Tata Steel LimitedDownload PDFPatent Trials and Appeals BoardAug 11, 202014112381 - (D) (P.T.A.B. Aug. 11, 2020) Copy Citation 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. 14/112,381 01/06/2014 Das Sourav 31446-417306 4295 26694 7590 08/11/2020 VENABLE LLP P.O. BOX 34385 WASHINGTON, DC 20043-9998 EXAMINER WALCK, BRIAN D ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 08/11/2020 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): PTOMail@Venable.com khauser@venable.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DAS SOURAV, KUNDU SAURABH, and HALDER ARUNANSU __________ Appeal 2019-006031 Application 14/112,381 Technology Center 1700 __________ Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and LILAN REN, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant 0F1 appeals from the Examiner’s decision to reject claims 18-20, 22, 23, 25, 35, and 36. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Tata Steel Limited, Research and Development and Scientific Services Division, as the real party in interest. Appeal Br. 3. Appeal 2019-006031 Application 14/112,381 2 STATEMENT OF THE CASE The Specification discloses that one type of air-cooled bainitic steel described in the prior art “has a considerable amount of alloying elements like Mo and Ni. The purpose of adding costly elements like Ni is to stabilize the retained austenite to provide the elongation and Mo is added to increase the toughness of the steel.” Spec. 3. The Specification discloses that “the prime concern of the present invention [is] to propose a suitable steel composition for producing high strength carbide-free bainitic steel which overcomes the disadvantages of having to add costly alloying elements as known from the prior art.” Spec. 3. Appellant’s claim 18, the sole independent claim on appeal, is representative and reads as follows: 18. A bainite steel comprising the following elements in weight%: C: 0.30 - 0.50 Si: 1.0 - 1.8 Mn: 1.0 - 2.5 Cr: 0.7 - 1.5 Ti: 0.0 - 0.08 Cu: 0.0 - 1.2 V: 0.0 - 0.5 Nb: 0.0 - 0.06 Al: 0.0 - 1.50 N: <0.004 P: <0.025 S: <0.025 the balance being iron and unavoidable impurities, wherein the bainite steel comprises no added alloying Ni or Mo, wherein the bainite has a microstructure with bainite plates with a thickness of less than 100 nm, and wherein the steel has an ultimate tensile strength of at least 1300 MPa. Appeal 2019-006031 Application 14/112,381 3 Appeal Br. 20. The sole rejection before us for review is the Examiner’s rejection of claims 18-20, 22, 23, 25, 35, and 36, under 35 U.S.C § 103(a) as being unpatentable over Im1F2 (Final Act. 2-6;2F3 Ans. 3-5). DISCUSSION The Examiner’s Prima Facie Case The Examiner found that “Im discloses numerous specific examples of bainite steel lying partially within the instantly claimed composition (Im, abstract, Experimental Example, para [0070-0110], Tables 1 and 2), such as steel K, (Tables 1 and 2, [S]teel K, Experimental Example 20 para [0092]).” Ans. 3. The Examiner found that “Im differs from instant claim 18 in that [S]teel K of Im contains Ni and Mo.” Ans. 4. However, the Examiner concluded, “it would have been obvious . . . to modify [S]teel K of Im to include neither Ni nor Mo, the motivation for doing so being that Im teaches Ni and Mo are optional ingredients that need not be added to the steel (Im, abstract, para [0027]).” Ans. 4. As to the 100 nm thick bainite plates recited in representative claim 18, the Examiner reasoned that, “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].).” Ans. 4. The Examiner reasoned that Im’s steel “would be 2 US 2010/0307641 A1 (published Dec. 9, 2010). 3 Final Action entered April 18, 2018. Appeal 2019-006031 Application 14/112,381 4 expected to have the same or similar properties as the instantly claimed steel because the steel of Im has the same or substantially the same composition, microstructure, tensile strength, elongation and method of manufacturing as that of the instantly claimed steel.” Id. at 4-5. As to representative claim 18’s requirement for the claimed steel to have an ultimate tensile strength of at least 1300 MPa, the Examiner cited Experimental Example 20 of Im as showing that “Steel K has a ultimate tensile strength of 1365 MPa and an elongation of 20.3% (Im, para [0092]), lying within the instantly claimed ranges. Additionally, Im discloses that the tensile strength of the steel may be 1000-2000 MPa (Im, para [0040]), overlapping the instantly claimed range.” Ans. 5. Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. Having carefully considered all of the arguments and evidence advanced by Appellant and the Examiner, Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that the steel of Appellant’s representative claim 18 would have been obvious in view of Im. In particular, Appellant does not persuade us that the Examiner reversibly erred in determining that Im would have suggested a bainite steel that contains no added Ni or Mo, as recited in representative claim 18. See Appeal Br. 11-16; Reply Br. 7-12. Appeal 2019-006031 Application 14/112,381 5 We acknowledge, as Appellant contends, that all of Im’s exemplified steels, including Steel K which the Examiner focuses on, contain Ni and Mo. See Im ¶ 71 (Table 1). It is well settled, however, that when assessing obviousness “[a]ll the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972). In the present case, beyond its examples, Im discloses more broadly that the ranges of Ni and Mo in its bainite steels encompass 0 wt%. In other words, Im discloses bainite steels containing neither Ni nor Mo. See, e.g., Im, abstract (describing a “high carbon steel having superior strength and ductility . . . comprising . . . 