Ex Parte 6564604 et al

Patent Trial and Appeal Board

Sep 28, 2015

95001350 (P.T.A.B. Sep. 28, 2015)

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.
95/001,214 08/20/2009 6564604 7769.3003.001 2232
7590 09/29/2015
SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC
SUITE 800
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037-3213
EXAMINER
LILLIS, EILEEN DUNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
95/001,350 04/30/2010 6564604 8459.048.RX0000 2425
7590 09/29/2015
SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037-3213
EXAMINER
LILLIS, EILEEN DUNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
95/001,353 05/12/2010 6564604 NOS 9001 6522
133894 7590 09/29/2015
Lewis Brisbois Bisgaard & Smith, LLP
Attention;Maxwell J. Petersen
550 W. Adams Street, Suite 300
Chicago, IL 60661
EXAMINER
LILLIS, EILEEN DUNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

SEVERSTAL NORTH AMERICA, INC., TATA STEEL, and
VOESTALPINE STAHL GmbH
Requesters

v.

ARCELORMITTAL
Patent Owner
____________________

Appeal 2015-004353
Merged Reexamination Control Nos. 95/001,214, 95/001,350,
and 95/001,353
Patent US 6,564,604 B21
Technology Center 3900
__________________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Kefferstein et al. on May 20, 2003 (hereinafter the '604 patent).
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from
the Examiner’s rejection of claims 1, 3, 4, 13, 30, 33, 35, 41, and 42. While
there are other claims that were involved in the reexamination, these were
the only claims involved in rejections appealed by the Patent Owner. We
have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). Oral arguments
were presented in this case on August 12, 2015, a transcript having been
entered into the record on September 18, 2015.
We AFFIRM-IN-PART.

THE INVENTION
The Patent Owner's invention is directed generally to "a process for
the manufacture of a part with very high mechanical properties, formed by
stamping of a strip of rolled steel sheet and more particularly hot rolled and
coated with a metal or metal alloy ensuring protection of the surface and the
steel." Spec. col. 1, ll. 8-12. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A process for the manufacture of a part with very high
mechanical properties, said part formed by stamping of a strip
of rolled steel sheet rolled and coated with a metal or metal
alloy ensuring protection of the surface and the steel, said
process comprising the steps:
cutting the steel sheet to obtain a steel sheet blank,
stamping the steel sheet blank to obtain the part,
generating an alloyed compound on a surf ace of the strip
of rolled steel sheet, before the stamping, said alloyed
compound ensuring protection against corrosion and steel
decarburization, and providing a lubrication function, and
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trimming excess material from the steel sheet required
for the stamping operation;
the process further comprising:
after the steel sheet is cut to obtain the steel sheet blank,
subjecting the coated steel sheet blank to a rise in temperature
in order to hot-form a part, thereby forming the alloyed
compound at the surface of the part, said alloyed compound
ensuring protection against corrosion and steel decarburization,
and providing a lubrication function,
cooling the stamped part to obtain such mechanical
properties in the steel as high hardness and high surface
hardness of the coating.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mehler
Guzzetta
Saito
Laurent
US 3,056,694
US 5,015,341
US 5,105,454
US 6,296,805
Oct. 2, 1962
May 14, 1991
Apr. 14, 1992
Oct. 2, 2001
Kawasaki et al. (“Kawasaki”) JP H05-5916 Mar. 9, 1993
Jonsson WO 1999/007492 Feb. 18, 1999
Lyman et al., Metals Handbook 8th Edition Voume 4 Forming, American
Society for Metals (1969) (hereinafter “Metals Handbook”).

Yasuda et al., Influence of Fe-P Flash Coating on Anti-Powering Property
and Friction Behavior of Galvannealed Steel Sheets, Tetsu to Hagane-Jornal
of the Iron and Steel Institute of Japan (1991) (hereinafter “Yasuda”).

Blūmel, Help for Drawing Sheet Metals with Galvanized Surfaces Have
Good Formability, Maschinenmarkt, Wurzburg 94 (1988), No. 43
(hereinafter “Blūmel”).

