ARCELORMITTAL INVESTIGACIÓN Y DESARROLLO, S.L.

Patent Trials and Appeals Board

Apr 14, 2021

2020003447 (P.T.A.B. Apr. 14, 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.
14/397,112 07/18/2015 Joëlle RICHARD 631.1026 5001
23280 7590 04/14/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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 JOËLLE RICHARD, ERIC JACQUESON,
AUDREY LHERMEROULT, PASCALE FELTIN, and JEAN-
MICHEL LEMAIRE
Appeal 2020-003447
Application 14/397,112
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–35, and 37–41. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ArcelorMittal.
Appeal Br. 2.
Appeal 2020-003447
Application 14/397,112

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CLAIMED SUBJECT MATTER
The claims are directed to a method for producing a metal sheet
having Zn-Al-Mg coatings comprising the application of an acid solution
and an adhesive. Claim 17, reproduced below, is illustrative of the claimed
subject matter (emphasis added to highlight key disputed limitation):
17. A method for producing a metal sheet, the method
comprising at least the following steps:
providing a steel substrate having two faces each coated
with a metal coating obtained by dipping the substrate in a bath
and cooling, each metal coating comprising zinc, between 0.7
and 6 wt% of aluminum, and between 0.1 and 10 wt% of
magnesium, then
applying an acid solution with a pH between 1 and 4 on
outer surfaces of the metal coatings, then
applying an adhesive locally on at least one outer surface
of a metal coating, the adhesive being at least one of structural,
reinforced structural or semi-structural adhesives, sealing putties
and wedging putties, then
assembling with a second metal sheet via the adhesive.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yoshida US 4,663,245 May 5, 1987
Shimakura US 2004/0009300 A1 Jan. 15, 2004
Naritomi US 2011/0008644 A1 Jan. 13, 2011
Kimata JP 2007131906 A May 31, 2007

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Application 14/397,112

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REJECTION
Claims 17–35 and 37–41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Naritomi, Yoshida,
Kimata (as translated), and Shimakura. Final Act. 3.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the rejection on
appeal. Thus, we affirm the Examiner’s rejection essentially for the reasons
expressed in the Final Office Action and the Answer.
We add the following for emphasis.
Appellant argues that 1) the amount of Al in the Zn-Al-Mg alloy
coating example of Naritoma is too high at 11% (or 55%) versus the claimed
0.7 to 6.0% aluminum to suggest the recited range of aluminum (Appeal Br.
4, 5); 2) Kimata does not provide a reason to combine Naritoma and
Yoshida and indeed teaches away (Appeal Br. 5–8); and 3) Yoshida would
not be combined with Kimata because the amounts of Al and Mg fall outside
the ranges taught to be effective in Kimata (Appeal Br. 9, 10). These
arguments are reiterated in the Reply Brief.
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Application 14/397,112

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Appellant’s arguments are not persuasive of reversible error in the
Examiner’s obviousness determination of the claimed subject matter, as they
do not take into account the breadth of the claim language, the applied prior
art as a whole, the knowledge of those of ordinary skill in the art, and the
inferences that one of ordinary skill would have made (generally, Ans.).
As the Examiner points out, Naritomi does not specifically provide
any limits on the amounts of Al and Mg in its zinc alloy coating (Ans. 10).
Likewise, Yoshida does not limit the amounts of Al and Mg in its zinc alloy
coating and generally teaches “low concentrations” of these components
(Yoshida col. 3, ll. 35–42). While Kimata does teach preferred ranges of Al
and Mg in a zinc alloy coating that fall outside of the amounts of Yoshida’s
Example 2 coating (4% Al and 0.3% Mg of Yoshida Example 2, col. 6, ll.
21–24), this does not rise to the level of a teaching away from using the
amounts claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of the[] [disclosed] alternatives . . . .”);
cf. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes.”).
Furthermore, it has been established that a range of permissible or
obvious values may be obtained from several patents. Iron Grip Barbell Co.
v. USA Sports, 392 F.3d 1317 (Fed. Cir. 2004) (various patents describe
weight plate with 1, 2, and 4 holes which rendered a plate with 3 holes
obvious; the fact that range of known holes found in various prior art
references was a distinction without a difference from other range cases).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
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Application 14/397,112

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ordinary skill is also a person of ordinary creativity, not an automaton.”);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ).
Accordingly, the ranges of Al (and Mg) for a zinc alloy coating on a
steel sheet found in Yoshida and Naritomi (even without relying upon
Kimata) establish a significant overlap with the recited ranges of aluminum
and magnesium in claim 17 (e.g., from a low concentration of, e.g., Al 4% in
Yoshida up to 11% Al (or 55% Al) in Naritomi). See In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges,
we and our predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of obviousness.”).
Significantly, the Appellant has not directed us to any evidence
demonstrating that the use of the claimed zinc alloy in the recited method
exhibits unexpected results. Indeed, Appellant’s Specification describes that
“particular preferred” amounts of aluminum in the zinc alloy are “between
0.7 and 20 wt% Al” (and between 0.1 and 10 wt% Mg) (Spec. ¶ 22). See In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range).
In light of these circumstances, we sustain the Examiner’s § 103
rejection of all the claims on appeal.

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Application 14/397,112

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CONCLUSION
The Examiner’s rejection is AFFIRMED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–35,
37–41
103(a) Naritomi, Yoshida,
Kimata, Shimakura
17–35,
37–41

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