2020003302 (P.T.A.B. Apr. 28, 2021)

ArcelorMittal

Patent Trials and Appeals BoardApr 28, 2021

2020003302 (P.T.A.B. Apr. 28, 2021)

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. 15/028,249 04/08/2016 Luc Diez 20704.1007 1091 23280 7590 04/28/2021 Davidson, Davidson & Kappel, LLC 589 8th Avenue 22nd Floor New York, NY 10018 EXAMINER TUROCY, DAVID P ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 04/28/2021 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 LUC DIEZ, CLÉMENCE FILOU, GUNHILD FÖJER, and MANEL BEN SAAD Appeal 2020-003302 Application 15/028,249 Technology Center 1700 Before TERRY J. OWENS, MONTÉ T. SQUIRE, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 17–26, 28, and 38–56.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed April 8, 2016 (“Spec.”); the Final Office Action dated May 14, 2019 (“Final Act.”); the Appeal Brief filed January 13, 2020 (“Appeal Br.”); the Examiner’s Answer dated February 4, 2020 (“Ans.”); and the Reply Brief filed March 31, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as ArcelorMittal. Appeal Br. 2. 3 Claim 27 is withdrawn by the Examiner as directed to a non-elected invention. Final Act. 2. Appeal 2020-003302 Application 15/028,249 2 CLAIMED SUBJECT MATTER The claimed subject matter is directed to a process for the manufacture of a pre-painted sheet. Spec. 1–3. Independent claims 17 and 50, reproduced below with emphasis to highlight a key disputed limitation, are illustrative of the subject matter on appeal. 17. A process for the manufacture of a pre-painted sheet comprising the steps of: supplying a steel substrate; depositing a metallic coating on at least one face by hot- dipping the substrate in a bath including 4.4% to 5.6% by weight aluminum and 0.3% to 0.56% by weight magnesium, a remainder of the bath including zinc and unavoidable impurities resulting from the process, the presence of nickel being excluded; solidifying the metallic coating; skin-pass treating the steel substrate with the metallic coating to provide a roughness; surface preparation of the metallic coating; and painting the metallic coating. Appeal Br. 13 (unnumbered) (App. A) (emphasis added). 50. A process for the manufacture of a pre-painted sheet comprising the steps of: supplying a steel substrate; depositing a metallic coating on at least one face by hot- dipping the substrate in a bath including 4.4% to 5.6% by weight aluminum and 0.3% to 0.56% by weight magnesium, a remainder of the bath including zinc and unavoidable impurities resulting from the process, the presence of nickel being excluded; Appeal 2020-003302 Application 15/028,249 3 solidifying the metallic coating; surface preparation of the metallic coating including an application of mechanical forces to the metallic coating; and painting the metallic coating. Id. at 16 (unnumbered) (App. A) (emphasis added). REJECTIONS The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 3–9): Rejection 1: Claims 17–25 and 50 are rejected under 35 U.S.C. § 103 over JP ’6994 and Diez;5 Rejection 2: Claims 25, 26, 39–41, and 52–54 are rejected under 35 U.S.C. § 103 over JP ’699, Diez, and Sasaki;6 Rejection 3: Claim 28 is rejected under 35 U.S.C. § 103 over JP ’699, Diez,7 and Doty;8 Rejection 4: Claim 38 is rejected under 35 U.S.C. § 103 over JP ’699, Diez, and Hasselbach;9 4 JP 2002-212699 A published July 31, 2002. No translation appears in the record. We have obtained an English machine-translation via the EPO website that appears consistent with the discussion between the Examiner and Appellant. 5 Diez et al., US 2012/0052206 A1, published March 1, 2012. 6 Sasaki et al., US 2010/0233469 A1, published Sept. 16, 2010. 7 Because claim 28 depends from claim 17, and the Examiner rejected claim 17 over JP ’699 and Diez, it appears the Examiner inadvertently omitted Diez from the statement of the rejection. For clarity, we modify the statement of rejection to include Diez. 8 Doty et al., US 2003/0012959 A1, published Jan. 16, 2003. 