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THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 33 and 35 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
RAN2 17.
2. Claims 33 and 35 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the enablement requirement. RAN 22.
3. Claims 33 and 35 stand rejected under 35 U.S.C. § 112 second
paragraph as being indefinite. RAN 28.
4. Claims 1, 4, 13, 30, 41, and 42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mehler, the Metals Handbook, and
Jonsson. RAN 43.
5. Claims 1, 4, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mehler, the Metals Handbook, Jonsson, and
Yasuda. RAN 93.
6. Claims 1, 3, 13, 30, 41, and 42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mehler, the Metals Handbook, Jonsson,
and Saito. RAN 97.
7. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mehler, the Metals Handbook, Jonsson, and Guzzetta.
RAN 101.

2 When referring to "RAN" we reference the RAN dated March 25, 2014,
which was incorporated by reference in the Examiner's Answer of October
21, 2014.
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8. Claim 1, 33, 35, and 42 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Laurent and the Metals Handbook. RAN 116.
9. Claim 3, 4, 13, 30, and 41 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Laurent, the Metals
Handbook, Kawasaki, and Blūmel. RAN 143.
ANALYSIS
Rejections under 35 U.S.C. § 112
The Examiner makes three rejections under 35 U.S.C. § 112 of claim
33 and claim 35, which depends from claim 33. RAN 17-18. The first of
these is a first paragraph rejection for allegedly failing to comply with the
written description requirement. The Examiner takes issue with the
recitation in claim 33 stating, "wherein the step of generating the alloyed
compound occurs during a heat treatment in which austenizing of the steel
sheet blank," asserting that the Specification does not support that the alloy
is generated during austenizing. RAN 17-18. The Patent Owner, however,
directs us inter alia to col. 2, ll. 1-5 and 52-56 of the '604 patent
Specification, "which describe subjecting the coated steel sheet blank to a
rise in temperature in order to hot-form a part, and the alloyed intermetallic
compound being 'thereby' formed 'during the temperature rise for hot-
forming.'" App. Br. 12. The Patent Owner argues that the passages cited in
response to the rejection "state explicitly that in Example 1 the alloying
occurs at 950°C during the rise in temperature in the oven just prior to hot-
forming" and that the "alloying and the austenitizing taking place at the
same temperature." App. Br. 13. We agree with the Patent Owner that there
is sufficient written description support for the claim limitation and therefore
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do not sustain the rejection of claims 33 and 35 for lack of written
description.
Regarding enablement, the Patent Owner first explains how the
limitations of weight loss of 32 g/m2 or less of claim 33 and 22 g/m2 or less
of claim 35 are enabled via the Specification's disclosure of standard salt
spray testing and that one of ordinary skill in the art would understand how
these tests are performed and thus know how such measurements are
achieved. App. Br. 14. We agree with the Patent Owner that this subject
matter is sufficiently enabled for the reasons stated.
The Examiner also agrees with one of the Requesters that the
Specification does not "teach one skilled in the art how to [meet the weight
loss limitation] for the unlimited possible alloys covered by this claim."
RAN 23. As the Patent Owner explains, however, there are not unlimited
alloys that are covered by the claims, but only that "[a] class of alloys is
covered, and it is a class that meets all of the characteristics in claims 33 and
35," that the "specification is enabling with respect to that class of alloys,"
and that the claims are directed to a process of manufacturing a steel part
with high mechanical properties. App. Br. 14-15. We also agree with the
Patent Owner as to this rejection that there is only a limited class of alloys
that may meet the limitations of claim 33 and that the specification is
enabling with respect to that limited class of alloys. Accordingly, we do not
sustain the enablement rejection of claims 33 and 35.
The last basis for the rejection is that claim 33 is indefinite because
there is some imprecise language in the claim whereby use of the terms
"strip" and "blank" are essentially used interchangeably when they should
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have different meanings and, according to the claim, a certain step occurs on
a strip after the strip is cut into a blank (i.e., there no longer is a strip), thus
