Ex Parte Ahn

Patent Trial and Appeal Board

Aug 15, 2013

10583399 (P.T.A.B. Aug. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/583,399 07/24/2007 Soon-Tae Ahn SAMH100002000 8173
22891 7590 08/15/2013
Delio & Peterson LLC
700 State Street , Suite 402
NEW HAVEN, CT 06511
EXAMINER
KESSLER, CHRISTOPHER S
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
08/15/2013 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
____________

Ex parte SOON-TAE AHN
____________

Appeal 2012-003720
Application 10/583,399
Technology Center 1700
____________

Before ANDREW HAROLD METZ, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 through 6, which are all the claims in the
application. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

THE INVENTION
Claims 1 and 3 are adequately representative of the appealed subject
matter and are reproduced below for a more facile understanding of the
claimed invention.
1. A quenched and tempered steel wire which can be cold forged,
comprising 0.10 – 0.40 wt.% C, 1.0 wt% or less of Si, 0.30 – 2.0
wt % Mn, 0.03 wt% or less of P, 0.03 wt.% or less of S, and a
balance of Fe and impurities, wherein an austenite grain size is 5 –
20 m, impact absorption energy is 60 J/cm2 or more at -40°C, and
tensile strength is 70 – 130 kgf/mm2.

3. A method of producing a steel wire for cold forging comprising:

induction heating steel, which contains 0.10 – 0.40 wt.% C, 1.0
wt% or less of Si, 0.30 – 2.0 wt % Mn, 0.03 wt% or less of P, 0.03
wt.% or less of S, and a balance of Fe and impurities, to an Ac3
transformation point or higher so that austenite grain size is 5 – 20
m;

cooling the heated steel; and

heat treating the cooled steel in such a way that tensile strength is
70 – 130 kgf/mm2 at a tempering parameter (P) ranging from
21,800 to 30,000, which is expressed by a following Equation 1, so
that impact absorption energy is 60 J/cm2 or more at -40°C,

Equation 1
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P = 1.8 × (T +273) × (14.44 + log t)

Wherein, T is a tempering temperature (°C), and t is a tempering
time (sec).

The reference of record which is being relied on by the Examiner as
evidence of obviousness is:
Ahn et al. (Ahn) US 2003/0066576 A1 Apr. 10, 20031

THE REJECTIONS
Claims 5 and 6 stand rejected under 35 U.S.C. §112, first paragraph,
as failing to comply with the “written description” requirement of the
statute.
Claims 1 through 6 stand rejected as being unpatentable under
35 U.S.C. § 103(a) as the subject matter claimed therein would have been
obvious at the time Appellant made his invention from the disclosure of
Ahn.
OPINION
THE REJECTION UNDER 35 U.S.C. § 112
On the date this appeal was taken, there were three separate and
distinct requirements set forth in the first paragraph of 35 U.S.C. § 112. The
rejection before us involves the “written description” requirement of the

