ARCELORMITTAL

Patent Trials and Appeals Board

Nov 24, 2020

2020000901 (P.T.A.B. Nov. 24, 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.
14/552,985 11/25/2014 Mohamed BOUZEKRI 708.1001DIV 5290
23280 7590 11/24/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMED BOUZEKRI,
MICHEL FARAL, and COLIN SCOTT

Appeal 2020-000901
Application 14/552,985
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–9. Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 This Decision includes citations to the following documents:
Specification filed November 25, 2014 (“Spec.”); Final Office Action
mailed December 4, 2018 (“Final Act.”); Appeal Brief filed May 10, 2019
(“Appeal Br.”); Examiner’s Answer mailed September 18, 2019 (“Ans.”);
and Reply Brief filed November 15, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
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Application 14/552,985

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CLAIMED SUBJECT MATTER
Appellant states the invention relates to the manufacture of cold-rolled
austenitic iron/carbon/manganese steel sheets. Spec. ¶ 2.
Claim 1, the only independent claim on appeal, is illustrative of the
claimed subject matter and reproduced below (Appeal Br., Claims
Appendix 1):
1. A cold-rolled austenitic iron/carbon/manganese steel sheet,
the tensile strength of which is greater than 950 MPa, the
product (tensile strength (in MPa) x elongation at fracture
(in%)) of which is greater than 45000 and the chemical
composition of which comprises, the contents being
expressed by weight:
0.5% ≤ C ≤ 0.7%;
17% ≤ Mn ≤ 24%;
Si ≤ 3%;
Al ≤ 0.050%;
S ≤ 0.030%;
P ≤ 0.080%;
N ≤ 0.1%;
a remainder of the composition comprising iron and
inevitable impurities resulting from the smelting, a
recrystallized fraction of the structure of the steel being
greater than 75%, a surface fraction of precipitated carbides
of the steel being less than 1% and a mean grain size of the
steel being less than 3 microns.

37 C.F.R. § 1.42(a). Appellant identifies ArcelorMittal, as the real party in
interest. Appeal Br. 2.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Guelton et al.
hereinafter “Guelton
’338”
US 6,358,338 B1 March 19, 2002
Guelton et al.
hereinafter “Guelton
’775”
FR 2,829,775
Citations to English
translation of record
March 3, 2003
Nomura et al.
hereinafter “Nomura”
JP 4-259325A
Citations to English
translation of record
September 14, 1992
REJECTIONS
1. The Examiner rejected claims 1–9 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Guelton ’775 and Guelton ’338.
Ans. 3–4.
2. The Examiner rejected claims 1–9 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Guelton ’338 and Guelton ’775.
Ans. 5–7.
3. The Examiner rejected claims 1–9 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nomura, Guelton ’775, and
Guelton ’338. Ans. 7–8.

OPINION
Rejection 1
Appellant does not present separate arguments with respect to claims
1–9, subject to this rejection. See Appeal Br. 3–6. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv).

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The Examiner’s Rejection
In rejecting claim 1 over Guelton ’775 and Guelton ’338, the
Examiner found Guelton ’775 discloses an austenite iron-carbon-manganese
steel sheet having a composition with the elements recited in claim 1.
Ans. 3–4. The Examiner found the steel in Guelton ’775 is completely
recrystallized (recrystallized fraction is 100%), and precipitated carbides are
dissolved and avoided (surface fraction of precipitated carbides is 0%). Id.
at 4. The Examiner found Guelton ’775 discloses the steel can be cold-
rolled to form a sheet, and the grain size can be reduced to 5 microns or less.
Id. The Examiner concluded the overlap of the ranges recited in claim 1 and
those in the prior art creates a prima facie case of obviousness. Id.
The Examiner cited Guelton ’338 for the production of alloys by a
smelting process and determined it would have been obvious to produce a
cast ingot because smelting would permit the elemental components to
interact and mix in a molten state. Id. The Examiner determined it would
have been obvious to have smelted the molten metal of Guelton ’775 to
produce the cast ingot, because smelting would permit the elemental
components to interact and mix in the molten state.