9 Hasselbach et al., US 5,059,455, issued Oct. 22, 1991. Appeal 2020-003302 Application 15/028,249 4 Rejection 5: Claims 44 and 45 are rejected under 35 U.S.C. § 103 over JP ’699 and Hasselbach; Rejection 6: Claims 43–48 and 51 are rejected under 35 U.S.C. § 103 over JP ’699, Diez, Sasaki, and Hasselbach; Rejection 7: Claims 42, 49, and 55 are rejected under 35 U.S.C. § 103 over JP ’699, Diez, Sasaki, Idei,10 and Odawa;11 Rejection 8: Claims 42, 49, and 55 are rejected under 35 U.S.C. § 103 over JP ’699, Diez, Sasaki, Hasselbach, Idei, and Odawa; and Rejection 9: Claim 56 is rejected under 35 U.S.C. § 103 over JP ’699, Diez, and Schoeps.12 DISCUSSION Rejection 1 – Obviousness over JP ’699 and Diez The Examiner finds that JP ’699 discloses each of the steps in claim 17’s process for manufacturing a pre-painted sheet except “skin-pass treating the steel substrate with the metallic coating to provide a roughness.” Final Act. 3 (citing JP ’699 ¶¶ 1, 22, 24–29, 44, 45, 49). Similarly, the Examiner finds that JP ’699 discloses each of the steps in claim 50’s process of manufacturing a pre-painted sheet except “surface preparation of the metallic coating including an application of mechanical forces to the metallic coating.” Final Act. 5. The Examiner finds that Diez, which relates to a process for manufacturing a metal strip that can be used for automobiles, discloses skin-pass rolling or applying mechanical forces to its 10 Idei et al., US 2007/0227842 A1, published Oct. 4, 2007. 11 Odawa et al., US 5,578,669, issued Nov. 26, 1996. 12 Schoeps et al., US 4,291,074, issued Sept. 22, 1981. Appeal 2020-003302 Application 15/028,249 5 metal strip to achieve a texture or roughness that facilitates further processing. Final Act. 3 (citing Diez ¶¶ 5, 67–70); id. at 5 (citing Diez ¶ 70). Based on Diez’s teachings, the Examiner determines that it would have been obvious to one skilled in the art to modify JP ’699’s process to include skin- pass treating or applying mechanical forces to its Zn-Al alloy plated steel sheet to achieve a roughness before further processing as known for the production of automobile parts, e.g., painting. Id. Appellant argues that because the purpose of JP ’699’s process is to provide a smooth surface (JP ’699 ¶ 60), and because mechanical surface treatments are discouraged by JP ’699 (id. ¶¶ 10–11), there would have been no reason for one skilled in the art to include Diez’s skin-pass treating step in JP ’699’s process and intentionally destroy the smooth surface JP ’699 desires. Appeal Br. 7–8; see also Reply Br. 2–3 (unnumbered). Appellant’s argument is not persuasive. JP ’699 discloses a method for producing a Zn-Al alloy plated sheet having a smooth surface (JP ’699 ¶ 13), and teaches that it is less desirable to perform temper rolling or blasting during a plating method (JP ’699 ¶¶ 10–11). Appellant, however, has not directed us to sufficient disclosure in JP ’699 that discourages roughening the surface of a Zn-Al alloy plated steel sheet in a post treatment step, such as when using the plated steel sheet for producing automotive parts, as taught by Diez (Diez ¶¶68–70). In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that a reference teaches away when it criticizes, discredits, or otherwise discourages the claimed solution). JP ’699 and Diez disclose coated steel sheets suitable for manufacturing automobile parts. JP ’699 ¶ 1; Diez ¶¶ 21, 69. Diez teaches subjecting its coated steel sheet to a skin-pass operation to give the surface Appeal 2020-003302 Application 15/028,249 6 of the sheet sufficient roughness and promote good retention of oil applied to the sheet before it is formed as an automotive part and painted. Diez ¶¶ 68–70. Based on Diez’s teaching, we are not persuaded that the Examiner erred in determining that it would have been obvious to one skilled in the art to modify JP ’699’s process and skin-pass treat its plated steel sheet to achieve a roughness for producing