rendering the claim indefinite. RAN 28. While we agree that the language
at issue is not the paragon of claim drafting, we do not agree that it rises to a
level whereby one of skill in the art would not understand the meaning of the
claim.
The Patent Owner argues, inter alia, that the claims are not read in a
vacuum, but are to be read in light of the Specification and prosecution
history and that the Specification makes clear what the claim means. App.
Br. 16. We generally agree. The Specification "only shows and describes
one step for raising the temperature of the steel for hot stamping, and that is
heating the blank in an oven immediately prior to stamping" so that "the
only way one of ordinary skill in the art could reasonably read the language
of claim 33 is that the term 'strip of rolled steel sheet' is sometimes used to
refer to the blank." PO's Rebuttal Br. 5.
Further, we note that the claim recites "generating an alloyed
compound on a surface of the strip of rolled steel sheet." While the Patent
Owner could have more clearly written this to recite that the compound is
generated on a surface of the blank instead of the strip, we agree with the
Patent Owner that a surface of the strip encompasses that of the blank. The
claim does not require formation on the entire surface of the strip, which
would be impossible once it is a blank because some of that surface no
longer exists. So, given the more complete disclosure in the Specification,
we agree that one of ordinary skill in the art would understand that this claim
refers to a portion of the strip still existing as the blank and that it is that
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surface onto which the alloy is generated. Accordingly, we do not agree that
the claim is indefinite and do not sustain the Examiner's indefiniteness
rejection of claims 33 and 35.
Prior Art Rejections
On the whole, the parties do not generally disagree as to the content of
the prior art, but the major issues in this case deal with the basis, or lack
thereof, for combining the various prior art to achieve the claimed
invention. The Patent Owner's argument against many of the combinations
is that not only would one of skill in the art not have been motivated to
combine the teachings cited by the Examiner, especially those involving zinc
alloys, but that the prior art specifically cautions against heating zinc
coatings to the temperatures provided in the claims. See, e.g., App. Br. 20-
21. In support, the Patent Owner cites specific instances of these teachings,
such as, "[w]hen a sheet of carbon steel plated with fused zinc is locally
strengthened by the [martensite transformation or bainite transformation], a
Zn--Fe layer formed on the surface of the steel sheet is evaporated by
heat applied thereto." App. Br. 20 (citing Sato, Patent US 5,735,163, col.
9, ll. 10-18). Furthermore, the Requesters' own experts also recognize this
issue, "[i]n case of glavannealed steel[,] liquid zinc will occur at
temperatures higher than 670° C. Both the melting and the vaporization of
zinc are problems, and zinc oxidation is also problematic." App. Br. 21
(citing Second Marder Dec. ¶11). The Patent Owner also cites numerous
other examples in the prior art cautioning against the use of zinc coatings at
such high temperatures. App. Br. 24-25.
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As the Patent Owner further points out, the majority of Requesters'
evidence supporting combinability of the hot forming process of the prior art
with a zinc coating such as described in Mehler is found in expert
declarations. App. Br. 25. These declarations often cite to other
publications describing that such processes are known or possible, but such
publications post-date the filing date of the '604 patent and are not prior art.
Id. As noted by the Patent Owner with respect to one of these post-dated
publications and Requesters' expert evidence, they "recognize the very
problems Owner has repeatedly noted," and, for example, "Faderl's
subsequent explanation of why the invention was successful is not prior art
and is not an indication of what was known at the time of invention.
Instead, it confirms that the invention obtains an unexpected and surprising
result." App. Br. 26.
We also find persuasive the fact that Mehler cautions against heating
zinc coatings at the claimed temperatures for more than a few seconds
(Mehler col. 2, ll. 46-59), yet the process disclosed in Jonsson requires
heating times "generally on the order of minutes." App. Br. 31 (citing First
DeArdo Dec. ¶46). Accordingly, even the references used by the Examiner
in the combination appear to argue against their combination. As to the
Examiner's suggestion that the zinc coating becomes alloyed quickly and
