Ex parte BRISSON et al.

Board of Patent Appeals and Interferences

Nov 12, 1998

08047434 (B.P.A.I. Nov. 12, 1998)

Application for patent filed April 15, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEAN G. BRISSON and JEAN BEGUINOT
____________
Appeal No. 96-0154
Application No. 08/047,4341
____________
ON BRIEF
____________
Before JOHN D. SMITH, GARRIS, and PAK, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 12 through 19 which are all of the claims remaining
in the application.
Appeal No. 96-0154
Application No. 08/047,434
2
The subject matter on appeal relates to a planar clad
sheet having improved abrasion resistance and being
substantially free of residual stresses. The clad sheet
comprises a layer of low-alloy steel having a rolled structure
and a layer of tool steel having a rolled structure and
comprising tempered martensite, coarse primary carbides and a
fine dispersion of secondary carbides. The sheet is produced
by joining the tool steel and low-alloy steel layers, hot
rolling the joined layers, cooling the hot rolled joined
layers to below 200°C and tempering the cooled joined layers
at a temperature between 250°C and 650°C. This appealed
subject matter is adequately illustrated by independent claim
12 which reads as follows:
12. A planar clad sheet having improved abrasion
resistance and being substantially free of residual stresses,
comprising a layer made of tool steel having a chemical
composition comprising, by weight, more than 0.5% carbon and
more than 3% chromium and a layer made of low alloy steel
having a chemical composition comprising, by weight, up to
0.25% carbon and a carbon equivalent up to 0.5% the layer made
of low-alloy steel having a rolled structure and the layer
made of tool steel having a rolled structure and comprising
tempered martensite, coarse primary carbides and a fine
dispersion of secondary carbides.
Appeal No. 96-0154
Application No. 08/047,434
3
The following prior art is relied upon by the examiner as
evidence of obviousness:
Salesky et al. (Salesky) 4,593,776 Jun.
10, 1986
Metals Handbook, Ninth Edition, Volume 4, "Heat Treating,"
American Society for Metals, Ohio (1981), pp. 561-574, 589-
599, 628-634.
The Admitted Prior Art described on page 1 of the subject
specification
All of the claims on appeal stand rejected under 35
U.S.C.
§ 103 as being unpatentable over the Admitted Prior Art or
Salesky in view of the Metals Handbook. In the paragraph
bridging pages 5 and 6 of the Answer, the examiner expresses
his obviousness conclusion in the manner set forth below:
Metals Handbook discloses the conventional heat
treatment steps used in the art for tool steels such
as AISI D2. .... In view of the disclosure in
Metals Handbook that these are the conventional
treatments required in tool steels to maximum their
properties, it would be obvious to one of ordinary
skill in the art to quench and temper the tool
steels of appellants' prior art and Salesky because
this would optimize their properties. The tempered
martensitic structure containing a fine dispersion
Appeal No. 96-0154
Application No. 08/047,434
4
of secondary carbides and/or coarse primary
carbides, recited in the claims, would be inherent
to the use of AISI D2 (or similar tool steels) when
heat treated in the manner that Metals Handbook
discloses as optimum for these compositions.
OPINION
The above noted rejection cannot be sustained.
As correctly indicated by the appellants, the Metals
Handbook disclosure is directed to heat or tempering
treatments of tool steels per se rather than a clad sheet
which includes a tool steel layer and a low-alloy or mild
steel layer of the type claimed by the appellants and
described in, for example, the Admitted Prior Art. Like the
appellants, we consider the Metals Handbook to contain no
suggestion of applying the tempering treatments described
therein to such clad sheets. Moreover, the examiner's
contrary view is militated against by the evidence of record
which reflects that tempering treatments reduce the hardness
of tool steels (e.g., see Figure 8 of the Metals Handbook) and
that reduced hardness is antithetical to the abrasion
resistance characteristic desired in this art (e.g.,
Appeal No. 96-0154
Application No. 08/047,434
5
see the publications attached to the Brief as Exhibits 1 and
2). Finally, the examiner's obviousness conclusion is yet
further vitiated by the fact that the applied prior art
contains no teaching or suggestion of a clad sheet having tool
steel carbides, improved abrasion resistance and substantially
no residual stresses as disclosed and claimed by the
appellants.
Under the foregoing circumstances, it is our
determination that the rejection before us is based upon the
unwitting application of impermissible hindsight derived from
the appellants' own disclosure rather than some teaching,
suggestion or incentive derived from the applied prior art.
Accordingly, we cannot sustain the examiner's § 103 rejection
of claims 12 through 19 as being unpatentable over the
Admitted Prior Art or Salesky in view of the Metals Handbook.
The decision of the examiner is reversed.
REVERSED
Appeal No. 96-0154
Application No. 08/047,434
6
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
bae
Appeal No. 96-0154
Application No. 08/047,434
7
Oblon, Spivak, McClelland, Maier & Neustadt
Fourth Floor
1755 Jefferson Davis Highway
Arlington, VA 22202