Appellant’s Contentions
Appellant contends Guelton ’775 discloses full recrystallization prior
to coiling, and Guelton ’775 does not disclose complete recrystallization in
the recrystallization annealing process after cold rolling. Appeal Br. 4.
Appellant argues Guelton ’775 discloses recrystallization is accompanied by
grain growth, such that Guelton ’775 discloses full recrystallization with
coarse grains or incomplete recrystallization with small grains. Id. at 4–5.
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Appellant contends that the Examiner’s findings with respect to
recrystallization prior to cold rolling are irrelevant for a steel that has been
cold-rolled, because after cold-rolling the recrystallized fraction is different.
Id. at 5–6. Thus, Appellant argues that the Examiner has failed to show the
recrystallized fraction of Guelton ’775 is at least 75%.

Issue
Did Appellant demonstrate reversible error in the Examiner’s position
that the combination of Guelton ’775 and Guelton ’338 renders obvious the
cold-rolled austenitic steel sheet of claim 1?

Discussion
We are not persuaded by Appellant’s arguments. Although we agree
with Appellant that the recrystallization level of the hot-rolled steels
disclosed in Guelton ’775 does not necessarily inform the recrystallization
level of a cold-rolled steel, we are not persuaded that Appellant’s arguments
are sufficient to show reversible error on the part of the Examiner.
The Specification describes a cold-rolled austenitic steel sheet where
the recrystallized fraction is greater than 75%, the surface fraction of
precipitated carbides of the steel is less than 1.5%, and the mean grain size
of the steel is less than 6 microns. Spec. ¶ 14. The Specification describes
that in order to obtain a cold-rolled steel having such properties, a
recrystallization annealing operation is carried out, where the annealing is
performed at a temperature of 600–900 °C for 10–500 seconds, and the
cooling rate at the end of the annealing soak must be sufficiently rapid,
greater than 0.5 °C/s, to prevent the precipitation of carbides. Id. at ¶¶ 51,
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52. The Specification appears to provide one example of a cold-rolled steel
sheet having a recrystallized fraction greater than 75%, a surface fraction of
precipitated carbides of less than 1%, and a mean grain size of less than 3
microns, where a steel is cold-rolled, then annealed at 700 °C for 120
seconds. Id. at ¶¶ 65, 66, 69 (Steel I1 a)).
As the Examiner explained, Guelton ’775 discloses a recrystallization
annealing step after cold-rolling, which may be conducted at temperatures
from 600–1200 °C for one second to one hour, and Guelton ’775 discloses a
specific example where annealing is conducted at 800 °C for 90 seconds,
producing a grain size of 2.5 microns. Ans. 9, citing Guelton ’775, 19–20;
Guelton ’775 (original patent document), 20, ll. 7–11. The Examiner further
explained that due to Guelton ’775’s disclosure of overlapping annealing
times and temperatures, and a specific example of annealing of a cold-rolled
steel with conditions falling within the ranges disclosed in the Specification,
it would have been expected that the recrystallization fraction of greater than
75% would be present in the obtained steel sheet. Id. at 10.
We agree with the Examiner in this regard. Initially, we point out that
Appellant’s argument that Guelton ’775 discloses coarse grains as a result of
the recrystallization process for the cold-rolled steel disclosed therein,
appears to be a result of a translation error in the English document. That is,
Appellant argues that in the example of Guelton ’775 relied on by the
Examiner, the cold-rolled annealed steels have a grain size of 25 microns.
Appeal Br. 4–5. However, as pointed out by the Examiner, the original
patent document discloses a grain size of 2.5 microns. Ans. 10, Guelton
’775 (original patent document), 20, ll. 7–11. Thus, we are not persuaded by
this argument.
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We are also of the view that the Examiner’s position that a steel
having a recrystallized fraction of at least 75% would have been expected in
the cold-rolled annealed steels in Guelton ’775 is sufficiently supported. As
discussed above, the Specification describes the annealing step is performed
at a temperature of 600–900 °C for 10–500 seconds in order to obtain the
desired recrystallized fraction of the cold-rolled steels. Spec. ¶ 52. The
Specification appears to provide only one example where the annealing
conditions of the cold-rolled steel were insufficient to provide a
recrystallized fraction of at least 75%, where the annealing temperature was
650 °C and the annealing time was one second. Id. at ¶ 69, Table 3, Steel I1
d). Here, the annealing was conducted at a temperature substantially lower
and for a time substantially less than the example annealing conditions of
800 °C for 90 seconds in Guelton ’775. Guelton ’775 20; Guelton ’775
(original patent document), 20, ll. 7–11.
As a result, we are of the view that a preponderance of the evidence
supports the Examiner’s position that at least the conditions in the example
of Guelton ’775 would have produced a recrystallized fraction of at least
75% as recited in claim 1.
We are also not persuaded by Appellant’s arguments in the Reply
Brief that Guelton ’775 does not disclose any cooling rate after
recrystallization annealing and thus does not disclose a fraction of
precipitated carbides of the steel is less than 1% as recited in claim 1. Reply
Br. 4–5. In this regard, in arguing Guelton ’775 discloses batch annealing
leads to carbide precipitation, and as a result Guelton ’775 discloses
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continuous annealing must be used,3 Appellant appears to argue that Guelton
’775 already discloses carbide precipitation is avoided. Id. Thus,
Appellant’s argument that the distinction between batch and continuous
annealing disclosed in Guelton means that the carbide precipitation fraction
in Guelton ’775 would not meet the required level in claim 1 is not
persuasive.
We also agree with the Examiner that Guelton ’775 discloses that fast
cooling after annealing prevents the precipitation of carbides. Ans. 4, citing
Guelton ’775, 3–4, 17–18. That is, Guelton ’775 discloses “solution
annealing” as a way to “avoid reprecipitation of the carbides cooling after
annealing” where the rate of cooling is at least 5 °C/s. Guelton ’775, 18.
Thus, although Appellant argues one citation provided by the Examiner
relates to cooling coiled strips in order to distinguish such cooling from
recrystallization annealing (Reply Br. 4–5, citing Ans. 12), we are of the
view this does not constitute reversible error on the part of the Examiner. To
the contrary, the portion of Guelton ’775 Appellant attempts to distinguish is
not inconsistent with a more general principle that slow cooling of steel
sheets leads to carbide precipitation, and that carbide precipitation is to be
avoided. Guelton ’775, 3–4, 12, 17–18.
As a result, we affirm the Examiner’s rejection of claim 1 as obvious
over Guelton ’775 and Guelton ’338.

3 Appellant includes what appears to be a block quotation from Guelton
’775. However, no particular citation to Guelton ’775 is provided and the
quotation refers to “base annealing,” which does not appear in the machine
translation. It appears to us that Appellant’s quote corresponds to the last
paragraph on page 19 of the machine translation.
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Rejection 2
In view of our discussion above, we find it unnecessary to address
many of Appellant’s arguments with respect to Rejection 2, which is based
on the combination of Guelton ’775 and Guelton ’338, but instead
employing Guelton ’338 as the primary reference. See In re Bush, 296 F.2d
491, 496 (CCPA 1961) (holding that when a rejection is based on a
combination of references, the order in which prior art references are cited to
the Applicant is of no significance, but merely a matter of exposition).
However, we find it prudent to address Appellant’s argument that
Guelton ’338 does not disclose annealing with any holding time at the
annealing temperature. Appeal Br. 7. Appellant argues this annealing is not
in accordance with the claimed invention, where the annealing temperature
is at most 900°C and a holding time is between 10 and 500 seconds, and thus
Guelton ’338 would not have achieved the structure of claim 1. Id.
As the Examiner points out, Guelton ’338 discloses continuous
annealing conditions of 800 to 850 °C for 60 to 120 seconds. Guelton ’338,
col. 4, ll. 55–57; Ans. 12. Such conditions are consistent with the
continuous annealing conditions disclosed in Guelton ’775 and discussed
above. Guelton ’775 20; Guelton ’775 (original patent document), 20, ll. 7–
11. Thus, we are not persuaded by Appellant’s argument that Guelton ’338
fails to disclose the hold times required to obtain the recrystallization
fraction recited in claim 1.
As a result, we affirm the Examiner’s rejection of claims 1–9.

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Rejection 3
Appellant does not present separate arguments with respect to claims
1–9, subject to this rejection. See Appeal Br. 11–13. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv).

The Examiner’s Rejection
In rejecting claim 1 over Nomura, Guelton ’775, and Guelton ’338,
the Examiner found Nomura discloses an austenitic steel that contains iron,
carbon, and manganese in amounts overlapping or encompassing the
amounts recited in claim 1. Ans. 7. The Examiner found Nomura discloses
the steel can be cold-rolled, carbides should not be precipitated
(corresponding to a precipitated carbide fraction of 0%), and that ductility
will be reduced if austenite grains are not recrystallized, suggesting
recrystallization was performed to near completion (100 % recrystallized
fraction). Id. The Examiner found Nomura is silent as to the grain size of
the cold-rolled steel sheet, but Guelton ’775 discloses that the size of the
steel grains affects the mechanical properties of the steel, and the size can be
controlled to obtain a steel with the right balance of strength and ductility,
including a grain size of 5 microns or less. Id. at 8. The Examiner
determined it would have been obvious to have controlled the grain size of
Nomura after cold-rolling to a size of 5 microns or less for the purpose of
maintaining or improving a balance between tensile strength and elongation.
Id.
The Examiner found Nomura and Guelton ’775 are silent as to the
origin of the impurities, but Guelton ’338 disclose austenitic iron-carbon-
manganese alloys can be produced by a smelting process, and impurities are
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a result of the process. Id. The Examiner concluded it would have been
obvious to have smelted the molten metal of Nomura to produce a case ingot
because smelting would permit the elemental components to interact and
mix in a molten state. Id.

Appellant’s Contentions
Appellant contends Nomura only discloses tensile strength and
product tensile strength by elongation of hot-rolled steel, and thus does not
disclose a cold-rolled steel sheet with the tensile strength and product tensile
strength by elongation recited in claim 1. Appeal Br. 12. Appellant
contends none of the references disclose a method for achieving a small
grain size and a high recrystallized fraction as recited in claim 1. Id. at 12–
13.

Issue
Did Appellant demonstrate reversible error in the Examiner’s position
that the combination of Nomura, Guelton ’775, and Guelton ’338 renders
obvious the cold-rolled austenitic steel sheet of claim 1?

Discussion
We are not persuaded by Appellant’s arguments. As the Examiner
explained, Nomura discloses steel sheets may be cold-rolled and annealed.
Ans. 14; Nomura ¶ 29. Guelton ’775 and Guelton ’338 disclose
recrystallization annealing after cold rolling imparts high tensile strength and
ductility. Ans. 14; citing Guelton ’775, 19; Guelton ’338, col. 4, ll. 42–45.
As discussed above, we are of the view that Guelton ’775 discloses
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annealing conditions that produce the recrystallization fraction and grain size
recited in claim 1. In addition, as to the carbide percentages, we agree with
the Examiner that in view of Nomura’s disclosure that carbides deteriorate
the steel’s performance, one of ordinary skill the art would have been
motivated to avoid carbides in the cold-rolled version of the steel. Id. at 14–
15 citing Nomura, ¶¶ 14, 26.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Nomura, Guelton ’775, and Guelton ’338.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9 103(a) Guelton ’775,
Guelton ’338
1–9
1–9 103(a) Guelton ’338,
Guelton ’775
1–9
1–9 103(a) Nomura, Guelton
’775, Guelton ’338
1–9
Overall
Outcome
1–9

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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