HONEYWELL INTERNATIONAL INC.

Patent Trials and Appeals Board

Sep 25, 2020

2019006417 (P.T.A.B. Sep. 25, 2020)

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.
13/765,365 02/12/2013 Pavan Chintalapati H0037900 (123.0010) 2967
113151 7590 09/25/2020
Garrett/LKGlobal
Law Dept.
2525 W. 190th St.
Torrance, CA 90504
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/25/2020 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):
garrett@lkglobal.com
sherry.vallabh@garrettmotion.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAVAN CHINTALPATI, BALASUBRAMANI NANDAGOPAL,
PRAVEEN GURUPRASANNA, MARC WILSON,
VIJAYMAHANTESH PATIL, and JEAN-JACQUES LAISSUS
____________

Appeal 2019-006417
Application 13/765,365
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, DEBRA L. DENNETT, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–4, 6–13, 15–18, 20, and 23–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 CFR § 41.50(b) because we rely on findings
and reasoning different from the ones the Examiner provides.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
GARRETT TRANSPORTATION I INC. Appeal Br. 1.
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Appellant’s invention is generally directed to stainless steel
alloys comprising 0.4%–0.8% molybdenum. Spec. ¶¶ 1, 8. Claim 1
is illustrative of the subject matter claimed and is reproduced below:
1. An austenitic stainless steel alloy, comprising, by
weight:
about 16% to about 21 % chromium;
about 4.5% to about 5.5% nickel;
about 3% to about 4% manganese;
about 1 % to about 2% silicon;
about 0.8% to about 1.2% tungsten;
0.4% to 0.8% molybdenum;
about 0.4% to about 0.6% niobium;
about 0.4% to about 0.5% carbon;
about 0.03% phosphorous or less;
about 0.03% sulfur or less;
about 0.01 to about 0.15% nitrogen; and
a balance of iron and unavoidable impurities.
Independent claims 10 and 20 also relates to stainless steel
alloys having about 0.4% to about 0.8% molybdenum but recite
additional features.

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Appellant requests review of the following rejections from the
Examiner’s Non-Final Office Action dated March 9, 2018:
I. Claims 1–4, 6–13, 15–18, and 20 rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Briggs (US 2,429,800, issued October
28, 1947) and Roychowdhury (Roychowdhury, S., et al., Understanding the
Effect of Nitrogen in Austenitic Stainless Steel on the Intergranular Stress
Corrosion Crack Growth Rate in High Temperature Pure Water 60 ACTA
MATERIALIA, 610–621(2012)).

II. Claims 23–25 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Briggs, Roychowdhury, and Samuelsson (US
2011/0250088 A1, published October 13, 2011).

III. Claims 23–25 rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Briggs, Roychowdhury, and Roscoe (WO
2012/161661 A1, published November 29, 2012.

Appellant presents arguments only for independent claims 1, 10, and
20 as well as dependent claims 7 and 16. See generally Appeal Br.
Independent claims 1, 10, and 20 each require identical components of
austenitic stainless steel alloy, including 0.4% to 0.8% molybdenum while
dependent claims 7 and 16 recite a stainless steel comprising 0.5% to 0.7%
molybdenum. Appeal Br. 9–11. We select independent claim 1 and
dependent claim 7 as representative of the subject matter claimed and decide
the appeal based on the arguments Appellant makes in support of the
patentability of claims 1 and 7.

OPINION

The Examiner’s Rejections under 35 U.S.C. § 103(a)
After review of the respective positions Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Non-Final Office
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Action and the Answer, we AFFIRM the Examiner’s prior art rejections of
claims 1–4, 6–13, 15–18, 20, and 23–25 under 35 U.S.C. § 103(a). We
adopt the Examiner’s factual determinations with respect to the cited art but
conclude that the Examiner’s explanation lacks sufficient clarity to sustain
the rejection.2 However, we find the references the Examiner relies upon do
establish a prima facie case of obviousness. Our reasoning follows.
The subject matter of independent claim 1 recites a stainless steel
comprising 0.4% to 0.8% molybdenum. The subject matter of claim 7
recites a stainless steel comprising 0.5% to 0.7% molybdenum. Briggs
discloses stainless steels having at least 1% molybdenum. Briggs col. 2,
ll. 1–7.
It is well established that a prima facie case of obviousness exists
where the prior art and claimed ranges overlap, as well as in those cases
where the claimed range and the prior art range, though not overlapping, are
sufficiently close that one skilled in the art would have expected them to
have the same properties. See In re Peterson, 315 F.3d 1325, 1329 (Fed.