0 to 3.0 wt% nickel (Ni) [and] 0 to 0.5 wt% molybdenum (Mo)”). Thus, the amounts of Ni and Mo recited Appellant’s representative claim 18 (zero) fall within Im’s expressly taught useful percentage ranges for those elements. Because the amounts of Ni and Mo recited in Appellant’s representative claim 18 fall within Im’s expressly taught useful percentage ranges for those elements, Appellant does not persuade us that the Examiner failed to provide a rational underpinning for concluding that the steel composition of claim 18 would have been obvious. See Appeal Br. 13-14; Reply Br. 9-10. Appellant also does not persuade us that Im teaches that Mo is a necessary element of its steels. See Appeal Br. 11. We acknowledge Im’s teaching that Mo “suppresses the formation of pearlite and prevents temper embrittlement caused by phosphorous (P).” Im ¶ 33. However, Im later teaches that pearlite suppression also may be accomplished using boron (B) or chromium (Cr) instead of Mo: Appeal 2019-006031 Application 14/112,381 6 Boron (B) suppresses the formation of a pearlite phase or ferrite phase during cooling and constant temperature maintenance. If there is molybdenum or chromium in the alloy composition, and hence the formation of a pearlite phase or ferrite phase can be sufficiently suppressed, there is no need to add boron (B). Id. ¶ 37 (emphasis added). Because Im thus teaches that pearlite suppression may be achieved using either Mo, Cr, or B, Appellant does not persuade us that a skilled artisan would have understood that Mo was a necessary element in Im’s steels. Appellant also does not persuade us that Im’s Equation 1 demonstrates that a skilled artisan would have understood Ni to be a necessary component of Im’s bainite steels. Im discloses “a high carbon steel sheet having superior strength and ductility” in which “[t]he contents of carbon, manganese, chromium, and nickel satisfy the following Equation 1 . . . (3.0-2.5×C)wt %≤(Mn+Cr+Ni/2)≤8.5 wt%--(Equation 1).” Im, abstract; see also id. ¶ 32 (explaining that “if the amount of Mn+Cr+Ni/2 is less than (3 .0-2.5×C) wt%, the stability of the residual austenite phase is insufficient, making it difficult to form a sufficient desired percentage and lowering strength thereof” whereas, “if the amount of Mn+Cr+Ni/2 is more than 8.5 wt%, the transformation into a bainite phase becomes too slow”). As is evident, as long as the percentages of Mn and/or Cr are sufficiently high, zero percent Ni is sufficient to satisfy Im’s Equation 1, and thereby provide a bainite steel according to Im’s invention. Appellant does not persuade us, therefore, that a skilled artisan would have understood Im’s Equation 1 to teach that, despite Im’s express disclosure that a useful percentage range of Ni is from 0 to 3.0 wt%, Ni nonetheless was a necessary element of Im’s steels. Indeed, consistent with the teaching in Im’s Equation 1 that the absence of Ni can be offset by sufficient amounts of Mn Appeal 2019-006031 Application 14/112,381 7 and/or Cr, and that the presence of Ni is therefore not essential in its steels, Im explains that “all of Mn, Cr, and Ni help to form a residual austenite phase, but slow the transformation into a bainite phase.” Im ¶ 30 (emphasis added). Appellant also does not persuade us that the Examiner erred in finding that Im would have motivated a skilled artisan to prepare a steel lacking Ni and Mo, as recited in Appellant’s representative claim 18. We acknowledge the publications cited by Appellant, as well as the Kundu Declaration,3F4 discussing the advantages of including Ni and Mo in steels, among them enhancement of mechanical properties and steel strength. See Appeal Br. 14-16 (citing Evidence App’x 5, 8, 9, 32, 44, 45); Reply Br. 10-12. Appellant, however, does not identify any disclosures in the cited documents specifically controverting the teachings discussed above in Im, that Ni need not be present in a bainite steel if sufficient Cr and/or Mn are present, and that Mo need not be present in a bainite steel if sufficient boron or chromium is present. In particular, while paragraphs 3 and 4 of the Kundu Declaration aver that elimination of Ni and Mo from Im’s steels would have been expected to decrease the steels’ strength (Appeal Br. 63 (Evidence App’x)), the declaration does not specifically address the relevant teachings in Im, that the absence of Ni and Mo is offset by the presence of other elements. In sum, because Im discloses that the amounts of the elements recited Appellant’s representative claim 18, including the absence of Ni and Mo, were useful for preparing a bainite steel, Appellant does not persuade us that the Examiner erred in determining that a skilled artisan would have been 4 Declaration under 37 C.F.R. § 1.132 of Saurabh Kundu (undated; Appeal Br. 62-64 (Evidence App’x)). Appeal 2019-006031 Application 14/112,381 8 motivated to prepare a bainite steel having the claimed amounts of the recited elements, but with no added Ni or Mo. Moreover, because