Ex Parte Strybos

Patent Trial and Appeal Board

Mar 27, 2018

14753892 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
141753,892 06/29/2015 Ronald STRYBOS
40582 7590 03/29/2018
American Air Liquide, Inc.
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
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.
Sl0214 CNT 7736
EXAMINER
YEE, DEBORAH
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
IP-USOffice@airliquide.com
Neva.Dare-c@airliquide.com
J us tin.Murray@airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD STRYBOS
Appeal2017-006582
Application 14/753,892
Technology Center 1700
Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In this Decision, we refer to the Specification filed June 29, 2015
("Spec."), the Final Office Action entered August 3, 2016 ("Final Act."), the
Appeal Brief filed December 15, 2016 ("Appeal Br."), the Examiner's
Answer entered January 26, 2017 ("Ans."), and the Reply Brief filed
March 14, 2017 ("Reply Br.").
2 Appellant is the Applicant, Air Liquide Large Industries U.S. LP, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2017-006582
Application 14/753,892
The subject matter of the claims on appeal relates to a carbon steel for
high pressure hydrogen storage. Spec. 1, 1. 25. Claim 1, reproduced below
from the Claims Appendix of the Appeal Brief with added emphasis to
highlight key disputed limitations, is illustrative of the claims on appeal.
1. A carbon steel comprising: no more than 0.16% carbon,
no more than 1.10% manganese, no more than 0. 010%
phosphorus, greater than 0.035% sulfur but no more than
0.05% sulfur, no more than 0.02% silicon, no more than 0.15%
copper, no more than 0 .10% nickel, no more than
0.1 % chromium, no more than 0.03% molybdenum, no more
than 0.40% aluminum, no more than 0.02% vanadium, no more
than 0.0005% boron, no more than 0.003% titanium, and no
more than 0.02% niobium, with the balance comprising iron
and inevitable impurities, thereby mitigating hydrogen
embrittlement in gaseous hydrogen service with pressures
greater than 800 psig.
Appeal Br. 10 (Claims App.) (emphasis added).
DISCUSSION
The Examiner maintains the rejection of claims 1-13 under 35 U.S.C.
§ 103 as unpatentable over Brisco et al. (US 2008/0257542 Al, published
October 23, 2008 ("Brisco")) in view of Mizoguchi et al. (EP 1 538 224 Al,
published June 8, 2005 ("Mizoguchi")). Final Act. 3-7; Ans. 2. The
Examiner also maintains the rejection of claims 14--19 under 35 U.S.C.
§ 103 as unpatentable over Brisco and Mizoguchi, further in view of the
admitted prior art at page 2 of Appellant's Specification. Final Act. 7;
Ans. 2.
Appellant's substantive arguments for patentability are based on
limitations recited in claim 1, including separately rejected claims 14--19.
2
Appeal2017-006582
Application 14/753,892
See Appeal Br. 5-8. All claims therefore stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103 rejections essentially for the reasons set out by the Examiner in the
Final Office Action and the Answer. We add the following.
The Examiner finds that Brisco teaches a carbon steel for an
expandable tubular member, which, except for the amount of sulfur, meets
the chemical composition of claim 1 's carbon steel. Final Act. 3. A
comparison between the carbon steel taught by Brisco and claim 1 's carbon
steel is provided in a table prepared by the Examiner (Final Act. 3 (citing
Brisco i-fi-160-74)), which we reproduce below.
Elements Claim i Brisco (wt%) (wt%}
c 0-0.16 0.002-0.08
Mn 0-1.10 0.009-0.30
p 0-0.01 0.004-0.07
IS I ... - ·•·•¢;ti)0$$~0-~~····· o cb()d$~Q;UQ$ ...... · ..
Si 0-0.02 0.009-0.30
Cu 0-0.15 0-0.3
Ni 0-0.10 0-18
Cr 0-0.1 0·0.5
Mo 0·0.03 0-5
Al 0-0.02 0-0.04
v 0-0.02 0
B 0-0.0005 0
Ti 0-0.003 0-0.6
Nb 0-0.02 0-0. i2
Fe& impurities balance balance
3
Appeal2017-006582
Application 14/753,892
The table above compares the elemental components in claim 1 's
carbon steel with the elemental components in Brisco's steel alloy.
As shown above, the amount of each elemental component, except
sulfur, in Brisco's steel alloy overlaps with the amounts recited in claim 1.
The Examiner finds that Brisco teaches that "tubular members are
fabricated from a steel alloy having reduced sulfur content in order to
minimize hydrogen induced cracking." Brisco i-f 229. The Examiner also
finds that Mizoguchi, which like Brisco discloses a carbon steel for steel
pipes (Mizoguchi i-f 24 ), teaches controlling the sulfur content in its steel to
between 0.0001 % by weight and 0.05% by weight because a sulfur content
of less than 0. 0001 % "necessitates longer time and more cost in preliminary
treatment of liquid steel and thereby impairs economic viability," and a
sulfur content over 0.05% "significantly deteriorates the workability and
corrosion resistance of rolled steels." Id. i-f 46.
Based on Brisco' s and Mizoguchi' s teachings, the Examiner finds that
the sulfur content is a result-effective variable. See Final Act. 5. As a result,
the Examiner determines that depending on the carbon steel's use, it would
have been obvious for one of ordinary skill in the art to optimize the sulfur
content in the carbon steel. See id. For example, one of ordinary skill in the
art seeking to produce a steel with reduced hydrogen induced cracking, and
save on costs, would have been led to modify Brisco' s steel to include a
higher amount of sulfur, for example 0.035%. See id.
Additionally, the Examiner finds that because Brisco' s steel
composition, as modified by Mizoguchi, is substantially identical to the
claim 1 's steel composition, Brisco' s steel is inherently capable of being
4
Appeal2017-006582
Application 14/753,892
used for "mitigating hydrogen embrittlement in gaseous hydrogen service
with pressure greater than 800 psig." Final Act. 6.
Appellant contends that the Examiner must provide a basis in fact
and/or technical reasoning to reasonably support the determination that the
allegedly inherent characteristic, i.e., "mitigating hydrogen embrittlement in
gaseous hydrogen service with pressures greater than 800 psig," necessarily
flows from the teachings of the applied prior art. Appeal Br. 8. Appellant
argues that the Examiner has not met this burden. Id.
Appellant's argument is not persuasive of reversible error. It is well-
settled that inherency cannot be established by mere probabilities or
possibilities. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). But
"[ w ]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 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 (CCPA 1977). Based on this record, the
Examiner provided an adequate factual basis upon which to shift the burden
to the Appellant to come forward with evidence to show Brisco' s carbon
steel composition, when modified to include a sulfur content of between
0.035% by weight to 0.05% by weight, as taught by Mizoguchi, is not
inherently capable of being used for "mitigating hydrogen embrittlement in
gaseous hydrogen service with pressures greater than 800 psig," as recited in
claim 1. Final Act. 3-5 (citing Brisco i-fi-160-74; Mizoguchi i-fi-124, 45--46);
see 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
5
Appeal2017-006582
Application 14/753,892
not."). Appellant, however, does not provide such a showing. Thus, we
sustain the rejections of claims 1-19.
DECISION
For the above reasons, the rejections of claims 1-19 are affirmed.
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
6