2 The premise of the Examiner’s rejection is based on Briggs’s “group
consisting of molybdenum and tungsten” including mixtures of those two
metals and, thus, a concentration of 1% encompassing the mixture would
mean that Briggs’s amount for molybdenum would fall within the claimed
range for this metal. Ans. 8–11; Briggs col. 1, ll. 45–54. As Appellant
argues, the noted language (“at least 1 to about 10% of metal of the group
consisting of molybdenum and tungsten”) does not include mixtures of those
two metals and, thus, this disclosure by Briggs does not disclose a
molybdenum content of less than 1%. Reply Br. 1. Gillette Co. v. Energizer
Holdings Inc., 405 F.3d 1367, 1371–73 (Fed. Cir. 2005) (holding that the
phrase “group consisting of” is a closed term that is by its nature closed);
Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831
F.3d 1350, 1359, (Fed. Cir. 2016) (a layer “selected from the group
consisting of” specific resins is closed to resins other than those listed).
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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. We have also held that a prima facie case
of obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.”); see also Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
Here, the lower endpoint for Briggs’s range of the amount of
molybdenum (1%) is close enough to the higher endpoints for the claimed
range of the amount of molybdenum (0.7% or 0.8%) that one skilled in the
art would have reasonably expected Briggs’s stainless steel to have the same
properties as the claimed stainless steel absent a showing to the contrary.
Therefore, a prima facie case of obviousness exists.
The Specification discloses that the amount of molybdenum “should
be maximized to 0.8%, and preferably less than 0.7%.” Spec. ¶ 33
(emphasis added). This language merely points to preferred embodiments
for the disclosed stainless steel compositions and does not set forth any
criticality to the claimed molybdenum amounts.
The Specification also discloses that an excessive amount of
molybdenum can result in deteriorating the corrosion resistance and impact
resistance. Id. However, the Specification does not define what percentage
of molybdenum is considered an excessive amount.
The Specification also lacks comparative data between stainless steel
compositions having the claimed molybdenum content of 0.4–0.8 % or 0.5–
0.7% versus stainless steel compositions having a molybdenum content of
1% to ascertain the criticality of the claimed molybdenum content with
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respect to the properties of the stainless steel compositions.
Therefore, absent evidence to the contrary, one skilled in the art
would have reasonably expected that Briggs’s stainless steel and the claimed
stainless steel to have the same properties.
Accordingly, we AFFIRM the Examiner’s prior art rejections of
claims 1–4, 6–13, 15–18, 20, and 23–25 under 35 U.S.C. § 103(a) for the
reasons we give above. We designate our affirmance as a NEW GROUND
OF REJECTION pursuant to 37 CFR 41.50(b) because we rely on findings
and reasoning different from the ones the Examiner provides.

DECISION SUMMARY

In summary:

Claims
Rejected
35
U.S.C.
§
References/Basis Affirmed Reversed New Ground
1–4, 6–
13, 15–
18, 20
103(a) Briggs,
Roychowdhury
1–4, 6–
13, 15–
18, 20
1–4, 6–
13, 15–
18, 20
23–25 103(a) Briggs,
Roychowdhury,
Samuelsson
23–25 23–25
23–25 103(a) Briggs,
Roychowdhury,
Roscoe
23–25 23–25
Overall
Outcome
1–4, 6–
13, 15–
18, 20,
23–25

1–4, 6–
13, 15–
18, 20,
23–25

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED; 37 C.F.R. § 41.50(b)