1 The present inventor is listed as a coinventor in this publication. In his
office action responding to Appellant’s amendment filed on 17 August 2010,
the Examiner characterizes Ahn as “the pregrant publication corresponding
to 6,752,880 cited by applicant.” We shall rely on the pregrant publication
in this decision.
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statute. Satisfaction of the “written description” requirement under the
statute is a question of fact and depends on the amount and character of
information in Appellant’s application as of the filing date of the application.
One of the functions of the “written description” requirement is to clearly
convey to a person having ordinary skill in the art that an applicant has
invented the subject matter that is claimed. Another function of the “written
description” requirement is to put the public in possession of what the
applicant claims as the invention and to demonstrate that the applicant was
in possession of the invention that is now claimed. New or amended claims
which introduce elements or limitations which are not supported by the as-
filed disclosure violate the written description requirement. The
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date,
applicant was in possession of the invention as now claimed or, stated
another way, does the original description clearly allow persons of ordinary
skill in the art to recognize that Appellant invented what is now claimed.
The specific issue before us involves claims 5 and 6 and the
limitations therein that the induction heating step in claims 3 and 4,
respectively, is performed “without plastic deformation.” Because claims 5
and 6 are not original claims, the narrow issue before us is whether
Appellant’s original disclosure is of sufficient character and detail to
establish with reasonable clarity to the hypothetical person of ordinary skill
in the art that Appellant invented the subject matter now claimed by him.
Appellant argues that support in his original disclosure for the subject
matter now claimed by him in claims 5 and 6 may be found in the
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Specification at page 5, lines 18 through 28 and at page 11, line 25 through
page 12, line 7. See Appellant’s Brief at pages 4 through 6. According to
Appellant, the above referenced disclosures describe “no plastic deformation
. . . while heating to the Ac3 transformation point2 or higher” (Brief, page 4)
and that the absence of the disclosure of any plastic deformation while
heating supports the limitation that the heating step is one “without plastic
deformation.” We disagree.
The starting point of our analysis begins with Appellant’s as-filed
original disclosure. According to Appellant’s original disclosure, Appellant
discovered a method for producing steel wire comprising “rapidly heating
typical carbon steel for machine structures, which is capable of being
quenched, to an Ac3 transformation point or higher to limit austenite grain
size to 5 – 20 µm, . . .” Spec. page 5, lines 18 through 23. Thereafter, at
page 10 of the Specification, Appellant discloses that he “rapidly heated”
two wire rods prepared from commercially available steel alloys “to a Ac3
point or higher so that an austenite grain size was 8-14 µm . . .” Spec. page
10, lines 10 through 14. At page 11, lines 2 through 7, Appellant discloses
that the tempering parameter (P) may be assured by controlling the heating
temperature, heating time and heating rate. In his examples, Appellant
describes quenching and tempering hot rolled wire rod using a “high
frequency induction heater.” Pages 11 through 14 of the Specification.
The “written description” requirement may be satisfied using such
descriptive means as words, structures, figures, diagrams, and formulas that

