Ex Parte Hasegawa et alDownload PDFBoard of Patent Appeals and InterferencesOct 27, 201111221853 (B.P.A.I. Oct. 27, 2011) Copy Citation 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. 11/221,853 09/09/2005 Tatsuya Hasegawa 12049-0027 7144 22902 7590 10/27/2011 CLARK & BRODY 1700 Diagonal Road, Suite 510 Alexandria, VA 22314 EXAMINER LUK, VANESSA TIBAY ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 10/27/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TATSUYA HASEGAWA, ZENJI IIDA, and KENTARO TAKADA ____________________ Appeal 2010-004304 Application 11/221,853 Technology Center 1700 ____________________ Before PETER F. KRATZ, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004304 Application 11/221,853 2 Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Watari (US 5,922,145; issued Jul. 13, 1999) in view of Takemoto (EP 0 865 590 A2, pub. Aug. 5, 1998). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1, the sole claim on appeal, is reproduced below with indentation added: 1. A non-heat treated fracture splitting connecting rod which comprises, in % by mass, C: 0.25 to 0.35 %, Si: 0.50 to 0.70 %, Mn: 0.60 to 0.90 %, P: 0.040 to 0.070 %, S: 0.040 to 0.130 %, Cr: 0.10 to 0.20 %, V: 0.15 to 0.20 %, Ti: 0.15 to 0.20 % and N: 0.002 to 0.020 %, with the balance being Fe and impurities, with chemical compositions being less than 0.80 in the value of Ceq stated by the following expression (1), the microstructure of the big end of the said connecting rod being ferrite-pearlite, all-region hardness of the said big end being 255 to 320 in Vickers hardness, the ferrite-region hardness in the said ferrite-pearlite of the big end being 250 or more in Vickers hardness and the ratio of the said ferrite-region hardness to the said all-region hardness of said big end being 0.80 or more; Ceq = C + (Si/10) + (Mn/5) + (5Cr/22) + 1.65 V - (5S/7) ... (1), Appeal 2010-004304 Application 11/221,853 3 where an element symbol appearing in the expression (1) represents the contents in mass % of the corresponding elements in the steel. There is no dispute that Watari’s broad disclosure describes non-heat treated steel compositions containing the claimed elements in concentrations overlapping the claimed ranges (Ans. 3; Reply Br. 4). However, appealed claim 1 further requires that the microstructure of the big end of the connecting rod be such that it contains ferrite of Vickers hardness of 250 or more as well as an all-region hardness of 255-320, and a ratio of the two hardness levels of 0.80 or more. The Examiner finds that Takemoto teaches non-heat treated steel for connecting rods of similar composition and that the optimum hardness for such machine structural parts is 20-35 HRC, which encompasses the claimed hardness range (Ans. 4). According to the Examiner, “it would have been obvious to one of ordinary skill in the art to ensure that the steel of Watari has a hardness of between 20 HRC and 35 HRC as taught by Takemoto, as this is conventional for machine parts, such as connecting rods.” (Id.) However, as pointed out by Appellants, the hardness reported by Takemoto is not the same as what is claimed (Br. 16-17). Claim 1 requires two distinct types of hardness. Claim 1 further requires those hardness properties be present in a particular ratio range. As explained in the Specification, the all-region hardness of the Big end means an average value in a case where hardness of the surface of the Big end, cut off vertically with respect to a forged axis, was measured at four points at random. The Vickers hardness in "all-region hardness" Appeal 2010-004304 Application 11/221,853 4 of the Big end means values measured by a test force of 98.07 N, and the Vickers hardness in "ferrite-region hardness" in the ferrite-pearlite means values measured by a test force of 0.09807 N. Also as mentioned, the ferrite in the present invention does not contain the ferrite which forms pearlite phase with cementite. (Spec. 17-18.) The Examiner finds that claim 1 “allows for the hardness of the ferrite in the ferrite-pearlite microstructure to be the same as the hardness of the overall ferrite-pearlite microstructure since ‘0.80 or more’ encompasses a ratio of 1.” (Ans. 9.) While it is true that the claimed ratio embraces a ratio of 1, the Examiner has not reasonably supported the finding that when optimizing the steel of Watari for hardness according to Takemoto, one would necessarily obtain a rod having a big end with ferrite hardness equal to the all-region hardness. The hardness disclosed by Takemoto is clearly not reflective of both types of claimed hardness. As explained by Appellants, ferrite hardness reflects a different property than all-region hardness (Br. 16-17; see also Spec. 17-18). Measuring ferrite hardness requires applying a different test force than that used to measure all-region hardness. The Examiner has not established that optimizing Takemoto’s disclosed range of hardness necessarily results equal values of all-region and ferrite hardness. The Examiner appears to present an alternative rationale of inherency based upon the overlap in chemical composition and microstructure between the steel of Watari and the claim (Ans. 9). However, the fact that Watari Appeal 2010-004304 Application 11/221,853 5 teaches overlapping compositions does not support a finding of inherency with regard to the claimed hardness properties. This is evidenced by the fact that, as pointed out by the Examiner (Ans. 8), Appellants’ test samples 10 and 11 have compositions meeting the element concentration ranges of the claim (Spec. Table 1), but those test samples have ferrite hardness values outside the claimed range (Spec. Table 3). Therefore, the claimed hardness values are not necessarily present. While it may be possible, when following the teachings of Watari and Takemoto, that one of ordinary skill in the art might manufacture a connecting rod having the required ferrite and all-region hardness levels as well as the required ratio of hardness, such a possibility is not evidence supporting a finding of inherency. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). The supposedly inherent feature much necessarily be the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003). The Examiner has not established that the claimed hardness properties, particularly the ferrite hardness and the ratio of hardness claimed, naturally flow from following the teachings of the references. Appeal 2010-004304 Application 11/221,853 6 We do not sustain the Examiner’s rejection of claim 1 as unpatentable over Watari in view of Takemoto. Therefore, the Examiner’s decision is reversed. REVERSED cam Copy with citationCopy as parenthetical citation