automobile parts. Final Act. 3; KSR Int’l Co. v Teleflex Inc., 550 US 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Accordingly, we sustain the rejection of claims 17–25 and 50 under 35 U.S.C. § 103 over JP ’699 and Diez. Rejections 2–4 – Obviousness over JP ’699 and Diez in combination with Sasaki, Doty, or Hasselbach Appellant does not provide substantive arguments addressing Rejections 2–4. Appeal Br. 8–9. Accordingly, we sustain the rejection of claims 25, 26, 28, 38–41, and 52–54 under 35 U.S.C. § 103 over JP ’699 and Diez in combination with Sasaki, Doty, or Hasselbach. Rejection 5 – Obviousness Rejection over JP ’699 and Hasselbach Claim 44 recites: A process for the manufacture of a pre-painted sheet comprising the steps of: supplying a steel substrate; depositing a metallic coating on at least one face by hot- dipping the substrate in a bath including 4.4% to 5.6% by weight aluminum and 0.3% to 0.56% by weight magnesium, a remainder of the bath including zinc and unavoidable impurities Appeal 2020-003302 Application 15/028,249 7 resulting from the process, the presence of nickel being excluded; solidifying the metallic coating; surface preparation of the metallic coating; painting the metallic coating; and recoiling the steel sheet with the metallic coating after the painting. Appeal Br. 15 (unnumbered) (App. A). The Examiner finds JP ’699 discloses each step of claim 44’s process except “recoiling the steel sheet with the metallic coating after the painting.” The Examiner finds that Hasselbach, which relates to the treatment of steel sheets including hot dip treatment and painting, teaches uncoiling for each process and thereafter recoiling. Hasselbach Fig. 1. Based on Hasselbach’s teachings, the Examiner concludes that it would have been obvious to coil JP ’699’s steel sheet after each individual process (i.e., after coating or after painting) with predictable and successful results. Final Act. 7. Appellant argues that because Hasselbach teaches tempering and a surface preparation, both of which Appellant contends are specifically discouraged by JP ’699, it would not have been obvious to modify JP ’699 based on Hasselbach to include painting and recoiling. Appeal Br. 10. Appellant’s argument is not persuasive. The Examiner relies on Hasselbach for teaching recoiling after individual processes. Final Act. 7. Whether or not Hasselbach also teaches tempering is not relevant to the Examiner’s factual findings or technical reasoning in support of the rejection. Accordingly, we sustain the rejection of claims 44 and 45 under 35 U.S.C. § 103 over JP ’699 and Hasselbach. Appeal 2020-003302 Application 15/028,249 8 Rejection 6 – Obviousness over JP ’699, Diez, Sasaki, and Hasselbach Appellant repeats the arguments discussed above regarding Rejections 1 and 5. Thus, for the same reasons as discussed above with respect to Rejections 1 and 5, we sustain the rejection of claims 43–48 and 51 under 35 U.S.C. § 103 over JP ’699, Diez, Sasaki, and Hasselbach. Rejections 7–9 – Obviousness over JP ’699 and Diez in combination with Sasaki, and/or Hasselbach, Idei, and Odawa, or over JP ’699 and Diez in combination with Schoeps Appellant does not provide substantive arguments addressing Rejections 7–9. Appeal Br. 11. Accordingly, we sustain the Examiner’s rejections under 35 U.S.C. § 103 of claims 42, 49, 55, and 56. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17–25, 50 103 JP ’699, Diez 17–25, 50 25, 26, 39– 41, 52–54 103 JP ’699, Diez, Sasaki 25, 26, 39– 41, 52–54 28 103 JP ’699, Diez, Doty 28 38 103 JP ’699, Diez, Hasselbach 38 44, 45 103 JP ’699, Hasselbach 44, 45 43–48, 51 103 JP ’699, Diez, Sasaki, Hasselbach 43–48, 51 42, 49, 55 103 JP ’699, Diez, Sasaki, Idei, Odawa 42, 49, 55 42, 49, 55 103 JP ’699, Diez, Sasaki, 42, 49, 55 Appeal 2020-003302 Application 15/028,249 9 Hasselbach, Idei, Odawa 56 103 JP ’699, Diez, Schoeps 56 Overall Outcome 17–26, 28, 38–56 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