2 The “Ac3 transformation point” was known in the art at the time Appellant
made his invention to be the temperature at which, during heating,
transformation of the ferrite into austenite ends.
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fully set forth the claimed invention. However, we find no explicit or
verbatim disclosure in the aforementioned cited passages from Appellant’s
Specification that disclose that heating the steel by induction heating is
“without plastic deformation” as now required by claims 5 and 6. Rather,
the Specification only describes the heating as “rapid.” We also find no
factual basis in the aforementioned passages from the Specification for
concluding that describing the heating step of Appellant’s method in terms
of its rate or duration (“rapid”) would have suggested to a person of ordinary
skill in the art the condition or physical state of the thing being heated, here
steel with a composition as recited in claims 1 and 3.
We recognize that the “written description” requirement may be
satisfied even when there is no verbatim or literal support for the language
used in the claims. Nonetheless, we do not find persuasive Appellant’s
argument that the absence of any disclosure of plastic deformation described
in the Specification in connection with the induction heating step constitutes
written descriptive support for the limitation “without plastic deformation.”
Appellant states that “[t]he fact no plastic deformation was mentioned
during the actual claimed induction heating step supports the concept that
none was used.” Brief, page 6. However, in order for Appellant to establish
the absence of disclosure constitutes written descriptive support there must
be some evidence from Appellant’s disclosure that makes clear that the
missing descriptive matter is necessarily present (described) in the passage
relied on, and that it would have been so recognized as of the filing date by
persons of ordinary skill in the relevant art. Appellant’s argument, at best,
raises the possibility that his disclosure supports the limitation in question.
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But a mere possibility that heating without plastic deformation occurs is
insufficient to satisfy the written description requirement of the statute.
Accordingly, we find Appellant’s Specification does not reasonably convey
to the skilled routineer that he had possession at the time he filed his
application of the subject matter later claimed by him.
THE REJECTION UNDER 35 U.S.C. §103(a)
We find Ahn to evidence that at the time Appellant made his
invention, a quenched and hardened steel wire comprising 0.21% C; 0.22 %
Si; 0.75% Mn; 0.012% P; 0.009% S and the balance Fe and impurities was
known in the art. [0040]. Ahn is also evidence that by high frequency
induction heating such steel austenite grain size between 5-90 µm and
tensile strength within the range claimed by Appellant can be obtained. Ahn
describes subsequently rapidly cooling the heated steel wires and then
tempering the wire. [0041]
Appellant concedes that Ahn discloses a process for heating steel wire
to obtain an austenite grain size that at least partially overlaps that claimed
but argues that Ahn does not disclose or suggest the claimed tempering
parameter (P). Brief, pages 6 and 7; Reply Brief, page 3. The Examiner
concedes that Ahn does not describe the formula recited in claim 3 for the
“tempering parameter (P).” However, the Examiner observes that Ahn
teaches ranges of time and temperature for tempering the steel alloys
disclosed therein which, when inserted in the formula for the tempering
parameter (P) in claim 3, yield values for the tempering parameter (P) of
from 13,658 to 29,540 which substantially overlaps the claimed range for (P)
of from 21,800 to 30,000. Answer, page 9. Thus, the Examiner reasons that
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by varying the time and temperature for tempering the steel wires within the
ranges disclosed in Ahn, the person of ordinary skill in the art would have
recognized that it was possible to obtain steel wire having an austenite grain
size and tensile strength within the range claimed by Appellant.
To the extent that Ahn is silent with respect to the impact absorption
energy recited in the claims, the Examiner reasons that because Ahn
discloses specific examples having compositions, austenite grain size and
tensile strength in the ranges claimed by Appellant and because Ahn teaches
a method for producing steel wire by induction heating the steel, cooling the
heated steel and subsequently tempering the steel at temperatures and times
that yield the claimed “tempering parameter (P)” then the impact absorption
energy value recited in the claims would be inherent in wire produced by
Ahn’s process.
Appellant argues that Ahn does not recognize the combination of
grain size, tensile strength and impact absorption energy obtained by treating
steel having the claimed composition and, therefore, does not render the
claimed subject matter obvious in the sense of the statute. In support of his
argument, Appellant directs our attention to the data in Table 2 of the
Specification as evidence that steel processed according to the disclosure of
Ahn does not necessarily achieve the combination of properties claimed by
Appellant. Specifically, Appellant states that all the Comparative Examples
in Table 2 do not achieve the impact absorption energy required by the
claims and he represents that to be evidence that steel prepared according to
Ahn’s disclosure does not inherently have the properties required by
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Appellant’s claims. Brief, page 8. We disagree with Appellant’s
characterization of the data in Table 2.
The data in Table 2 is disclosed as obtained using the samples
produced in Table 1 that “were worked to form JIS Z 2202 No.4 test pieces.”
Spec. 12. The pieces so obtained were subjected to a “Charpy impact test”
according to a Japanese Industrial Standard (JIS Z 2242) to calculate impact
absorption energy. Id. The samples from Table 1 are described only as
“quenched/tempered using a high frequency induction heater” and
controlling the temperature, time and rate of heating to obtain an austenite
grain size and tensile strength within Appellant’s claims. Id. at 11-12. The
identity of the “comparative examples” is not set forth.
In the first instance, the data on which Appellant relies does not
address the question of obviousness raised by the Examiner’s reliance on the
Ahn disclosure. Specifically, because the identity of the Comparative
Examples in Table 2 is nowhere set forth we have no way of knowing what
process was used to prepare the samples being compared. Indeed, Appellant
characterizes the process used in the Comparative Examples in Table 2 only
as “similar” to the claimed process. Brief, page 9. Because the identity of
what is being compared is not set forth we have no way of knowing if the
alleged difference in results obtained are due to the process used to prepare
the samples or even if the results are truly “unexpected.”
We are satisfied that Ahn describes a process for treating steel alloys
having compositions that overlap the composition for steel alloys claimed
and that the process described teaches the time and temperature of the
tempering step to be so-called “result effective variables” that can be
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adjusted to obtain various desirable properties in the final steel produced. In
presenting the data in Table 2 as evidence of “unexpected” results, Appellant
bore the burden of demonstrating that what was being compared was truly
comparable and representative of the prior art and that actual differences in
properties exist between what is claimed and the prior art and that the
differences are meaningful and truly “unexpected.” This Appellant has
failed to do.
Appellant has failed to prove that it would have been “unexpected”
that steel prepared using different process parameters within Ahn’s
disclosure have different properties. Indeed, the skilled routineer would
have expected from Ahn’s disclosure that she could obtain a spectrum of
properties for the final steel within the broad process parameters described.
[0035], [0041].
Accordingly, we have carefully considered the arguments of both the
Examiner and Appellant and all the evidence before us including Ahn and
Appellant’s data from Table 2 of his Specification and we find that the
Examiner has made out a prima facie case of obviousness.
The decision of the Examiner is affirmed.
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).
AFFIRMED

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