Appellant does not advance persuasive evidence specifically controverting the teachings discussed above in Im, that the absence of Ni and Mo is offset by the presence of other elements, we are not persuaded that Appellant has shown sufficiently that preparing a steel lacking Ni and Mo would render Im unsatisfactory for its intended purpose, or would change Im’s principle of operation. See Appeal Br. 16-17; Reply Br. 12. Appellant also does not persuade us that the Examiner erred reversibly by determining that Im provides a reasonable basis for finding that a steel prepared according to Im’s teachings would have bainite plates with a thickness of less than 100 nm, and an ultimate tensile strength of at least 1300 MPa, as recited in Appellant’s representative claim 18. See Appeal Br. 17-19 (citing Kundu Decl. ¶¶ 4-6; also citing Evidence App’x pp. 5, 8, 9, 32, 44, 45); Reply Br. 12-16. As the Examiner asserts, “[w]here, as 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 [sic] claimed product.” Ans. 10 (quoting In re Best, 562 F.2d 1252, 1254 (CCPA 1977)). As further explained in Best, whether the rejection at issue “is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” Id.; see also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d Appeal 2019-006031 Application 14/112,381 9 1322, 1329 (Fed. Cir. 2020) (“Inherency is established in the context of obviousness when the limitation at issue necessarily must be present, or [is] the natural result of the combination of elements explicitly disclosed by the prior art.” (internal quotations omitted; emphasis added)). In the present case, it is undisputed that Im’s Steel K has all of the elements recited in Appellant’s representative claim 18, at concentrations encompassed by the claim, even when Ni and Mo are omitted as posited in the Examiner’s rejection. Appellant, moreover, does not dispute the Examiner’s finding that “the steel of Im has the same or substantially the same . . . method of manufactur[e] as that of the instantly claimed steel” (Ans. 4-5). Thus, on the current record, Im’s Steel K, even when modified to omit Ni and Mo, reasonably would be expected to possess the thickness and tensile strength recited in claim 18. Appellant does not persuade us, therefore, that the Examiner lacked a reasonable basis for finding that Im’s Steel K, even when modified to omit Ni and Mo, would have the bainite plates and tensile strength recited in representative claim 18. Appellant does not persuade us, moreover, that it has advanced evidence sufficient to rebut the Examiner’s reasonable finding that the steel suggested by Im would have the bainite plates and tensile strength recited in representative claim 18. We acknowledge Appellant’s contention, and the assertion in the Kundu Declaration, that additional factors such as transformation temperature, free energy of transformation at that temperature, and austenite strength can affect the bainite plate thickness. Appeal Br. 17 (citing Kundu Declaration ¶ 6). Appellant, however, does not identify any specific evidence of record suggesting that any of the asserted conditions that might affect the structure Appeal 2019-006031 Application 14/112,381 10 of the steel’s bainite plates was substantially different in Im, as compared to the conditions disclosed in the Specification as being useful for providing claim 18’s bainite plates. To the contrary, Appellant identified no error in the Examiner’s express finding that “the steel of Im has the same or substantially the same . . . method of manufactur[e] as that of the instantly claimed steel.” Ans. 4-5. We acknowledge Appellant’s contention that Ni and Mo were known in the art, including in Im, to impart strength to steels. See Appeal Br. 17-19 (citing Kundu Decl. ¶¶ 4-6; also citing Evidence App’x pp. 5, 8, 9, 32, 44, 45); Reply Br. 12-16. Again, however, Im’s Steel K, even when Ni and Mo are omitted, has all of the ingredients, in the amounts required, to provide a steel with the tensile strength recited in representative claim 18. See Spec. 4-8, 11-13. As discussed above, moreover, Im’s Steel K was undisputedly produced by a process substantially the same as the process used to produce a steel having claim 18’s tensile strength. Thus, the fact that a steel lacking Ni or Mo might have been anticipated to have less tensile strength than a steel containing those elements does not persuade us that the Examiner erred in determining that Appellant failed to provide an adequate evidentiary basis for finding that Im’s Steel K, even when Ni and Mo are omitted, would have the tensile strength recited in Appellant’s representative claim 18. In sum, for the reasons discussed, Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that Im would have suggested, to a skilled artisan, a bainite steel composition having all of the ingredients recited in representative claim 18, in the amounts required by the claim. We therefore affirm the Examiner’s rejection of claim 18 for obviousness over Im. Because they were not Appeal 2019-006031 Application 14/112,381 11 argued separately, claims 19, 20, 22, 23, 25, 35, and 36 fall with claim 18. See 37 C.F.R. § 41.37(c)(1)(iv). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18-20, 22, 23, 25, 35, 36 103(a) Im 18-20, 22, 23, 25, 35, 36 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation