ARCELORMITTALDownload PDFPatent Trials and Appeals BoardNov 24, 20202020000901 (P.T.A.B. Nov. 24, 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. 14/552,985 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 Appeal 2020-000901 Application 14/552,985 2 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. Appeal 2020-000901 Application 14/552,985 3 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). Appeal 2020-000901 Application 14/552,985 4 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. Appeal 2020-000901 Application 14/552,985 5 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, Appeal 2020-000901 Application 14/552,985 6 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. Appeal 2020-000901 Application 14/552,985 7 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 Appeal 2020-000901 Application 14/552,985 8 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. Appeal 2020-000901 Application 14/552,985 9 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. Appeal 2020-000901 Application 14/552,985 10 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 Appeal 2020-000901 Application 14/552,985 11 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 Appeal 2020-000901 Application 14/552,985 12 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 Appeal 2020-000901 Application 14/552,985 13 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