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Archived updates for Tuesday, January 15, 2008

Claimed Steel Property Overlooked in Composition Obviousness Holding?

Thanks to the Benefit of Hindsight blog for concisely explaining Ex Parte Matsuoka (October 29, 2007) where the USPTO Board of Patent Appeals and Interferences upheld the obviousness rejections of the claims of U.S. Patent Application No. 10/181,810. As noted by the anonymous "DC Patent Associate:"


The claims are directed to a steel sheet. The important limitations of independent claims 3 and 27 are listed as follows:

Claim 3
C: 0.01 - 0.032%, Mn: about 1.43 - 2.02%, V: 0.01 - 0.5%
microstructure of ferrite primary phase and at least 1% martensite
tensile strength: 450 MPa - 630 MPa (i.e. 46 - 64 kg/mm2), and
Lankford-value: at least 1.4

Claim 27
C: 0.038 - 0.05%, Mn: 2.49 - 2.8%, V: 0.01 - 0.5%
microstructure of ferrite primary phase and at least 1% martensite
tensile strength: at least 660 MPa (i.e. at least 67 kg/mm2), and
Lankford-value: at least 1.1.

According to the Administrative patent Judge Kimlin writing for the Board:

Appellants make the argument that "according to the present invention, high strength and high r-value are achieved by establishing a ratio of V and Ti and/or Nb contents in relation to C contents [and] [t]here is no need to conduct complicated annealing processes as required by JP '226 and JP '131" (Br. 7, third para.). However, as properly explained by the Examiner, this argument is not germane to the subject matter presently on appeal. The claimed subject matter is not directed to a process for forming cold rolled steel, with or without particular annealing steps, but, rather, the appealed claims define the composition and properties of the steel sheet itself. It is Appellants' burden to demonstrate that steel sheets within the broad scope of the appealed claims are unexpectedly different from, and nonobvious over, the cold rolled steel sheets that one of ordinary skill in the art would have formulated from the combined teachings of the applied references. This Appellants have not done. We also note that the appealed claims encompass steel sheets formed by the annealing processes of JP '226 and JP '131.
However, "the issue is not whether it would be obvious to add 0.01 - 0.10% vanadium, but instead whether it would be obvious to add 0.01 - 0.10% vanadium while maintaining the claimed tensile strength, the claimed Lankford-value, and the claimed microstructure of ferrite primary phase and at least 1% martensite," critiques the Hindsight blogger. The blogger then goes on to explain that "The experimental results of the instant application shows that there would be no expectation of success in adding the claimed amount of vanadium while maintaining the claimed properties and microstructure:"


In particular, the instant application discloses seven examples (see Table in blog) where an alloy having C: 0.005 - 0.15%, Mn: 1.6 to 3.0%, Si: up to 1.5%, and Al: 0.020 to 0.100% (such as Matsuo) also has from 0.01 - 0.10% vanadium. In each instance, either the claimed Lankford-value is not met or the microstructure of ferrite primary phase and at least 1% martensite is not met. Accordingly, this shows a lack of expectation of success of merely adding 0.01 - 0.10% vanadium to the steel of Matsuo. Accordingly, it not be obvious to modify Matsuo by adding 0.01 - 0.10% vanadium while maintaining the claimed tensile strength, the claimed Lankford-value, and the claimed microstructure of ferrite primary phase and at least 1% martensite.

Seems Applicant should have won. Are there flaws in this analysis? Let the DC Patent Associate know, and ask him where you can send the file for appeal.


Maybe we all should be including explicit wherein clauses in our claims that list the unexpected results obtained by the other structural limitations?
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2 Comments:

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January 09, 2008 1:28 PM  
Anonymous D.C. Patent Associate said...

Thanks for summarizing my blog posting.  I liked your title of my posting better than the one I picked - much more descriptive.  So I am adjusting my style.  My next posting is entitled "Drafting 'consisting essentially of' claims to overcome unknown anticipatory prior art."

January 09, 2008 7:32 PM  

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