thus could withstand the further heating taught in Jonsson, we agree with the
Patent Owner that such a suggestion is contrary to the teachings in Mehler,
because "after alloying the coating is still molten even at Mehler's low
alloying temperatures." App. Br. 33 (citing Mehler col. 4, ll. 28-29).
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As such, we believe that the Patent Owner has shown by a
preponderance of the evidence that, while zinc coatings and hot forming
were both known at the time of the invention, the state of the prior art not
only did not motivate one to hot form zinc coated steel parts, but specifically
cautioned against this. The Patent Owner appears to have gone against
convention in attempting to hot form zinc coated steel and achieved results
that would not have been expected at the time. We thus agree that neither
the Examiner nor the Requesters have established an adequate basis for
using the zinc coatings of Mehler in the prior art hot forming processes as
claimed. As such, the rejections of claims 1, 3, 4, 13, 30, 41 and 42
(Rejections 4-7 above) involving Mehler are not sustained.
While certain claims, such as claims 3, 4, and 13, specifically recite
the use of zinc as part of the alloying compound, several of the claims recite
only general properties that may apply to other alloying
elements/compounds besides zinc. Many of the claims not specifically
reciting zinc (claims 1, 30, 33, 35, 41, and 42) also stand rejected over
combinations involving the teachings of Laurent, which teaches not a zinc
alloy, but an aluminum alloy. Claim 42, for example recites "said alloyed
compound provides galvanic protection of the cathode protection type." We
agree with the Patent Owners that the Requesters have failed to show that
the aluminum coating taught in Laurent provides such galvanic protection.
See App. Br. 40-42. It is especially telling that Steinhoff, one of Requesters'
experts, has specifically stated in past publications "that aluminum-silicon
coated steel provides 'no cathodic corrosion protection' while zinc-aluminum
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coated sheets provide 'cathodic corrosion protection." App. Br. 41.
Accordingly, we do not sustain Rejection 8 as it pertains to claim 42.
The Patent Owner argues the last remaining portion of Rejection 8 as
it pertains to claims 1, 33, and 35 solely on the basis that Laurent fails to
teach the lubricating function claimed therein. See, e.g., App. Br. 38-39,
Rebuttal Br. 23-24. While it is true that Laurent does not specifically tout
the lubricating effects of an aluminum coating, this fact is not dispositive of
the issue. The claim does not specify any level of lubrication, only that
lubrication of some sort be afforded by the alloyed coating.
Tata Steel's expert, Kurt Steinhoff, conducted an experiment showing
that, in comparison to uncoated steel, various compounds provide a lower
coefficient of friction in hot strip drawing. Second Steinhoff Dec. ¶¶28-29.
It is clear from the chart provided that coatings of AlSi, ZnAl, and ZnNi all
result in a lower coefficient of friction during hot strip drawing than
uncoated steel. The Patent Owner's response is only that "the inclusion of
zinc in a coating obtains a greatly decreased coefficient of friction relative to
aluminum based coatings." App. Br. 39. While this may be true, this does
not persuasively address the fact that an aluminum-based coating does
appear to provide lubrication when compared to uncoated steel. As noted
above, the claims at issue do not require any particular level of lubrication
and we are persuaded that a coating such as that taught in Laurent would
provide at least some lubrication such that it would meet the claim language
at issue. Accordingly, we sustain Rejection 8 as it pertains to claims 1, 33,
and 35 over Laurent and the Metals Handbook.
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Regarding claims 3, 4, 13, 30, and 41, which are rejected over
Laurent, the Metals Handbook, Kawasaki, and Blūmel, these rejections fail
for the same basic reasons stated above with respect to Mehler; namely that
the hot forming processes taught in Laurent are at too high a temperature for
one of skill in the art to have contemplated success by substituting zinc for
aluminum. See also App. Br. 42-51. Accordingly, we do not sustain these
rejections.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 3, 4, 13, 30, 41, and 42 and AFFIRM the rejection of claims 1,
33, and 35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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PATENT OWNER:

SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC
SUITE 800
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037-3213

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