Ex Parte Asahi et al

Board of Patent Appeals and Interferences

Jun 15, 2011

10410014 (B.P.A.I. Jun. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HITOSHI ASAHI, YASUHIRO SHINOHARA and
TAKUYA HARA

__________

Appeal 2010-009560
Application 10/410,014
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 2, 6 and 17, which are all of the pending claims.
An oral hearing was held on June 8, 2011. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.
Claim 2, reproduced below, is illustrative of the subject matter on appeal.
2. A steel plate having tensile strength in the width direction of
517 MPa to 990 MPa, the steel plate comprising, in its chemical

composition by mass,
C: 0.03 to 0.12%,
Si: 0.8% or less,
Mn: 0.8 to 2.5%,
P: 0.03% or less,
S: 0.01 % or less,
Nb: 0.01 to 0.1 %,
Ti: 0.005 to 0.03%,
AI: 0.1 % or less, and
N: 0.008% or less,
so as to satisfy the expression Ti - 3.4N >= 0, and one or more
of:
Ni: 1 % or less,
Mo: 0.6% or less,
Cr: 1 % or less,
Cu: 1 % or less,
V: 0.1 % or less,
Ca: 0.01 % or less,
REM: 0.02% or less, and
Mg: 0.006% or less, and

the balance being Fe and unavoidable impurities, wherein the steel
plate has a high degree of a deformability and comprises a low-
temperature transformation structure having a ferrite phase
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which is composed of first grains and a bainite phase which is
composed of second grains, the ferrite phase being finely dispersed
and accounting for 5 to 40% in area percentage of the structure,
wherein the percentage of the ferrite grains larger than the average
size of bainite grains is 10% or less in the ferrite phase, wherein the
steel plate is produced by a process comprising the steps of:

(a) reheating the steel slab containing the above defined steel
compositions to an austenite temperature in the range of 1050 to
1250°C;

(b) after step (a), rough rolling the reheated steel slab within a
recrystallization temperature range;

(c) after step (b), finish rolling the rough rolled steel slab to a
steel plate at a cumulative reduction ratio of at least 50% within a
non-recrystallization temperature range of at

(d) lightly accelerated cooling the finish rolled steel plate at a
first cooling rate of 5°C/sec to 20°C/sec from a temperature that is not
lower than an Ar3 transformation point to a temperature in the range
of 5000e to 600°C; and

(e) immediately after step (d), or after maintaining the hot
rolled steel plate at a constant temperature, or letting the hot rolled
steel plate cool in air for at most 30 seconds, then heavily accelerated
cooling the steel plate at a second cooling rate of at least 15°C/sec that
is greater than the first cooling rate to a temperature less than 300°C.

The following Examiner’s rejections are before us on appeal:
(1) the rejection of claims 2, 6, and 17 under 35 U.S.C. § § 103(a) as
unpatentable over Mazuda1;
(2) the rejection of claims 2 and 17 under 35 U.S.C. § 112, second
paragraph.

1 Mazuda et al., U.S. Patent 4,591,396, (1986).
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B. DISCUSSION
1. Rejection (1)
Independent claims 2 and 6 are written in product-by-process format.
Therefore, the Examiner can satisfy his or her burden under § 102 or § 103 if the
prior art reasonably appears to disclose a product that is identical with or obvious
over the product claimed. See In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); See
also In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-
by-process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process.”). The Examiner has not met the burden in this case for substantially the
reasons set forth by Appellants in their briefs. We add the following for emphasis.
The Examiner specifically relies upon Comparison Steel 8 of Mazuda as
teaching a steel with component amounts “close enough to the instant claims to
establish a prima facie case of obviousness” (Ans. 5). The Examiner also notes
that Mazuda teaches coarsening of the upper bainite structure of Comparison Steel
8 via heating to a temperature in excess of 1000°C (Ans. 10). With respect to the
process steps, the Examiner concludes that Mazuda teaches all the steps except for
the dual cooling process required by step (e) (in combination with step (d)) and
concludes that “[t]he patentability of a product does not depend on its method of
production” (Ans. 7).
The Examiner admits Mazuda does not provide any teaching or suggestion
of a dual cooling rate process as required by step (e) or its effect on the
microstructure of the steel (Ans. 10 (“Although conducting two cooling steps on
steel may result in a different microstructure than that of conducting one cooling
step (Mazuda . . .))”. Nonetheless, the Examiner concludes that the rejection is
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proper because “the Appellant has not shown that a different microstructure
necessarily results” (Ans. 10, emphasis in original).
The Appellants argue that the two step cooling process required by steps (d)
and (e) are critical to obtaining the non-uniform crystalline structure and other
desirable properties of their product (e.g., Reply Br. 7; Spec. paras. [0043], [0044];
Asahi Declaration (Exhibit 2 of App. Br.), para. 10). As pointed out by Appellants,
the instant Specification shows that when comparing embodiment No. 1 (with dual
cooling rates) with No. 15 (with a single cooling rate) (Specification Tables 2, 3),
there is almost a 50% improvement in elongation while maintaining similar tensile
strength (Reply Br. 11 (“Simply put, a single cooling rate process produces a
completely different product from the dual rate process of the present invention”).
Accordingly, the record before us establishes by a preponderance of the
evidence that the claimed dual cooling rates results in a particular crystalline
structure and concomitant properties for reasons explained by the Appellants (see,
e.g., Reply Br. 6-11; Spec. [0043]-[0044]).
In light of these circumstances, we agree with Appellants that the Examiner
has not adequately explained why the relied upon product of Mazuda reasonably
appears to be the same or substantially identical as the claimed invention (Reply
Br. 6-11).
For this reason, the § 103(a) rejection of all the claims based on Mazuda will
be reversed.
2. Rejection (2)
The Examiner states that it is unclear what is meant by “first grains” and
“second grains” in claims 2 and 17, that there is no antecedent basis for “the ferrite
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grains” and “the average size of the bainite grains”, and that it is unclear what the
ferrite phase is made up of if “5 to 40% of the first structure” is the first grains.
Ans. 4.
We agree fully for the reasons set forth by Appellants that the claim terms
objected to by the Examiner would clearly be understood by a person of ordinary
skill in the art (App. Br. 13, 14; Reply Br. 11, 12). See Miles Lab., Inc. v.
Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“The test for definiteness is
whether one skilled in the art would understand the bounds of the claim when read
in light of the specification. If the claims read in light of the specification
reasonably apprise those skilled in the art of the scope of the invention, § 112
demands no more.”) (citation omitted). Furthermore, a lack of antecedent basis is
not per se a reason for finding a claim indefinite. “In Bose Corp. v. JBL, Inc., 274
F.3d 1354, 1359 (Fed. Cir. 2001) the court held that despite the absence of explicit
antecedent basis, ‘[i]f the scope of a claim would be reasonably ascertainable by
those skilled in the art, then the claim is not indefinite.”’ Energizer Holdings Inc. v.
International Trade Com’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). Antecedent
basis can be present by implication. See Slimfold Mfg. Co. v. Kinkead Indus., Inc.,
810 F.2d 1113, 1116 (Fed. Cir. 1987).
Therefore, the § 112 rejection of claims 2 and 17 will be reversed.
C. DECISION
The decision of the Examiner is reversed.

REVERSED

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