive at
the claimed invention lacks a rational underpinning or is otherwise based on
some other reversible error.
Moreover, the Examiner's findings regarding the teachings of the
prior art are supported by a preponderance of the evidence. As the Examiner
found (Ans. 2), Kroos is directed to "a method for making hot strips, made
from workable lightweight ... steel" and teaches all of the limitations of the
claimed method except that the steel is a "triplex lightweight steel." Kroos,
Abstract, ,-i 28 (emphasis added). As the Examiner further found (Ans. 2),
Kiese teaches the use of triplex lightweight steel (Kiese, Abstract, ,-i 3),
including triplex lightweight steel having C and Mn compositions that
overlap with the C and Mn compositions of the lightweight steel taught by
Kroos (Kiese ,-i,-i 12, 14; Kroos, Abstract, ,-i,-i 9, 12). We discern no reversible
error in the Examiner's findings and analysis in this regard.
Appellants argue that "a person with skill in the art would in fact not
have expected the steel of Kiese to be used successfully in the method of
Kroos" because on the one hand "Kroos states in [0021] that it was sought to
prevent the formation of K-carbides by reducing the carbon content as much
as possible," but "Kiese on the other hand states that [its] steel contains a K-
phase." App. Br. 4, 5.
We do not find this argument persuasive. As the Examiner correctly
points out (Ans. 7), paragraph 21 of Kroos teaches that "K -carbides are
prevented by reducing the carbon content" and that it was known in the art
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that "the elimination of k-carbides resulted from elimination of carbon ...
i.e., [that] the presence of carbon would result in the presence of K -
carbides." Kroos, however, does not teach preventing or eliminating the
formation of K -carbides entirely, as Appellants' argument suggests. See
Kroos ii 21 (explaining that it "overcomes this preconception by proposing a
balanced ratio in the addition of aluminum and manganese, thereby allowing
also a targeted addition of carbon"- and not by eliminating carbon
altogether). Appellants' conclusory argument, without more, is insufficient
to rebut or otherwise establish reversible error in the Examiner's findings in
this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants argue that the claimed invention is nonobvious because
"the steel produced according to the method of claim 16 also shows
unexpected results." App. Br. 5 (citing Spec. ii 15).
We do not find this argument is persuasive. In attempting to
overcome a prima facie case of obviousness by showing unexpected results,
the burden rests with Appellants to establish: ( 1) that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art and (2) that the difference actually obtained would not
have been expected by one skilled in the art at the time of the invention. See
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing
unexpected results rests on he who asserts them").
Appellants have failed to meet their burden. Appellants do not
identify sufficient evidence to show that there actually is a difference
between the results obtained through the claimed invention and those of the
closest prior art, or that the alleged difference actually obtained would not
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have been expected by one skilled in the art at the time of the invention. The
statement at paragraph 15 of the Specification that the "triplex lightweight
steel exhibits its positive properties also from the nano-sized dispersed
'kappa' carbides in the austenite matrix," without more, is insufficient to
establish unexpected results or otherwise satisfy Appellants' evidentiary
burden in this regard. Klosak, 455 F.2d at 1080; cf also Ex parte Ishizaka,
No. 91-2539, 1992 WL 336794, at *4 (BPAI Apr. 30, 1992) (stressing that
"appellants have the burden of explaining the ... evidence of non-
obviousness" upon which they rely).
Accordingly, we affirm the Examiner's rejection of claims 16-20, 23,
26, 27, and 29 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the
combination of Kroos and Kiese.
Rejections 2 and 3
Appellants do not offer any new or specific arguments in the Appeal
Brief in response to the Examiner's remaining § 103 rejections of dependent
claims 21, 22, 24, 25, and 28, as set forth above in Rejections 2 and 3. App.
Br. 5. Appellants apparently intend to rely on the same arguments presented
in response to Rejection 1 as the grounds for reversal of the Examiner's
"rejection of independent claim 16 and all claims dependent on claim 16
under 35 U.S.C. 103(a)." Id.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner's Rejections 2 and 3.
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Rejections 4, 5, and 6
Appellants do not offer any new or additional arguments in the
Appeal Brief in response to the Examiner's rejections for obviousness-type
double patenting, i.e., Rejections 4, 5, and 6 stated above. App. Br. 5, 6.
Instead, Appellants rely on the same arguments presented in response to
Rejection 1. In particular, Appellants contend that "the same arguments ...
above apply to the rejection of claims 16-20, 23, 26, 27 and 29 on the
ground of non-statutory obviousness-type double patenting" and request that
we "reverse the [Examiner's] rejection of independent claim 16 on the
ground of nonstatutory obviousness-type double patenting and all claims
dependent on claim 16." Id. at 5-6.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner's Rejections 4, 5, and 6.
DECISION/ORDER
The Examiner's rejections of claims 16-29 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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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